Case: 1:19-CV-00093-GHD-DAS DOC #: 29 Filed: 01/12/21 1 Of 16 PageID #: 114
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF MISSISSIPPI
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`PATRICIA CHAMBERS, on her own behalf and
`As next friend on behalf of the minor child
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`SW.
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`v,
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`PLAINTIFF
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`CIVIL NO. 1:19-CV—O93—IGHD-DAS
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`STEPHANIE GREEN—STUBBS and
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`STEFANY’S VOCAL & PERFORMANCE TRAINING STUDIOS LLC,
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`DEFENDANTS
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`MEMORANDUM OPINION 0N DAMAGES
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`This matter arises from a Complaint filed by the Plaintiff in which she alleged against the
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`Defendants a claim for copyright infringement and sought from the Court a declaratory judgment
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`of fraudulent copyright registration [I]. The Defendant failed to respond to the Plaintiff‘s
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`Complaint, and the Plaintiff filed a Motion for Default Judgment [13]. The Court new rules on
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`the subject of damages. For the reasons discussed herein, the Plaintiff’s request for an award of
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`damages and attorney’s fees {1] is DENIED and the Piaintiff’s request for injunctive relief [1] is
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`GRANTED.
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`I.
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`I Procedural Posture
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`On May 13, 20} 9, the Plaintiff filed her Complaint against the Defendants alleging a ciaim
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`for copyright infringement and seeking from the Court a declaratory judgment of fraudulent
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`copyright registration [1]. Defendant Stephanie Green~Stubbs, acting in a pro se capacity and
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`identifying herself as Stephanie Denise Stubbs, filed a Motion for Additional Time on July 31,
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`20i9, on her own behalf and on behalf of Defendant Stefany’s Vocal & Performance Training
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`Studios, LLC [7]. The Plaintiff opposed the motion [8]. The Court granted .the Defendant’s
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`motion, giving her an additional fourteen days to file her answer to the Plaintiff‘s Complaint and
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`giving Defendant Stefany’s Vocal 85 Performance Training Studios, LLC, another twentyueight
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`days to file an answer through a licensed attorney [9]. Defendant Green-Stubbs filed a notice of
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`change of pro se address with the Court on September 23, 2019 [10]. The Defendants failed to file
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`an answer to the Plaintiff" s Complaint, or provide any explanation for this failure to answer.
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`On October 23, 2019, the Plaintiff filed a Motion for Entry of Default [11], and the clerk
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`entered a Default against the Defendants on October 24, 2019 [12]. On February 21, the Plaintiff
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`fried a Motion for Default Judgment [13], along with a corresponding Memorandum in Support of
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`Plaintiff’s Motion for Default Judgment [14]. The Court granted the Plaintiff" 3 Motion for Default
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`Judgment on March 11, 2020 [15]. After being rescheduled twice due to the COVlD—19 pandemic
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`{16; 17; 18; 19; 20; 21], a hearing on damages was held on September 17, 2020 [22; 24; 25].
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`II.
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`Factual Background
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`The Plaintiff alleged the following facts in her Complaint and in her Memorandum in
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`Support of Plaintiff’s Motion for Default Judgment [1; 14]. Since this Court granted the Plaintiff’s
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`Motion for Default Judgment [15], her well-plead allegations are taken as admitted. Nishimalsu
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`Coast. Co., Ltd. v. Houston Nat? Bank, 515 F.2d 1200, 1206 (5th Cir. 1975); CENTRIA v. Alply
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`Architectural Bldg. Syn, LLC, No. 4:11—CV—79-CWR-ILRA, 2012 WL 73235, at *4 (SD. Miss.
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`Jan. 10, 2012) (citation omitted).
