IP Law Daily, COPYRIGHT—M.D. Tenn.: Insertion into copyright protected musical composition was not derivative, (Aug 30, 2022)

By Kevin M. Finson, J.D.

The composition intended to replace the bridge in an earlier work was not derivative of that work because it was not substantially similar to the original work.

A composer’s inserted work was not derivative of the song it was inserted into, the U.S. District Court in Nashville has held. The new work was not substantially similar to the existing work, so there was no fraud in failure to identify it as such during copyright registration (Brunson v. Capitol CMG, Inc., August 25, 2022, Richardson, E.).

Lisa Brunson was a congregational worship leader and singer songwriter who registered a copyright in a composition that was inserted into the song “Way Maker” originally written and sung by Osinachi Kalu Okoro Egbu. Brunson’s work replaced the bridge in “Way Maker.” Capital CMG, Inc. and David Cook (collectively, “Publishers”) were the copyright holders of “Way Maker.” Brunson filed suit for infringement against the Publishers, and the Publishers counterclaimed for copyright infringement and fraud on the copyright office. Brunson moved to dismiss the counterclaims and to strike certain affirmative defenses.

Statute of limitations. Brunson argued that the copyright counterclaim against her was barred by the three-year statute of limitations. The Publishers argued that the discovery rule applied. The Court held that because the discovery rule was the default in claims under the Copyright Act, the Publishers were not required to affirmatively plead their date of discovery; instead, the burden was on Brunson to show that discovery of the alleged infringement occurred more than three years prior to the filing of the claim.

Derivative work. The Publisher’s sought declaratory judgment of fraud on the Copyright Office based on their allegation that Brunson filed an incomplete copy of her work with the Copyright Office. The Publisher alleged that her filing omitted a measure mark that would have showed it was only part of a longer work and that the work was derivative but not disclosed as such. The Court held that a “complete copy” of the work, as required by the applicable regulations, meant a copy of the work actually claimed. Here, that was the inserted portion written by Brunson. While this work was intended to be performed as inserted in place of the bridge in “Way Maker,” this was not the test of a derivative work, which required a substantial similarity between the two. That similarity was not alleged. As a result, the Court dismissed the declaratory judgment counterclaim.

Motion to strike. Brunson moved to strike the affirmative defenses of fair use, laches, waiver, estoppel, license/consent/acquiescence, joint authorship, joint ownership, and conduct of others, on grounds of failure to make clear the basis for the defenses. The Publishers argued that they had given fair notice of the defenses, which was all that was required. The Court held that while most of the defenses had a simple and intuitive application to the case, waiver and estoppel did not. Those two defenses were stricken on that ground. “Conduct of others” was stricken because the Court could find no support for the proposition that it was a stand-alone affirmative defense. Laches was stricken because controlling case law made it clear that laches was not available for claims brought within the three-year statute of limitations. The remaining defenses were allowed to stand.

The Case is No. 3:20-cv-01056.

Attorneys: Frank Wilbert (Butler Snow LLP) for Lisa Brunson. Barry I. Slotnick (Loeb & Loeb LLP) for Capitol CMG, Inc.

Companies: Capitol CMG, Inc.

Cases: Copyright GCNNews TennesseeNews