Tuesday, May 25, 2010

My Old Kentucky Home Remixer Punk'd: Court Tosses Copyright Infringement Action For Failure To Disclose Pre-Existing Material

In Rich & Rich Partnership v. Poetman Records USA, Inc. 2010 WL 1978800, 1 (E.D.Ky. May 17, 2010) the court found that a copyright registration certificate that did not disclose that a work was a remix including a sound recording of the late Gov. Happy Chandler's "Old Kentucky Home" rendered the copyright unenforceable.   The plaintiff did not offer any excuse for the omission, such as a mistake (the case law is pretty forgiving).

Please note that 17 USC 409 (9) provides:

§ 409. Application for copyright registration

The application for copyright registration shall be made on a form prescribed by the Register of Copyrights and shall include —
(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered;

Practice Tip:  In Chapter 4 of my Copyright Litigation Handbook I review how to correct mistakes in ownership and registration forms with the Copyright Office before going to court.  It is better to do this prior to bringing a litigation.

More from the decision:

“[W]hen an applicant knowingly fails to identify the derivative nature of the work, or the use of elements not of the applicant's own creation, the court may decline to enforce the copyright.” Lenert v. Duck Head Apparel Co. Inc., No. 95-31122, 1996 WL 595691, at *4 (5th Cir. Sept.25, 1996) (citing Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 987-89 (S.D.N.Y.1980) (court declined to enforce copyright where applicant knowingly failed to disclose pre-existing work); GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F.Supp. 763, 774-76 (W.D.N.Y.1991) (knowing omission of derivative nature permits grant of summary judgment refusing to enforce copyright)). In other words, a “ ‘knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ... or denying enforcement on the ground of unclean hands.’ ” Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984) (quoting Russ Berrie, 482 F.Supp. at 988). In 1998, David E. Rich registered a work entitled “The Kentucky Wildcat Basketball Experience.” R. 125, Ex. 1 at 1-2. In that registration, the nature of the copyrighted work was described as a “[c]ompilation of sound recordings of Kentucky Wildcat games and band recordings, with some new sound recording.” Id. at 1. The registration form asked Rich & Rich to “[i]dentify any preexisting work or work that this work is based on or incorporates.” Id. at 2. In response, Rich & Rich identified, “some sound recording.” Rich & Rich did not identify Chandler's original rendition of “My Old Kentucky Home” in its response. The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich's contribution to the Chandler rendition qualified as a derivative work.FN1

FN1. Rich & Rich knew that it was taking a work from Chandler and putting it on its album. Cf. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982) (omission of pre-existing work did not invalidate the registration because of lack of scienter). That is not disputed and, hence, lack of knowledge cannot excuse the error here.

Courts can overlook immaterial mistakes in a registration. See Lenert, 1996 WL 595691, at *4 (collecting cases where the failure to disclose the derivative nature of a work did not invalidate the registration). But Rich & Rich has neither attempted to show evidence that this was a simple mistake nor provided an explanation of why the registration was done in this manner. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 n. 5 (3d Cir.1990) (“[A] misstatement or clerical error in the registration application if unaccompanied by fraud will not invalidate the copyright nor render the registration incapable of supporting an infringement action.” (quoting M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.20, at 7-197-98)); see also Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706, 708 (6th Cir.1956) ( “innocent misstatement ... in the affidavit and certificate of registration, unaccompanied by fraud” does not invalidate copyright).

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