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`At some point prior to this 1aWSuit, the Plaintiff, a songwriter, adopted her granddaughter
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`SW. after the death of her parents [1, 1] 4]. In October 2016, the Plaintiff hired Defendant Green-
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`Stubbs as S.W.’s vocal coach [1, 1] 5]. On or about February 24, 2017, the Plaintiff and thirteen—
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`year—old SW. created the melody and lyrics for their song “Shake Rag,” and the Plaintiff had the
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`lyrics notarized at Farmers and Merchant’s Bank in Moorevilie, Mississippi, as was her habit as a
`songwriter [14, at 3; 1-2}. The Plaintiff then approached Defendant Green~Stubbs about teaching
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`SW. to sing “Shake Rag” [14, at 3]. Shortly thereafter, the Defendant publicly acknowledged on
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`social media that the Plaintiff and SW. created the song [1.51; 1-3].
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`On April 11, 2017, SW. and Defendant Stubbs—Green recorded the vocals for the song
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`together after the Defendant claimed that SW. was too inexperienced to perform alone [1, W 9-
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`10]. At the recording studio, four musicians wrote sheet music based on S.W.’s melody, and used
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`this sheet music to accompany the singers SW. and Defendant Green-Stubbs [14, at 2]. At the
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`end of the session, the studio gave the recording, saved on a USB drive, to Defendant Green—
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`Stubbs, who also took the sheet music created by the four musicians [Id]. The Plaintiff and the
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`Defendant split the costs of the recording studio session and the payment to the musicians
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`that accompanied the singers [1, at ‘1] 9].
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`On April 19, 2017, Defendant Green~Stubbs fraudulently applied for registration of the
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`song “Shake Rag” with the US. Copyright Office [14, at 3]. She listed herself as the sole owner
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`of the song, as well as the only creator of its music, lyrics, and vocals [Id]. The US. Copyright
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`Office granted a copyright registration, Registration No. SR11001299941, to Defendant Green—
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`Stubbs for the song, which she titled “Shake Rag... Not Forgotten!” [Id],
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`In May 2017, the
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`Plaintiff discovered that the Defendant was claiming ownership of the song “Shake Rag,” and then
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`formally terminated the Defendant from her position as S.W.’s vocal coach [1, 1] 12].
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`In June
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`2017, S.W. recorded another version of the song, this time without the Defendant’s vocals and
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`with new music created by youth pastor Patrick Devaughn [Id at 1[ 13]. The Plaintiff and SW.
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`uploaded the new version of the song to Soundclick, an online music~sharing platform [1d,]. The
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`song became Soundclick’s number—one song in the Rockabilly and Country Music category, and
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`held that ranking for over two months [1d,].
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`Defendant Green~Stubbs then filed a Digital Millennium Copyright Act (DMCA)
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`takedown notice with Soundclick against S.W., which caused the removal of S.W.’s song from
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`Soundclick’s website [161.].
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`The Defendant also filed a DMCA takedown notice with
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`YouTubecom against S.W. [14, at 4]. Defendant Green—Stubbs publicly performed “Shake Rag”
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`several times, beginning with the 2017 Tupelo Elvis Festival, and claimed the song as her own at
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`these performances [1, 1114}. On August 6, 2017, the Defendant began selling the April recording
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`of the song, which featured S.W.’s vocals, on iTunes, Amazon Music, and other digital music
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`outlets [Id].
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`In September of that year, the song was featured in a film about Elvis Presley titled
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`“A Boy from Tupelo” and produced by Blue Magnolia Films [161.]. The film credits Defendant
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`Green—Stubbs as the composer of the song [151.].
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`It also contains footage of Defendant Green—
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`Stubbs singing the song and dancing with a group of children [1, 1[ 15]. The film has been
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`distributed to elementary schools in Mississippi [[6].]. The Defendant continues to distribute the
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`song [14, at 3].
