A Copyright Registration Certificate Provides Constructive Notice of Conflicting Ownership Rights for Purposes of Priority under 17 U.S.C. § 205(d)

Case: Latin Am. Music Co. v. Archdiocese of San Juan of the Roman Catholic & Apostolic Church, (1st Cir. No. 05-2806, 8/16/07)

The One Sentence Summary: Examining: 1) the denial of infringement claims on summary judgment, 2) the allocation of special master’s fees, 3) the dismissal of a party’s claims, counterclaims and defenses as a sanction for not complying with court orders, and 4) a finding of copyright infringement on summary judgment, the First Circuit affirmed in part and reversed in part the district court’s rulings in this music copyright infringement suit.

What They Were Fighting About: Latin American Music Company (“LAMCO”) and Asociacion de Compositores y Editores de Musica Latino Americana (“ACEMLA”) filed suit against various radio broadcasters, alleging copyright infringement of 51 songs. The radio broadcasters brought counterclaims against LAMCO and ACEMLA and filed third party complaints for indemnification against the American Society of Composers, Authors, and Publishers (“ASCAP”). ASCAP disputed with LAMCO and ACEMLA over the rights to five of the songs at issue, and they agreed to use the resolution of that dispute as a guide to resolving the ownership rights to the rest of the songs. Several music publishers (the “Publishers”) filed claims against LAMCO and ACEMLA, alleging that they owned or controlled the copyrights to songs that LAMCO and ACEMLA were infringing. The case expanded to involve copyrights to over five hundred songs, after additional claims and parties were added.

In this appeal, LAMCO and ACEMLA challenged the district court’s rulings, which: 1) denied on summary judgment their infringement claims relating to five songs; 2) allocated to LAMCO and ACEMLA half of the obligation to pay the fees of a special master hired to determine ownership rights; 3) dismissed their claims, counterclaims and defenses as a sanction for failure to comply with court orders; and 4) held on summary judgment that they infringed copyrights held by the Publishers.

First Circuit Holdings:

• Summary judgment denying LAMCO and ACEMLA’s infringement claims was affirmed as to four of the five songs at issue but was reversed and remanded as to one song because material facts regarding the transfer of rights remained in dispute. Under the good faith and lack of notice requirements of the recording statute, 17 U.S.C. § 205(d), a copyright registration certificate provides constructive notice of conflicting ownership interests, and therefore, recording of the transfer to the prior transferee is not required for maintaining its priority.


• The allocation of the special master’s fees was not an abuse of discretion because the district court has the broad discretion to allocate the fees as appropriate under the circumstances of the case. The court rejected LAMCO and ACEMLA’s argument that the Publishers should have been required to pay the majority of the fees because of their disproportionate wealth and because the Publishers complicated the case. The court noted that LAMCO and ACEMLA had various opportunities to demonstrate that they were unable to pay their share of the fees but did not do so.


• Because of LAMCO and ACEMLA’s pattern of delaying conduct throughout the case, the district court did not abuse its discretion by dismissing LAMCO and ACEMLA’s claims, counterclaims and affirmative defenses as a sanction for failing to comply with the court’s orders.


• Infringement does not occur by merely authorizing others to commit an infringing act; there must be a showing of actual use in an infringing manner after the authorization.


• Because the district court did not evaluate whether LAMCO and ACEMLA committed infringing acts beyond authorization, the First Circuit could not determine whether there was sufficient undisputed evidence to grant summary judgment on infringement. Therefore, the district court’s grant of summary judgment in favor of the Publishers on their infringement claims against LAMCO and ACEMLA was reversed and remanded for further proceedings on this issue.


• The First Circuit rejected LAMCO and ACEMLA’s claim that they retained a “fifty percent writer’s performance share” in songs even after they relinquished the copyrights. Even if they did prove their theory of retained performance rights, to the extent it was a defense, it was dismissed as part of the sanction imposed by the district court.


• The district court correctly determined that LAMCO and ACEMLA lacked standing to seek rescission of the Publishers’ agreements with composers because LAMCO and ACEMLA were not parties to the agreements they were seeking to rescind, and they did not show a close relationship with any of the parties who possessed rights or a hindrance of the parties’ ability to protect their own rights. Moreover, to the extent the rescission theory was used as a defense, it was dismissed as part of the sanction.