Roberts v. Gordy, 16-12284

• Citation: 877 F.3d 1024
• Decision Date: 15 December 2017
• Docket Number: No. 16-12284,16-12284
• Parties: William L. ROBERTS, II, a.k.a. Rick Ross, Andrew Harr, et. al., Plaintiffs-Appellants, v. Stefan Kendal GORDY, Skyler Austen Gorday, et. al., Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (11th Circuit)

877 F.3d 1024

William L. ROBERTS, II, a.k.a. Rick Ross, Andrew Harr, et. al., Plaintiffs-Appellants,

v.Stefan Kendal GORDY, Skyler Austen Gorday, et. al., Defendants-Appellees.

No. 16-12284

United States Court of Appeals, Eleventh Circuit.

December 15, 2017

Karen L. Stetson, Jonathan L. Gaines, GrayRobinson, PA, MIAMI, FL, for Plaintiffs-Appellants.

Nina Diana Boyajian, Greenberg Traurig, LLP, LOS ANGELES, CA, Barry Lawrence Rothberg, Elliot H. Scherker, Stephanie Lauren Varela, MIAMI, FL, for Defendants-Appellees DAVID & GOLIATH, LLC, DAVID JAMAHL LISTENBEE.

Vincent H. Chieffo, Greenberg Traurig, LLP, LOS ANGELES, CA, Barry Lawrence Rothberg, Elliot H. Scherker, Stephanie Lauren Varela, MIAMI, FL, for Defendants-Appellees FOO & BLU, LLC, SKYLER AUSTEN GORDAY, STEFAN KENDAL GORDY, KIA MOTORS AMERICA, INC., KOBALT MUSIC PUBLISHING AMERICA, INC., LMFAO, LLC, NU80S MUSIC, LLC, PARTY ROCK, LLC.

Barry Lawrence Rothberg, Elliot H. Scherker, Stephanie Lauren Varela, MIAMI, FL, for Defendant-Appellee LISTENBEE CORPORATION.

Before WILSON and ROSENBAUM, Circuit Judges, and TITUS,^* District Judge.

TITUS, District Judge:

William L. Roberts II, Andrew Harr, and Jermaine Jackson (collectively "Appellants"), who are artists in the hip-hop industry, appeal the dismissal of their copyright infringement case. On appeal, they argue that their copyright registrations were improperly invalidated under 17 U.S.C. § 411 without a showing of scienter and that they made a proper showing of copyright ownership. Appellees counter that 17 U.S.C. § 411(b)(1) does not require scienter for nullification of a copyright registration and that a web of transfer and licensing agreements reflect a murky disposition of legal ownership. The Court need not reach a decision on the ownership issue because the district court misapplied the law by invalidating the copyright registrations. Accordingly, the district court's dismissal order will be reversed and remanded for further proceedings.

I.

Appellants are the authors of the classic rap song, Hustlin' .¹ In the wake of the success of Hustlin' , Stefan Gordy and Skyler Gordy (collectively p/k/a "LMFAO") authored a highly successful dance song, Party Rock Anthem . Cashing in on its popularity, Kia Motors used Party Rock Anthem as the soundtrack for one of its now equally famous dancing-hamsters commercials. Appellants, believing that this song allegedly used their lyrics and music, filed a copyright infringement suit against LMFAO, Kia, and all of the other Appellees in this case. Although not part of Party Rock Anthem 's refrain, at issue in this litigation is a phrase in its beat drop—"every day I'm shufflin' "—which LMFAO argued below was parody/fair use (an argument rejected by the district court and not currently on review in this appeal).²

Appellees' Answers asserted a series of defenses, including non-infringement, de minimus infringement, and parody/fair use. Although their Answers acknowledged the existence of multiple copyright registrations for Hustlin' , Appellees never sought to argue invalidity . This legal strategy was confirmed at various stages of the litigation. First, in opposition to another party's attempt to intervene, Appellees stated, "This is not a case ... in which defendants are challenging the existence or validity of a copyright.... [T]he only issue is whether [defendants] engaged in unlawful copying." Defs.' Opp'n., App. Doc. 177, at 17. Furthermore, Appellees opposed the inclusion of a proposed jury instruction on validity by stating, "This instruction is not necessary. Defendants do not contend that the copyright in Hustlin' is ‘invalid.’ " Joint Proposed Jury Instruction 9.4, App. Doc. 372-1.

Despite Appellees' urging to the contrary, the record clearly indicates that the issue of the validity of the copyright registrations was not raised by them, but rather by the district court sua sponte. See, e.g. , Ct. Order, App. Doc. 399, at 5–7. And it was on the grounds of invalid copyright registrations and failure to demonstrate ownership³ that the district court dismissed this case at summary judgment. See id. at 42. Subsequently, Appellants timely appealed.

II.

