Brunson v. Cook

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LISA BRUNSON, Plaintiff/Counter-Defendant, v. DAVID COOK d/b/a INTEGRITY MUSIC, CAPITOL CMG, INC. et al., Defendants/Counter-Plaintiffs.

No. 3:20-cv-01056

United States District Court, M.D. Tennessee, Nashville Division

March 28, 2023

MEMORANDUM OPINION

RICHARDSON, JUDGE

Pending before the Court is Defendant Capitol CMG, Inc.'s and David C. Cook d/b/a Integrity Music's (collectively “Defendants”)^[1] joint motion, supported by an accompanying memorandum, for issuance of a request to the register of Copyrights under 17 U.S.C. § 411(b)(1).^[2](Doc. Nos. 114 (the “Motion”) 115). The Motion alleges that Plaintiff included inaccurate information on the application for the copyright registration with registration PAU004024415. (Doc. No. 114). Plaintiff filed a response (Doc. No. 134), and Defendants filed a reply (Doc. No. 144). Also pending before the Court are the parties' respective cross-motions for summary judgment (Doc. Nos. 111, 118). Defendants also filed a supplemental memorandum of law in support of the Motion to further address arguments made in the Motion that may have been affected by the Court's order (Doc. No. 147) on Plaintiff's partial motion to dismiss and strike. (Doc. No. 164-1).

For the reasons stated herein, the Motion at Doc. No. 114 is granted in part and denied in part, in that the Court will request a response from the Register regarding some but not all matters as to which Defendants seek a request . Though the Court will not be bound by the response of the Register to the request ordered herein,^[3] the Court finds that because the response of the Register has the potential to materially affect the parties' arguments and the Court's analysis with respect to the motions at Doc. Nos. 111 and 118, those motions are denied without prejudice, subject to refiling to the extent appropriate after the Court's receipt of the response from the Register. An accompanying order shall be entered separately.

FACTUAL BACKGROUND^[4]

The Court's memorandum opinion on Plaintiff's partial motion to dismiss and to strike (Doc. No. 146) sets forth in detail the relevant background facts of this case, and the Court need not repeat itself here in full for the purposes of resolving the present Motion. The Court includes the following facts to provide context for the resolution of the present Motion.

Plaintiff Lisa Brunson is a congregational worship leader, music director, and singer/songwriter. (Doc. No. 146 at 1). Defendants CCMG and David C. Cook d/b/a Integrity Music (hereinafter “Integrity Music”) (collectively, “the Publishers”) are music publishers and music publishing administrators who own music copyrights in many popular worship and Christian musical compositions. (Id. at 1). Defendant Integrity Music purportedly administered the copyright to a song titled Way Maker, first written and sung by artist Osinachi Kalu Okoro Egbu (“Sinach”). (Id. at 2). CCMG contends that from July 1, 2011 to July 1, 2021, it exclusively administered Integrity Music's interest in Way Maker pursuant to a written administration agreement between the two entities. (Id.).

Plaintiff is the alleged author of the work registered with the United States Copyright Office with the registration PAU004024415 (i.e. hereinafter “Plaintiff's work”). (Id. at 2). The crux of this litigation as a whole is that Plaintiff's work is a musical bridge that was written primarily to be performed as part of the song Way Maker-i.e., primarily to replace, in a particular place in the song Way Maker, what had been in that place as Way Maker was originally written. Though Plaintiff's work has its own copyright registration, Way Maker, which was written by Sinach, also has its own copyright registration.

Defendants now claim that Plaintiff knowingly included inaccurate information in the application for the copyright registration for the work with registration PAU004024415.

On May 8, 2020, Plaintiff, acting through Adam Carpenter, an employee of her then-music publisher, first applied for copyright registration of Plaintiff's work. (Doc. No. 116-7 at 22). In doing so, she applied on the basis that Plaintiff's work was previously published, indicating that the date of prior publication was June 5, 2017. (Id. at 20).