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`The Plaintiff and S.W. received two copyright registrations in this case. The first, which
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`covers the words to the song “Shake Rag,” has an effective date of registration of October 31, 2017
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`[HQ]. The second copyright registration, which covers the sound recording, lyrics, and music for
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`the song, has a date of first publication of August 6, 2017, and an effective date of registration of
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`June 4, 2018 [l,1[ 16; 14; 13~3]. On April 9, 2019, the Plaintiff and SW. sent a letter to Defendant
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`Green—Stubbs demanding that she cancel her copyright registration for “Shake Rag” and cease and
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`desist the use of the song [1, 11 17; 1—5].
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`III.
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`Legal Standards
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`As noted above, this Court has already granted a Motion for Defauit Judgment in this case
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`in favor of the Plaintiff [15}, and so the remaining issues are the amount of damages and attorney’s
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`fees for which the Defendants are liable, as discussed in the Motion for Default Judgment, and the
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`request for injunctive relief and a declaratory judgment of fraudulent copyright registration, as
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`discussed in the complaint. During a separate hearing on the subject of damages, the Plaintiff is
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`permitted to present evidence on the claims themselves as well as evidence pertaining to the
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`amount of damages that she‘ has allegedly suffered at the hands of the Defendants. See Fed. R.
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`Civ. P. 55(b)(2).
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`A. Damages
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`A copyright infringer is liable for either (1) actual damages suffered by the copyright holder
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`as a result of the infringement and any of the infringer’s additional profits that are attributable to
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`the infringement and not taken into account in computing the actual damages 01' (2) statutory
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`damages. 17 U.S.C. § 504(a—b). Statutory damages equate to a sum of not less than $ 750 nor
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`more than $30,000, as the court deems just, for each work for which the infringer is liable.
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`17
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`U.S.C. § 504(c)(1). When the court finds that infringement was committed willfully, the court in
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`its discretion may increase the amount of statutory damages to a sum no greater than $150,000.
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`17 U.S.C. § 504(c)(2). Conversely, when the court finds that the infringer was not aware and had
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`no reason to believe that their acts constituted a copyright iufi'ingement, the court in its discretion
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`may reduce the amount of statutory damages to a sum no less than $200. Id.
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`However, as a general ruie, no award of statutory damages or attorney’s fees shall be made
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`for “(1) any infringement of copyright in an unpublished work commenced before the effective
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`date of its registration; or (2) any infringement of copyright commenced after first pubiication of
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`the work and before the effective date of its registration, uniess such registration is made within
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`three months after the first publication of the work.” 17 U.S.C. § 412. The Fifth Circuit has
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`established that “[t]0 recover statutory damages, a copyright owner must have registered his works
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`prior to infringement.” Energy Infelligcnce Group, Inc. v. Kayne Anderson CapifalAdvisors, LP.
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`9101., 948 F.3d 261, 278 (5th Cir. 2020).
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`The term “publication” is defined within the context of copyright law as “distribution of
`copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental,
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`iease, or lending.” 17 U.S.C. § 101. “The offering to distribute copies or phonorecords to a group
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`of persons for purposes of further distribution, public performance, or public display, constitutes
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`publication” but a “public performance or display of a work does not of itself constitute
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`publication.” Id. As was made clear in the treatise Nimmer on Copyrights, the term “publication”
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`under the 1909 Actewwhich originated the “publication” term of art—acquired the consent of the
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`copyright owner. See 1 Melville B. Niminer & David Niinmer, Numncr on Copyright § 4.03 (A)
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`(2019). While “the statutory definition under the current Act does not explicitiy require” that the
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`term “publication” refers to distributing copies of a work with the consent or authority of the
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`copyright owner, “such authorization is undoubtedly implied.” Id. at § 403(8). “Congress could
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`not have intended that the various legal consequences of pubiication under the current Act would
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`be triggered by the unauthorized act of an infringer or other stranger to the copyright.” Id. See
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`also 2110 v. Steeplechase Films, Inc, 267 F. Supp. 2d 1022, 1026 (ND. Cai. 2003) (quoting
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`Nimmer on Copyright and referring to case law to support the “inference that an act that
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`commences infringement does not publish an otherwise unpublished work”). The Copyright
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`Office aligns itself with Nimmer’s understanding of the term “publication,” defining the term “date
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`of first publication” as “the date that copies or phonorecords of the work were first pubiished with
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`the authorization of the copyright owner.” U.S. Copyright Office, Compendium ofU.S. Copyright
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`Office Practices § 612.4 (3d ed. 2017).
