Category Archives:Copyright Infringement

Eleventh Circuit Affirms that a Copyright Registration is a Prerequisite to an Infringement Suit

Last week, the United States Court of Appeals for the Eleventh Circuit (“Eleventh Circuit”) affirmed that in order to bring a copyright infringement lawsuit the Plaintiff must have first obtained a copyright registration.[1] As discussed in a previous blog article, registration is required prior to a copyright owner bringing a lawsuit in court for copyright infringement. The dispute to be resolved by the Eleventh Circuit in Fourth Estate was whether the term “registration” means when the copyright owner files an application to register the copyright with the United States Copyright Office (“Copyright Office”) or when the copyright is registered.[2] The Eleventh Circuit highlighted that this is a dispute that has been resolved differently among the different District Court of Appeals.[3] Some Circuits (such as the Fifth, Eighth and Ninth) have found that registration occurs upon the filing of an application.[4] Other Circuits (such as the Tenth) have found that the Register of Copyrights must have first acted on the application by either approving or denying it prior to the lawsuit being filed.[5] While other Circuit (such as the First, Second and Seventh) have not yet resolved the dispute.[6]

The Eleventh Circuit examined the text of the Copyright Act and found that registration does not occur until “‘the Register . . . register[s] the claim.”[7] Further, the Eleventh Circuit found that filing an application alone is insufficient because the Copyright Act states that “registration can occur only after application and examination.”[8] However, it should be noted that a copyright owner who files for an application which has been refused has the ability to file a copyright infringement lawsuit.[9]

The ruling from this case teaches an important lesson. It is essential to register copyrights as soon as it is known that the copyright owner’s work is going to be published or released. Seeking registration after infringement has already occurred has several pitfalls.  For example, a copyright owner waives the right to collect statutory damages and attorneys’ fees under the Copyright Act if the work was not registered prior to the commencement of the infringing activity.  Registration also affords the registrant certain protections and advantages outside the United States, pursuant to some international intellectual property treaties. Thus, it is important to contact an experienced and knowledgeable attorney for any questions regarding copyright protection.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et. al., 2017 WL 2191243 (11th Cir. May. 18, 2017).
[2] Id. at 2017 WL 2191243.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id. (internal quotations omitted).
[8] Id.
[9] Id.

Gwen Stefani and Pharrell sued for copyright infringement over “Spark the Fire” song

Recently, Gwen Stefani and Pharrell, among other Defendants, (“Defendants”) were sued for copyright infringement over the song “Spark the Fire.”[1] The lawsuit was brought by musician Richard Morrill (“Plaintiff”) who is a songwriter and singer that was formerly part of a band called L.A.P.D.[2] The Plaintiff alleges that the Defendants’ song “Spark the Fire” is substantially similar to Plaintiff’s “Who’s Got My Lightah” song.[3] The Plaintiff alleges that the most significant similarities between the two songs involve musical and lyrical similarities in the choruses of the songs.[4] The Plaintiff also asserts that he is the owner of copyrights in the songs “Who’s Got My Lightah” and “Who’s Got My Lighter”, which were allegedly registered in October, 2016.[5] The Defendants are alleged to have had access to Plaintiff’s songs as a result of Plaintiff and Gwen Stefani meeting at a beauty supply store and a salon that the Plaintiff worked at in 1997 and 1998.[6] Plaintiff alleges that Gwen Stefani obtained a copy of a CD containing Plaintiff’s songs at this time.[7]

The Complaint alleges claims for direct, contributory, and vicarious copyright infringement and for Civil Theft.[8] Further, Plaintiff is seeking a declaratory judgment, injunctive relief, damages and attorneys’ fees and costs.[9] In order to show infringement the Plaintiff will need to establish substantial similarity between the two songs. In addition, the Plaintiff’s vicarious and contributory infringement claims seek to hold one or more of the Defendants who were not direct infringers liable. Plaintiff’s vicarious infringement claim requires a showing that one or more of the Defendants 1) had the right and ability to control the direct infringer’s acts; and 2) received a direct financial benefit from the infringement. The Plaintiff’s contributory infringement claim requires a showing that one or more of the Defendants 1) had knowledge of the infringement; and 2) induced, caused or materially contributed to the infringement.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Morrill v. Stefani, et. al., Case No. 17-cv-00123 at Docket Entry No. 1 (D. Col. Jan. 12, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.

Defendants awarded Summary Judgment in copyright lawsuit over “Love & Hip Hop” show

Recently, Summary Judgment was entered in favor of the Defendants in a lawsuit brought by a production company over the television show “Love & Hip Hop.”[1] The Plaintiffs filed a copyright infringement lawsuit against the Defendants alleging that the “Love & Hip Hop” show infringed upon a similar concept that was pitched to the Defendants by Plaintiffs.[2] The Plaintiffs’ lawsuit revolves around a one-page Treatment submitted to the Defendants which outlined Plaintiffs’ concept of having a reality television show based upon the lives of four women married to famous Hip Hop artists.[3] Plaintiffs’ Treatment intended for the cast to include the significant others of rappers DMX and Jim Jones and producers Swizz Beats and Irv Gotti.[4] The parties had signed a written agreement for production of Plaintiffs’ television show, but later terminated the agreement after one of the cast members refused to participate.[5] The Defendants subsequently aired the “Love & Hip Hop” reality show, which prompted the Plaintiffs to file a lawsuit.[6]

There have been six seasons of the “Love & Hip Hop” show but the Plaintiffs’ Complaint only focuses on the first season, which included the significant other of Jim Jones.[7] The Court found that the Defendants did have access to Plaintiffs’ Treatment, but noted that the Plaintiffs still had to prove that the two works were substantially similar.[8] The Court ended up finding that the two works were not substantially similar.[9] The Court noted that the majority of the content in Plaintiffs’ Treatment were general concepts of reality television and did not constitute original or protectable matter.[10] The Court specifically highlighted the fact that there were already several reality television shows depicting the lives of celebrity wives, such as the “Real Housewives” series.[11] As a result, the Court granted the Defendants’ Motion for Summary Judgment.[12] The result of this lawsuit allows the “Love & Hip Hop” show to continue, pending any potential appeal of the decision by Plaintiffs.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, 8th Wonder Entm’t, LLC v. Viacom Int’l, Inc., No. 14-cv-01748-DDP-JCG, 2016 WL 6882832 at *1 (C.D. Cal. Nov. 22, 2016).
[2] Id.
[3] Id. at *2.
[4] Id. at *1-2.
[5] Id. at *1.
[6] Id.
[7] Id. at *2.
[8] Id. at *4.
[9] Id. at *4-9.
[10] Id. at *5.
[11] Id.
[12] Id. at *9.