Copyright Registration and Copyright Claimant: What Happens If a Publisher, Studio, or Producer Mistakenly Puts Itself as Claimant?

Under Section 201 of the Copyright Act, copyright in a work vests initially in the author or authors of the work. The author, however, is not always the party who claims ownership of the copyright when federal registration of the work is sought. Section 409 of the Copyright Act requires a copyright claimant to provide in an application for copyright registration the claimant’s name and address, and if claimant is not the author, a brief statement of how the claimant obtained ownership of the copyright.

What is a Copyright Claimant?

Unfortunately, the Copyright Act does not expressly define “copyright claimant.” Shortly after the Copyright Act was enacted, the Copyright Office published interim regulations that included a definition of “copyright claimant” for purposes of copyright registration. Under Chapter 37 of the Code of Federal Regulations, a copyright claimant is either: (i) the author of a work; or (ii) a person or organization that has obtained ownership of all rights under the copyright initially belonging to the author. The latter category, offered as a footnote in the Federal Regulations, which may soon be removed, includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights under the copyright initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration. See 37 C.F.R. § 202.3(a)(3).

As the definition indicates, in the circumstance that the copyright claimant is not the author of the work, the party claiming ownership must have obtained all rights in the work that originally belonged to the author. Further, as case law suggests, a ‘copyright “claimant’ in whose name registration is made “must be either the author of the work or one who obtained ownership of the copyright, not merely one who obtained ownership of certain exclusive rights under the copyright.” Morris v. Business Concepts, Inc., 259 F.3d 65, 72 (2nd Cir.2001); see also Bean v. McDougal Littell, 669 F. Supp. 2d 1031, 1035 (D. Ariz. 2008) (further quoting Morris in that “the copyright ‘claimant’ for purposes of copyright registration is the author of the work for which registration is sought or a person or organization that has obtained ownership of all rights under the copyright initially belonging to the author”).

We discussed in a previous blog post that publishers, studios, and producers, will often incorporate language into a written agreement by way of assignment or license to obtain ownership in the copyright of a work. However, in some agreements, the assignment or license does not effectively transfer all rights under the copyright from the author to the organization. Consequently, when the publisher, studio, or producer, applies for copyright registration on behalf of the author, it incorrectly marks itself as the copyright claimant, believing that all rights have been transferred, when that simply is not the case.

What happens if the publisher, studio, or producer, puts down the wrong claimant on the application for copyright registration?

The fear is that if there is ever a dispute regarding the work (i.e., claim for copyright infringement against a third party), the copyright registration will be held invalid, which could have drastic implications for the copyright holder, including the author as well as the publisher, studio, or producer. In many circumstances, a valid copyright registration, or certificate of registration, is evidence that both the copyright is valid and that the copyright claimant owns the copyright. Courts may find a registration invalid if the copyright claimant willfully misstated or failed to state a fact that, if known, might have caused the Copyright Office to reject the application for copyright registration.

However, Courts have held that an innocent misstatement or error, absent of fraud, does not invalidate the copyright. In Wales Industrial Inc. v. Hasbro Bradley, Inc., 612 F.Supp. 510, 515 (S.D.N.Y.1985), the Court held that where an exclusive licensee erroneously identified itself on the copyright registration as the ‘copyright claimant,’ that the alleged error didn’t invalidate the registration. Once a Court determines that an error was innocent, it will look to see if the error was immaterial. An error is immaterial if its discovery is not likely to have resulted in the Copyright Office’s rejection of the application for copyright registration. Consequently, in most cases, innocently identifying the wrong copyright claimant on an application for copyright registration will not invalidate the copyright registration or certificate of registration.

In any case, it is important for the publisher, studio, or producer to make sure that if it intends to transfer all rights in a copyright from an author to itself that it has a written agreement between the author and itself which includes the necessary language to confer all rights in the copyright. Such a written agreement is required as set forth under Section 204 of the Copyright Act to constitute a valid transfer and will allow the publisher, studio, or producer to mark itself as claimant in the application for copyright registration. This will help avoid unnecessary litigation and its associated expenses arising out of the validity of the copyright registration and whether the misstatement of identify to the copyright claimant was fraudulent and material or simply an innocent and immaterial error.

Artists, Authors, Musicians: Be Wary of a Copyright Assignment or an Exclusive Copyright License

It’s an important day when an artist signs his first artist agreement, when an author executes her first publishing contract, or when a band strikes their first record deal. It’s even more important that the creative parties signing these agreements understand what rights they may be giving away. Too often creative parties realize after it’s too late that they have effectively transferred almost all rights in their work and even in future works.

Under Section 204 of the Copyright Act, a transfer of copyright ownership, other than by operation of law (including but not limited to corporate mergers, bankruptcy, foreclosure, court order, and intestate succession), is not valid unless an instrument of conveyance, or a note or memorandum of the transfer is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. 17 U.S.C. § 204. Consequently, a publisher, studio, or producer, will often incorporate language into a contract that transfers all intellectual property rights and copyright rights in a work away from the creative party. Sometimes, the non-creative party will do this in the form of an exclusive license, which many times has the same effect of a copyright assignment.

Sometimes, agreements that provide for the transfer of or exclusive rights to such rights also include language that expressly states that all future works created by the creative party are considered a Work-Made-For-Hire and that if necessary, the creative party agrees to sign additional documents assigning or exclusively licensing their rights in the copyright of the work. A Work-Made-For-Hire means essentially as it sounds, in that the creative party is an employee of an organization and it is his or her job to create the specific type of work being commercialized or that the creative party has been specifically commissioned and hired to complete a specific piece of work, but not in an employer-employee relationship, but rather in an independent contractor role. In either case, the non-creative party is seeking and asserting ownership or exclusivity in all rights in the copyright for all future works before they are even created.

It is highly recommended that a creative party, whether author or singer, retain a skilled lawyer to review any contract that poses a threat to the ownership or rights in the copyright of a specific work or future works. It is not always a bad thing that these rights are transferred or exclusively licensed, but such rights should be understood by the creative party in the context of the overall agreement in order to provide the creative party with an exit strategy in case the relationship between the parties doesn’t work out. An artist, author, or singer, often spends his or her entire life trying to ‘catch a break’ or ‘make it big’ or ‘break out’, why not spend the time and minimal expense to protect what took in some cases a lifetime to achieve?