IP Law Daily, COPYRIGHT—M.D. Tenn.: Register input sought on materiality of ‘publication’ error in song application, (Mar 29, 2023)

By Robert B. Barnett Jr., J.D.

Register of Copyrights is asked to opine only regarding whether the defendant can establish as a factual matter that the plaintiff’s application included inaccurate information.

In a copyright infringement suit involving rights in a musical work in which the parties have filed cross-motions for summary judgment, the Nashville federal district court has denied all pending motions without prejudice until it receives a response from the Register of Copyrights on whether the Register would have refused an application to register the plaintiff’s composition if she had known that the work was published rather than unpublished. The court agreed that plaintiff Lisa Brunson’s application falsely stated that the work was unpublished because it was made available for download after being posted to a religious television show, while admitting that the law on whether internet postings constitute publishing under the Copyright Act is unsettled. The court also, however, disagreed that the application falsely stated that the work was a complete work when it was a derivative work because the defendant, David Cook, failed to establish that the work was derivative (Brunson v. Cook, March 28, 2023, Richardson, E.).

Background. 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 is a musical bridge that replaced the previous bridge in “Way Maker.” Capital CMG, Inc., and David Cook, who does business as Integrity Music, were the publishers and copyright holders of “Way Maker.” Brunson, who had registered her musical bridge, filed suit for infringement against the publishers, and the publishers counterclaimed for copyright infringement and fraud on the Copyright Office.

Following discovery, the parties filed cross-motions for summary judgment. While those motions were pending, Cook and Capitol CMG filed a joint motion asking the court to issue a request to the Register of Copyrights, under 17 U.S.C. §411(b)(1), to determine whether the Register would have denied Brunson’s registration had it known of two errors in the registration in which she falsely claimed that: (1) her work was unpublished and (2) her work was a complete work rather a derivative work.

Registration. Under 17 U.S.C. §411(b)(3), a party has the right to ask the court to request an opinion from the Register of Copyrights whether it would have granted a copyright registration if it had known the true facts. Interestingly, that law contains no limitations on a party’s right to make that request of a court. Over time, however, primarily because of concerns of abuse by parties looking to delay the proceedings, the courts have imposed an obligation on the party making that request that it establish that the application contained a falsity. Although the Sixth Circuit has not yet weighed in on this topic, this Nashville federal court chose to adopt the arguments of those other courts that have imposed the obligation of proof. Thus, the court then examined whether Cook and Capitol CMG had proved that the registration falsely claimed that it was unpublished and a complete work.

Publishing. Cook and Capitol CMG argued that publishing had occurred in three ways: (1) distribution on the “Seriously?!” web series, (2) distribution of a World Harvest Church pastor’s service recorded and distributed via the “Rod Parsley TV” program, and (3) authorization of a YouTube video of her performance at a World Harvest Church 2017 camp meeting, which was later shared to Twitter and Instagram.

Because the Copyright Act was written at a time before the advent of the internet, the question of what constitutes the “publishing” of a work is complicated when it involves the internet. Examining both various cases that have considered a similar issue (which did not include the Sixth Circuit) and the Copyright Office’s Compendium of U.S. Copyright Office Practices, which was written after the advent of the internet, the court concluded that the general rule is that works made available on the internet can be “published” as the Copyright Act defines publishing. The determination would have to made on a case-by-case basis. The court also noted that the question of whether something was published or not in terms of the registration application was not a trivial distinction, as Brunson had argued.

Looking first at the web series “Seriously?!,” the court concluded that publishing did not occur. The court’s decision was primarily based on the fact that no evidence existed that Brunson’s work aired on “Seriously?!.” The images that Cook and Capitol CMG provided to the court failed to establish that Brunson’s work actually appeared on the program.

