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COPYRIGHT REGISTRATION AND DERIVATIVE WORKS
By Jonathan Hudis and Amy C. Sullivan [1]
When should you advise a client to register a derivative work with the United States Copyright Office? The answer may be any time you plan to enforce the client's rights in court.
I. REGISTRATION REQUIREMENT
Although copyright protection attaches to an author's original work of authorship at the moment it is created,[2] an owner of a copyright in a United States work[3] must comply with the formalities of registration to file a lawsuit claiming infringement of that work. In other words, while registration is not a condition for obtaining a valid copyright, it is a prerequisite to enforcing that right in court.
Registration of a work is effected by submitting a completed application for registration, along with the requisite fees, to the Register of the United States Copyright Office. The author, or his representative, must also deposit copies of the work with the Library of Congress.[4] Once a work has been registered with the United States Copyright Office, the copyright owner may bring an action for infringement, including allegations that occurred prior to registration.[5] However, a work must be registered before an infringement occurs in order to seek recovery of statutory damages and attorneys fees.[6]
Besides being a technical condition precedent to federal jurisdiction, registration serves other practical purposes. The primary substantive benefit to registrants is that registration within five years of a work's initial publication date constitutes prima facie evidence of the validity of the copyright, and of the facts stated in the Certificate of Registration.[7] Registration also provides notice to the public by describing precisely those materials subject to protection under the copyright laws.[8]
While registration is required to bring a lawsuit claiming that an original work of authorship has been infringed, what is less clear is whether a derivative work must be the subject of an independent registration as a prerequisite to suit. Because case law on the issue is sparse and there is no clear majority rule, the safest decision always will be to register a derivative work prior to initiating suit.
II. DERIVATIVE WORKS
A derivative work is one that is based, in whole or in part, on a pre-existing work (or numerous works). However, the new material included therein must amount, in and of itself, to an "original work of authorship."[9] Derivative works are entitled to copyright protection so long as the derivative work is sufficiently distinct from the original to be considered a "new work."[10] The most common examples of derivative works are motion pictures based on plays or novels, translations of books or other literary works into different languages, and new musical arrangements based on preexisting musical scores.
The copyright in a derivative work extends only to that portion of the derivative work that is new.[11] Although a derivative work author usually has been authorized, through license, to incorporate the previous work into his derivation, he does not gain thereby a copyright in any preexisting material.[12]
There is a tension between these two requirements for derivative works - i.e., that they substantially borrow from an original work to the extent that the derivative work would be considered infringing without the permission of the original work author, and at the same time contain sufficiently original material to qualify for independent copyright protection.[13] This is the same tension that underlies all of copyright law - creating a delicate balance that permits creativity to flourish through the free flow of ideas, while maintaining financial incentives for authors to create by prohibiting copying of the expression of those ideas.
Section 103 of the Copyright Act reflects this balance in permitting an existing work to serve as a foundation for the creation of new and sufficiently original derivative works. The question of how to treat the resulting derivative works under section 411(a), which requires "registration of the copyright claim," has been addressed by the courts in at least three ways.
III. SEPARATE REGISTRATION REQUIRED FOR DERIVATIVE WORKS
The U.S. Court of Appeals for the Sixth Circuit recently joined the Fifth Circuit Court of Appeals in holding that an action claiming copyright infringement of a derivative work requires that the derivative work be separately registered with the United States Copyright Office. In Murray Hill Publications Inc. v. ABC Communications Inc.,[14] the Sixth Circuit Court of Appeals held that the trial court was without jurisdiction to determine whether plaintiffs' musical composition was infringed, because the author failed to obtain a copyright registration for the composition as a derivative work.
In Murray Hill, Robert Laurel, a song-writer, composed a song for his friend J.P. McCarthy, a well-known radio disc jockey in Detroit, Michigan. For several years, McCarthy opened his show with his "theme" song, which included the simple lyrics, "J.P., J.P., J.P., J.P., J.P. McCarthy." The song was a derivative work based upon Laurel's pre-existing musical composition titled Jeannette. The new work, renamed J.P.'s Theme, was comprised of the Jeanette melody, but included newly added "voices, horns and lyrics."[15] Laurel obtained a copyright registration for the original work Jeanette in 1986, but did not register J.P.'s Theme.
McCarthy died in 1995. Following his death, McCarthy's radio station broadcast a tribute to celebrate McCarthy's many years on the radio and to mourn his loss. The tribute prominently incorporated J.P.'s Theme. Notably, the radio station later "packaged" the successful tribute show and sold approximately 400,000 copies.
