SDC D. Puerto Rico, March 17, 2010

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  • Court holds that Section 412 of the Copyright Act, which prohibits awarding attorney’s fees for an infringement that began after first publication of the work and before the effective date of its registration, does not apply to a prevailing defendant.

Latin American Music Co. (LAMCO) sued several local radio broadcasters for copyright infringement of fifty songs. Some of these broadcasters followed with third-party complaints against American Society of Composers, Authors and Publishers (ASCAP), claiming indemnification in the event that they were held liable for infringement.

ASCAP moved for summary judgment on the ownership of five songs, and after several district court and First Circuit decisions and a jury verdict in favor of ASCAP, the district court entered an amended judgment consistent with the verdict. ASCAP subsequently requested attorney’s fees.

LAMCO argued that attorney’s fees are not available under §412 of the Copyright Act, which provides in part: “no award of . . . attorney’s fees . . . shall be made for . . . any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”

According to the court, there is no case law in the First Circuit, and scant authority elsewhere, interpreting the equity of section §412 as applied to prevailing defendants.. The court held that the statutory bar under §412 applies asymmetrically to prevailing plaintiffs and not to prevailing defendants like ASCAP. The court based this holding on the statute’s intent to encourage claimants to register their rights with the Copyright Office. “While a bar against plaintiffs who fail to register reinforces this policy by inducing claimants to file with the office, it would be illogical to require accused infringers to register the rights asserted by plaintiff-copyright claimants as a precondition to recovering attorney’s fees.” The court ordered LAMCO to pay ASCAP $56,773.43 in costs and fees, plus interest.