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`Thus, a defendant’s alleged acts of infringement cannot be considered “publication”
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`because the infringement occurred without the consent of the copyright owner and the statute
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`implicitly requires this consent. To read the statute without the implicit requirement regarding the
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`consent of the copyright owner would he to aiiow an infringer, rather than a copyright hoider, to
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`determine when the pubiic first gains access to a work. This would impermissibly damage the
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`copyright owner—by removing the owner’s ability to control when and how they present their
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`work to the publicwand reward the infringer for their bad behavior.
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`“The statute contemplates the interaction of three distinct events, the date of registration,
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`the date of first publication, and the date infringement commences. The available case law, while
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`not directly addressing the issue, seems to indicate that if a work is unpublished and unregistered
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`at the time of infringement, no statutory damages or attorney/*3 fees are available despite the fact
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`that the infringement itself may involve the unauthorized distribution of a copyrighted work.” 1d.
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`The Seventh Circuit reached a similar conclusion. See Harris Cusiom Builders, Inc. v. Hoffineyer,
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`92 F.3d 517, 52-21 (7th Cir. 1996). So did the First Circuit. See Society quoly Transfiguration
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`Monastery, Inc. v. Gregory, 689 F.3d 29, 46 (lst Cir. 2012) (holding that unauthorized circulation
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`of a work did not affect the ownership of the copyright).
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`Additionally, the term “commencement” within the context of copyright infringement
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`refers to the first act of infringement in a series of ongoing separate infringements. See Mason v.
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`Montgomery Data, Inc, 967 F.2d 135, 14344 (5th Cir. 1992). Thus, if a defendant’s first act of
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`infringement occurred while the copyrighted work was still unpublished and unregistered, then the
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`plaintiff is not entitled to statutory damages or attorney’s fees, even if the defendant’s second act
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`of infringement occurred during the three—month window between the date of first publication of
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`the plaintiff‘s copyrighted work and the effective date of registration of that work’s copyright.
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`Additionally, 17 U.S.C § 412 “bars statutory damage awards when a defendant violates
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`one of the six exclusive rights of a copyright holder preregistration and violates a different right in
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`the same work after registration.” Souihern Credentialing Simporf Services, LL. C. v. Hammond
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`Surgical Hospital, L.L.C., 946 F.3d 780, 786 (5th Cir. 2020). “[I]t remains the case that Congress
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`prohibited statutory damages when ‘any infringement’ precedes registration. Maintaining this rule
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`even when the infringements are ‘different in kind’ promotes the incentive for early registration
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`that Congress created.” Id. at 787 (quoting Qualey v. Caring Cir. ofSlide/l, 942 F. Supp. 1074,
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`1077 (ED. La. 1996)).
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`B. Fraud on the Copyright Office
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`Making a false representation to the Copyright Office is a criminal offense, not a private
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`right of action. See T00, Inc. v. Kohl ’S Department Siores, Inc, 210 F. Supp. 2d 402, 405
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`(S.D.N.Y. 2002). See also Pasiime LLC v. Sclvreiber, — F. Supp. 3d —, 2017 WL 6033434, at
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`*3—4 (S.D.N.Y. Dec. 5 2017) (“Nothing in the Copyright Act, nor any other federal statute, grants
`federal courts the power to cancei or nullify a copyright registration. . .. The Court notes, however,
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`that the absence of a cause of action for fraud on the Copyright Office comports with the absence
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`of a cause of action for canceilation of a copyright registration”) and Malibu Media, LLC v. Doe
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`I, 2013 WL 5603275, at *4 (quoting the treatise Fairy on Copyright to hold that “[fjraud on the
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`ii
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`Copyright Office is not an independent claim, but rather an attack on the primafacie validity
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`provided under Section 410(0)”).
