Businesses interested in copyrighting works should review a recent First Circuit decision making it clear that a prerequisite for a copyright is access to the original work. The court held that a reconstruction of the work was insufficient to meet the copyright law’s requirement that a deposit “copy” of the work be submitted with a copyright application. Companies intending to copyright a work should make certain that they maintain an original version or copyright protection may not be available.
Fernando Torres-Negrn wrote a song called “Noche de Fiesta” and made a tape recording of himself performing the song. Torres then gave the lyrics, written on a piece of paper, to a friend, along with the tape of his performance. He knew that the song would be played in public by his friend’s band. Torres, however, did not make a copy of the lyrics or the tape for himself, and he never saw the originals again. Over the next few years, the song ended up being performed by many groups and was included on a number of CD’s. None of these artists asked Toress’ permission to make the recordings.
When he learned about the wide distribution of his song, Torres submitted an application for registration of copyright to the Copyright Office in 2001. Because the application required a “copy” of the copyrighted work, Torres submitted a typed version of the lyrics. He also submitted a tape that he created in 2001, on which he had recorded himself singing the song and clapping the rhythm. Torres received a certificate of copyright on January 31, 2002. Torres then filed a copyright infringement action against numerous defendants in the District of Puerto Rico. The jury returned a verdict in favor of Torres against some of the defendants, including J & N Records, finding that J & N had infringed his copyright on “Noche de Fiesta.” The district court, however, granted J & N’s motion for judgment as a matter of law, ruling that Torres’ reconstruction of the lyrics and music did not comply with the “deposit” requirement of the copyright act.
In Torres-Negrn v. J & N Records, LLC, 2007 WL 2846117 (1st Cir. 2007), the First Circuit agreed. The court began its analysis by quoting 17 U.S.C. § 411(a), which states that “[N]o action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Under 17 U.S.C. § 408(b), to complete the registration process, the creator of a work must submit “a complete copy or phonorecord” of the work for which the creator seeks registration. This copy is often referred to as the “deposit copy.” The court noted that “by the time he submitted his copyright registration application, [Torres] no longer had access to either the original writing of the lyrics or the tape recording of the song.” Torres therefore submitted a reconstruction. But the court concluded that a reconstruction is not the same thing as a copy of an original for purposes of the deposit copy requirement. Citing various dictionary definitions, the court found that “a reconstruction is not a copy; a reconstruction is created without an original, whereas a copy is made from an original. Congress specified that a registration had to be accompanied by a “copy.”
Torres’ failure to include an actual copy in his registration materials was fatal to his infringement claim. The court determined that “an invalid registration (involving material errors, fraud, or an incomplete application) nullifies the federal court’s subject matter jurisdiction.” Because Torres did not submit a proper deposit copy as part of his registration, that registration was invalid. When the registration is invalid, there is no subject matter jurisdiction over an infringement claim, and it was therefore proper to enter judgment against Torres. Businesses should be aware that in the wake of this decision, federal courts will strictly enforce the deposit copy requirement.