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Included Elements of the Original in Later Derivative Work

Posted by James Juo | Jul 20, 2023 | 0 Comments

The Ninth Circuit has held, “as a matter of first impression, that by registering a derivative work, an author registers all of the material included in the derivative work, including that which previously appeared in an unregistered, original work created by the author.” Enterprise Mgmt.Ltd. Inc. v. Construx Software Builders, Inc., No. 22-35345, — F.4th — (9th Cir. July 17, 2023).

The case involved versions of a chart used by consultants to graphically depict how to accomplish organizational change.

The plaintiff submitted a first version of the chart, entitled “Managing Complex Change,” to the Copyright Office in 1987.

The Copyright Office subsequently destroyed the deposit copy corresponding to the 202 registration certificate pursuant to its routine practice. See 17 U.S.C. § 704(d). [Plaintiff] also did not save a copy of the “Transition: Accomplishing Organization Change” presentation materials.

The plaintiff continued to use and refine the chart over the years, and submitted a revised version of the chart, now entitled “Aligning for Success,” to the Copyright Office in 2000 as part of a “Leadership Spectrum” work, for which Registration No. TXu 956-226 (the 226 registration certificate) was issued. On the 226 registration certificate, the plaintiff checked the box “No” in the “Previous Registration” section, which asks “[h]as registration for this work, or for an earlier version of this work, already been made in the Copyright Office?”

The plaintiff submitted an identical “Aligning for Success” chart to the Copyright Office in 2003, as part of a “Leading Complex Change: A Five Component Framework for Success” work, for which Registration No. TX 5-827-350 (the 350 registration certificate) was issued. Here, the plaintiff checked the “Yes” box in the “Previous Registration” section, representing that the work had already been registered with the Copyright Office, and that the work was a derivative work.

In 2016, the defendant prepared a YouTube video about “how to be successful in applying agile practices” which incorporated a chart that defendant had created based on a chart that he had seen in 2013 in a presentation by the Auburn School District. The Auburn School District's presentation attributed its chart to a 1991 presentation by a third party.

After the plaintiff learned about the defendant's chart, her attorney sent a cease-and-desist letter. After the defendant refused to stop using the chart, a lawsuit was filed asserting copyright infringement based on the “Managing Complex Change” and “Aligning for Success” charts.

Summary Judgment

The District Court granted summary judgment of no copyright infringement with respect to the earlier “Managing Complex Change” chart because the Copyright Office had destroyed the deposit copy and the plaintiff did not save a copy.

On appeal, the Ninth Circuit vacated the summary judgment because the plaintiff's declaration and deposition provided detailed facts (such as the Managing Complex Change chart's “prominence” in the copyrighted presentation) that created a genuine issue of material fact as to whether the 202 registration certificate registered the Managing Complex Change chart.


At trial with respect to the later “Aligning for Success” chart, the jury returned a verdict for the defendant based on a jury instruction that there is no copyright infringement “[i]f you find the evidence shows Defendants accessed and copied other work but did not copy the registered work.” As previously noted, the defendant did not copy directly from the plaintiff's chart, but from a third party's chart.

On appeal, the Ninth Circuit concluded that “when a derivative work includes copyrightable elements of the unregistered original work, the owner's registration of the derivative work also registers the included elements of the original work.” This was consistent with the other circuit courts, including in the leading case of Streetwise Maps, where the owner of a copyright in a New York street map registered a second street map that was derived from that original map and added “depictions of the subway and bus systems.” Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 741, 746 (2d Cir. 1998) (where an owner holds the copyright in both the derivative and original work, “the registration certificate relating to the derivative work in this circumstance will suffice to permit it to maintain an action for infringement based on defendants' infringement of the pre-existing work”); see also R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133, 1143 (10th Cir. 2009) (“[I]f the same party owns a copyright in both a derivative work . . . and the underlying work that is incorporated in the derivative work, registration of a copyright in the derivative work is sufficient to permit an infringement action on either preexisting . . . material or on any newly contributed material.”).

Accordingly, the Ninth Circuit held that the plaintiff should be allowed to “argue that she registered the elements of the Managing Complex Change chart that were included in the Aligning for Success chart.”

Notwithstanding the inaccuracy of the 226 registration in 2000 in not checking the box “No” in the “Previous Registration” section, “the Copyright Act provides a safe harbor” for inaccurate information in a registration certificate. Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., 142 S. Ct. 941, 945 (2022). A certificate of registration is valid even if it contains “any inaccurate information, unless” the copyright registration applicant included the information “with knowledge that it was inaccurate” and “the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1).

In addressing the jury instruction that so long as the defendant “did not copy” the Aligning for Success chart directly, then his chart was “an independent creation” even if the defendant had copied elements from the Auburn School District chart that were derived from the Aligning For Success chart—the Ninth Circuit held that it was incorrect “to the extent that the Auburn School District chart infringed on elements of the Aligning For Success chart and [the defendant] copied those elements.”

Because the district court prevented the plaintiff from introducing any evidence and making any argument as to the Managing Complex Change chart at trial, and allowed the erroneous jury instruction, the Ninth Circuit vacated the jury verdict. The Ninth Circuit also noted that its conclusion was “consistent with the Tenth Circuit's resolution of a separate but similar copyright infringement suit brought by [plaintiff]. See Enter. Mgmt. Ltd. v. Warrick, 717 F.3d 1112 (10th Cir. 2013).”

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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