District Court Holds Copyright Registration Invalid on Technicality

November 8, 2004. The U.S. District Court (EDPenn) issued an opinion [17 pages in PDF] in Gallup v. Kenexa, a copyright infringement case in which the District Court granted summary judgment to an alleged infringer on the basis that the copyright registration was invalid because the attached copy of the work was not the original, but rather a slightly modified revision.

The opinion offers defense counsel for pirates and infringers additional arguments and authority for defeating or delaying copyright infringement actions based upon technical defects in the registration of the copyright. However, in the context of copyrights for web sites, blogs, web pages, and other digital works, this and related opinions are a bonanza for infringers.

Neither the Copyright Act, nor the Copyright Office's regulations, provide any clear guidance regarding what is required to register such works. Hence, any registration will be subject to the argument that it is technically deficient, and therefore invalid. There is no way of knowing at the time of registration whether the manner registration will ultimately be held to be invalid for technical defects.

This case is Gallup Inc. v. Kenexa Corporation, U.S. District for the Eastern District of Pennsylvania, D.C. No. 00-5523, Judge Lawrence Stengel presiding.

Gallup v. Kenexa. Gallup Inc and Kenexa Corporation are competitors. They both provide management consulting for large corporations, and specialize in conducting employee surveys and assessing employee satisfaction in the workplace. Gallup developed a lengthy questionnaire for its employee surveys. It has revised this survey over time. Kenexa copied and used much of Gallup's questionnaire in its employee surveys.

Gallup filed a complaint in District Court against Kenexa alleging numerous causes of actions. However, the only cause of action at issue in the present opinion is copyright infringement. Moreover, the present opinion only addresses one defense to this cause of action -- the validity of the registration with the Copyright Office.

The District Court held that the registration was invalid because Gallup attached to its registration form a subsequent version of the questionnaire, rather than the original version.

Registration of a copyright with the Copyright Office is not required under the Copyright Act. However, registration is a prerequisite for bringing a lawsuit for infringement. See, 17 U.S.C. 411.

The Copyright Act also provides certain basic requirements for the registration of copyrights. 17 U.S.C. 408 addresses registration in general. It provides, in part, that "the material deposited for registration shall include ... in the case of a published work, two complete copies or phonorecords of the best edition". Then, 17 U.S.C. 409 addresses the application for copyright registration.

In the Gallup case the District Court relied primarily upon two Appeals Court cases, Kodadek v. MTV Networks, Inc., 152 F.3d 1209 (9th Cir. 1998) Coles v. Wonder , 283 F.3d 798 (6th Cir. 2002). See also, story titled "6th Circuit Rules in Copyright Registration Case" in TLJ Daily E-Mail Alert No. 393, March 21, 2002.

The Kodadek case is also know as the Beavis and Butthead case. After MTV had produced its popular TV show, Kodadek came forward and claimed to have drawn cartoon characters that MTV used in the TV show. He did not have an original. He drew a new copy, registered it with the Copyright Office, and backdated it.

The Coles case involves a song recorded by Stevie Wonder titled "For Your Love". Coles claimed he wrote it, and Wonder copied it. After Wonder recorded it, Coles made a new copy, backdated it, and registered it with the Copyright Office.

The Appeals Court wrote in Kodadek that "the registration deposit requirement permits `bona fide copies of the original work only ... ." The District Court in the present case followed this in holding that Gallup had to register the original of its questionnaire.

Perhaps it should be noted here that neither the words "original work", or any variation thereof, appear in 17 U.S.C. 408, 409, or 411.

The District Court could have, but did not, distinguish that facts of the Kodadek and Coles cases from the facts of the present case. In both of those earlier cases, after the commercial successes of a television show and music recording, two individuals came forward and claimed authorship of works that they claimed were copied to make that TV program and that sound recording. They created documents after the successful commercialization, and then passed those off at the Copyright Office as having been created before the commercialization. They misled the Copyright Office.

In cases of this nature, the individual plaintiffs have scant evidence of their prior authorship. There are often real questions as to whether they in fact are prior authors whose works were copied. This provides a rationale for enforcing a requirement of registering an original copy.

In contrast, in the present case, there is no dispute that Gallup authored its questionnaire -- all versions of its questionnaire. The strict registration requirement applied by the Court does not serve to filter out questionable or unprovable claims of prior authorship. The rationale that might exist in cases such as Kodedek and Coles is absent in the Gallup case.

Applying the rule of Kodadek and Coles in some cases with different facts precludes actions by actual authors who did not have the foresight to employ expert copyright lawyers to oversee all aspects of their business operations.

Moreover, in the case of new digital works, even authors who employ expert legal counsel, and attempt to scrupulously comply with registration requirements, could still have their registrations invalidated, if Courts follow cases such as Kodadek, Coles and Gallup.

