At the request of a friend who was looking for new material for his band to play, Fernando Torres-Negron wrote the music and lyrics to a song, Noche de Fiesta, in 1993. Torres gave his friend the piece of paper on which he had written the lyrics, along with a cassette tape containing a recording of Torres singing the song. The song eventually ended up on three CDs, distributed both in Puerto Rico and the continental United States. When Torres first learned of the distribution and sales of his song in 2001, he submitted an application for copyright registration with the Copyright Office, and filed this lawsuit for infringement. Although the case proceeded to trial and resulted in a jury verdict for Torres, the district court granted the defendants' motion for judgment as a matter of law.
There is no dispute about the district court's finding that Torres submitted a reconstruction of his original songs, created from his memory and without direct reference to his original works, to the Copyright Office. Because the Copyright Act requires that a “copy” be submitted along with an application for copyright registration, and not a reconstruction, Torres failed to submit a complete application for registration of his copyright. A complete application is a jurisdictional prerequisite to filing suit in federal court for copyright infringement. Therefore, we agree with the district court that it lacked jurisdiction over Torres' lawsuit. We also conclude that the district court did not err in denying defendants' motion for attorney's fees.
Torres filed a copyright infringement action against numerous defendants, including J & N and other producers and distributors of each of the three records, in the District of Puerto Rico. At trial, the defendants moved for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a)(1) after the close of the plaintiff's case. The district court dismissed the claims against some defendants, but denied the motion as to J & N Records. At the close of all evidence, the remaining defendants renewed their motion, but the court reserved judgment and permitted the case to go to the jury. The jury returned a verdict in favor of Torres, finding that J & N had infringed his copyright on Noche de Fiesta.
Defendant J & N then filed a renewed motion for judgment as a matter of law, Fed.R.Civ.P. 50(b), on a number of grounds. J & N argued that the district court lacked subject matter jurisdiction for two independent reasons: (1) the copy of Noche de Fiesta submitted to the Copyright Office was an invalid reconstruction (rather than a “bona fide” copy); and (2) Torres' application indicated that his song was not a derivative work, whereas J & N argued that it was an unauthorized derivative of an earlier merengue song. J & N also argued that the case was barred by the statute of limitations, that there was insufficient evidence to support the jury's verdict, and that the damages were speculative and unjustified.
The district court held that “a copy that is simply created or reconstructed from memory without directly referring to the original, known as [a] ‘reconstruction,’ does not comply with the deposit requirements of the Copyright Act,” and found that “Torres' deposits constitute impermissible reconstructions.” Torres Negron v. Rivera, 433 F.Supp.2d 204, 213-14 (D.P.R.2006). Therefore, the court concluded that the copyright registration was invalid, and because “copyright registration is a jurisdictional prerequisite for maintaining a copyright infringement suit,” it granted J & N's motion for judgment as a matter of law.
The court alternatively found that the jury verdict could not stand because “(1) Noche de Fiesta is an unauthorized derivative work not entitled to copyright protection; (2) Torres granted [the producer] an implied license to exploit the song[ ] Noche de Fiesta ...; and (3) the amount of damages awarded by the jury is untenable due to insufficiency of the evidence.”
Torres appealed, seeking reinstatement of the jury verdict. J & N cross-appealed, challenging the district court's denial of its motion for attorney's fees and costs. We affirm the district court's judgment dismissing the infringement claims, on the basis of Torres' failure to satisfy the deposit copy requirement for copyright registration. We also affirm the district court's denial of attorney's fees.
