FILLING OUT A COPYRIGHT APPLICATION: Some Legal Implications
Ivan Hoffman, B.A., J.D.
Think filling out a copyright application is a “slam dunk?” Maybe not. And guessing wrong could cost you your rights of registration (read “Do I Need To Register My Copyrights?” ) and many tens if not hundreds of thousands of dollars in legal fees and related costs.
A recent case highlights the issues. In Dr. Seuss Enterprises, L.P. vs. Comicmix, LLC, et. al., the trial court in the United States District Court for the Southern District of California was faced with an issue that frankly comes up more often than not as it deals with a somewhat confusing section of the various copyright forms. And the key question in this case was whether or not the copyright applications for “Oh, the Places You’ll Go!” (“Go!”) and “The Sneetches and Other Stories” (“Sneetches”) were based on inaccurate information and if so, whether the Register of Copyrights should refuse registration.
Section 411 (b) (2) of the Copyright Act states in part:
(b)(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—
the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
These were the facts in summary form as explained by the Court:
Dr. Seuss, aka Theodor Seuss Geisel, wrote children’s books between 1937 and 1990. Dr. Seuss also wrote and illustrated stories published in Redbook magazine in the 1950s, including “The Sneetches” in the July 1953 issue and “The Zax” in the March 1954 issue. (MTN 9.) The copyright notices in these two issues of Redbook identify the publisher, McCall Corporation (“McCall”), as the proprietor of the copyrights. (ECF No. 57-4.) Defendants allege Dr. Seuss did not separately obtain a copyright registration for either story or renew the copyright for either story. (MTN 9-10.)
One of Dr. Seuss’s books at issue in the present Motion is The Sneetches and Other Stories which was published in 1961. The first two stories in the book are “The Sneetches” and “The Zax” which Defendants allege are derivative works “substantially based on the stories published in Redbook in July 1953 and March 1954, with more illustrations and with the texts revised and expanded.” (Id. at 10.) Nothing on the copyright page of the Sneetches references the Redbook stories. (Id.) When Dr. Seuss applied to register the copyright for Sneetches, he did not inform the Copyright Office of the Redbook stories. (See ECF No. 57-7 (copyright application for Sneetches).) Dr. Seuss also did not inform the Copyright Office of the stories when he renewed the application for Sneetches in 1989. (MTN 11.) In contrast, as Defendants note, when Dr. Seuss registered for a copyright in Yertle the Turtle and Other Stories three years after he registered Sneetches, he stated on the application: “Approximately one-third of the illustrations in this volume are new and the text of the three stories (previously published in Redbook Magazine and copyrighted) has been slightly changed throughout.” (See ECF No. 57-9, at 1.)
Another short work written by Dr. Seuss is “The economic situation clarified: A prognostic re-evaluation” (hereinafter, “Economic Situation”), first published in the June 15, 1975 issue of The New York Times Magazine. The New York Times obtained a copyright for the collective work as the owner, (ECF No. 57-10), and obtained a renewal registration in the collective work in 2003. “Economic Situation” is a short work printed on a background image. The image, with changes, appears in Go! (See MTN 12, 14 (artwork compared).) When Dr. Seuss applied to the Copyright Office to register the copyright in Go!, he did not reference “Economic Situation” in the application.
So the issue presented was whether, when Dr. Seuss and Dr. Seuss Enterprises, LP (“Seuss”) filled out the copyright applications for these works, the failure to note that the claims were based on previously published works rendered the copyright applications defective warranting refusal of the registrations.
The legal position of Seuss was that there was no inaccuracy in either application because (i) the material from the prior works comprised an insignificant portion of the books that were the subject of the applications; (ii) that it was not required to disclose re-use of these prior works because they were authored by the same party applying for the copyrights; and (iii) that the defendants did not prejudicially rely on the said omissions and those omissions were not part of any effort to fraudulently conceal the facts about the prior works.
As to “Sneetches,” even though Redbook was the initial copyright claimant as to the compilation, Seuss said that Redbook had assigned the copyright in the “Sneetches” work to Dr. Seuss and that Dr. Seuss later filed a copyright application. At the time of filing, line 5 of the copyright application stated:
“If any substantial part of this work has been previously published, give a brief general statement of the new matter in this version. New matter may consist of compilation, translation, abridgment, editorial revision, and the like, as well as additional text or pictorial matter.”