Obsolescence of Registration Regulations. The Copyright Office has promulgated detailed and lengthy regulations governing how to register different types of works, forms for different types of registrations, deposits required for different types of registrations, and fees. See, 37 CFR 202.3 [PDF]. For example, there are the Form TX, Form PA, Form VA, Form SR, Form SE, Form SE/Group, and so forth.

However, neither the statute nor the Copyright Office's registration rules have been updated to take into account the invention of the internet, the web, e-mail, and the many media in which digital content can be stored, delivered, and read. The regulations address daily newspapers and other printed serials, nondramatic literary works such as novels and poetry, visual arts such as photographs and charts, works of the performing arts such as plays and movies, and other types of works. However, microfiche is the most advanced technology addressed by these regulations.

The regulations make no reference to new media. And hence, there is uncertainty as to how to register works in new media. For example, the regulations address how to register a printed daily newspaper. But, the regulations say nothing about how to register the online version of a newspaper. Is it already covered by registration of the print version? Which is the original? What about additional content published only online? Can it be registered daily? What if it is updated hourly?

Must web publishers make an additional registration every time a web site is altered? How does one submit a copy of an electronic work for deposit with the Copyright Office? Does one register a page view or the source code of a web page? If one registers the source code of a web page that displays a nondramatic literary work, must this be registered under the rules for software programs? What is the work to be registered if a browser displayed page draws content from multiple electronic files resident upon web servers?

The unanswered questions are legion. These questions create uncertainty as to how to register new media works, and whether registrations will be sufficient to maintain an action for infringement.

Copyright Office officials periodically speak at legal, policy, and professional conventions and panel discussions. They generally state that the registration rules are out of date, and provide little guidance for how to register new media works. The Copyright Office's examiners tell persons seeking registrations that they have no rules or guidelines to apply to new media. The verbal instructions dispensed by the Copyright Office's front desk personnel change as frequently as the weather.

Pending Congressional Proposals. The Congress is perhaps beginning to take note of the deficiencies of the current legal framework for registration of copyrights. There are currently a few minor changes to the law in bills working their way through the Congress. Although, these changes are primarily intended to protect copyright interests of the music and movie industries against internet based piracy.

On October 8, 2004 the Senate Judiciary Committee approved an omnibus bill comprised of a package of other bills. This composite bill is titled the "Intellectual Property Protection Act of 2004", or "IPPA". See, text of bill [44 pages in PDF], and text of bill, in HTML, with hyperlinked table of contents, and U.S. Code hyperlinks. See also, story titled "Senate Judiciary Committee Approves Large Collection of Copyright Bills" in TLJ Daily E-Mail Alert No. 994, October 11, 2004.

This bill is HR 4007 RS. The House approved its version of HR 4077, the "Piracy Deterrence and Education Act of 2004 ", by a voice vote, on September 28, 2004. See, story titled "House Approves Copyright Bill" in TLJ Daily E-Mail Alert No. 986, September 29, 2004.

 206 of the IPPA ( 106 of HR 4007 EH) amends 17 U.S.C. 411, which establishes registration of a copyright as a prerequisite for filing a claim for copyright infringement. Some pirates now obtain and distribute works before they are completed, or after completion but before the Copyright Office has issued a certificate of registration. Moreover, this early piracy can cause tremendous economic harm to the ultimate copyright holder.  206 of the IPPA allows federal prosecutors to take action against these early pirates without having to wait for the completion of the registration process.

Also, 602 of the IPPA amends 17 U.S.C. 411, by adding a new subsection that provides that "A certificate of registration shall satisfy the requirements of this section and section 412 irrespective of any inaccurate information therein, unless -- (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration."

Sen. Orrin Hatch (R-UT) stated when he introduced the bill that first included this language that "Some accused infringers have tried to avoid liability for statutory damages by challenging the accuracy of the information in copyright registrations; this bill clarifies that courts should resolve such challenges by applying the existing judicial doctrine of fraud-on-the-Copyright-Office." See, Hatch release. See also, story titled "Sen. Hatch Introduces Bill With Numerous Amendments to Copyright Act" in TLJ Daily E-Mail Alert No. 791, December 3, 2003.

However, there are no bills pending that would amend the registration sections of the Copyright Act to address how to register works in new media.

Delay in Raising Defense of Defective Registration. There is another part of this opinion that benefits infringers. Kenexa did not raise this defense in its answer. It waited almost four years, until the pre-trial conference on the eve of trial to raise this issue in a tardy motion for summary judgment.

The District Court could have disallowed the motion because of its timing, based upon some theory of waiver or delay. Nevertheless, the Court allowed it, because the issues raised "concern the very basis for this copyright action." Such a precedent encourages defense counsel to engage in dilatory tactics.

Disclosure. The author of this article is a copyright holder whose copyrights are frequently infringed. Readers may wish to take this into consideration when assessing the objectivity of any article in Tech Law Journal pertaining to protection of copyrights in literary works.