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Filing a copyright lawsuit without first registering your copyright risks FRCP 12(b) dismissal

Posted by Steve Vondran | Dec 27, 2017 | 0 Comments

Copyright Case Brief – Frazier v. Capitol CMG Publ'g, No. 3:14-CV-02310 (M.D. Tenn. Dec. 7, 2015)

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Summary

The Court did have subject matter jurisdiction because, despite the claims being centered around breach of contract, Plaintiff did sufficiently plead a copyright infringement claim against Defendants for taking royalties, which was not part of the publishing agreement. However, ultimately, the Court granted Defendants grounds because Plaintiff did not follow the rigid procedural rules in bringing a copyright infringement claim as specified in 411(a), namely, failing to sufficiently plead registration in a valid copyright.

Facts

David Frazier, a highly successful gospel songwriter, brought suit against Lilly Mack Publishing; H. Xavier Walker individually and d/b/a Mokiah Publishing; Vicki Latalliade; and Claude Lataillade (collectively, “Defendants:) arising out of a dispute relating to a publishing agreement.

Frazier is the sole writer and owner of the compositions “I Need You to Survive” and “We Made It”, which Defendant Walker recorded for his album “Family Affair II: Live at Radio City Music Hall”. On July 15, 2003, Plaintiff and Defendant Xavier Walker entered into a publishing agreement for the two compositions, where the terms stated Defendants obtained the right to 25% of publishing income generated by the compositions solely for the “Family Affair II” album. However, no legal right in the compositions were transferred to Defendants and the agreement expressly prohibited Defendants from collecting any amount beyond that 25% of the publishing income.

According to the complaint, Defendants breached the publishing agreement by collecting 25% of all royalty payments and making false representations that it owned 25% of the copyright in the compositions. As a result, Defendants collected thousands of dollars in royalty and publishing income, but have not paid Frazier any of the money owed per the terms of the publishing agreement. This led to Frazier filing a suit against all the Defendants for direct copyright infringement, and contributory infringement against Defendant Walker specifically. Further, Plaintiff alleges Tennessee state law claims for tortious breach of contract, negligence, conversion, and unjust enrichment, as well as fraudulent misrepresentation against Defendant Walker.

In response to the complaint, Defendants filed a motion to dismiss under FRCP 12(b)(1) for lack of subject matter jurisdiction and 12(b)(6) for failure to state a claim, contending that Frazier's copyright claims are in fact just state contract law claims, thus there is no federal question jurisdiction under the Copyright Act and for failure to plead that Frazier preregistered or registered the asserted copyrights.   

Issue

Whether Plaintiff's claims arise under the Copyright Act or are merely state contract claims guised as infringement claims; and whether Plaintiff has sufficiently shown that he preregistered or registered the compositions with the Copyright Office in order to effectuate suit?

Rule of Law

Under 411(a):

“No civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with the title.” Failure to comply with 411(a) can result in dismissal of a copyright infringement actions under FRCP 12(b)(6).”

Analysis

The Court addressed the Motion to Dismiss in two parts.

First, the Court addressed the subject matter jurisdiction argument. While federal district courts have original jurisdiction over Copyright Act cases, not every complaint that refers to the Copyright Act “arises under” copyright. In order to “arise under” the Copyright Act, the complaint must be for a remedy expressly granted by the Act. The Court concluded that while there is a contract claim at the center of the dispute, Plaintiff's complaint does arise under the Copyright Act because it alleges Defendants infringed the copyrighted compositions by “collecting a combined 25% share of all royalties associated with” the compositions. Thus, Plaintiff plead a copyright infringement claim which is a “remedy expressly granted” by the Copyright Act and the Plaintiff sufficiently pled subject matter jurisdiction.

Second, the Court addressed Defendants' 12(b)(6) motion for failure to show that Plaintiff had preregistered or registered the copyright for the compositions prior to filing suit. Under 411(a):

“No civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with the title.”

In its Complaint, Plaintiff only alleges that he “is the sole owner of a 100% undivided shared in the Infringed Compositions.” However, Plaintiff did not attach registration certificates to the complaint as exhibits. Plaintiff's failure to comply with the 411(a) requirements resulted in the Court granting Defendants 12(b)(6) motion to dismiss, but without prejudice.

Conclusion

The Court granted Defendant's Motion to Dismiss under 12(b)(6) without prejudice, but denied the Motion to Dismiss on 12(b)(1) grounds because Plaintiffs claims arose under the Copyright Act, giving the district court federal question jurisdiction in the case.

Copyright Registration – Filing a Completed Application with U.S. Copyright Office is sufficient in 9th Circuit

Here was a case discussing this point

“We therefore hold that receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a). This interpretation ensures the broad copyright protection that the 1976 Act provided. It “best effectuate[s] the interests of justice and promote[s] judicial economy.” Int'l Kitchen Exhaust Cleaning Ass'n v. Power Washers of North America, 81 F.Supp.2d 70, 72 (D.D.C.2000). This approach also fully accomplishes the central purpose of registration—the compilation of a robust national register of existing copyrights—and at the same time avoids unfairness and waste of judicial resources.”

“As explained above, copyright registration is now a voluntary procedure, with the pre-litigation registration requirement acting as an incentive to help Congress maintain a robust national register of copyrights. See H.R.Rep. No. 94–1476, at 158, 1976 U.S.C.C.A.N. at 5774 (“Copyright registration for published works, which is useful and important to users and the public at large … should … be induced in some practical way.”). This goal, however, is accomplished equally by the registration and application approaches, as either approach requires a party to submit the information necessary to add the copyright to the federal registry. See 17 U.S.C. §§ 408–409 (setting forth the steps an applicant must take to register a copyright).”

See Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 621 (9th Cir. 2010).

Contact a Copyright Royalties Litigation Law Firm

Our law firm can help both Plaintiffs and Defendants in federal copyright litigation including cases involving pirated software, , book, photo, jewelry, and music royalty disputes and other intellectual property matters.  We can be reached at (877) 276-5084.  

Parts of this blog written by Ms. Jennifer Cooper, law student at Loyola Marymount Law School. 

About the Author

Steve Vondran

Welcome to the SHORT BIO page for Attorney Steve®  (Yes, I was able to get a trademark for Attorney Steve®) Click here to go to a more COMPLETE BIO. AZ Bar Lic. #025911 CA. Bar Lic. #232337 Introduction I have done a lot of things in my 15 years of law practice and in my life in general.  ...

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