PRECEDENTIAL
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE THIRD CIRCUIT
`_____________
`
`No. 12-2506 & 12-4471
`_____________
`
`
`
`PETER BROWNSTEIN,
` Appellant
`
`v.
`
`TINA LINDSAY; ETHNIC TECHNOLOGIES
`
`_____________
`
`APPEAL FROM THE UNITED STATES
`DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`(D.C. Civ. Action No. 3:10-cv-01581)
`District Judge: Honorable Joel A. Pisano
`______________
`
`Argued July 10, 2013
`______________
`
`Before: GREENAWAY, JR., SLOVITER, and BARRY,
`Circuit Judges.
`
`(Filed: January 29, 2014)
`
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE THIRD CIRCUIT
`_____________
`
`No. 12-2506 & 12-4471
`_____________
`
`
`
`PETER BROWNSTEIN,
` Appellant
`
`v.
`
`TINA LINDSAY; ETHNIC TECHNOLOGIES
`
`_____________
`
`APPEAL FROM THE UNITED STATES
`DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`(D.C. Civ. Action No. 3:10-cv-01581)
`District Judge: Honorable Joel A. Pisano
`______________
`
`Argued July 10, 2013
`______________
`
`Before: GREENAWAY, JR., SLOVITER, and BARRY,
`Circuit Judges.
`
`(Filed: January 29, 2014)
`
`
`
`
`
`Jay R. McDaniel, Esq. [ARGUED]
`McDaniel Law Firm
`54 Main Street
`Hackensack, NJ 07601
`Counsel for Appellant
`
`
`Thomas S. Howard, Esq. [ARGUED]
`Kirsch, Gartenberg & Howard
`Two University Plaza
`Suite 400
`Hackensack, NJ 07601-0000
`Counsel for Appellees
`
`
`
`______________
`
`OPINION
`______________
`
`
`
`GREENAWAY, JR., Circuit Judge.
`
`
`
`This case concerns Appellant Peter Brownstein’s claim
`under the Copyright Act seeking a declaratory judgment of
`joint authorship of an ethnic identification system that he
`created with Appellee Tina Lindsay, the Lindsay Cultural
`Identification Determinate (“LCID”). Lindsay purports to
`have conveyed the copyrights to the LCID to Appellee Ethnic
`Technologies (“E-Tech”). The contested work is a computer
`program that implements rules for identifying the ethnicity of
`proper names for the purposes of direct marketing. In
`addition to a declaration of his joint authorship, Brownstein
`
`
`
`2
`
`
`
`the ethnic
`the profits from
`sought an accounting of
`identification system. In response, Appellees counterclaimed
`to cancel the copyright registrations that Brownstein had
`received for the system’s computer code, which was his
`contribution to the work.
`
`After the District Court denied summary judgment, the
`
`case went to trial. At the end of Brownstein’s case, the
`District Court granted Appellees judgment as a matter of law
`under Rule 50(a) on Brownstein’s joint authorship claim.
`Fed. R. Civ. P. 50(a). The District Court found that
`Brownstein’s claim was time-barred and that he could not
`succeed on the merits of his claim based on the evidence
`adduced at trial. The District Court severed Appellees’
`counterclaim and later issued an opinion granting summary
`judgment to Appellees on their counterclaim.
`
`This appeal presents two issues of first impression for
`
`our Circuit. The first is when a joint authorship claim under
`the Copyright Act arises and accrues and the second is
`whether courts have the authority to cancel copyright
`registrations. For the following reasons, we hold that an
`authorship claim arises and accrues when a plaintiff’s
`authorship has been “expressly repudiated”. We also hold
`that courts have no authority to cancel copyright registrations.
`We will reverse both the District Court’s grant of judgment as
`a matter of law to Appellees and its grant of summary
`judgment to Appellees on their counterclaim. Also, we will
`remand the case for a new trial.
