How would you or the music fan in your life complete this sentence?
“Everyday I’m _________”
Rapper Rick Ross says the phrase is “Everyday I’m hustlin’,” from his classic tune “Hustlin.'”
Pop band LMFAO says it’s “Everyday I’m shufflin,'” as used in their song “Party Anthem.”
Rick Ross alleged in a lawsuit that LMFAO is infringing.
Yet Ross’s three copyright registrations at issue are all defective. As the case made its way through district court, the court sua sponte (on its own, without being asked by either of the parties) invalidated the registrations. Without owning a valid copyright, Ross had no standing to sue, and the court dismissed his case.
Trademarks and patents are occasionally invalidated after they’re issued. There are a number of reasons this can happen, from administrative to litigation-related.
But copyrights are invalidated less frequently. And as the US Court of Appeals for the Eleventh Circuit made clear in ruling on Ross’s appeal, someone seeking cancellation of a copyright has a high threshold to meet.
Scienter, or ill intent, relative to the registration is required.
It begins with one of the copyright statutes. The law specifies that, while a copyright automatically exists in applicable works, a plaintiff must have registered their copyright in order to sue for infringement. 17 U.S.C. § 411.
The Copyright Act notes that a registration certificate – even one with inaccurate information – serves as satisfaction of this requirement, unless:
- The inaccurate information was knowingly included on the application; and
- had the Copyright Office known of the inaccuracy, it would have refused to register the copyright.
Id. at (b).
Which leads to a few questions. For all registrations where the applicant should have known, or later became aware of, inaccurate or incomplete information be cancelled? Does it matter if the inaccuracy is of little consequence? Or should copyright applications be treated more stringently for someone who has negative intentions for the registration – if, for example, they’re looking to hide something?
As far back as 1982, the Eleventh Circuit (which has jurisdiction over federal cases in Florida, Georgia, and Alabama) has maintained that cancellation of a copyright requires scienter.
That year, the court noted that a common theme in certain copyright lawsuits was the “intentional or purposeful concealment of relevant information.” Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (1982). Where scienter is lacking, both district courts and appellate courts have generally upheld copyrights. Id., citing cases from various courts around the country.
The Toy Loft court found no scienter for the errors in the plaintiff’s copyright application, and the defendant’s claim that plaintiff’s copyright was unenforceable failed.
Yet the language of the relevant provision of the Copyright Act was amended in 2008. Would the amendment change the analysis if the same case were heard today?
In 2009, the Eleventh Circuit said no, reiterating its position in St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186.
In Sanderson, the court considered both the language of the statute (17 U.S.C. § 411 at (b)(1)) and the Toy Loft court’s finding that “[O]missions or misrepresentations in a copyright application can render the registration invalid” in the event of “intentional or purposeful concealment of relevant information.” Sanderson, 573 F.3d at 1201, citing Toy Loft, 684 F.2d at 828.
Based on the facts of the case, the Sanderson court found scienter, ending the plaintiff’s attempt to get a new trial.
But does this mean that scienter must be present?
As Rick Ross, LMFAO, and the rest of the Eleventh Circuit now know – yes.
Ross and his fellow plaintiffs appealed the dismissal of their copyright lawsuit. Roberts v. Gordy, 877 F.3d 1024 (2017). They argued that the lower court improperly invalidated their copyright registrations without evidence of scienter. LMFAO and their codefendants countered that scienter wasn’t required.
However, the defendants had never contested the validity of the plaintiffs’ copyrights in the course of the suit. And in failing to raise that point as a defense, they ultimately waived it. District courts aren’t supposed to raise defenses sua sponte (on their own accord) as they did here.
Moreover, the Eleventh Circuit found the lower court’s analysis incorrect. The appellate court made a point to state very directly that the Sanderson analysis reaffirmed Toy Loft. The amendment to the Copyright Act in between the two cases did not impact the court’s position.
The court explicitly found that “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.” Gordy, 877 F.3d at 1030 (emphasis added).
The Eleventh Circuit is the first appellate court to make this determination. The ruling will stand as precedent in Florida, Georgia, and Alabama, and it will be persuasive for courts in the rest of the country. So at least for now, this is the law of the land.
That’s good news for copyright holders whose registrations may be unintentionally defective…
Yet if you’re ever involved in a copyright dispute, it’s preferable not to have to spend the time and money litigating this point as Rick Ross did.
To minimize the chances of a dispute of this nature, you’ll want to ensure that all your copyright registrations are accurate. The Lomnitzer Law Firm can help. If you have questions about registering a copyright, trademark, or patent, call (561) 953-5300 or contact us for your free consultation.
Please note: this blog is intended to provide general information which should not be taken as legal advice.
Original article posted on our dedicated blog on February 13, 2018 https://lomnitzerlaw.wordpress.com/