Formalities may not be allowed thanks to Berne, but that doesn’t stop the United States from encouraging copyright owners to register their works. With so many everyday people creating copyrighted works – photos, emails, blog posts, tweets – a question to the necessity of copyright registration arises. When should you bother registering? Jonathan Bailey over at Plagiarism Today has a great post seeking to answer this question.
Once upon a time, there were formalities…
One answer is that you should register your work if it was created back when registration was required (i.e. under the old 1909 Copyright Act). That’s something blues musician Syl Johnson learned the hard way. Although in this instance, Syl had some bigger problems.
The case, Johnson v. Cypress Hill, et al. [Johnson II], Nos. 08-3810, 09-2213 & 10-1733 (June 1, 2011), involved legendary rap group Cypress Hill and Syl’s song “Is It Because I’m Black.” Syl recorded two versions of this song, one in 1969 and one in 1972. In 2003, he sued Cypress Hill for using his song in one of their 1993 songs. As is the case with most copyright suits about hip hop tracks, the portion of the song used was small (2.5 seconds) and looped. (Not relevant, but interesting all the same.)
Syl believed that his federal lawsuit was valid based on his recollection of having registered the 1972 recording in 1997. But he ran into two problems. First, he didn’t actually register the 1972 song (other songs were contained in the registration, but not the one at issue here). Second, Cypress Hill didn’t use the 1972 recording, they used the 1969 recording. The problem with that? Sound recordings weren’t eligible for federal copyright protection until 1972. Cypress Hill: 2, Syl: 0.
Syl’s next move was to try to sue under laws that applied to his work: common law misappropriation and federal copyright infringement for a different copyright. Compositions were eligible for copyright protection in 1969 so Syl registered the work as a composition, in 2003. That is the registration he used for the basis of the federal copyright claim in his motion to amend his complaint. By this point, it was 2008, five years after the suit began and 15 years after the Cypress Hill song at issue was released. The judge denied Syl’s motion to add these claims to the case and granted Cypress Hill summary judgment. Cypress Hill: 3, Syl: 0.
Syl tried to get the court to vacate the summary judgment and just dismiss the case for lack of subject matter jurisdiction. In a nice twist, Syl argued that since he didn’t have copyright in the first place, the court didn’t have jurisdiction. Instead he got an order to pay attorney’s fees and costs for Cypress Hill, a judgment in excess of $300,000. Cypress Hill: 4, Syl: –300,000.
But wait, it turns out that was only the first half. If you’ll notice above, the case citation has the nickname “Johnson II.” All that stuff above, that’s all in Johnson I. So could Syl come back and even the score in the 2nd half?
Syl came back with a new case, Johnson II, in state court, again bringing the state law misappropriation claim. Cypress Hill had the case moved to federal court.* Once that happened, Syl tried to amend his complaint to add the composition infringement claim, basically attempting to make Johnson II exactly like what he tried to make Johnson I. It didn’t work any better the second time. The court dismissed the case with prejudice, meaning Syl couldn’t try to bring the same case for a third time. The reason: Syl’s claims were barred by res judicata. Cypress Hill: 5, Syl: still –300,000.
Syl fights hard and doesn’t give up. He appealed, and he appealed everything: the first courts grant of summary judgment, his motion for dismissal based on lack of subject-matter jurisdiction, the attorney fees and costs award, and the dismissal of his claims in the new case.
Syl lost on all four. The first court didn’t abuse it’s discretion when granting summary judgment because of the long delay in attempting to amend the complaint. The court had subject matter jurisdiction over the case because a valid copyright registration is a requirement for filing a claim but does not affect the court’s jurisdiction over the case. The fees and costs award was valid because the US Copyright Act gives the court discretion to award costs and attorney’s fees to the prevailing party in an infringement suit. And finally, dismissal of the new case was correct because the second case involved the same people, involved the same events, and the first case was decided on its merits.
Final score: Cypress Hill: 300,000. Syl: –300,000.
* For those unfamiliar with US civil procedure, there are basically two ways to have a case heard in federal court, have a claim under a federal law (federal question jurisdiction) or have the two parties be from different states (diversity jurisdiction). Johnson I was brought in federal court under the first type; Johnson II was moved to federal court under the second type.
Hat tip to Joe Forward and the State Bar of Wisconsin for their post on this case.