`
`I. BACKGROUND
`
`A. BROWNSTEIN’S RELATIONSHIP WITH LINDSAY AND E-
`TECH
`
`
`
`3
`
`
`
`1. The Beginning
`
`Brownstein and Lindsay worked together at Future
`
`Prospective Clients, Inc. (“FPCI”), a direct mailing list
`company, when
`they began developing
`the ethnic
`identification system. FPCI later assumed a new corporate
`identity, List Services Direct, Inc. (“LSDI”).1 Beginning
`around December 1993, Lindsay began devising the idea and
`developing the rules for categorizing names by ethnicity (e.g.,
`by looking at first names, last names, suffixes, prefixes, and
`geographic location). These rules became known as the
`Ethnic Determinate System (“EDS”) — they could be written
`out in text, just as one might write out a recipe or driving
`directions. The system would use this set of rules to run a
`computer program that would predict the ethnicity of a
`random list of names from a direct mailing database.
`
`In January 1994, Lindsay enlisted Brownstein to turn
`
`her rules into computer code. This required Brownstein to
`code a number of computer programs that did everything
`from rewriting a list of names into the proper data format for
`processing to turning Lindsay’s rules into computer code.
`These programs became known as the ETHN programs.2
`Over the years, Brownstein improved and updated the ETHN
`programs, with each new generation of programs being a
`
`
`1 For our purposes, the two are interchangeable.
`
`2 The programs are called the ETHN programs because they
`were named ETHN04, ETHN05, etc. The computer code
`they contained were scripts of written commands that would
`be read by a computer, which would then execute the
`commands to perform the functions listed in the code.
`
`
`
`4
`
`
`
`distinct work from the previous generation. The combined
`system of Lindsay’s rules and Brownstein’s computer code
`was named the LCID. The result was that Lindsay was the
`sole author of the EDS, as an independent work of the LCID,
`Brownstein was the sole author of the ETHN programs, as
`another independent work of the LCID, and they both had an
`equal authorship interest in the LCID as a joint work of the
`EDS and the ETHN programs.
`
`Lindsay and Brownstein did much of their work on the
`
`LCID during company time. In June 1996, they incorporated
`TAP Systems, Inc. (“TAP”) to commercialize the LCID.
`Lindsay and Brownstein were equal owners of TAP and the
`LCID became known as the TAP system.
`
`Lindsay and Brownstein also decided to register the
`
`copyrights to their work for extra security. Lindsay received
`her first copyright registration for the EDS in February 1996,
`entitled “An Ethnic Determinant System — Knowledge and
`Rule/Exception Basis”. Copyright Registration No. TXu 730-
`872 (the “‘872 registration”). Later that year, in December
`1996, Lindsay received a second copyright registration to
`protect her improved version of the EDS, which carried the
`same title. Copyright Registration No. TXu 778-127 (the
`“‘127 registration”). As such, the second registration was for
`a “derivative work” of the first registration.3 The difference
`with the second registration is that she included a copy of
`Brownstein’s ETHN programs as a “deposit copy” for the
`‘127 registration and several fields of the registration
`
`
`3 As will be discussed infra, a derivative work is an
`independently copyrightable work that is based upon a
`preexisting work. 17 U.S.C. § 101.
`
`
`
`5
`
`
`
`application referenced a “computer process” and “codes”
`associated with the copyright.4 Lindsay applied for and
`secured both copyright registrations on her own, without the
`involvement of Brownstein, and listed herself as the only
`author. She then gave Brownstein a copy of the copyright
`registrations to hold for safekeeping — he claims that he
`never reviewed the registrations until many years later,
`shortly before trial.
`
`In the fall of 1996, Lindsay and Tom Raskin, an
`
`executive at LSDI, had a confrontation over the copyright
`registration she had filed earlier that year for the EDS, which
`Brownstein overheard and recounted in a 1997 affidavit.
`Raskin demanded that she turn over the copyright registration
`to him because he believed that LSDI was the rightful owner
`of her system. Lindsay refused, which infuriated Raskin to
`no end (and would cause Raskin to later sue Lindsay and
`Brownstein). Eventually, with tension building between the
`LSDI management and the duo, and their venture gaining
`steam, they both left LSDI in June 1997.
`
`Throughout this whole time, Brownstein let Lindsay
`
`handle TAP’s business affairs. He was so focused on
`programming code for the LCID that he claims that he did not
`know of a 1997 software license purportedly granting TAP
`ownership of the LCID until 2009.
