Intellectual property law.

• Author: Ehrenpreis, Noah
• Position: Copyright registration requirements

Frustrating the Purpose of the Copyright Clause: First Circuit Restrictively Interprets Copyright Registration Requirements--Torres-Negron v. J & N Records, L.L.C., 504 F.3d 151 (1st Cir. 2007)

Intellectual property rights in musical works theoretically arise at the moment of creation. (1) The ability to enforce these rights in the face of infringement, however, requires that artists fulfill specific registration requirements with the United States Copyright Office; this includes submitting a "copy" of the original piece. (2) In Torres-Negron v. J & N Records, L.L.C., (3) the United States Court of Appeals for the First Circuit, addressing a matter of first impression, considered whether a copy of a song made without referencing the inceptive recording or lyric sheet qualifies as a "deposit copy" for registration purposes. (4) Answering in the negative, the First Circuit determined that without some tangible reference to the original work, recordings constitute "reconstruction[s]" rather than copies, the former of which fails to satisfy the registrational prerequisite required to confer jurisdiction over an infringement action. (5)

Around 1992, Fernando Torres Negron, a Puerto Rican schoolteacher and songwriter, created and contemporaneously recorded the music and lyrics to a song entitled Noche de Fiesta for a local meringue band. (6) The band's leader, Rubin Canuelas, retained the original cassette recording of the song as well as the inceptive handwritten copy of the lyrics, never to be seen by Negron again. (7) When the song caught the attention of Antonio Rivera, a more prominent member of the Puerto Rican music industry, Negron granted permission to record the song with Rivera's band, Gozadera. (8) In 1993, Gozadera released an album containing two versions of Noche de Fiesta-one original and one remixed--both of which credited Negron as the song's author. (9) Negron later bought a copy of the album to share with his family and wrote a clean copy of the lyrics for his records. (10)

Initially, Rivera distributed the album exclusively in Puerto Rico and paid Negron nominal royalty payments totaling $900. (11) Unbeknownst to Negron, however, Rivera sold distribution rights for the continental United States to J & N Records Distributors, Inc. (J & N), providing J & N with the master sound recording of the album. (12) In 1994, J & N nationally distributed an identical sound recording in an album bearing the same name. (13) That same year, J & N also released a meringue compilation album containing the same recording of Noche de Fiesta. (14) Lastly, J & N released an anniversary compilation album in 1999 also containing Noche de Fiesta. (15)

The nationwide success allegedly came to Negron's attention sometime in 2001 or 2002, at which point he promptly applied for copyright protection with the United States Copyright Office. (16) Included in his application was a recent copy of Noche de Fiesta recorded from memory, referencing only the Gozadara recording he purchased in 1994 and the clean lyric sheet he made shortly thereafter. (17) Negron then filed two separate infringement actions, later consolidated, in the United States District Court for the District of Puerto Rico. (18) After a bifurcated trial, a jury awarded Negron $400,000 specifically from J & N as a result of its unauthorized exploitation of Noche de Fiesta. (19) Subsequently, however, the district court granted J & N's renewed motion for judgment as a matter of law, reasoning that without first-hand reference to the original, no reasonable jury could have determined that Negron's "reconstruct[ed]" recording constituted a "deposit copy" for registration purposes. (20) Following cross-appeals by both parties, the First Circuit affirmed, relying on persuasive authority from several sister circuits. (21)

Article I, Section Eight, Clause Eight of the United States Constitution--commonly known as the Copyright Clause-expressly empowers Congress "to promote the Progress of ... useful Arts, by securing for limited Times to Authors ... the exclusive Right to their ... Writings." (22) The Supreme Court routinely interprets this clause as an affirmative command to encourage the continuous flow of creativity and original thought by offering limited, yet potentially lucrative, economic incentives for contributors to the general pool of public knowledge. (23) The "limited" nature of the protection is predominantly temporal; however, Congress and the judiciary have historically recognized additional encumbrances on absolute ownership, namely carving out certain "fair use[s]" of copyrighted material. (24) Durational limitations protect against monopolies, which in turn encourage each member of society to contribute new and original ideas to the public coffers. (25) "Fair use" limitations merely reflect "built-in First Amendment accommodations," allowing the use of protected works for education, news reporting, and other societally beneficial purposes. (26) Thus, the limitations on exclusive control merely calibrate the copyright regime with the Framers' expressly-articulated purpose: "promot[ing] ... Progress." (27)

While copyright protections arise the moment an original work becomes "fixed in any tangible medium of expression," the functional significance of registering with the Copyright Office is undeniable. (28) In addition to laying the jurisdictional foundation for infringement actions, complete registrations create a presumption of copyright validity. (29) Given the harsh consequences associated with registrational failures, courts-absent fraud-commonly apply flexible standards regarding "immaterial mistakes" in copyright applications. (30) When several parties contest authorship in a copyright dispute, however, courts routinely test their respective claims by examining the authenticity of the deposit submissions. (31) In those instances, courts look to whether the deposit copy tangibly references the original; however, depending on the circumstances, valid copies can derive from other valid copies, and thus the inceptive document is not always necessary. (32) Essentially, this process serves an authenticating function, testing the sincerity--i.e., bona fides--of the registrants' asserted authorship rights. (33)

Procedurally, this "referencing-the-original" component of the deposit-copy requirement has its underpinnings in the best evidence rule. (34) In Seiler v. Lucasfilm, Ltd., (35) the Ninth Circuit first promulgated the notion that "reconstructed" renditions are inadmissible in infringement actions where factual questions as to authorship are in dispute. (36) Aptly recognizing unlimited potential for fraudulent infringement claims, Seiler initiated the requirement to produce direct evidence verifying the copy's authenticity--i.e., dating creation back to some time before the alleged infringement. (37) Subsequently, in Kodadek v. MTV Networks, Inc., (38) the Ninth Circuit relied on Seiler to dispose of a factually similar infringement action; this time, however, the court subtly recharacterized the issue, making it a registrational requirement rather than an evidentiary one. (39) In effect, this reclassification prevents infringement actions from reaching the merits if the deposit copy is unauthenticated because it links the requirement to the court's subject matter jurisdiction over the suit. (40) The Sixth Circuit in Coles v. Wonder, (41) the only other circuit that addressed this issue, adopted Kodadek's central holding in an authorship dispute over Stevie Wonder's song, For Your Love. (42)

In Torres-Negron v. J & N Records, L.L.C., the First Circuit determined that in order to obtain a copyright registration--and consequentially institute an infringement action--the deposit copy must, without exception, reference the original. (43) Finding no statutory definition, the court took a literal approach and compared the dictionary definition of "copy" to that of "reconstruction." (44) The differentiating characteristic, according to the court, is that copies inherently derive from an original while reconstructions do not. (45) Adding credibility to its distinction, the court relied on the analogous statutory construction promulgated by the Ninth Circuit in Kodadek. (46)

For the sake of consistency, the First Circuit rejected Negron's plea for a more flexible interpretation given his undisputed status as the bona fide author of the song. (47) The court believed distinguishing...