Turning next to the church service, the court reached the opposite result, finding that publishing did occur. Other courts have concluded that a work made available on the internet, in which the end user is able to download the work, constitutes publishing under the Copyright Act (Getaped.Com, Inc. v. Cangemi, 188 F. Supp. 2d 398, 401 (S.D.N.Y. 2002)). Accepting that argument, this court ruled that publishing had occurred because the work was downloadable. Cook and Capitol CMG satisfied their burden of proof by providing a screen image showing that the on-demand church services was provided on November 8, 2017, via Rod Parsley TV, and it was available for download.

Turning finally to the YouTube, Twitter and Instagram posting, the court noted that the Copyright Office’s Compendium stated that publishing does not occur if the work is merely displayed or performed online, unless the copyright owner has clearly authorized distribution. Thus, oddly enough, display of a work to the whole world may not constitute publishing, if authorization is lacking.

The primary point of these social media sites, however, the court noted, is sharing, which connotes publishing. One section of the Compendium, on the other hand, seems to indicate that publishing has not occurred until the end user retains a copy of the work. Because that definition was too situated in the time before the internet, the court chose instead to conclude, applying a different section of the Compendium, that distribution of a work occurs “when a work is made available to either streaming or download services.” Thus, the fact that YouTube, Instagram and Twitter users could not download the work was “inconsequential to the Court on the question of whether the work was published.”

As a result, because Brunson had authorized distribution, her work was “published” on YouTube, Twitter and Instagram for purposes of the Copyright Act. Cook and Capitol CMG, therefore, had sufficiently established that the registration application had falsely claimed to be unpublished when, in fact, it had been published.

Complete work. The court then turned to the second allegation, that the registration falsely claimed that it was a complete work rather than a derivative work. To support their argument, Cook and Capitol CMG pointed to the fact that the registration, which included the full song as an attachment, contained the measure notation of “56,” even though Brunson’s work consisted of only 10 measures. When the Copyright Office questioned it, Brunson removed the reference. Nevertheless, the court refused to rule that it should ask the Register on this topic because Cook and Capitol CMG failed to present an argument in their joint motion that the work was derivative. They did, the court acknowledged, provide extensive arguments in their summary judgment motion but not in their request related to the Register. Thus, the issue will not be resolved now by the Register, even though it may be addressed by this court later at summary judgment.

Knowledge. A final requirement before the court would agree to send the request to the Register was the issue of knowledge. 17 U.S.C. §411(b)(1)(A) requires that the party filing the registration do so with knowledge that it was inaccurate. In Unicolors, Inc. v. H&M Hennes Mauritz L.P., 142 S. Ct. 941 (2022), the U.S. Supreme Court said that the degree of knowledge required was “actual, subjective awareness of both the facts and the law.”

Applying that standard, the court ruled that Brunson “was aware that such availability [on YouTube, Instagram, and Twitter] constituted publication under the Copyright Act.” On her registration application, she listed the first date of publication as the date the YouTube video was posted. While it is true that a clerical error cannot demonstrate knowledge, as Brunson argued, subjective awareness is all that is required (Unicolors, 142 S. Ct. at 947). In any event, Brunson’s error was not merely a clerical error.

Proof of refusal. The court also rejected Brunson’s argument that Cook and Capitol CMG had to prove that the Register would have reached a different result in order to be entitled to the request. “It would be odd,” the court said, ‘if the court, before issuing a request to the Register were to require demonstration of the very fact that the request itself is intended to confirm or deny.” The court thus refused to impose such an obligation on Cook and Capitol CMG.

The court, therefore, granted in part and denied in part the motion to request the Register of Copyrights to advise the court if the Register would have refused registration. The court will send a request to the Register of Copyrights for an opinion whether the registration would have been granted had the Register known that the work was published rather than unpublished. All pending cross-motions for summary judgment were denied without prejudice, with the right to re-assert them after the Register responds to the request.

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., David C. Cook d/b/a Integrity Music and Osinachi Kalu Okoro Egbu.

Companies: Capitol CMG, Inc.; David C. Cook d/b/a Integrity Music

Cases: Copyright TechnologyInternet TennesseeNews GCNNews