17.5 COPYRIGHT INFRINGEMENT—OWNERSHIP OF VALID COPYRIGHT—DEFINITION (17 U.S.C. §§ 201–205)
The plaintiff is the owner of a valid copyright [in identify work[s] allegedly infringed] if the plaintiff proves by a preponderance of the evidence that:
1. the plaintiff’s work is original; and
2 the plaintiff [is the author or creator of the work] [received a transfer of the copyright] [received a transfer of the right to [specify right transferred, e.g., make derivative works, copy, publicly perform, etc.]].
[Alternative for works distributed prior to March 1, 1989 if no exception stated in 17 U.S.C. § 405(a)(1), (2), or (3) applies:
1. the plaintiff’s work is original;
2. the plaintiff [is the author or creator of the work] [received a transfer of the copyright] [received a transfer of the right to [specify right transferred, e.g., make derivative works, copy, publicly perform, etc.]; and
3. the plaintiff complied with copyright notice requirements by placing a copyright notice on publicly distributed copies of the allegedly infringed work.]
This instruction provides an alternative applicable to works distributed prior to March 1, 1989 (effective date of the Berne Convention Implementation Act, 17 U.S.C. § 405(a)). Such works may enter the public domain if their owner failed to comply with the copyright notice procedures. See, e.g., Lifshitz v. Waller Drake & Sons, Inc., 806 F.2d 1426, 1432–34 (9th Cir.1986). The instruction suggests an alternative that specifies an additional element for such cases when an exception provided by 17 U.S.C. § 405(a)(1), (2), or (3) applies (e.g., work with limited public distribution, etc.).
If the plaintiff is not the author of the registered work, the certificate may not reflect the plaintiff’s interest in the work. This frequently occurs when the author registered the copyrighted work before the author licensed or assigned the copyright to the plaintiff. The court may need to adjust this instruction to reflect the transfer of ownership. Use of Instruction 17.10 (Copyright Interests—Assignee) or 17.11 (Copyright Interests—Exclusive Licensee) may be helpful. A transfer may also occur upon the death of the author within the copyright term, which can be explained to the jury by an instruction. Elements in this instruction are further explained by Instructions 17.6 (Copyright Interests—Authorship) and Instruction 17.12 (Copyright Infringement—Originality).
Under the Copyright Act, the party charging infringement must show ownership. See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144 (9th Cir.2003) ("Ownership of the copyright is ... always a threshold question.") (quoting Topolos v. Caldeway, 698 F.3d 991, 994 (9th Cir.1983)).
Supplemental Instructions: Copyright Certificate
A copyright registration certificate can shift the burden of coming forward with proof of plaintiff’s ownership of a valid copyright. The certificate constitutes prima facie evidence of the validity of the copyright and facts stated in the certificate. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144–45 (9th Cir.2003). The judge may consider instructing the jury using Instruction 17.5 where: 1) the plaintiff submits no certificate of registration, or 2) the plaintiff produces a registration made five years after the date of the first publication, or 3) the plaintiff submits a registration made within five years of first publication and the defendant submits evidence to dispute the plaintiff’s ownership of a valid copyright.
If the plaintiff submits a registration made within five years of first publication the court might consider instructing the jury about the weight accorded such certificate of registration:
A person who holds a copyright may obtain a certificate of registration from the Copyright Office of the Library of Congress. This certificate is sufficient to establish the facts stated in the certificate, unless outweighed by other evidence in this case.
[Where defendant does not present evidence regarding validity or ownership of copyright: The evidence in this case includes Exhibit ___, a certificate of copyright registration from the Copyright Office. You are instructed that the certificate is prima facie evidence that there is a valid copyright in [identify the work in question].]
[Where defendant presents evidence regarding validity or ownership of copyright: The evidence in this case includes Exhibit ___, a certificate of copyright registration from the Copyright Office. [If you find that this certificate was made within five years after first publication of plaintiff’s work,] you may consider this certificate as evidence of the facts stated in the certificate. From this certificate you may, but need not, conclude that: [state specifics of the certificate relevant to the case, e.g., that plaintiff’s work is the original and copyrightable work of the author and that the plaintiff owns the copyright in that work], which I explain in Instructions [insert instruction numbers relevant to elements of plaintiff’s burden].]