IP Law Daily, COPYRIGHT—N.D. Ind.: Filed before ‘Emmanuel’ song registration obtained, infringement claim was dismissed, (May 12, 2020)

By Thomas K. Lauletta, J.D.

Prior publication within a registered collection of works did not meet the registration prerequisite for an infringement suit with respect to an individual work included in the collection.

The federal district court in South Bend, Indiana, ruled that plaintiff Vincent Ambrosetti’s copyright infringement suit against Oregon Catholic Press was improperly filed because the suit had been brought before the plaintiff’s registration of the copyright for his song "Emmanuel" had been made in accordance with 17 U.S.C. § 411 of the Copyright Act. Although "Emmanuel," with Ambrosetti’s permission, had been previously published as part of a collection of songs registered by third parties, this registration for a collective work under the Copyright Act did not satisfy the Section 411 filing requirement for the individual work, "Emmanuel." Further, the fact that the plaintiff finally had obtained the registration of "Emmanuel" prior to the court’s decision would not cure the Section 411 filing deficiency. Accordingly, the infringement suit was dismissed without prejudice (Ambrosetti v. Oregon Catholic Press, May 7, 2020, Deguilio, J.).

Plaintiff Ambrosetti authored the musical composition "Emmanuel," first published it in 1980. In 1985, "Emmanuel" was also published in a collection of works entitled "I Will Sing." A copyright registration for "I Will Sing," including "Emmanuel," was obtained on April 1, 1991. International Liturgy Publications (ILP) and Pauline Krystal Music are listed as copyright claimants on the registration and Ambrosetti is listed as the author.

Defendant Farrell composed a musical work titled "Christ Be Our Light," which was first published in 1993. Defendant Oregon Catholic Press (OCP) obtained the right from Farrell to sell, market, distribute, and license "Christ Be Our Light."

Ambrosetti filed suit in late August 2019, alleging that the defendants’ composition "Christ Be Our Light" infringes "Emmanuel" due to a "striking similarity" between the two musical compositions. On August 12, 2019, Ambrosetti filed an application for copyright registration with the U.S. Copyright Office for the individual piece "Emmanuel." At the time of filing the complaint, this application was still in process. On March 4, 2020, a Certificate of Registration was issued for "Emmanuel," listing Ambrosetti as both the copyright claimant and author. Ambrosetti filed the registration with the court on March 22, 2020, requesting that it take judicial notice of the registration.

On September 3, 2019, a week after Ambrosetti’s complaint was filed, defendant OCP filed a complaint in the District of Oregon ("Oregon Suit") seeking a declaratory judgment stating the Oregon Suit was first to file because the instant suit was improperly filed and that "Christ Be Our Light" does not infringe "Emmanuel."

Responding to Ambrosetti’s infringement action brought in this case, OCP argued that dismissal of this case was warranted because Ambrosetti’s filing of a copyright registration application for "Emmanuel" did not by itself satisfy the infringement action prerequisite of the Copyright Act, 17 U.S.C. § 411.

Although compliance with the Copyright Act’s filing requirement is not a condition of copyright protection, the court stated that it was a prerequisite to suing for infringement, which it ruled was not satisfied by Ambrosetti’s registration application filing for the individual song "Emmanuel." The court noted that even though the Ambrosetti’s registration application was submitted two weeks prior to the filing his infringement suit, the U.S. Copyright Office had not issued a registration for "Emmanuel" until March 4, 2020, nearly seven months after the infringement action was filed.

Ambrosetti argued that he had met the Copyright Act’s infringement action filing requirement because his song "Emmanuel" had, with his permission, been included in a collection of works in the "I Will Sing" book, which had been registered with the U.S. Copyright Office in April 1991. The registration listed Ambrosetti as the author, and Pauline Kystal Music and ILP as the copyright claimants.

The court concluded that the collective work "I Will Sing" registration did not provide the individual work "Emmanuel" the registration required by Section 411 because "unless the copyright owner of a collective work also owns all the rights in a constituent part, a collective work registration will not extend to the a constituent part" (Morris v. Business Concepts, Inc.). Thus, the registration of "I Will Sing" only provided the privilege of reproducing and distributing the collective work, not the individual, separate work "Emmanuel."

Concluding that no registration existed for "Emmanuel" before the filing of Ambrosetti’s infringement action, the court analyzed what effect, if any, the intervening registration of "Emmanuel" might have on the registration question. Relying on precedent in the Seventh and other circuits, the court concluded that the Section 411 requirement was a precondition to filing a claim, and that a copyright registration obtained after the filing of an infringement action does not cure a Section 411 defect that existed at filing. Here, the complaint was improperly filed and could not have been filed prior to March 4, 2020, the date the registration for "Emmanuel" was obtained. The court further concluded that allowing Ambrosetti to amend his complaint would permit an unequitable date of filing of the instant action, which would be relevant to the Oregon Suit.

The court granted defendant OCP’s motion to dismiss, without prejudice.

This case is No. 3:19-cv-00682-JD-MG.

Attorneys: Donald J. Schmid (Law Offices of Donald J. Schmid LLC) for Vincent A. Ambrosetti a/k/a International Liturgy Publications. Kathy L. Osborn (Faegre Drinker Biddle & Reath LLP) for Oregon Catholic Press.

Companies: International Liturgy Publications; Oregon Catholic Press

Cases: Copyright GCNNews IndianaNews