Alicea v. Machete Music

There is a circuit split as to what actions meet the "preregistration" requirements found in the copyright act. However, under either test, a copyright holder must show some evidence that they have either registered or commenced registration procedures before they may bring a suit for copyright infringement.

(Opinion Howard) Angel Mertinez Alicea, along with the other plaintiffs in this suit (collectively “producers”), are reggaeton music producers. In 2006 and 2007, the producers worked with the record label “Mas Flow” to produce songs for the band “Erre IX.” Mas Flow has an exclusive license with Machete Music (Machete) to sell and distribute Mas Flow albums. In 2008, Machete began distributing the Erre IX album. Seven songs that the producers worked on were included in the Erre IX album, but none of those tracks were, in fact, produced by any of the producers. In 2010, the producers filed suit, alleging counts of copyright infringement in the song compositions, breach of contract, fraudulent inducement of services, unjust enrichment, and intentional and negligent infliction of emotional distress.

After previously granting motions for summary judgment on many of the other claims raised, the district court granted Machete’s motion for summary judgment on the copyright infringement claim on February 23, 2012. The court granted the motion on the grounds that: even after two years of litigation, the producers were unable to show either registration certificates or evidence that they had submitted all the necessary registration paperwork for any of the songs they claimed to have copyright interests in. Four weeks later, the producers filed a motion to reconsider, arguing that they had since received registration certificates for two of the songs. The district court denied the motion to reconsider and the producers subsequently appealed.

On appeal, the court recognized that there is a circuit split as to whether “the registration requirement is satisfied at the time the copyright holder's application is received by the Copyright Office (the 'application approach'), or at the time that the Office acts on the application and issues a certificate of registration (the 'registration approach').” Noting that the district court found that there was no evidence that the producers met the registration requirement, the court concluded that Machete was entitled to summary judgment under either standard. The court also noted that, although the producers held copyrights in sound recordings of some of the songs, because registration of a recording does not create a coextensive copyright in the underlying compositions, the producers could not rely on those copyrights as a basis for the action. The court, therefore, AFFIRMED both the grant of summary judgment and the denial of the motion for reconsideration.