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Does derivative work copyright registration cover unregistered original works?

Cantor Colburn IP Newsletter February/March 2024

Copyright registration is a prerequisite for bringing an infringement action. But do you have recourse for an unregistered work if you registered a derivative work? According to a ruling in a case of first impression before the U.S. Court of Appeals for the Ninth Circuit, you might.

Charting the case’s course

Doctor Mary Lippitt and her company Enterprise Management Ltd. advise organizations on how to accomplish organizational change. In her more than 40 years in the field, she’s developed many materials for presentations and consulting activities on the topic. She eventually distilled the essence of this work into a one-page chart, titled “Managing Complex Change,” showing the components necessary for organizational change.

Lippitt testified that the initial version of the chart was included in a collection of presentation materials that she registered with the Copyright Office in 1987. The Office subsequently destroyed its copy of the materials as part of routine practice, though, and Lippitt didn’t save a copy either.

In 2000, she registered more presentation materials, including a “derivative” chart, titled “Aligning for Success,” based on the initial version. She registered the derivative work again in 2003, as part of a different presentation.

Steve McConnell, CEO of Construx Software Builders, made a YouTube video that incorporated a chart similar to Lippitt’s second chart. He subsequently used that chart in his book and business presentations.

Lippitt sued McConnell, alleging infringement of both versions of the chart. Before trial, the court ruled in McConnell’s favor regarding the first chart, finding Lippitt failed to show that it was included in the presentation materials she registered in 1987. A jury returned a verdict for McConnell with regard to the second chart.

Braving the elements

On appeal, the Ninth Circuit first found that Lippitt’s detailed and consistent declaration and testimony that she included the first chart in 1987 raised a genuine issue of material fact that should’ve gone to trial. It then weighed whether Lippitt might have an alternative theory of how she registered certain elements of her original chart.

Specifically, the court considered whether a copyright owner who creates an original work, but doesn’t register it, and subsequently registers a derivative work, registers the original work’s elements that are included in the derivative work. In other words, could Lippitt argue that she registered the elements of the first chart that were also included in the registered second chart?  The court concluded that the answer was yes.

In support of its conclusion, it pointed out that the owner of an original work can register it at any time, and the registration applies to all of the material deposited that constitutes copyrightable subject matter. The court noted that the other federal appellate courts that have addressed the question — the Second, Fourth and Tenth Circuits — have reached the same conclusion.

It wasn’t a disputed fact that Lippitt created the first chart. Further, the parties agreed that:

As a result, Lippitt could argue that she registered the elements of the first chart that also were in the second chart — and bring an action for infringement of those elements.

Beginning again

Because Lippitt raised a genuine dispute over whether she registered elements of the first chart by registering the derivative chart, as well as whether she registered the original chart directly in 1987, the Ninth Circuit reversed the trial court’s pretrial judgment for McConnell and sent the case back to the trial court for another hearing. It also overturned the jury verdict in his favor because the trial court didn’t allow Lippitt to introduce any evidence or argument about the first chart at trial.

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