William L. Roberts, II v. Stefan Kendal Gordy
877 F.3d 1024
| 11th Cir. | 2017Background
- Appellants (hip‑hop artists) authored the song "Hustlin'" and sued LMFAO, Kia, and others for alleged copyright infringement related to "Party Rock Anthem." Authorship and ongoing receipt of writers’ royalties were undisputed.
- Three Copyright Office registrations for Hustlin’ contained inaccuracies: one mischaracterized publication status (claimed unpublished despite promo phonorecords), and two listed the wrong creation year and failed to disclose prior registration(s).
- Defendants never pleaded invalidity; they focused on noninfringement, de minimis, and fair use defenses. The district court, however, raised registration validity sua sponte at summary judgment.
- The district court solicited the Register’s view under 17 U.S.C. § 411(b)(2); the Register said the Office would have refused registration(s) if it had known of the inaccuracies. The district court held the registrations invalid under § 411(b)(1) and dismissed the case.
- On appeal the Eleventh Circuit held the district court erred: while the registrations contained material inaccuracies, § 411(b) requires a showing of scienter (intentional or purposeful concealment) to invalidate a registration; the record showed good‑faith errors, so registrations remained valid and the case was remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 411(b)(1) permits invalidation of a registration without proof of scienter | Appellants: § 411(b) does not eliminate the preexisting requirement of scienter from Eleventh Circuit precedent; errors were good faith. | Appellees: The 2008 amendment to § 411 eliminated a fraud/scienter requirement; inaccurate info alone suffices if material. | Court: Scienter is required (intentional/purposeful concealment). Registrations not invalidated absent such scienter. |
| Whether the inaccuracies were material under § 411(b)(1)(B) | Appellants: Some inaccuracies were not material or would have been correctable; moreover, materiality does not prove scienter. | Appellees: Register indicated it would have refused registration(s), showing materiality. | Court: District court correctly found material inaccuracies but materiality alone is insufficient—scienter also required. |
| Whether district court could raise invalidity sua sponte when defendants did not plead it | Appellants: Raising an affirmative defense sua sponte is improper; defendants waived invalidity by failing to plead it. | Appellees: Not applicable — they did not pursue invalidity. | Court: District court erred in procedure by raising and deciding an affirmative defense sua sponte; review of validity should be treated as defensive matter. |
| Whether registrations’ errors defeated prima facie ownership presumption | Appellants: Registrations still afford prima facie ownership absent fraud; authorship undisputed. | Appellees: Invalid registrations eliminate presumption of ownership. | Court: Because registrations remain valid (no scienter), Appellants met prima facie ownership and case proceeds on the merits. |
Key Cases Cited
- Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821 (11th Cir. 1982) (scienter/intentional concealment required to invalidate registration)
- Donald Frederick Evans & Assocs., Inc. v. Cont'l Homes, Inc., 785 F.2d 897 (11th Cir. 1986) (registration creates prima facie validity/ownership; defendant must prove invalidity)
- St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186 (11th Cir. 2009) (reaffirmed scienter requirement and materiality inquiry under § 411(b))
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (failure to register does not deprive federal courts of subject‑matter jurisdiction over copyright claims)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (1991) (elements of copyright infringement: valid ownership and copying)