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`“Hoiding that federal courts have the authority to cancel
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`registrations would essentially be declaring that the judicial branch has the authority to order a
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`legislative branch agency that is not a party to the litigation to take an affirmative action.”
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`Brownsfein v. Lindsay, 742 F. 3d 55, 77 (3rd Cir. 2014).] However, a court may invalidate a
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`copyright.
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`Id.
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`“A federal court’s finding that a copyright is invalid, on the other hand, is a
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`determination of ownership which does not disturb the registration of a copyright. Courts have no
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`authority to cancei copyright registrations because that authority resides exclusively with the
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`Copyright Office.” Id.
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`In the case of an ailegedly fraudulent application to the Copyright Office,
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`a court must seek guidance from the Copyright Office, as discussed in 17 U.S.C. § 411(b)(1~2),
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`which states:
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`(1) A certificate of registration satisfies the requirements of this section and
`section 412, regardless of whether the certificate Contains any
`inaccurate information, unless--
`(A) the inaccurate information was included on the appiication for
`copyright registration with knowledge that it was inaccurate; and
`(B) the inaccuracy of the information, if known, would have caused the
`Register of Copyrights to refuse registration.
`(2) In any case in which inaccurate information described under paragraph
`(1) is alleged, the court shali request the Register of Copyrights to
`advise the court whether the inaccurate information, if known, would
`have caused the Register of Copyrights to refuse registration.
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`17 U.S.C. § 4110))(1—2).
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`‘ Artiste 1, Section 8, Clause 8 of the US. Constitution grants Congress the power to establish and maintain a system
`for registering and overseeing copyrights. US. Const. art. I, § 8, cl. 8. The [1.8. Copyright Office is under the
`auspices of the Library of Congress, and is thus part of the iegislative branch of government. 17 U.S.C. § 701; see
`also US. Copyright Office, Circular 1a: A Brief Introduction and History,
`https:l/www.copyrightgov/cil'cs/circ i alumiii:~:text:As%20a%20sei‘vice%20nnit%2(}of,the%20iegislative%20bran
`ch%200f%20government.
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`“Instead of relying solely on the court’s own assessment of the Register’s response to an
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`inaccuracy, the statute obligates courts to obtain an opinion from the Register on the matter.”
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`DeliverMed Holdings, LLC v. Schaltenbmnd, 734 F. 3d. 616, 623 (7th Cir. 2013). See also Olem
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`Shoe Corp. V. Washington Shoe Co, 2010 WL 3505100, at *2—6 (SD. F1. 2010). The Court is
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`not bound by the Register’s opinion. See Schema/c v, Orosz, 105 F.Supp.3d. 812, 818 (MD. Tenn.
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`2015).
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`While a court lacks the power to cancei a copyright registration, it can issue an order
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`directing a party in a copyright infringement lawsuit to request from the Copyright Office that the
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`Office cancel the party’s own copyright registration through the voluntaIy cancellation procedure
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`dictated by the Copyright Office. See U.S; Copyright Office, Compendium of US. Copyright
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`Office Practices § 1807.4(F) (3d ed. 2017) (discussing court-ordered cancellations of a copyright
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`registration). Additionally, the Code of Federai Reguiations discusses the cancellation of a
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`completed registration:
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`Where registration has been made for a work which appears to be
`copyrightable but after registration the Copyright Office becomes aware that,
`on the administrative record before the Office, the statutory requirements
`have apparently not been satisfied, or that information essential to registration
`has been omitted entirely from the application or is questionable, or correct
`deposit material has not been deposited, the Office wiilcorrespond with the
`copyright claimant in an attempt to secure the required information or deposit
`material or to clarify the information previously given on the application. if
`the Copyright Office receives no reply to its correspondence within 30 days
`of the date the letter is sent, or the response does not resolve the substantive
`defect, the registration will be cancelled.