Dr. Seuss left this line blank.
As to “Economic Situation” and “Go!,” Seuss agreed that the New York Times Company was the copyright proprietor of the collective work but argued that Dr. Seuss was the copyright proprietor of the individual contribution to that collective work and as such, retained the ownership of the copyright in that individual contribution. Section 201 (c) of the Copyright Act states:
Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution.
Seuss agreed that one of the illustrations in “Go!” was “based upon” an illustration in “Economic Situation.” Seuss did not dispute that Dr. Seuss filed an application in 1990 to register the copyright in “Go!” and the copyright was issued. Dr. Seuss also agreed that the copyright application for “Go!” did not disclose “Economic Situation.”
The Court went on to discuss one of the key issues: whether an applicant has to disclose a prior work that the work being applied for is based upon IF that prior work was authored by the applicant.
The law is somewhat divided as to whether the author is required to disclose prior works on a copyright application even if those prior works were created by the author himself. Under 17 U.S.C. § 409(9), "[t]he application for copyright registration . . . shall include . . . in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered." Some courts have held disclosure is not required if the prior work was created by the same author. The court in Frank Betz Associates, Inc. v. J.O. Clark Construction, LLC, No. 3:08-cv-159, 2010 WL 2253541, at *11 (M.D. Tenn. May 30, 2010), held "[t]he issue raised by § 409(9) is whether and to what extent the derivative design incorporates elements designed by someone else." Where the evidence indicates that plaintiff created derivative designs based on its own original designs, "the concerns that § 409(9) raises are not implicated." Id. Similarly, the court in Robert L. Stark Enterprises, Inc. v. Neptune Design Group, LLC, No. 1:16 CV 264, 2017 WL 1345195, at *9 (N.D. Ohio Apr. 12, 2017), stated "[t]o the extent defendant owns a valid copyright in [the prior] plans, the Court finds that on the facts of this case, the failure to disclose the plans as pre-existing material when registering later works, standing alone, would not invalidate the subsequent registration." The court reasoned, "[a]s the copyright would have simply incorporated plans created by defendant, its failure to identify those plans as pre-existing materials does not implicate Section 409(9) of the Copyright Act." Id.; see also Dorchen/Martin Assocs., Inc. v. Brook of Cheboygan, Inc., No. 11-10561, 2012 WL 4867608, at *6 (E.D. Mich. Oct. 15, 2012) (finding that the plaintiff was the author of the prior plan, which was used to create the new plan, and "[t]o deny Plaintiff protection for that plan, simply because it failed to identify an earlier version it created and incorporated, would contravene the purpose of rule 409(9)").
In contrast, other courts and scholars have held the opposite. See Lennar Homes Tex. Sales & Mktg., Ltd. v. Perry Homes, LLC, 117 F. Supp. 3d 913, 925 (S.D. Tex. 2015) ("Even if the registrant owns both the derivative work and the underlying work, § 409(9) still requires disclosure."); see also William F. Patry, Patry on Copyright § 17:112 (2015) (stating it is "incorrect that applications need not disclose in Space 6 [of the copyright application] that the work is a derivative work if the preexisting work is also owned by the applicant"). Indeed, as explained in this treatise:
The purpose of disclosure on Space 6 is twofold: to permit the Copyright Office to determine whether the new material is sufficient to support the derivative registration, and to place on the public record a clean separation of the original, preexisting work from the derivative work so that copyright in the original work is not impermissibly extended through successive registrations for undisclosed variations.
Id. Further, the current edition of the Compendium of U.S. Copyright Office Practices states "[t]he U.S. Copyright Office has a longstanding practice of precluding previously published material from a claim in a collective work or derivative work, even if the author of the collective work or derivative work is the author of the previously published material and owns all of the rights in that material." U.S. Copyright Office, Compendium of U.S. Copyright Office Practices, § 1008.2 (3d ed. 2017) (hereinafter "Compendium").
The Court agrees with the latter determinations. The purpose of the statute requiring disclosure is better served when disclosure is made whether the previously published material was copyrighted and/or written by the author or by a third party. It is immaterial whether Dr. Seuss or another party owned the copyrights for the Redbook stories and "Economic Situation."