“[N]o action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 (1st Cir.1994) (“[R]egistration of the copyright is a prerequisite to suit under the Copyright Act.” (citation omitted)). This requirement is often described as a jurisdictional one. See, e.g., Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir.2004) (“17 U.S.C. § 411(a) sets forth [a] jurisdictional prerequisite....”); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003) (“Th[e] registration requirement is jurisdictional.”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003) (“Copyright registration is a jurisdictional prerequisite to bringing an action for infringement under the Copyright Act.”); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir.1990) (“The registration requirement is a jurisdictional prerequisite to an infringement suit.”). In order to complete the registration process, and receive a certificate of copyright registration, a creator must submit to the Copyright Office “a complete copy or phonorecord” of the work for which he seeks registration, often referred to as the “deposit copy.” 17 U.S.C. § 408(b). The Copyright Act defines “copies” as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Id. § 101
It is undisputed that the written lyrics and tape that Torres submitted as his deposit copy were not the originals that is, they were not the exact tape or piece of paper on which he first recorded the music or wrote the lyrics of the song. Indeed, the parties agree that Torres gave both the original lyrics and the first recording of the song to Cauelas. By the time he submitted his copyright registration application, he no longer had access to either the original writing of the lyrics or the tape recording of the song. Thus, in order to comply with the requirement that a “copy” of the song be submitted with the application, Torres reconstructed his original work from memory by singing the song, while clapping the rhythm, into a tape recorder. It was the reconstruction, made in 2001, that he submitted to the Copyright Office.
A. The Deposit Copy Requirement
The question before us is whether that reconstruction is a “copy” within the meaning of 17 U.S.C. § 408(b). The statutory definition of “copy” provides little guidance. It neither distinguishes between copies and reconstructions, nor specifies whether a copy must be made from an original. However, dictionary definitions highlight the difference between a “copy” and a “reconstruction.” Black's Law Dictionary defines a “copy” as an “imitation or reproduction of an original.” Black's Law Dictionary 360 (8th ed.2004). To “reconstruct” something is “to construct again; rebuild; make over,” or to “re-create in the mind from given or available information.” Random House Webster's Unabridged Dictionary 1612 (2d ed.1997). Given these definitions, a reconstruction is not a copy; a reconstruction is created without an original, whereas a copy is made from an original. Congress specified that a registration had to be accompanied by a “copy.” See Conn. Nat'l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there.”). Therefore, we agree with the district court that a reconstruction, created without access to or reliance on the original work, cannot constitute a “copy,” as that term is used in 17 U.S.C. § 408.
The only other circuit courts that have addressed this question have arrived at the same conclusion. In Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.1998), the Ninth Circuit held that a “bona fide copy” is one that is “virtually identical to the original and ... produced by directly referring to the original.” Thus, reconstructions created from memory, without access to the original work, could not serve as valid copies for registration purposes. Id.
The Sixth Circuit adopted the same rule in Coles v. Wonder, 283 F.3d 798, 802 (6th Cir.2002). There, the plaintiff claimed that he had written the song “For Your Love” in 1982 and sued Stevie Wonder, alleging copyright infringement, after Wonder recorded and distributed a song of the same name in 1995. The plaintiff registered his song in 1990 and submitted a recording of the song, as his deposit copy, that had been recorded earlier that same year. He claimed that he no longer possessed an original (i.e., 1982) recording of the song. Wonder argued that the plaintiff's registration was invalid because the deposit copy was not a bona fide copy, but rather a recreation from memory. The Sixth Circuit agreed, following the reasoning of Kodadek, and concluded that the deposit copy would be valid only if it had been created from an original recording of the song. Id. at 802 (“[H]ad [the plaintiff] been able to establish that he made the 1990 recording after listening to an audio copy of his 1982 rendition of For Your Love, he could have met the deposit requirement and his copyright would be valid from the date listed on his application. Likewise, had he made his 1990 recording after reviewing a tear sheet or other written summary that dated from 1982, he could have satisfied the deposit requirement.”). The court also explained that a strict application of the word “copy” would serve to protect the rights of artists by encouraging prompt registration and preventing fraudulent claims filed after the commercial success of a work. Id.
Torres argues that Kodadek and Coles are distinguishable because each of those cases involved a dispute about who first authored the work and, therefore, who was the valid owner of the copyright. He further argues that the definition of “copy” adopted in those cases should, at most, be limited to cases involving disputes about authorship. Torres has cited no support for this argument. That is not surprising. It makes no sense to interpret the statutory requirement of a deposit copy differently depending on what factual issues are disputed in a given case. There is no valid reason, in our view, to assume that the legislature intended the word “copy” to be a chameleon, taking on different meanings depending on the context of the litigation.