`‘
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`37 CPR. § 201.7(c)(4).
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`IV.
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`Analysis
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`A. The Plaintiff Has Failed to Prove Why She Is Entitled to Statutory
`Damages, in Light of 17 U.S.C. § 412
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`Based on the uncontroverted statements in the record and the fact that the Court is bound
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`to accept all well-plead allegations as admitted in this case due to the Default Judgment issued by
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`this Court, it is clear that the owner of the copyright for the words for the song “Shake Rag” are
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`the Plaintiff and S.W. Additionally, the record shows that Defendant Green-Stubbs falsely claimed
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`ownership of this work in her application for copyright registration, and infringed on the Plaintiff 5
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`copyright by performing, reproducing, distributing, and creating derivatives of the Plaintiff“ s work
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`without her authorization.
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`As noted above, 17 U.S.C. § 412—which relates to the applicability of statutory damages
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`in copyright infringement caseswdeals with the interaction of three specific dates: the date of first
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`publication, the date of the commencement of infringement, and the date of registration.
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`In the
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`case subjridice, the date of registration is easiest to pin down: October 31, 2017 [13-2]. Therefore,
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`for the Plaintiffto be eligible for statutory damages, the date offirst publication must be on or after
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`July 31, 2017, i.e. three months prior to the date of registration. Additionally, the Defendant’s
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`infringement must have commenced during the time period between the date of first publication
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`and the date of registration.
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`The record is unclear as to the date of first publication in this case. The Plaintiff has stated
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`in court that the date of first publication occurred within the three months prior to the date of
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`registration [23, at 19, 1. 4-7]. However, the Plaintiff failed to provide a specific date of first
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`publication. The Court stresses that the statute’s definition of the term “publication” implicitly
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`includes a requirement that publication occurs only with the consent of the copyright owner. See
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`11
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`Part 111A. Since the copyright owner obviously did not consent to the infringement of their work,
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`the Defendant cannot trigger publication. Thus, the date that the Defendant published her
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`infringing song on the Internet cannot be considered the date of first publication.
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`Looking at the record, it appears as though the Piaintiff may have intended to argue that
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`the date of first publication for her first copyrighted work—the words to the song “Shake Rag—"is
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`the same date of first publication as their second copyrighted work—Mme sound recording, lyrics,
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`and music to the song “Shake Rag” [Compare i3~2 with 13~3]. This date is August 6, 2017 {13—
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`3}. The Court notes that the only copyrighted work at issue regarding statutory damages is the
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`first copyrighted Work. HoweVer, the Plaintiff failed to make this specific argument in court, and
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`the Court hesitates to do so here. Even if this were the Piaintiff s intended argument, it is undercut
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`by the fact that the Plaintiff failed to provide this publication information for her first copyright
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`registration, suggesting that at the time of registration of the first copyright work, the work was
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`stili considered to be unpubiished. Citing 17 U.S.C. § 409(8), the Compendium of Copyright
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`Office Practices states that “[i]f the Work described in the application has been published, the
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`applicant must specify the date of publication and nation of first publication for that work.” U.S.
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`Copyright Office, Compendium ofU.S. Copyright Office Practices § 612.1 (3d ed. 2017).
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`Moreover, it is unclear whether the publication of a sound recording of a song can be
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`considered publication for the words of the songs themselves, in Eight of the fact that a sound
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`recording is a separate copyrightable work. If the Plaintiff intended to argue that this is in fact the
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`case, then they would have needed to provide legal support for that argument. Alternatively, the
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`Piaintiff could have provided evidence demonstrating that printed copies of the copyrighted words
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`12
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`were distributed with the sound recording on August 6, 2017. However, the Plaintiff failed to
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`provide this evidence. As a result, the exact date of first publication remains unclear.
