Addressing for the first time the 2008 amendment to the Copyright Act’s effect on the standard for invalidating a copyright registration, the US Court of Appeals for the 11th Circuit held that a copyright registration may only be invalidated with a showing that the registration contained material inaccuracies and that the applicant had the “required scienter of intentional purposeful concealment.” Roberts, II v. Gordy, et al., Case No. 16-12284 (11th Cir., Dec. 15, 2017) (Titus, J, sitting by designation).
Following a district court’s dismissal of appellants’ copyright infringement for lack of standing, an appeal was filed arguing that the copyright registrations were improperly invalidated under 17 USC § 411 because there was no showing of scienter for nullification of a copyright registration. Because the district court misapplied the test for invalidating copyright registrations by failing to assess scienter, the 11th Circuit reversed and remanded the district court’s dismissal of the copyright infringement claim.
This action arose from a dispute between the authors of “Hustlin’,” the classic rap song by Rick Ross (aka Mr. Roberts II), and Stegan and Skyler Gordy (collectively, the music group LMFAO). Specifically, appellants alleged that LMFAO’s use of the line “everyday I’m shufflin’” in its song “Party Rock Anthem” infringes on the lyric “everyday I’m hustlin’” from “Hustlin’.” The present appeal focuses on three separate copyright registrations by the appellants, each of which is defective in some way.
As a result, the district court sua sponte raised the issue of ownership, even though LMFAO did not include this defense in its answer nor did it ever contest ownership. The 11th Circuit initially took issue with the district court’s decision to assess the copyright registration’s validity because the assessment of whether to invalidate the defective copyright registrations was an impermissible attempt by the district court to raise an affirmative defense that was likely waived by LMFAO.
In reversing the district court’s finding that the copyright registrations were invalid, the 11th Circuit found that the district court misapplied the test for invalidity by not assessing the applicant’s intent. To support this test, the Court cited to St. Luke’s v. Sanderson, which cited to a 2008 amendment to the Copyright Act and to Original Appalachian Artworks v. Toy Lot to reaffirm that “intentional or purposeful concealment of relevant information” is required to invalidate copyright registration. The Court found the minor inconsistencies between the copyright registrations insufficient to show intent to deceive the Copyright Office. Therefore, the Court concluded that Rick Ross was “hustled” out of court on an improper basis of invalidity, and as such, he should be “shufflin’” back to have his day in district court.
Practice Note: Copyright holders should be careful when submitting copyright registrations and make sure that the forms are properly filled out and that subsequent registrations refer to prior registrations so as to avoid this potential invalidation of copyright.
Alleged infringers should include an invalidity affirmative defense in their answer, since the court seemed willing to remand the case solely on the waiver of the invalidity defense alone.