`
`2. The Progress of TAP
`
`
`4 As will also be discussed infra, a deposit copy must be
`submitted with most registrations in order to provide an
`example of the registered work. 17 U.S.C. §§ 407(a), 408(b).
`
`
`
`6
`
`
`
`Over the course of several years, Lindsay executed a
`
`number of agreements to form new business entities to
`promote the LCID and to transfer ownership of the LCID to
`those entities.
`
`On June 1, 1997, Lindsay unilaterally attempted to
`
`grant TAP ownership of the LCID (the combined system of
`her rules and Brownstein’s ETHN programs). (App. 663
`(Software License Agreement, June 1, 1997).) By doing so,
`Lindsay had hoped that TAP would own the LCID and be
`able to exploit it freely. Lindsay was the only signatory to
`that 1997 Software License — she signed both as the
`“Copyright Holder” of the LCID and the agent of TAP.
`Brownstein was not a signatory to the license, nor was he
`asked to be one.
`
`Later that year, Lindsay and Brownstein decided to
`
`partner with one of their former employers, Consumers
`Marketing Research, Inc. (“CMR”), to create E-Tech, a joint
`venture between the two companies. A September 26, 1997
`License Agreement (the “1997 Agreement”) was signed only
`by Linsday and CMR’s executive, Ginger Nelson. The 1997
`Agreement listed Lindsay and Brownstein as executive
`officers of the new venture (which was just called the “LLC”
`until a superseding agreement in 2000 formally named the
`venture “Ethnic Technologies, LLC”). (App. 631.) The
`parties agreed to combine CMR’s technology with the LCID
`(which was referred to as the “TAP SYSTEM”), the
`combination of which would be called the E-Tech system.
`The agreement also acknowledged that TAP owned the
`LCID. The superseding December 28, 2000 Agreement (the
`“2000 Agreement”) largely mirrored the 1997 Agreement,
`except that it formally called the joint venture “Ethnic
`Technologies, LLC” and the combined system “E-Tech”.
`
`
`
`7
`
`
`
`(App. 639.) Lindsay and Nelson were also the only
`signatories to the 2000 Agreement, although Brownstein
`initialed three corrections made to the agreement. (App. 640-
`41.) Thus, while Brownstein can be imputed with knowledge
`of these agreements as a 50% owner of TAP and an executive
`of E-Tech, he never signed the agreements.
`
`As an E-Tech executive, Brownstein executed five
`
`licensing agreements to E-Tech customers between 2000 and
`2005. (App. 695-702 (2001 Agreement with Edith Roman
`Associates); App. 702-06 (2002 Agreement with Wells
`Fargo); App. 707-13 (2002 Agreement with Penn Media);
`App. 714-20
`(2003 Agreement with Merkle Data
`Technologies); App. 721-27 (2005 Agreement with Central
`Address Systems,
`Inc.).)
` One of
`these agreements
`acknowledged that the E-Tech system was the “exclusive
`property” of E-Tech, while the four others acknowledged that
`E-Tech “owns all rights, including copyrights” to the E-Tech
`system.
`
`
`
`8
`
`
`
`3. The Aftermath
`
`The remainder of Brownstein’s relationship with E-
`
`Tech was marred by three lawsuits: the first initiated by LSDI
`in federal court, the second initiated by him in New Jersey
`state court, and the third initiated by him in federal court.
`Although Brownstein did not sign any of the aforementioned
`licensing agreements (including the 1997 Software License,
`1997 Agreement, and 2000 Agreement), he did sign the two
`settlement agreements related to litigation with LSDI in 1998
`and the New Jersey state court oppressed shareholder lawsuit
`in 2009.
`
`In 1998, LSDI and Raskin (Lindsay and Brownstein’s
`
`former employer) sued TAP in the District of New Jersey
`over its use of the LCID. That action eventually settled in
`September 1998, with LSDI retaining rights to the ETHN
`programs written up to that point (and any derivative works
`or modifications thereof), referred to as the “LSDI Program”,
`and TAP retaining the rights to the EDS (and any derivative
`works or modifications thereof).5
`
`The September 18, 1998 Settlement Agreement (the
`
`“1998 Settlement Agreement”) from the LSDI litigation
`stated 1) that Lindsay and Brownstein would not claim rights
`to
`certain
`computer programs
`and derivatives or
`modifications thereof (the “LSDI Program”) and 2) that they
`had rights
`to Lindsay’s copyrights.
