By Peter Reap, J.D., LL.M.
The federal district court in Miami erred when it raised the affirmative defense of copyright validity in a suit brought by Rapper William L. Roberts, II (known as Rick Ross) and two others, alleging that Stefan Gordy and Skyler Gordy, members of the musical group LMFAO, infringed copyrights in the Rick Ross single Hustlin’ by using lyrics and other elements from the song in LMFAO’s song Party Rock Anthem, according to the U.S. Court of Appeals in Atlanta. Furthermore, the district court erred in invalidating the three copyright registrations made by the plaintiffs for their song, because, although there were errors in the registrations, the errors were not made with the scienter necessary for invalidating a registration. Thus, the district court’s order dismissing the plaintffs’ claims was reversed and the case remanded (Roberts v. Gordy, December 15, 2017, Titus, R.).
The plaintiffs are the authors of the classic rap song, Hustlin’. In the wake of the success of Hustlin’, Stefan Gordy and Skyler Gordy (collectively p/k/a "LMFAO") authored a highly successful dance song, Party Rock Anthem. Cashing in on its popularity, Kia Motors used Party Rock Anthem as the soundtrack for one of its now equally famous dancing-hamsters commercials. The plaintiffs, believing that this song allegedly used their lyrics and music, filed a copyright infringement suit against LMFAO, Kia, and others.
The defendants’ answers asserted a series of defenses, including non-infringement, de minimus infringement, and parody/fair use. Although their answers acknowledged the existence of multiple copyright registrations for Hustlin’, the defendants never sought to argue invalidity, the court noted. The record clearly indicated that the issue of the validity of the copyright registrations was not raised by them, but rather by the district court sua sponte. And it was on the grounds of invalid copyright registrations and failure to demonstrate ownership that the district court dismissed this case at summary judgment. Subsequently, the plaintiffs timely appealed.
At the time this suit commenced, three copyright registrations had been filed and granted for Hustlin’. Each contained errors, but it has never been contended that the plaintiffs were not the true authors of the work. In applying 17 U.S.C. § 411(b)(2), the district court asked the Copyright Office to weigh in on "what effect, if any, allegedly inaccurate information would have had on the Copyright Office’s issuance of certain copyright registrations." The Copyright Office responded that it "would have refused to issue a registration for an unpublished work" had it known of the publication/distribution information for the first registration. However, the Copyright Office’s response did not indicate whether it would have permitted the first registration as a published work.
The district court then applied 17 U.S.C. § 411(b)(1), and concluded that the plaintiffs—as the authors—would have had knowledge of these errors, and that the Copyright Office’s response indicated the materiality of these inaccuracies. The district court rejected the argument that § 411(b) requires "an intent to defraud," and instead concluded that the plain text of the statute only requires "knowledge that it was inaccurate." In turn, the district court invalidated all of the copyright registrations and dismissed the case.
The district court’s review of validity was clearly not an issue of subject matter jurisdiction, but rather the determination of an affirmative defense, the Eleventh Circuit observed. Failure to plead an affirmative defense typically results in waiver of that defense, the court noted. However here, the district court—and not the defense—raised the issue of registration validity, and thus it erred in the manner of its review, the appellate court explained.
Under the Copyright Act of 1976, registration is a prerequisite to filing an infringement action. See 17 U.S.C. § 411(a). In some instances, inaccuracies can invalidate a registration, thus voiding compliance with this prerequisite. Under 17 U.S.C. § 411(b), which Congress modified in 2008, codifies the defense of fraud on the Copyright Office. The defendants asserted that the 2008 amendment to the Copyright Act "precludes reading ‘fraud’ into the statute," and they averred at oral argument that the 2008 amendment served as a ‘sea change’ in copyright policy. The appellate court disagreed.
Materiality hinges on whether the Copyright Office would have refused the application if the inaccuracy were known. In order to aid in the determination of materiality, the district court must make an inquiry to the Copyright Office.
On the other hand, the scienter necessary for invalidating a registration is also clear and well settled. While omissions or misrepresentations in a copyright application can render the registration invalid, a common element among them has been intentional or purposeful concealment of relevant information. Where this element of scienter is lacking, courts generally have upheld the copyright. Therefore, in order to invalidate a registration, (1) the application must contain inaccuracies, (2) the inaccuracies must be material, and (3) the applicant must have the required scienter of intentional or purposeful concealment. Although the district court correctly found material inaccuracies in the registrations, it erred by not applying the appropriate scienter for fraud on the Copyright Office.
Here, as indicated by the absence of any sort of motive for deception, the errors made in each of the registrations were done in good faith. While all of these inaccuracies were not insignificant given the Copyright Office’s response, none appeared to have been made with the scienter necessary for invalidating a registration, the appellate court ruled. A proper application of 17 U.S.C. § 411(b) would have yielded the result of validity of registration—albeit plural registrations, the court reasoned. The good faith inaccuracies in those registrations should not preclude the undisputed authors from copyright protection.
The case is No. 16-12284.
Attorneys: Jonathan L. Gaines (Grayrobinson, PA) for Andrew Harr. Nina Diana Boyajian (Greenberg Traurig, LLP) for David & Goliath, LLC. Vincent H. Chieffo (Greenberg Traurig, LLP) for Foo & Blu, LLC.
Companies: David & Goliath, LLC; Foo & Blu, LLC
MainStory: TopStory Copyright AlabamaNews FloridaNews GeorgiaNews
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