On May 11, 2020, the Copyright Office contacted Carpenter about an “issue with the application.” (Id. at 9). In the message, a representative of the Copyright Office explained that the “files uploaded for ‘You Never Stop Working' [i.e. Plaintiff's work] contain only part of the work starting at measure 56. The entire work as it was first published must be uploaded with the application before I can proceed with examining your claim.” (Id.). Defendants allege that, as reflected in the message from the Copyright Office, Plaintiff submitted with her application a deposit copy^[5] of Plaintiff's work that was an excerpt of Way Maker and which showed that Plaintiff's work began at measure 56 of Way Maker. (Doc. No. 115 at 12-13).

After attempting to rectify the issue, the Copyright Office remained confused as to whether it had been made aware of the complete work for which Plaintiff sought registration. Indeed, the Copyright Office wrote Carpenter again, this time saying that “you uploaded the same audio file, and [] the sheet music you uploaded is identical to the first copy, except for the measure numbers. It is unclear if these materials represent the full published work. Additionally, we need you to confirm if Lisa Marie Ireland-Brunson is the sole author of the entire song, or if there are additional authors of the entire work.” (Doc. No. 116-7 at 13).

The following day, the Copyright Office contacted Carpenter yet again, this time inquiring as to the publication status of Plaintiff's work. (Id. at 14). The Copyright Office wrote to Carpenter, “Can you please explain how this work (and specifically how this version) was published? A preliminary internet search of this work shows multiple published versions and live recordings that appear to be more complete.” (Id.). The message then contained a definition of “publication” from the Compendium.^[6] Carpenter then responded, stating that there had been some confusion and that his attorney would be reaching out on his behalf. (Id. at 15). Plaintiff's attorney, David Engelhardt, then wrote to the Copyright Office, stating that Plaintiff's work was not previously published and that they would proceed with the application on the basis that the work was unpublished. (Id. at 16; Doc. No. 116-13 at 6-7 (Engl. Dep.)). The application was then approved. (Doc. No. 116-7 at 18).

In the present Motion, Defendants allege that Plaintiff knowingly included inaccurate information on the copyright application for Plaintiff's work when (as according to Defendants) she misrepresented Plaintiff's work as complete and indicated that the work was unpublished.

PROCEDURAL BACKROUND

On April 29, 2022, Defendants filed a motion (Doc. No. 101) requesting the Court issue a request to the Register of Copyright. In the motion, Defendants alleged that Plaintiff knowingly included inaccurate information on the application for the copyright registration for Plaintiff's work (i.e. the application that ultimately resulted in registration PAU004024415). (Id.). On May 19, 2022, the parties participated in a telephone conference with Magistrate Judge Newbern, after which Judge Newbern directed the clerk's office to terminate the motion that was pending at Doc. No. 101 subject to refiling following the conclusion of the parties' expert witness discovery. (Doc. No. 107). On June 24, 2022, following the conclusion of all discovery, Defendants re-filed their motion requesting the Court issue a request to the Register with the same allegations regarding inaccuracies contained in the copyright application. (Doc. No. 114).

DISCUSSION

1. REQUEST TO REGISTER OF COPYRIGHTS UPON ALLEGATIONS

“To establish [copyright] infringement, two elements must be proven: (1) ownership [by the plaintiff(s)] of a valid copyright, and (2) copying [by the defendant(s)] of constituent elements of the work that are original.” See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361 (1991). “With certain exceptions that are not relevant here, however, a certificate of copyright registration is a prerequisite to bringing a civil copyright infringement claim action,” which Plaintiff has done in this case. See Palmer/Kane v. Gareth Stevens Publishing, 1-15-cv-7404, 2016 WL 6238612, at *1 (S.D.N.Y. Oct. 24, 2016). “[A] certificate of registration satisfies this prerequisite [of a valid certification of copyright registration] ‘regardless of whether the certificate contains any inaccurate information,'” see id., unless “(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration” see 17 U.S.C. § 411(b)(1).

“In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.”^[7] See 17 U.S.C. § 411(b)(3). “In other words, before finding that knowingly inaccurate information would have caused the Register of Copyrights to refuse registration, a court must ask the Register whether that would have been the case.” See Palmer/Kane, 2016 WL 6238612, at *1.

Although the statute by its terms states that mere allegations as to the inaccuracy of information are sufficient under § 411(b) to trigger the court's obligation to make a request, courts and...