Register your Copyrights! Copyright Registration Required for Derivative Works – Registration of the Underlying Work Held InsufficientTuesday, October 9th, 2007
Dalton-Ross Homes, Inc. v. Williams, No. CV-06-1301-PCT-FJM, 2007 U.S.Dist. LEXIS 64135 (D. Ar. August 29, 2007).
This case highlights the crucial importance of registering works that copyright owners want to protect and enforce.
Plaintiff, a construction company, owned and registered the copyright in architectural floor Plan 1. A draftsman working for plaintiff prepared Plan 2, based on Plan 1, and Plan 3, based on Plan 2 (and, possibly, Plan 1). Defendants hired the same draftsman, who used plaintiff’s Plan 3 to prepare Plan 4 for defendants. Plaintiffs alleged that defendant’s Plan 4 infringed on plaintiff’s Plan 3, which was derivative of registered Plan 1. Plaintiff never registered its copyrights in Plans 2 or 3.
Dalton-Ross Homes’ Villa Del Mesa model
The court granted defendant’s motion for summary judgment, stating that copyright registration is a prerequisite to bringing an action in federal court for copyright infringement (17 U.S.C. § 411). A separate registration was required for Plan 3, the derivative work that was the subject of the action. Registration of the underlying original work was not sufficient to create jurisdiction in a lawsuit for infringement of the unregistered derivative work.
The court noted that copying an unregistered derivative work might give rise to liability based on infringement of the registered underlying work, if plaintiff can establish that defendant copied protectable elements of the original work. In this case, plaintiff merely argued that Plan 4 was derivative of Plan 3, which in turn was derivative of Plan 2, which in turn was derivative of Plan 1. Plaintiff never directly argued infringement of Plan 1. If it had done so, the result of the case may have been different.