Sound Recording Registration No Proxy for Musical Composition Registration

The First Circuit Court of Appeals couldn’t go wrong by quoting Mark Twain at the outset:

Over a century ago, Mark Twain lamented that ‘only one thing is impossible for God: to find any sense in any copyright law on the planet.’  We fear that Twain’s deity would fare little better with the tangled skein of copyright and contractual claims presented by the plaintiffs in this case. Confining our inquiry to the arguments seasonably raised before the district court and to the factual background at the time of summary judgment, we conclude that the district court did not err in granting the defendants’ motion for summary judgment and denying the plaintiffs’ subsequent motion for reconsideration.

(Opinion pdf page 2).

Although this case involved a convoluted fact pattern, what the case essentially comes down to is this:  The plaintiffs claimed copyright ownership of musical compositions, but registered sound recordings for the songs they claimed were infringed.  Further, even though the plaintiffs recorded the songs they claimed to own the musical composition copyrights for, the sound recording deposits the plaintiffs provided to the copyright office were made by others, not the plaintiffs.  It’s not surprising that the district court granted the defendants’ summary judgment motion, which was affirmed by the First Circuit.

Section 411(a) of the Copyright Act requires the registration of a copyright as a condition to maintaining a copyright infringement lawsuit.  The circuits are split on whether the registration process must be completed before the lawsuit is filed (the registration approach) or whether it is sufficient to file a registration application before filing a lawsuit (the application approach).  The First Circuit ruled that, in this case, “the defendants were entitled to summary judgment under either approach.”  (Opinion pdf page 11). 

A valid copyright registration consists of three elements:  1. a completed application form, 2. a nonrefundable filing fee and 3. a nonreturnable deposit (a copy of the work being registered.)  (Copyright Office Circular 4).  This case focused on the lack of adequate deposits.

The plaintiffs first sued the alleged infringers, then attempted to register their copyrights.  The plaintiffs filed their lawsuit on January 5, 2010.  The Copyright Office was still trying to determine whether the plaintiffs’ deposits were acceptable on February 23, 2012, when the district court granted the defendants’ summary judgment motion. 

The First Circuit affirmed the district court’s decision:

We agree with the district court’s conclusion that summary judgment was proper because there was a lack of evidence as to whether the copies that the plaintiffs submitted to the Copyright Office, i.e., copies of the allegedly infringing sound recordings from the defendants’ album rather than the original recordings on which the plaintiffs had worked, met all of the requirements for deposit copies and the Copyright Office had not yet taken a position on whether it had received all of the required materials for registration.

(Opinion pdf page 11).

The First Circuit further pointed out that “sound recordings and their underlying musical compositions are separate works with their own distinct copyrights.”  (Opinion pdf page 13).  

As the parties do not dispute that the authorship of the four registered sound recordings is not coextensive with the authorship of the underlying compositions, the registration of the sound recordings has no bearing on the plaintiffs’ claims for compositional copyright infringement.

To the extent that the plaintiffs alternatively suggest on appeal that they are also claiming infringement in the sound recordings, that claim lacks any foundation in the underlying complaint, which refers only to the plaintiffs’ copyrights in the ‘Original Compositions.’

(Opinion pdf pages 13-14).

This case is Alicea v. Machete Music, No. 12-1548, First Circuit Court of Appeals.

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