A recent federal district court opinion makes it clear that a claim for infringement of an unregistered derivative work does not give rise to federal subject matter jurisdiction under the Copyright Act. The decision in Dalton-Harris Homes, Inc. v. Williams, 2007 WL 2461892 (D. Ariz. 2007), highlights the importance of registering a work that a business hopes to protect. While derivative works are generally entitled to copyright protection, if a derivative work is not itself registered, federal court jurisdiction cannot be invoked based on infringement of the derivative work alone.
The factual scenario in the case was a bit convoluted. Dalton-Ross Homes accused Williams of infringing a copyright it holds on architectural floor plans for houses. Another homebuilding company developed the “VDM Plan,” a floor plan for single-family homes, and registered it with the U.S. Copyright Office. Dalton-Ross licensed the VDM Plan from the original owner. Dalton-Ross later entered into a contract with Link for construction of a residential home, and the draftsman who prepared the plans for the Link home used the original VDM Plan as a base. There was a dispute about whether when Dalton-Ross built a home for the Conways, the draftsman also used the VDM Plan or based his plans on the Link home plans. In January of 2005, Williams hired the same draftsman to prepare plans for a home. The plans for the Williams home were based largely on the Conway home plans. Dalton-Harris alleged that because the Conway plans were derivative of the VDM plan, either directly or through use of the Link home plans, it had a cause of action for infringement under the Copyright Act.
Dalton-Harris claimed that it had a copyrightable interest because the Conway home plans were derivative of the VDM plan. A work is considered derivative if it incorporates in some form a portion of a copyrighted work. A party that reproduces a derivative work without authorization of the pre-existing work’s owner violates that owner’s copyright.
The United States District Court for the District of Arizona held that Dalton-Harris had no right to assert a claim for violation of the Copyright Act in federal court under these circumstances. Dalton-Harris’ infringement claim was premised on Williams copying the Conway home plans, an unregistered derivative of the VDM Plan. The court concluded that the registration of the VDM Plan had no bearing on whether Dalton-Harris could pursue a claim in federal court. Under section 411(A) of the Copyright Act, no infringement action may be brought until preregistration or registration of the copyright has been made. Citing this requirement, the court held that registration is a jurisdictional prerequisite to the right of a holder to enforce a copyright in federal court. Accordingly, separate registration of a derivative work is a prerequisite to bringing an action for infringement of the derivative work.
The court did note that copying an unregistered derivative may give rise to liability based on infringement of the underlying original work that has been registered. Dalton-Harris, however, was unable to demonstrate that in copying the Conway home plans, Williams also copied protectable elements of the registered VDM Plan.
The decision in Dalton-Harris demonstrates that registration of a claim on an original work does not create subject matter jurisdiction with respect to a suit for infringement of the original’s unregistered derivative. Accordingly, if a company intends to protect its interest in a derivative work, it will be necessary to also register the derivative work.