Copying Unregistered Derivative Work Was Not Infringement

by Janette Spencer-Davis, Legal Editor, CCH Copyright Law Reports   

    In addressing a question of first impression for the Ninth Circuit, the federal district court in Phoenix found that a separate registration of a derivative work is a prerequisite to an action for infringement of that derivative work. However, the district court held that a home builder did not infringe a home designer's copyright in an architectural floor plan when it copied an unregistered derivative work. Accordingly, the home builder's motion for summary judgment was granted

    While Section 411(a) of the Copyright Act requires that registration of a copyright claim be made before an action for infringement of that copyright can be instituted, it does not distinguish between derivative and original works. However, a review of multi-circuit authorities, coupled with a plain reading of the Copyright Act, persuaded the district court that the jurisdictional prerequisite of registration applied to derivative works.

    Notwithstanding the fact that registration of a derivative work was required, liability for infringement still could have been found if, by copying the unregistered derivative, the home builder infringed the original elements of the home designer's underlying registered work. The homebuilder's allegedly infringing plan was a derivative of the unregistered derivative it copied, a derivative of a derivative, which in turn was a derivative of the home designer's underlying registered floor plan. To prove infringement of the original copyrighted plan, the home designer had to show that the homebuilder's derivative plan copied the protectable elements of the home designer's original plan, and that they were substantially similar. However, a detailed comparison of the allegedly infringing and the infringed plans revealed very little similarity. Rather, the distinguishing features of the plans were vastly different. Therefore, no infringement occurred (Dalton-Ross Homes, Inc. v. Williams, DAriz, ¶29,424).

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