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`Even setting this issue aside, the Plaintiff must clear a taller hurdle:
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`the date of the
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`commencement of the infringement. The Plaintiff made no mention of this issue in court.
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`Moreover, the record suggests that infringement commenced prior to July 31, 2017, while the work
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`was still unpublished. The Plaintiff’s Complaint states that the Defendant “engaged in several
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`local performances claiming ‘Shake Rag’ as her own, beginning with the 2017 Tupelo Elvis
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`Festival” [1, ll 14]. The Court takes judicial notice of the fact that this festival occurred June 1—4,
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`2017,2 and would set the date of the commencement of infringement at June 4, 2017, at the latest,
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`depending on the date the Defendant performed.
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`Another question relates to the Defendant’s fraudulent application to the U.S. Copyright
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`Office, which occurred on April 19, 2017, according to the Plaintiff [1, 1] 11]. The question is
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`whether this fraudulent application infringed on the Plaintiff’s unpublished work. To be clear,
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`infringement occurs when an infringer violates the copyright owner’s rights listed in 17 U.S.C. §
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`106, subject to §§ 107—122. See 17 U.S.C. § 501(a). Section 106 states:
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` i
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`ll
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`Subject to sections 107 through 122, the owner of copyright under this title
`has the exclusive rights to do and to authorize any of the following:
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`1)
`2)
`3)
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`4)
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`to reproduce the copyrighted work in copies or phonorecords;
`to prepare derivative works based upon the copyrighted work;
`to distribute copies or phonorecords of the copyrighted work to the
`public by sale or other transfer of ownership, or by rental, lease, or
`lending;
`in the case of literary, musical, dramatic, and choreographic works,
`pantomimes, and motion pictures and other audiovisual works, to
`perform the copyrighted work publicly;
`
`2 See W. Derek Russell, Annual Tupeio Elvis Festival kicks oflfoday, DAILY JOURNAL (June 1,2017),
`https:l/www.djom'nal.com/lifestyle/arts—entertainment/annual-tupelo-elvis-festival-kicks~off-today/article__28020a9e—
`4cbf—5 Ic7~9t312~7lc4af3b29l5.11tml.
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`Case: 1:19-CV-00093-GHD-DAS DOC #: 29 Filed: 01/12/21 14 Of 16 PageID #: 127
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`5)
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`6)
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`in the case of literary, innsical, dramatic, and choreographic works,
`pantomimes, and pictorial, graphic, or sculptural works, including
`the individual images of a motion picture or other audiovisual Work,
`to display the copyrighted work publicly; and
`p
`in the case of sound recordings, to perform the copyrighted work
`publicly by means of a digital audio transmission.
`
`Filing a fraudulent application does not reproduce the copyrighted works; distribute copies
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`to the public; perform the work publicly; or display the work publicly. Since the copyrighted work
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`is not a sound recording, the sixth right is not applicable. However, filing a fraudulent application
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`could be considered “preparation” for the creation of derivative works, i.e. the second right. A
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`stronger argument would be that filing a fraudulent application vioiates a copyright owner’s right
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`to authorize these protected actions, because filing a fraudulent application unlawfully claims that
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`the infringer has the authority to use the copyrighted work.
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`Regardiess of whether the date of the commencement of infringement is the date of the
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`fraudulent application or the date that the Defendant began performing the infringing work in
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`public, the infringement commenced while the work was stili unpublished. Even if the Plaintiff
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`were to argue that the work was published on these dates, there is no way that this hypothetical
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`date of first publication occurred within three months of the effective date of registration, October
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`31, 2017.