We review the district court's "interpretation and application of the law" in the grant or denial of summary judgment de novo. Ziegler v. Martin Cnty. Sch. Dist. , 831 F.3d 1309, 1318 (11th Cir. 2016). Furthermore, we also review de novo "[t]he sua sponte dismissal of an action for failure to state a claim." Brown v. Johnson , 387 F.3d 1344, 1347 (11th Cir. 2004).

III.

When this lawsuit commenced, three copyright registrations had been filed and granted for Hustlin' . Each contained errors, but it has never been contended that the Appellants were not the true authors of the work. The first copyright registration, Pau 3-024-979, incorrectly stated that it was unpublished because promotional phonorecords of the Hustlin' composition had been distributed to local disc jockeys. The second copyright registration, PA 1-334-589, incorrectly stated that the creation date was 2006 (instead of 2005) and did not disclose that there was a prior registration. The third copyright registration, PA 1-367-972, suffered from the same errors—it incorrectly stated the creation date and did not disclose either of the prior registrations.

In applying 17 U.S.C. § 411(b)(2), the district court asked the Copyright Office to weigh in on "what effect, if any, allegedly inaccurate information would have had on the Copyright Office's issuance of certain copyright registrations." See Resp. of the Register of Copyrights, App. Doc. 383, at 1. The Copyright Office responded that it "would have refused to issue a registration for an unpublished work" had it known of the publication/distribution information for the first registration. See id. at 5. However, the Copyright Office's response does not indicate whether it would have permitted the first registration as a published work.⁴ Additionally, the Copyright Office advised that it "would have refused [the second] registration" had it known of the incorrect creation date. See id. Lastly, the Copyright Office stated that it "would have refused [the third] registration" had it known of the incorrect creation date or the prior registration for a published work. See id.

The district court then applied 17 U.S.C. § 411(b)(1), and concluded that the Appellants—as the authors—would have had knowledge of these errors, and that the Copyright Office's response indicated the materiality of these inaccuracies. The district court rejected the argument that § 411(b) requires "an intent to defraud," and instead concluded that the plain text of the statute only requires "knowledge that it was inaccurate." See Ct. Order, App. Doc. 399, at 21; contra Original Appalachian Artworks, Inc. v. Toy Loft, Inc. , 684 F.2d 821, 828 (11th Cir. 1982) ; Donald Frederick Evans & Assocs., Inc. v. Cont'l Homes, Inc. , 785 F.2d 897, 904 (11th Cir. 1986) ; St. Luke's Cataract & Laser Inst., P.A. v. Sanderson , 573 F.3d 1186, 1201 (11th Cir. 2009). In turn, the district court invalidated all of the copyright registrations and dismissed the case.

IV.

A copyright provides for the exclusive right "to distribute copies ... of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." 17 U.S.C. § 106(3). To establish a claim of copyright infringement, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Only the former element is at issue in this appeal. Ownership "vests initially in the author or authors of the work," 17 U.S.C. § 201(a), and a copyright registration provides prima facie evidence of ownership, see Donald Frederick Evans , 785 F.2d at 903.

Generally, courts "are obligated to raise concerns about [a] district court's subject matter jurisdiction sua sponte." See, e.g. , Mallory & Evans Contractors & Eng'rs, LLC v. Tuskegee Univ. , 663 F.3d 1304, 1304 (11th Cir. 2011). While registration is a prerequisite to federal litigation under 17 U.S.C. § 411(a), a federal court's jurisdiction is not conditioned on a registration. See Reed Elsevier, Inc. v. Muchnick , 559 U.S. 154, 164–65, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010) (finding no conditional jurisdiction for copyright infringement actions based on 28 U.S.C. §§ 1331 and 1338 ). While the Supreme Court has declined to address whether "district courts may or should enforce [the registration precondition] sua sponte," it did determine that "a copyright holder's failure to comply with § 411(a)'s registration requirement [does not] deprive[ ] a federal court of jurisdiction to adjudicate his copyright infringement claim." See id. at 171, 157, 130 S.Ct. 1237. Logically, if failure to register does not eliminate subject matter jurisdiction, an improper registration would not either. Thus, the district court had jurisdiction.

In any event, the district court's review of validity was clearly not an issue of subject matter jurisdiction, but rather the determination of an affirmative defense. Cf. Original Appalachian , 684 F.2d at 821, 27–28 ("While the burden of persuasion as to the validity of the copyright rests with the plaintiff in an infringement action, once he produces a copyright certificate he establishes a prima facie case of validity of his copyright and the burden of production shifts to the defendant to introduce evidence of invalidity.") (internal citations omitted); see also Bateman v. Mnemonics, Inc. , 79 F.3d 1532, 1541 (11th Cir. 1996) ("Once the plaintiff produces a certificate of copyright, the burden shifts to the defendant to demonstrate why the claim of copyright is invalid.").

Correspondingly, failure to plead an affirmative defense typically results in waiver of that defense. See Latimer v. Roaring Toyz, Inc. , 601 F.3d 1224, 1239–40 ...