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First Circuit: Reconstruction of work does not meet deposit requirement for copyright registration

October 05, 2007
Post by Blog Staff

Tuesday, the First Circuit issued a decision regarding the Copyright Act's requirement of submission of a "copy" of an original work along with the registration of the work in order for a plaintiff to bring suit in federal court.

The court held, as an issue of first impression in the circuit, that the copy submitted had to be just that, a copy, and that the plaintiff's reconstruction of the work from memory rendered the registration invalid. As a result, the court lacked subject matter jurisdiction to hear the infringement claim, as the copyright was not properly registered.More detail of Torres-Negron v. J & N Records, LLC after the jump.In 1993, plaintiff Torres wrote lyrics for a new song for a friend's band to perform. He wrote out the lyrics on paper and created a tape recording of the song. He gave both of them to the friend, whose band subsequently used the song on a CD, giving Torres royalties from the CD. However, the producer of the CD later sold the rights to the master recording of the song to the defendant, J & N Records, who produced three more CDs with the song. J & N, however, did not pay royalties to Torres on the CDs. Discovering what the defendants had done, Torres then submitted an application to the Copyright Office for registration of the song in 2002, which required in part a "copy" of the original work. Torres created a tape of the work from memory and submitted this as part of the application.Subsequently, Torres filed suit against the defendants for copyright infringement. The defendants moved for judgment as a matter of law, but the district court denied this motion. However, after the jury returned a verdict in favor of Torres, the district court granted defendant's renewed motion because it found that it lacked subject matter jurisdiction. In particular, the district court held that the tape submitted to the Copyright Office for registration was not a "copy" per se, but rather a "reconstruction," as it was created from memory without directly referring to the original work. The district court then denied defendant's request for attorney's fees, and Torres and J & N timely appealed Initially, the First Circuit addressed whether a "deposit copy" that is submitted along with an application for copyright registration included a reconstruction as Torres submitted here. It held that a reconstruction was not within the meaning of the definition of "copy" under the Copyright Act because the language of the act was clear and other circuit courts had similarly found a reconstruction was not covered by the Act. Torres next argued that his copyright registration was not invalid because the submission of a reconstruction was only an immaterial mistake. However, the court found that the submission of something other than a copy could not be immaterial because "the failure to submit a valid copy would affect the Copyright Office's issuance of a certificate."
As an alternative argument, Torres then argued that the lack of a valid deposit copy should not be something which negates subject matter jurisdiction for a federal court. The court held that omission of a proper deposit copy rendered Torres's registration invalid and eliminated the federal court's subject matter jurisdiction. Torres also could not rely on the provision that permits an applicant who was refused registration to bring suit, as that provision still requires that the deposit be delivered to the Copyright Office in proper form. As this was an issue of first impression in the circuit, the court also offered guidance for district courts in making the determination of whether a deposit was a copy or a reconstruction. The court held the district court should have determined if a valid deposit copy was submitted under an analysis similar to a summary judgment motion. Even though the district court did not do this, it was not erroneous to allow the case to go to trial before concluding that the evidence showed a reconstruction rather than a valid deposit copy. Normally, however, the district court should first make a determination earlier whether the question of a valid deposit copy implicates the merits of a case, and if so, a summary judgment motion should be used to resolve that issue before the jurisdictional issue is determined.Lastly, the court found that, because the court had granted a judgment as a matter of law after the jury verdict, J & N could not receive reasonable attorney's fees because they were not considered a "prevailing party" on the merits of a claim.

To read the full decision in Torres-Negron v. J & N Records, LLC, click here.


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