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`In short, the Plaintiff has failed to provide a cogent argument as to why 17 U.S.C. § 412
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`should not appiy to her case. Simiiariy, the Plaintiff has failed to provide any support for the
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`argument that her case comports with the confines of § 412 and that she is entitled to statutory
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`damages and attorney’s fees, in light of the constraints stipulated by that statute. While this statute
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`does leave open the possibility of actuai damages, the Plaintiff has said in court that she has opted
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`Case: 1:19-CV-00093-GHD-DAS DOC #: 29 Filed: 01/12/21 15 Of 16 PageID #: 128
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`to seek statutory damages from the Court, rather than actual damages [23, at p. 17, in. 1.16 to p.
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`19, in. 1.9].
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`B. The Court Lacks the Power to Invaiidate a Copyright Registration 'But
`Determines Ownership of a Copyright in Favor of the Plaintiff and
`Directs the Defendant to Request from the Copyright Office that the
`Office Cancei the Defendant’s Registration
`
`The Court is empowered to determine ownership of the copyright for the song “Shake Rag”
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`and it has done so through its Order Granting Default Judgment in faVor of the Plaintiff. However,
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`the Court lacks the power to nuilify a copyright registration. See supra Part III.B. Additionally,
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`the iaw requires this Court to seek counsel from the Register of Copyright to determine whether
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`the fraudulent information would have caused the Register to refuse to register the Defendant’s
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`copyright. Id. The Court has done this as well [26]. The Copyright Office has informed the Court,
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`in a letter responding to the Court’s request for counsel from the Office, that “[h]ad the Office
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`been aware at the time the application was flied that Green-Stubbs was neither the author nor the
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`owner of any exclusive rights in the Musical Work, it would not have issued her a registration for
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`the Musical Work” [27]. Thus it is clear that the Copyright Office agrees with the Court’s
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`determination discussed above that the Defendant is not entitled to her copyright registration.
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`It is within the power of this Court to order the Defendant to request from the Copyright
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`Office that it cancel her copyright registration. See US Copyright Office, Compendium of [1.8.
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`Copyright Office Practices § 1807.4(E) (36 ed. 2017). Additionally, the Court presumes that the
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`Register, after being made aware of the issues in this case, will begin its own process of cancelling
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`the Defendant’s copyright registration, as discussed in 37 C.F.R. § 201 .7(c)(4). The Plaintiff can
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`seek clarification from the Copyright Office regarding the status of this copyright registration, and
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`Case: 1:19-CV-00093-GHD-DAS DOC #: 29 Filed: 01/12/21 16 Of 16 PageID #: 129
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`whether the Office has begun the cancellation process independent of the Defendant, after being
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`made aware of the facts of this case by this Court through its request for an opinion.
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`V.
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`Conclusion
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`For the reasons stated above, this Court finds that:
`
`(1)
`(2)
`(3)
`
`(4)
`
`(5)
`(6)
`
`(7)
`(3)
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`The Plaintiff is the owner of the copyright for the words to the song “Shake Rag”;
`The Defendant infringed on the Plaintiff’s copyright;
`The Defendant fraudulently acquired a copyright registration from the U.S.
`Copyright Office for the Plaintiff’s copyright;
`The Court lacks the power to cancel the Defendant’s copyright registration directly
`but can order the Defendant to request from the Copyright Office that it cancel her
`copyright registration;
`The Plaintiff is entitled to injunctive relief;
`The Plaintiff has failed to demonstrate why 17 U.S.C. § 412 does not apply in this
`case;
`
`The Plaintiff is not entitled to statutory damages;
`The Plaintiff has neither requested nor presented any evidence of actual damages;
`and
`
`(9)
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`The Plaintiff is entitled to an award of court costs, to be paid by the Defendant.
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`An order in accordance with this opinion shall issue this day detailing the injunctive relief
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`for the Plaintiff and ordering the Defendant to act toward cancelling her copyright registration.
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`THIS, the I :1 day ofJanuary, 2021.
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`SENIOR U.S. DISTRICT JUDGE
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