` (App. 2768-69
`(Settlement Agreement ¶¶ 1-3).)
` Notably,
`the 1998
`
`
`5 We need not determine whether post-1998 versions of the
`ETHN programs are derivative works of the LSDI Program
`since that issue is not before us on appeal.
`
`
`
`9
`
`
`
`Settlement Agreement equated the EDS with the LCID
`(“EDS which may be called LCID”) — the District Court in
`this litigation found this to be a critical fact.6 (App. 2769
`(Settlement Agreement ¶ 3).)
`
`In May 2009, Brownstein left E-Tech on bad terms.
`
`He filed an oppressed shareholder lawsuit against Lindsay
`and E-Tech in the Superior Court of New Jersey. This
`litigation settled
`in May 2010.
` During
`this period,
`Brownstein filed for his own copyright registrations in
`December 2009, which covered his ETHN programs.
`
`The May 25, 2010 Settlement Agreement (the “2010
`
`Settlement Agreement”) from the New Jersey state court
`oppressed shareholder lawsuit 1) stated that the terms of the
`settlement would not affect the lawsuit leading to this appeal,
`which was then pending, 2) forced Brownstein to relinquish
`his interests in E-Tech, and 3) released the defendants
`(Lindsay and E-Tech) and Brownstein from related claims.
`(App. 519-24 (Settlement Agreement ¶¶ 2.6, 3.3, 5.1.1,
`5.1.2).) Specifically, this 2010 Settlement Agreement vitiated
`Brownstein’s “right, title, and interest” as a “shareholder,
`officer, employee or director in TAP or as manager, partner,
`member, officer, director or employee of E-Tech”. (App.
`520-21 (Settlement Agreement ¶ 2.6).)
`
`Nevertheless, it was not until March 2010 that
`
`Brownstein took affirmative steps to protect his joint
`authorship of the LCID by filing the instant lawsuit seeking
`
`
`6 As will be noted infra, the District Court’s assumption was
`incorrect because the 1998 Settlement Agreement could not
`define the scope of Brownstein’s and Lindsay’s copyrights.
`
`
`
`10
`
`
`
`declaratory judgment of his authorship of the LCID (and, by
`virtue thereof, his ETHN programs) against Lindsay and E-
`Tech. This lawsuit was instigated by Lindsay’s 2010
`deposition
`testimony
`for
`the New Jersey oppressed
`shareholder lawsuit, in which she confirmed what Brownstein
`had not intuited until then: She had submitted Brownstein’s
`ETHN programs with her second copyright registration, the
`‘127 registration, and might be claiming sole authorship of
`the LCID as a result. In total, he waited 14 years from the
`date of Lindsay’s copyright registrations, 1996, to file a
`lawsuit.
`
`
`
`B. THE DISTRICT COURT PROCEEDINGS
`
`On March 22, 2010, Brownstein filed his complaint in
`
`this instant action, which sought a declaratory judgment of
`joint authorship of the LCID, an accounting of the profits
`from his joint authorship of the LCID, and replevin of
`physical copies of the ETHN programs allegedly kept at E-
`Tech’s offices. Lindsay and E-Tech filed a counterclaim to
`cancel Brownstein’s 2009 copyright registrations to the
`ETHN programs.
`
`In February 2012, a jury trial was held in this action —
`
`the only witnesses called were Brownstein and Lindsay.
`Brownstein testified first; Lindsay was then called and
`Brownstein’s counsel conducted his direct examination.
`Before Appellees’ counsel called Lindsay as their own
`witness, Appellees moved under Rule 50 for judgment as a
`matter of law. The following day, the District Court heard
`oral argument on the motion and ruled from the bench in
`Appellees’ favor.
