USCA, Eleventh Circuit, December 15, 2017
Eleventh Circuit reverses district court’s grant of summary judgment against authors of rap song “Hustlin’,” holding that inaccurate information in copyright registration applications is insufficient to invalidate registration without evidence of intent to defraud Copyright Office.
William L. Roberts II, Andrew Harr and Jermaine Jackson are artists who author and produce hip-hop music, including the classic rap song “Hustlin’.” Subsequent to the song’s success, Stefan and Skyler Gordy (professionally known as LMFAO) authored a song titled “Party Rock Anthem,” which achieved widespread popularity. Kia Motors utilized “Party Rock Anthem” as the soundtrack in one of its commercials featuring dancing hamsters. Plaintiffs filed a copyright infringement lawsuit against LMFAO, Kia Motors and others, alleging that “Party Rock Anthem” used their lyrics and music from “Hustlin’.” Specifically at issue in the litigation was the beat drop “every day I’m shuffling,” which defendants argued was a parody protected by the fair use doctrine.
Although defendants did not dispute the validity of plaintiffs’ copyrights, the district court raised the issue sua sponte, and held that plaintiffs’ copyright registrations were invalid, because they incorrectly stated that (i) “Hustlin’” was unpublished at the time of the registration, (ii) the song was created in 2006 (instead of 2005) and (iii) there were no prior registrations for the song. The district court found that the Copyright Office would have rejected the registrations based on those errors, and that plaintiffs, as authors, must have known that the registrations were inaccurate. The court therefore invalidated plaintiffs’ registrations under 17 U.S.C. § 411(b)(1). Plaintiffs appealed, arguing that the district court failed to require a showing of scienter before invalidating their copyright registrations.
The Eleventh Circuit held that the district court misapplied the law by invalidating the copyright registrations without a showing of intent to defraud the Copyright Office. The court explained that the district court erred in considering the affirmative defense of registration validity sua sponte, and that defendants had waived the defense by failing to raise it in their answer. The court nevertheless addressed the standard for invalidating a copyright registration, which is a prerequisite to filing a copyright infringement claim. It held that in order to invalidate a registration for fraud on the Copyright Office (1) the application must contain inaccuracies, (2) the inaccuracies must be material and (3) the applicant must have intentionally or purposefully concealed accurate information.
The Eleventh Circuit held that while the district court correctly found that the registrations contained material inaccuracies, it failed to require a showing of scienter before invalidating a registration based on fraud on the Copyright Office. The court explained that unintentional error is a defense to fraud on the Copyright Office, and it found that plaintiffs had made innocent good-faith mistakes in their registration applications. Indeed, there was no dispute that plaintiffs were the authors of “Hustlin’,” that they validly collect royalties for the musical composition and that they did not attempt to deceive the Copyright Office. None of the mistakes in the copyright registrations were made intentionally, and they were therefore insufficient to invalidate the registrations. The court found that plaintiffs met the burden for establishing a prima facie case of ownership and copyright validity, and remanded the case for further proceedings.