But the Court found that the prior work as to “Sneetches” did not form a “substantial” part of the work being registered and thus the application in this regard was not inaccurate.
As to “Go!” the Court found there were several issues.
The first issue was the amount of the prior work included in the work sought to be registered. The Court concluded that of the 25 illustrations in “Go!,” only 1 was based upon (i.e. was a derivative work of) a work that appeared in “Economic Situation” and as such, it did not have to be disclosed and that as a result, this did not create an “earlier version” of the work sought to be registered. In other words, although “Go!” was a derivative work based upon the work that appeared in “Economic Situation,” because the work that appeared in “Economic Situation” did not form a “substantial part” of the work called “Go!,” it did not have to be declared as an “earlier version.”
However, keep in mind, that the rules may have changed now.
Implications For Today’s Forms
In today’s TX form, the operative section is space 6 which calls for explanations as to previously published works and material added to the work. (similar provisions exist in the other kinds of forms such as SR, VA etc. and you should read the instructions for the appropriate form carefully). The instructions for the TX form state:
General Instructions: Complete space 6 if this work is a “changed version,” “compilation,” or “derivative work” and if it incorporates one or more earlier works that have already been published or registered for copyright or that have fallen into the public domain. A “compilation” is defined as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” A “derivative work” is “a work based on one or more preexisting works.” Examples of derivative works include translations, fictionalizations, abridgments, condensations, or “any other form in which a work may be recast, transformed, or adapted.” Derivative works also include works “consisting of editorial revisions, annotations, or other modifications” if these changes, as a whole, represent an original work of authorship.
Preexisting Material (space 6a):For derivative works, complete this space and space 6b. In space 6a identify the preexisting work that has been recast, transformed, or adapted. The preexisting work may be material that has been previously published, previously registered, or that is in the public domain. An example of preexisting material might be: “Russian version of Goncharov’s ‘Oblomov.’”
Material Added to This Work (space 6b):Give a brief, general statement of the new material covered by the copyright claim for which registration is sought. Derivative work examples include: “Foreword, editing, critical annotations”; “Translation”; “Chapters 11–17.” If the work is a compilation, describe both the compilation itself and the material that has been compiled. Example: “Compilation of certain 1917 speeches by Woodrow Wilson.” A work may be both a derivative work and compilation, in which case a sample statement might be: “Compilation and additional new material.”
Note that the language about “substantial” is not part of these applications. The Dr. Seuss case was decided based on the law at the time of the filings. The situation may be different now.
As to “prior registrations,” the instructions in today’s TX form for Space 5 read:
General Instructions: The questions in space 5 are intended to show whether an earlier registration has been made for this work and, if so, whether there is any basis for a new registration. As a general rule, only one basic copyright registration can be made for the same version of a particular work. [emphasis added]
Same Version: If this version is substantially the same as the work covered by a previous registration, a second registration is not generally possible unless: (1) the work has been registered in unpublished form and a second registration is now being sought to cover this first published edition; or (2) someone other than the author is identified as copyright claimant in the earlier registration, and the author is now seeking registration in his or her own name. If either of these two exceptions applies, check the appropriate box and give the earlier registration number and date. Otherwise, do not submit Form TX. Instead, write the Copyright Office for information about supplementary registration or recordation of transfers of copyright ownership.
Changed Version: If the work has been changed and you are now seeking registration to cover the additions or revisions, check the last box in space 5, give the earlier registration number and date, and complete both parts of space 6 in accordance with the instructions below. [emphasis added]
Previous Registration Number and Date: If more than one previous registration has been made for the work, give the number and date of the latest registration.
So as you can see, there is a relationship between the information required under Space 5 and Space 6.
So it turns out that filling out a copyright application is not a “slam dunk.” Given the consequences for guessing wrong, you should consult with an attorney experienced in copyright law. Preventive law is almost always better than remedial law. One of my “Hoffman-isms” is “Help Me Is Almost Always Cheaper Than Fix Me.” Read “Hoffman-isms: 35 Additional Words That Can Help You Make Money” on my site. Click on “Articles About Being An Entrepreneur.”
Copyright © 2018 Ivan Hoffman. All Rights Reserved.
This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. You should not rely on this article in any manner whatsoever and you should not draw any conclusions of any sort from this article. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States laws but the laws of other countries may be different. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.
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