`
`
`
`
`
`11
`
`
`
`1. The Rule 50(a) Ruling from the Bench (Brownstein’s
`Claim for Joint Authorship of the LCID)
`
`The District Court granted Rule 50(a) judgment as a
`
`matter of law in favor of Appellees on Brownstein’s joint
`authorship claim.7 Foremost, the basis of the District Court’s
`ruling was that the statute of limitations under the Copyright
`Act had run since Brownstein had adequate notice of his
`authorship claim more than three years prior to filing his
`complaint. (App. 1127-34 (Trial Tr. 333:9-340:3).) As the
`District Court framed it, “[W]hy did [Brownstein] wait 14
`years and [until after] all of the other ensuing events without
`saying anything about it?” (App. 1130 (Trial Tr. 336:15-16).)
`
`Under the “discovery rule”, the District Court found
`
`that there were sufficient “storm warnings” to Brownstein
`that Lindsay was claiming sole authorship of the LCID, as far
`back as 1996. Finding that Lindsay’s act of registering her
`copyrights started the statute of limitations running, the
`District Court explained that “there is evidence that the
`injurious act [of Lindsay applying for copyright registration]
`was actually known as far back as 1996.” (App. 1131 (Trial
`Tr. 337:13-21).) The District Court found it dispositive that
`Brownstein not only had the copyright registrations in his
`possession but that he also had “actual knowledge” of the
`series of agreements and the 1996 argument between Lindsay
`and Raskin, all of which showed that Lindsay was holding
`herself out as the sole author of the LCID. (App. 1133 (Trial
`Tr. 339:10-24).) In particular, the District Court found that
`Brownstein had
`conceded
`that Lindsay’s
`copyright
`
`
`7 There was also the replevin claim that the District Court
`dismissed, but Brownstein has not appealed this decision.
`
`
`
`12
`
`
`
`registrations covered the LCID because he signed the 1998
`Settlement Agreement, which the District Court paraphrased
`as stating that “Tina Lindsay obtained a Certificate of
`Registration from the copyright office in 1996 for EDS,
`which may be called LCID.” (App. 1132 (Trial Tr. 338:5-9).)
`
`The District Court reasoned that “every . . . piece of
`
`evidence in this case contradict[ed]” Brownstein’s testimony
`that he had no clue that Lindsay was claiming to be the sole
`author of the LCID (including his ETHN computer programs)
`until she gave her 2010 deposition. (App. 1133 (Trial Tr.
`339:5-9).) From this, the District Court concluded not only
`that Brownstein had constructive knowledge that Lindsay
`considered herself the sole author but also that he had actual
`knowledge of it. The District Court also concluded that there
`was no evidence that Lindsay ever considered Brownstein a
`co-author of the LCID.
`
`The District Court further ruled that Brownstein was
`
`not a co-author of the LCID or of his computer programs
`because “there is no evidence to support this claim of co-
`authorship in the record.” (App. 1133 (Trial Tr. 339:5-12).)
`Therefore, the District Court reasoned, even if he was not
`barred by the discovery rule and the statute of limitations, his
`claim would still fail on the merits.
`
`2. The Summary Judgment Opinion (Lindsay and E-
`Tech’s Counterclaim to Cancel Brownstein’s Copyright
`Registrations)
`
`After it granted Appellees’ Rule 50 motion on
`
`Brownstein’s authorship claim, the District Court issued an
`opinion granting
`summary
`judgment on Appellees’
`counterclaim
`to
`cancel Brownstein’s
`two
`copyright
`
`
`
`13
`
`
`
`registrations. The District Court found that it had authority to
`cancel Brownstein’s copyright registrations because the
`“threshold determination as to the ownership of the works at
`issue is to be made by the Court, as [Appellees] seek to
`invalidate the registration because [Brownstein] had no right
`to register the work, not because of some regulatory defect.”
`(App. 12-13 (Summ. J. Op. at 4-5).) The District Court
`proceeded to cancel Brownstein’s copyright registrations
`because it had “previously found . . . that [Brownstein’s] co-
`authorship claim was without merit” in deciding the Rule 50
`motion. (App. 13 (Summ. J. Op. at 5).) Thus, it concluded
`that Brownstein had no authorship interest in the LCID or his
`ETHN programs and that all of the LCID and its derivatives
`were created for TAP and owned exclusively by TAP. (App.
