for [the derivative work] was sufficient compliance with the registration requirement of § 411(a)" to permit the plaintiff to maintain an action for infringement of the preexisting work. 775 F. Supp. at 556-57. This holding was neither addressed nor disturbed on appeal, wherein the Second Circuit termed Judge Pratt's opinion "comprehensive and scholarly." 982 F.2d at 697. See also Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190, 1198-99 (D.Del. 1974) (registration for catalog sufficient for suit for infringement of preexisting works contained therein) (cited in Nimmer, supra).
Therefore, in light of the fact that Greenwich is the owner of copyrights in the musical compositions contained on the soundtrack of the motion picture "DIVA", the registration certificate for "DIVA" is sufficient to cover the compositions as well. Cases cited by DRG to the contrary are clearly distinguishable. See Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 632 (2d Cir. 1982) (registration for derivative work does not cover underlying work which was in the public domain and thus not copyrightable); Morita v. Omni Publ. Int'l, Ltd., 741 F. Supp. 1107, 1111 (S.D.N.Y. 1990) (registration of poster does not extend to sculpture depicted therein where registrant's ownership of copyright in sculpture not established, claimant specifically disclaimed copyright in preexisting material, and court noted that even if registration were established, infringed work differed from depicted sculpture), vacated, 760 F. Supp. 45 (1991).
The supplementary registration applications do not enlarge the scope of copyright protection impermissibly as DRG contends, see Memorandum of Law in Opposition pp.6-7, but merely clarify certain of the subject matter which has been registered.
There is no dispute that Greenwich has submitted documents to the Copyright Office in order to record the transfer of copyrights in the musical compositions from Cosma to it in accordance with this Court's previous opinion. However, DRG contends that the Copyright Act requires not merely submission, but actual recordation, before suit may be brought on copyrights transferred. Greenwich replies that the Copyright Office's return of its cover letter with the described notation indicates that recordation has taken place, and that representatives of the Copyright Office have represented that due to a seven-month backlog in filings a certificate of recordation would not issue until August 1993 at the earliest.
17 U.S.C. § 205(d) provides in pertinent part: "No person claiming by virtue of a transfer to be an owner of copyright or of any exclusive action under a copyright is entitled to institute an infringement action under this title until the instrument of transfer under which such person claims has been recorded in the Copyright Office. . ." Although what proof is required of recordation is not specified, § 205(b) provides that "the Registrar of Copyrights shall, upon receipt of a document as provided by subsection (a) and of the fee provided by section 708, record the document and return it with a certificate of recordation." Since the evidence established only that the documents were received, and not that actual recording has in fact taken place, it would not be appropriate to find that the transfer has yet been recorded. See Patch Factory, Inc. v. Broder, 586 F. Supp. 132, 133-34 (N.D. Ga. 1984) (proof of receipt of transfer filing insufficient to prove recordation); cf. 3 Nimmer on Copyright § 12.08 & n.18 (noting that some courts, faced with failure to record a transfer, have permitted filing an amended complaint after such recordation, and noting specifically that "this assumes that recordation has, in fact, occurred, and not merely that the relevant document has been received in the Copyright Office").
Errors in Registration Certificate
DRG contends that because registration certificate no. PA 536 953 incorrectly identifies the contributed material as a "work for hire" it cannot extend registration to the underlying compositions. Minor mistakes in a registration statement, made in good faith and unaccompanied by deceptive intent, will not serve to invalidate registration. Gund, Inc. v. Swank, Inc., 673 F. Supp. 1233, 1237 (S.D.N.Y. 1987).
The remaining issues raised by DRG merit only brief discussion.
DRG claims that to allow Greenwich to rely on registration no. PA 536 953 at this stage would be prejudicial, as DRG has had no notice that Greenwich was seeking to depend on this registration. DRG claims it would be prejudiced "since no discovery on a myriad of issues concerning the copyright in the motion picture has been afforded defendants, such as the compliance of this work with copyright notice requirements, the agreements relating to creation of the film, or plaintiff's relationship to the copyright registrant 'Les Films Galaxies Greenwich Films Production'." However, DRG has failed to demonstrate or explain how any issues relevant to the validity of the copyright on the underlying compositions are newly raised by the reference to the motion picture registration certificate; we note too that defendants' last contention was dealt with in the previous opinion.
In addition, defendants attempt to raise the issues of whether the entire musical soundtrack from "DIVA" has been injected into the public domain and whether Greenwich should be estopped from asserting its copyrights. These issues were fully addressed in the Court's prior opinion, and there is no reason to re-visit them. The previous rulings stand.
For the foregoing reasons, the Court will enter partial summary judgment on the issue of copyright infringement liability upon Greenwich's establishing that the transfer of copyrights has been duly recorded. This case is hereby set for conference on October 28, 1993 at 4:00 p.m.
August 31, 1993
JOHN S. MARTIN, JR., U.S.D.J.