Rich & Rich Partnership v. Poetman Records USA, Inc., et al., USDC E.D. Kentucky, May 18, 2010

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Court holds that plaintiff’s copyright registration of a derivative work is unenforceable because plaintiff did not adequately identify in the registration application the pre-existing work that the plaintiff’s work was based on or incorporated.

Plaintiff Rich & Rich Partnership created an album containing recordings celebrating the University of Kentucky basketball team. One recording on the album was a derivative work that included the former Kentucky Governor Happy Chandler singing “My Old Kentucky Home” with recorded crowd noise from the University of Kentucky’s sports arena (the “Chandler remix”). The plaintiff entered into an agreement with defendant Poetman Records to market the album. A few years after the agreement terminated, the defendant produced an album similar to the plaintiff’s album as a fundraiser for the university pep band. The defendant’s album contained the Chandler remix. The plaintiff filed suit against the defendant for, among other things, copyright infringement.

The court granted the defendant’s motion for summary judgment on the copyright infringement claim relating to the Chandler remix, holding that the plaintiff’s copyright registration was unenforceable. Although the plaintiff had a copyright registration for the album, the defendant asserted that the plaintiff’s copyright registration in the album did not state in its registration that the Chandler remix was based on Happy Chandler’s recording or even which track in the album contained a derivative work.

The Copyright Act requires that a registration for a derivative work include “an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered.” 17 U.S.C. § 409(9). In this case, the plaintiff’s copyright registration described the album as a “[c]ompilation of sound recordings of Kentucky Wildcat games and band recordings, with some new sound recording.” In response to the question on the registration form asking the applicant to “[i]dentify any preexisting work or work that this work is based on or incorporates,” the plaintiff answered “some sound recording.” As the court noted, the plaintiff did not identify Chandler’s original rendition of “My Old Kentucky Home” in its response. “The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich’s contribution to the Chandler rendition qualified as a derivative work.”

The court cited a Fifth Circuit decision that said “when an applicant knowingly fails to identify the derivative nature of the work, or the use of elements not of the applicant’s own creation, the court may decline to enforce the copyright.” Lenert v. Duck Head Apparel Co. Inc., 1996 WL 595691, at *4 (5th Cir. 1996). The court stated that courts may overlook immaterial mistakes in a registration, but the plaintiff “has neither attempted to show evidence that this was a simple mistake nor provided an explanation of why the registration was done in this manner.” The court also disagreed with the plaintiff’s argument that it has a valid copyright registration because it registered a compilation of the songs.

The court denied the defendant’s motion for summary judgment on the copyright infringement claim relating to the cover artwork on the defendant’s album which was similar to the artwork on the plaintiff’s album. The court held that the plaintiff has a valid copyright in the artwork because it introduced evidence that the creator of the artwork assigned all of his copyright in the artwork to the plaintiff and the defendant failed to show that the assignment, which apparently was lost, was not executed or that the plaintiff lost the assignment in bad faith.