Through his production companies, Murray Hill Publications and Rosary Take-One Productions, Laurel sued the radio station, owned by defendant ABC Communications. Plaintiffs' claim for copyright infringement asserted that the exclusive license Laurel granted to McCarthy expired upon McCarthy's death, and that the radio station's tribute included the unauthorized reproduction of the copyrighted work, J.P.'s Theme, in violation of 17 U.S.C. § 106.
The Sixth Circuit Court of Appeals made short shrift of these facts, finding that because Laurel never registered the derivative work, J.P.'s Theme, the trial court was without jurisdiction to decide the case. The Sixth Circuit based its holding on the literal language of the Copyright Act and Congress' purpose in mandating formal registration as a prerequisite to suit. The court acknowledged a split of authority on the issue of whether the registration of a derivative work is a requirement for litigation.
The Murray Hill court emphasized that the copyright interest in a derivative work covers only original material under section 103 of the Copyright Act, and characterized the copyright granted in the derivative musical work as "distinct from the preexisting work."[16] The Sixth Circuit concluded that Congress, in requiring registration as a prerequisite to suit, envisioned separate registration requirements for two distinct works - one for the original and a second for the derivative work - and that this approach was consistent with the purpose of the registration requirement to "add clarity and certainty to the enforcement of copyrights."[17]
While the rule adopted by the Sixth Circuit in Murray Hill precludes maintaining an action for infringement of a derivative work that was not separately registered, arguably litigation still can be pursued for infringement of the original work, presuming the copyright in the original material was registered. For example, in Creations Unlimited, Inc. v. McCain,[18] cited for support in Murray Hill, the district court was held without jurisdiction to consider a copyright holder's claim of infringement of its T-shirt design by competing shirt vendors, where the artist had registered only the original black-and-white line drawings of those designs, and not the T-shirt designs themselves. However, the Creations court did allow the infringement claims to proceed as to the plaintiff's original work line drawings.
In a similar case not cited in Murray Hill, plaintiff claimed his televised comedy performances were infringed by comedy sketches aired on Saturday Night Live. The court limited the infringement action in Novak v. National Broadcasting Co. to plaintiff's scripts for the television sketches, after the court determined that plaintiff had failed to register the derivative television performances.[19]
IV. NO SEPARATE REGISTRATION REQUIRED FOR DERIVATIVE WORKS
Other courts, including the Eleventh Circuit Court of Appeals, take the view that an owner of a copyright registration for an original work should be permitted to sue for infringement of his derivative work without a separate registration. These courts proceed on the theory that (1) the original work author has the exclusive right to sue for infringement of his work; (2) a derivative work, by definition, includes the work that would be infringing without the consent of the original rights holder; and therefore (3) the original author's ability to sue on the original work carries over to any derivative work.[20]
In Lamb v. Starks,[21] for example, defendants admittedly copied an unregistered, two-minute movie trailer that was created for publicity purposes prior to completion of the finished motion picture. The motion picture subsequently was registered. The United States District Court for the Northern District of California held that because the trailer displayed individual images of the movie, it constituted a derivative work (though technically completed before the motion picture). The court relied on the exclusive right of an author to incorporate copyrighted material into a derivative work and found infringement of the derivative movie trailer, even in the absence of a separate registration.
This approach diverges from the Fifth and Sixth Circuits' reasoning that a derivative work is a separate work with a separate copyright that does not "affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material,"[22]and to which the registration requirement separately applies. Foregoing the registration requirement for derivative works may blur the distinction between an author's exclusive right to reproduce original material and the separate requirement to register a derivative work prior to filing suit.[23] However, this is a line of case law to which savvy practitioners must be alert.
V. SHARED AUTHORSHIP AND REGISTRATION
When an original author and an author of a derivative work are different, their respective rights are generally addressed by a contract between them.[24] In these situations, it is clear that two works have been created, requiring separate copyright registrations to preserve those rights in court. A more difficult question is presented when the authorship of the original and derivative works is shared.
Some courts, including the Second Circuit Court of Appeals, have addressed the issue of shared authorship through a "compromise position" holding that a derivative work need not be registered where the preexisting work was registered and the plaintiff is the copyright owner of both the derivative and the original works.[25]
Similarly, courts have permitted suits to proceed on claims that the underlying unregistered original work was infringed where the derivative work was created by the same author as the original underlying work.[26] The support for this line of cases is that registration of the subsequent work subsumes the original, unregistered component parts.