`13 (Summ. J. Op. at 5).) The District Court noted that,
`“specifically, the 1997 and 2000 agreements[] refer to the
`relevant programs as belonging exclusively to TAP.” (App.
`13 (Summ. J. Op. at 5).) The District Court also found that
`the 2010 Settlement Agreement from the New Jersey
`oppressed shareholder lawsuit relieved Brownstein of any
`“right, title and interest” in TAP and E-Tech, including the
`LCID, which it found that TAP and E-Tech owned. (App. 13
`(Summ. J. Op. at 5).)
`
`STATEMENT OF
`II.
`STANDARD OF REVIEW
`
`JURISDICTION
`
`AND
`
`The District Court had jurisdiction under 28 U.S.C.
`
`§§ 1331, 1338, and 1367. We have jurisdiction under 28
`U.S.C. § 1291.
`
`Our review of a judgment as a matter of law under
`
`Rule 50(a) is plenary. Beck v. City of Pittsburgh, 89 F.3d
`966, 971 (3d Cir. 1996). “A motion for judgment as a matter
`
`
`
`14
`
`
`
`of law under Federal Rule [of Civil Procedure] 50(a) ‘should
`be granted only if, viewing the evidence in the light most
`favorable to the nonmoving party, there is no question of
`material fact for the jury and any verdict other than the one
`directed would be erroneous under the governing law.’” Id.
`(quoting Macleary v. Hines, 817 F.2d 1081, 1083 (3d Cir.
`1987)).
`
`Our review of a district court’s grant of summary
`
`judgment is plenary. William A. Graham Co. v. Haughey,
`568 F.3d 425, 437 (3d Cir. 2009). Summary judgment may
`only be granted if there is no genuine dispute as to a material
`fact and the moving party is entitled to judgment as a matter
`of law. Fed. R. Civ. P. 56(a).
`
`III. ANALYSIS
`
`Our Circuit has rarely had occasion to venture into the
`
`area of joint authorship under the Copyright Act. In Andrien
`v. Southern Ocean County Chamber of Commerce, 927 F.2d
`132 (3d Cir. 1991), we touched upon the issue in determining
`whether a printer’s contribution to the printing of a map gave
`it joint authorship of the map or whether such contributions
`through printing were works for hire. This is the first time
`that our Circuit has faced a joint authorship claim squarely on
`the merits.
`
`In granting Appellees’ Rule 50 motion, the District
`
`Court decided two factual issues. The first issue was whether
`Brownstein was a co-author of the LCID. If he was deemed a
`co-author, the second issue was whether his joint authorship
`claim was barred by the statute of limitations because he was
`put on inquiry notice that Lindsay had disclaimed his co-
`authorship. In deciding both of these issues, the District
`
`
`
`15
`
`
`
`Court erred because these were factual determinations that
`should have been left to the jury. When viewed in the light
`most favorable to Brownstein, the evidence presented at trial
`could allow him to succeed on his joint authorship claim.
`
`judgment on Appellees’
`summary
`In granting
`
`counterclaim, the District Court determined that it had the
`authority to invalidate Brownstein’s copyright registrations.
`For the reasons that follow, the District Court should not have
`granted summary judgment on the counterclaim because it
`had no authority
`to cancel Brownstein’s copyright
`registrations.
`
`We will address each of these three issues in turn —
`
`whether Brownstein was a co-author of the LCID, whether
`his claim is barred by the statute of limitations, and whether
`the District Court had authority to cancel Brownstein’s
`copyright registrations.
`
`A. JOINT AUTHORSHIP
`
`In order to reach the issue of when Brownstein’s
`
`authorship claim arose and accrued, we must first determine
`if he was a co-author of the LCID.
`
`1. The LCID as a Joint Work
`
`The issue at the root of this case is whether Brownstein
`
`is a co-author of the LCID, which depends on whether the
`LCID is a joint work. When two or more people create a
`“joint work”, they become co-authors and co-owners of the
`work, each entitled to “undivided ownership in the entire
`work”. 1 Melville B. Nimmer & David Nimmer, Nimmer on
`Copyright § 6.03 [hereinafter Nimmer on Copyright]; see 17
`
`
`
`16
`
`
`
`U.S.C. § 101 (defining a “joint work”); Andrien, 927 F.2d at
`136. This ownership interest vests from the act of creating
`the work, rather than from any sort of agreement between the
`authors or any act of registration with the Copyright Office.
