s

Tag 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.

Warner Bros. suing talent agencies over alleged unauthorized copying of films

Recently, Warner Bros. Entertainment, Inc. (“Warner Bros.”) brought a copyright lawsuit against several talent agencies (“Defendants”).[1] The Complaint alleges that Defendants were involved in “an illegal digital distribution platform that copied movies and then distributed copies and streamed public performances of those movies” to insiders and third parties.[2] Warner Bros. is alleging that the Defendants maintained copies of several of Warner Bros. films, which then made their way from Defendants’ platform to third party online piracy websites.[3] It is alleged in the Complaint that Warner Bros. discovered Defendants’ activities in December 2015 as a result of unauthorized copies of the movies Creed and In the Heart of the Sea appearing on online piracy sites after copies of such movies were sent by Warner Bros. to Defendants for delivery to one of Defendants’ clients.[4] Warner Bros. claims that the copies of these movies were “watermarked” and could be traced back to Defendants, who allegedly bypassed the security measures placed on the “screener” DVD copies and then copied such movies to their digital distribution platform.[5]

Warner Bros. acknowledges in its Complaint that Defendants represented that they terminated the digital distribution platform after being notified by Warner Bros.[6] However, Warner Bros. is still seeking an injunction to prevent Defendants from creating a similar distribution platform.[7] Warner Bros. alleges it would suffer irreparable harm because Defendants’ digital platform maintained copies of Warner Bros’ works without the necessary security technology measures, which could allow such works to be further copied.[8] The Complaint alleges causes of action for Copyright Infringement and Violation of The Digital Millennium Copyright Act.[9] Warner Bros. is also seeking monetary damages and attorneys’ fees as a result of Defendants’ alleged willful conduct.

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, Warner Bros. Entm’t, Inc. v. Innovative Artists Talent and Literary Agency, Inc., et. al., No. 16-cv-7902 at Docket Entry No. 1 (C.D. Cal. Oct. 24, 2016).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.