VI. PRACTICAL CONSIDERATIONS IN REGISTRATION AND PLEADING
Basic copyright tenets establish a separate copyright for each new work based on the contribution of each author. The Murray Hill rule requires a corresponding registration for each discrete work. The cautious practitioner, therefore, should register a client's derivative work before pursuing an infringement case that may involve any elements of that work.
Registration of a derivative work is wise even if the underlying work is registered and components of the original work also are at issue in the case. However, practitioners should not overlook claiming infringement of both the registered original and derivative works in order to maximize the benefits of registration, particularly if the author(s) are the same or their interests aligned or the facts otherwise permit.
The practitioner representing a plaintiff pursuing infringement of an unregistered derivative work, when the original work was registered, still may have legal grounds to proceed, depending on the forum. The soundest arguments supporting such a claim will include (i) a careful analysis of the scope of the original registration, (ii) the precise matter the defendant copied, (iii) the nature and extent of the authorship of the original and derivative works, and (iv) the rationales for registration and protection of original versus derivative works.
This article appeared in an edited version in IP Worldwide, May 2002.

ENDNOTES
[1] © 2001, J. Hudis and A.C. Sullivan. Jonathan Hudis is a Member of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., located in Arlington, Virginia. Amy C. Sullivan is an Associate with the firm. Mr. Hudis and Ms. Sullivan practice in the firm's Trademark and Copyright Practice Group.
[2] 17 U.S.C. § 408(a). This article addresses works created on and after January 1, 1978, the effective date of the Copyright Act of 1976.
[3] The Copyright Act of 1976 states that "no action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a). For the definition of a "United States work" see 17 U.S.C. § 101. For the remainder of this article "United States work" and "work" will be used interchangeably.
[4] 17 U.S.C. §§ 408(a) and (b).
[5] See International Trade Management, Inc. v. United States, 553 F. Supp. 402, 402 (Cl. Ct. 1982). Though technically a prerequisite to suit, some courts permit a registration to be perfected, and in certain cases filed, subsequent to the commencement of an infringement action, and allow a plaintiff to later amend the Complaint in order to allege the jurisdictional filing requisites after registration is perfected. See ISC-Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309 (N.D. Ill. 1990).
[6] 17 U.S.C. § 412.
[7] 17 U.S.C. § 410(c).
[8] 17 U.S.C. § 205(c).
[9] Id.
[10] 17 U.S.C. § 101.
[11] See Durham Indus., Inc. v. Tomy Corp, 630 F.2d 905, 909 (2d Cir. 1980).
[12] See Roy Export Co. Establishment v. Columbia Broadcasting Sys., Inc., 503 F.Supp. 1137, 1149 (S.D.N.Y. 1980), aff'd 672 F.2d 1095 (2d Cir. 1982). The second prevalent scenario is a derivative work based on a work already in the public domain.
[13]See MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHTS, VOL. 1, § 3.01 (2001) (discussing the requirement that the material which is borrowed cannot consist merely of ideas in order to qualify as a derivative work).
[14] 2001 U.S. App. LEXIS 19268 (6th Cir. 2001).
[15] Id. at *3.
[16] Id. at *11.
[17] Id.
[18] 112 F.3d 814 (5th Cir. 1997).
[19] Novak v. National Broadcasting Co., 716 F. Supp. 745, 750-51 (S.D.N.Y. 1989); see also John Alden Homes, Inc. v. Kangas, 142 F. Supp. 2d 1338, 1340 (M.D. Fla. 2001).
[20] Montgomery v. Noga, 168 F.3d 1282, 1291-93 (11th Cir. 1999).
[21] 949 F.Supp. 753 (N.D.Ca. 1996).
[22] 17 U.S.C. § 103(b).
[23] As was evidenced by the Lamb court's interchangeable use of the terms "uncopyrighted" and "unregistered" in discussing the author's rights in the derivative movie trailer. Lamb v. Starks, 949 F.Supp. 753, 755-56.
[24] See MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHTS, VOL. 1 3.04.
[25] See Streetwise Maps, Inc. v. Van Dam, Inc., 159 F.3d 739, 747 (2d Cir. 1998); see also Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2000).
[26] See In re Indep. Serv. Orgs Antitrust Litig., 964 F.Supp. 1469, 1473 (D. Kan. 1997). Although courts employing this third line of reasoning have not clearly distinguished the cases, they have adopted a similar approach for collections of preexisting works. See Religious Tech. Ctr. v. Netcom On-Line Communications Servs., Inc., 923 F.Supp. 1231, 1247 (N.D. Cal. 1995).
© 2000-2003 Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

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