`
`For two or more people to become co-authors, each
`
`author must contribute some non-trivial amount of creative,
`original, or intellectual expression to the work and both must
`intend that their contributions be combined. 1 Nimmer on
`Copyright § 6.07; see Gaiman v. McFarlane, 360 F.3d 644,
`658-59 (7th Cir. 2004). The components must also be
`“inseparable or interdependent” parts of a whole but each co-
`author’s contribution need not be equal for them to have an
`equal stake in the work as a whole. 17 U.S.C. § 101; 1
`Nimmer on Copyright § 6.03. Thus, if Person A writes lyrics
`to a song and intends for a composer to write the score,
`Person B who writes the score becomes a co-author in the
`work. See Gaiman, 360 F.3d at 659 (providing the example
`of two co-authors, one a professor with brilliant ideas and the
`other an excellent writer); Childress v. Taylor, 945 F.2d 500,
`504 (2d Cir. 1991) (holding that a lyricist and composer of a
`song were co-authors “even though the lyricist wrote the
`words before he knew the identity of the composer who
`would later write the music”).
`
`At oral argument, Appellees conceded that Brownstein
`
`and Lindsay were co-authors of the LCID up until its 1997
`iteration. Oral Arg. at 17:10-19:00, 21:21-28 (July 10, 2013).
`This concession means that Appellees admit that Brownstein
`contributed a non-trivial amount of creative expression to the
`LCID through his work on the ETHN programs and that
`Lindsay intended for the EDS to be combined with the
`computer code he drafted to form the LCID. Moreover, this
`framework concedes that the EDS and the ETHN programs
`
`
`
`17
`
`
`
`are interdependent works, which comports with Lindsay’s
`assertions. In both the 1997 Software License and her
`testimony at
`trial, she admitted
`that her
`rules and
`Brownstein’s code were inseparable. (App. 1050 (Trial Tr.
`256:1 (“[The] LCID had to have programs.”)).) In Schedule
`A of the license, she wrote that the “series of computer
`programs” and “system data” of the LCID were “irrevocably
`entwined”.
` (App. 668 (Software License Agreement,
`Schedule A).)
`
`Importantly, this concession also means that Appellees
`
`admit that the ETHN programs were not works for hire, as
`Lindsay had insinuated in some of her testimony at trial. The
`District Court also concluded that the ETHN programs were
`works for hire in granting summary judgment on Appellees’
`counterclaim, which was an argument
`that Appellees
`advanced in their answer and which we find to be in error.
`
`To analogize here, Lindsay wrote the lyrics, while
`
`Brownstein composed the score. The exception to this joint
`authorship rule is the “work for hire” rule, where a
`collaborator creates his contribution to the work as part of his
`employment or for a commission.8 17 U.S.C. § 201(b); 1
`Nimmer on Copyright § 5.03. In such a case, authorship
`inures to the employer or commissioner. 17 U.S.C. § 201(b).
`
`
`8 A classic example of a work made for hire is a magazine
`article written by an editor employed by the magazine’s
`company.
` Unless
`they agree otherwise,
`the editor’s
`employer, the magazine’s company, owns the copyright to his
`article, despite the fact that he created the article with his own
`intellectual creativity.
`
`
`
`18
`
`
`
`A work for hire requires that the work be made by an
`
`employee within the scope of his or her employment or that
`the work be commissioned. 17 U.S.C. § 101; see 1 Nimmer
`on Copyright § 5.03; Marco v. Accent Publ’g Co., 969 F.2d
`1547, 1549-50 (3d Cir. 1992); see also Warren Freedenfeld
`Assocs., Inc. v. McTigue, 531 F.3d 38, 48 (1st Cir. 2008). At
`trial, Lindsay claimed that she directed Brownstein on how to
`turn her rules into computer code. (App. 1051 (Trial Tr.
