Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc.
29 F.3d 1529 (1994)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A written instrument that confirms a prior oral assignment of copyright ownership validates the transfer retroactively to the date of the oral agreement, and a copyright registration filed after the oral agreement but before the written confirmation is valid.
Facts:
- In 1987, Chrysalis Homes Associates (Chrysalis) and the architectural firm Heise Group, Inc. (Heise) verbally agreed that Heise would create architectural drawings for Chrysalis and that Chrysalis would own the copyright to them.
- Pursuant to the agreement, Heise created the 'Verandah II' drawings and placed a copyright notice on them identifying Chrysalis as the owner.
- On March 21, 1988, Chrysalis secured a Certificate of Copyright Registration for the 'Verandah II' drawings, incorrectly claiming authorship under a 'work-for-hire' theory.
- In early 1990, after a court decision clarified the 'work-for-hire' doctrine, Heise executed a written 'Certificate of Release' confirming it had assigned all its rights in the plans to Chrysalis from the outset.
- On February 19, 1990, Chrysalis assigned its copyright in the plans to Arthur Rutenberg Corporation (ARC).
- On January 1, 1991, ARC assigned the copyright to Arthur Rutenberg Homes, Inc. (Rutenberg).
- In 1991, Drew Homes, Inc. allegedly used the 'Verandah II' plans to prepare its own architectural drawings for a house.
Procedural Posture:
- Arthur Rutenberg Homes, Inc. sued Drew Homes, Inc. in the U.S. District Court for the Middle District of Florida for copyright infringement.
- Drew Homes filed a counterclaim seeking a declaratory judgment that Rutenberg's copyright was invalid.
- The parties agreed to a trial before a U.S. Magistrate Judge.
- While the suit was pending, Rutenberg obtained a Certificate of Supplementary Copyright Registration to correct the original registration's statement of authorship.
- The Magistrate Judge found that Rutenberg did not own a valid copyright at the time of the alleged infringement and entered judgment for Drew Homes.
- Rutenberg, as appellant, appealed the judgment to the U.S. Court of Appeals for the Eleventh Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Is a copyright registration valid when the claimant, at the time of filing, held ownership via an oral agreement that was only later memorialized in writing?
Opinions:
Majority - Senior Judge Hill
Yes, a copyright registration is valid under these circumstances. A subsequent written memorandum confirming a prior oral assignment validates the transfer retroactively to the date of the oral agreement. The purpose of the writing requirement in 17 U.S.C. § 204(a) is to protect copyright holders from fraudulent oral claims, not to allow third-party infringers to escape liability. Citing precedent from other circuits, the court held that a later writing validates the grant 'ab initio' (from the beginning). Because Chrysalis had a contractual right to the copyright at the time of registration based on its oral agreement with Heise, it was a proper claimant under copyright regulations. Therefore, the 1988 registration was valid, and Rutenberg, as a subsequent assignee, could properly bring an infringement suit.
Analysis:
This decision solidifies the doctrine of retroactive validation for copyright assignments within the Eleventh Circuit, aligning it with other federal courts. It clarifies that the writing requirement under 17 U.S.C. § 204(a) functions like a statute of frauds to protect the parties to the transfer, rather than as a substantive requirement for third parties to challenge. The ruling provides security to parties who may initially rely on oral agreements with creators, ensuring that as long as the agreement is eventually put in writing, their ownership rights and any registrations based on those rights are retroactively secured from the date of the original oral agreement. This prevents infringers from exploiting correctable procedural defects in the chain of title.
Unlock the full brief for Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc.