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Plaintiffs seeking to file a suit claiming copyright infringement on a derivative work had better make sure the later work is separately registered with the U.S. Copyright Office, because registration of the underlying work will not carry forward, the 6th U.S. Circuit Court of Appeals ruled in a case of first impression, Aug. 30. Murray Hill Publications Inc. v. ABC Communications Inc., No. 99-2268. Ruling on an issue it described as “unsettled among the Circuits,” the 6th Circuit said, “the majority rule appears to be that a separate registration is required for derivative works.” “We acknowledge,” 6th Circuit Judge Alice M. Batchelder wrote, “that there are cases that permit infringement suits to proceed on registered derivative works even though some of the underlying foundational works were not formally registered.” But the court cited no cases in which an infringement suit was allowed to proceed where, as in this case, only the original work had been registered. The ruling comes in a case filed by Detroit composer Bobby Laurel who took an original copyrighted song and rerecorded it with simple lyrics for a friend, the late Detroit disc jockey, P.J. McCarthy. Although McCarthy used it as a theme song until he died approximately five years later, Laurel never registered the derivative work. When McCarthy’s radio station, WJR, included the song in a tribute recording and then a foundation formed in McCarthy’s name also used it as a fund-raising tool, Laurel’s production company sued the station’s owners, ABC Communications, claiming copyright infringement. WJR argued that the composer granted both the DJ and the station a nonexclusive license to use the derivative song, and that no payment was discussed. Laurel maintained that royalties were a part of the bargain and that the license was limited to the DJ’s personal use and necessarily expired when McCarthy died. A Michigan federal court ruled last December that it lacked jurisdiction because of Laurel’s failure to register the derivative work with the Copyright Office. The appellate court agreed. Laurel’s attorney, Mayer Morganroth of the Southfield, Mich., firm Morganroth & Morganroth, said that, while disappointed, he could not really find fault with the 6th Circuit for deciding to follow the precedent set forth by certain other jurisdictions. “It doesn’t change the fact that they used his material without permission,” Morganroth added. While he argued the nonregistration issue, ABC’s attorney, Herschel P. Fink of Detroit’s Honigman Miller Schwartz & Cohn, felt the holding might been more strongly based on what he called the “clear evidence” of the gifting of the song. However, Fink summed up the impact of what he referred to as a “sound” decision this way: “Before this decision, a practitioner might have assumed that if the underlying work was registered, and the derivative work subsumed the original, they were okay, they could sue. The admonition to counsel now is that if the allegedly infringing work is the derivative work, you’d better make sure that work is registered.” As an aside, Fink added that he saw an additional, if “hidden,” impact in the appellate court’s reversal of the more than $100,000 in attorneys’ fees the district court had awarded to his firm. After explaining that, under the U.S. Supreme Court case of Fogerty v. Fantasy the standard for attorneys’ fees is supposed to be the same for both plaintiffs and defendants (who more typically have to pay these fees), Fink pointed to the appellate court’s apparent setting of an “interesting” new standard for attorneys’ fees, when it wrote, “Because we believe that the plaintiffs presented one or more colorable, albeit meritless claims, we reverse the award of attorneys’ fees.” “This is an argument defendants might want to try in the future,” Fink quipped.

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