`257:19-22 (“At my direction. I told him exactly what to
`write.”)).) On the other hand, Brownstein had to use his own
`intellectual creativity to select the computer commands to
`use. He controverted Lindsay’s testimony on the stand when
`he testified that he automated Lindsay’s manually inputted
`list of rules and names, which gave Brownstein “[q]uite a bit
`[of discretion]” in how he coded the ETHN programs. (App.
`910 (Trial Tr. 116:8-10).)
`
`By every indication, and given Appellees’ concession,
`
`Brownstein’s computer programs were not works for hire. 17
`U.S.C. § 201(b). Brownstein was both an officer and
`shareholder of TAP and an officer of E-Tech. He was not an
`employee of TAP or E-Tech; nor was he commissioned to
`write the code by TAP or Lindsay. Most importantly, he was
`not compensated for the express purpose of writing code for
`them.
`
`2. The Effect of Lindsay’s and Brownstein’s Copyright
`Registrations
`
`Pivotal to this case is distinguishing an author’s
`
`interest in the copyright to his work from the registration of
`his work. A “copyright”, as a right, vests immediately upon
`the creation of the work. 17 U.S.C. § 201(a). For this reason,
`a copyright must not be confused with the act of registering
`
`
`
`19
`
`
`
`that right. Registration serves primarily to create a record of
`the creation of the work and it also allows the author to bring
`civil claims under the Copyright Act. 17 U.S.C. § 411(a); 2
`Nimmer on Copyright § 7.16.
`
`With few exceptions, a deposit copy must be submitted
`
`with an application for copyright registration. 17 U.S.C. §§
`407(a), 408(b). A deposit copy does not necessarily limit the
`copyrightable work itself. 2 Nimmer on Copyright § 7.17.
`Here, a deposit copy means that Lindsay sent a physical
`printout of Brownstein’s code to the Copyright Office for
`safekeeping (and was only sent a deposit receipt in return),
`which would serve an “archival function” in the event of
`infringement and help elucidate her copyrightable work. Id.
`
`a. Lindsay’s Copyrights and Copyright Registrations
`
`Due to the District Court’s conflation of the EDS and
`
`the LCID, which are distinct works with distinct copyrights, it
`was misled into finding that Lindsay’s copyright registrations
`covered the entire LCID, including Brownstein’s ETHN
`programs. This false premise then led the District Court one
`step further to conclude that Lindsay could unilaterally
`transfer ownership of the LCID through the trio of licensing
`agreements that she executed. The District Court largely
`assumed that her copyright registrations covered the entire
`LCID because Brownstein’s ETHN programs were included
`as a “deposit copy” with her second registration. But the
`District Court’s assumption is belied by the copyright
`registrations
`themselves and
`the
`law undergirding
`the
`registration process. Lindsay’s copyright registrations only
`cover the EDS.
`
`
`
`20
`
`
`
`Lindsay’s registrations did not extend to the LCID as a
`
`whole or the ETHN programs. Notably, Lindsay’s first
`registration was entitled “An Ethnic Determinant System —
`Knowledge
`and
`Rule/Exception
`Basis”,
`which
`unambiguously refers to the EDS, her system of rules. Her
`second registration had the same title and was marked as a
`derivative work of the first, so it, too, only covered the EDS.
`The most significant difference between her two registrations
`is that the second registration included Brownstein’s ETHN
`programs as the deposit copy and described the EDS as “[a]
`computer system process and data rules” in the Nature of
`Authorship field of the registration application. She also
`wrote “[a]dditional ethnic categories, additional rules, names,
`codes . . . [d]escription of computer process included” in
`another field of the second registration. Nowhere, though,
`did she write “ETHN programs”
`in
`the registration.
`Accordingly, her registrations could not claim ownership of
`the ETHN programs simply based on the contents of the
`deposit copy.
`
`The District Court’s reliance on the deposit copy as an
`
`indication of the second registration’s scope was also
`misguided. Lindsay, herself, admitted as much at trial. She
`testified that the deposit copy did not reflect the scope of her
`copyrights or authorship, explaining that the deposit copy of
`the ETHN programs was only meant to provide “an example”
`of how the EDS would be implemented, not to
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