What Should the Filing Time Be for Common Law Copyright Infringement Suits?

In the April 14 ruling, Supreme Court Justice Shirley Werner Kornreich quickly found infringement liability by noting: “It is undisputed that Harrison's agents and employees uploaded the Rumor Recording to the Website in 2009 and again in 2011 without a license.” But Justice Kornreich added: “The harder question, however, is damages. Capitol does not seek summary judgment on damages at this time, nor is it clear at this time how such damages are to be computed.”

Harrison claimed that a three-year statute of limitations, which applies to infringement claims under federal copyright law, should apply in this case, too. But neither the U.S. Supreme Court nor the U.S. Court of Appeals for the Second Circuit, which covers New York federal district courts, has laid out how to determine when an infringement claim accrues under federal law. In recent years, the federal Southern District of New York has applied the injury rule (see, Auscape International v. National Geographic Soc., 409 F.Supp.2d 235 (S.D.N.Y. 2004)), which counts from when an infringement occurs, rather than as most circuit courts have determined, from when a plaintiff discovers or should have reasonably discovered the infringement.

Few courts have ruled on the accrual of common-law infringement claims in New York. Those that have used varying timetables and identifications of what the infringement causes of action were akin to. For example, in Urbont v. Sony Music Entertainment, 863 F.Supp.2d 279 (S.D.N.Y. 2012), the Southern District applied a three-year statute of limitations, per the suit parties' agreement, to a state copyright claim as “an action to recover damages for an injury to property” under NY C.P.L.R. '214(4). The district court also ruled that “each alleged wrongful act gave rise to a separate common law cause of action.” ( Urbont involved a common law infringement claim by composer/record producer Jack Urbont over the unauthorized use by the music act Ghostface Killah of a recording of Urbont's 1960s “Iron Man Theme” from The Marvel Super Heroes TV show.)

New York CPLR '213(1) provides a six-year statute of limitations for actions “for which no limitation is specifically prescribed by law.” In Harrison Greenwich, Justice Kornreich noted: “The CPLR does not provide a statute of limitations for copyright infringement, nor does such claim appear to fall under the ambit of claims with set limitations periods, such as personal injury, breach of contract, and fraud.”

The trial court justice acknowledged that use of a three-year statute of limitations would be more practical in light of the same limitations period in federal copyright cases. “This, indeed, is logical,” Justice Kornreich wrote, but she added that “logic, no matter how compelling, is not a basis to disregard the plain language of the CPLR. A straightforward reading of CPLR 213(1) militates in favor of a six-year statute of limitations.”

Declining to rule on the issue, however, Justice Kornreich instead asked the parties to brief it in more detail, “given the novelty of this issue and the conflicting federal case law.”

The digital music era certainly seems like the right time to decide on a consistent statute of limitations for common-law copyright infringement claims, at least until U.S. legislators agree its time to give federal copyright protection to pre-1972 recordings. With the national and international reach of music streaming, common-law copyright holders deserve some certainty when assessing the timetable for filing infringement claims in different state jurisdictions.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.

Rights in pre-Feb. 15, 1972, sound recordings ' which are protected by state law, rather than federal copyright law ' are hotly litigated in the digital music era. On April 17, for example, major record labels sued the music-streaming service Pandora in New York Supreme Court in Manhattan. Capitol Records LLC v. Pandora Media Inc., 651195/2014. The suit alleges common-law copyright infringement and unfair competition from Pandora's use of pre-1972 recordings. Federal copyright law provides a specific statute of limitations for infringement claims, but New York doesn't for common-law infringement. As a result, there is no practical guidance on how far back damages may be counted.

The issue was recently discussed in an April 14 New York state court ruling involving use of a pre-1972 recording on a restaurant website's home page. Capitol Records LLC v. Harrison Greenwich LLC, 652249/2012. Capitol Records sued the New York City restaurant over unlicensed use of the 1970 recording “The Rumor” by The Band. Capitol filed its complaint for common-law copyright infringement in New York County on June 27, 2012.

The restaurant's owner first decided to use “The Rumour” on the eatery's website in 2006, but took the recording down after Capitol sent a cease-and-desist letter. The restaurant re-posted the recording in 2009.

In the April 14 ruling, Supreme Court Justice Shirley Werner Kornreich quickly found infringement liability by noting: “It is undisputed that Harrison's agents and employees uploaded the Rumor Recording to the Website in 2009 and again in 2011 without a license.” But Justice Kornreich added: “The harder question, however, is damages. Capitol does not seek summary judgment on damages at this time, nor is it clear at this time how such damages are to be computed.”

Harrison claimed that a three-year statute of limitations, which applies to infringement claims under federal copyright law, should apply in this case, too. But neither the U.S. Supreme Court nor the U.S. Court of Appeals for the Second Circuit, which covers New York federal district courts, has laid out how to determine when an infringement claim accrues under federal law. In recent years, the federal Southern District of New York has applied the injury rule (see, Auscape International v. National Geographic Soc., 409 F.Supp.2d 235 (S.D.N.Y. 2004)), which counts from when an infringement occurs, rather than as most circuit courts have determined, from when a plaintiff discovers or should have reasonably discovered the infringement.

Few courts have ruled on the accrual of common-law infringement claims in New York. Those that have used varying timetables and identifications of what the infringement causes of action were akin to. For example, in Urbont v. Sony Music Entertainment, 863 F.Supp.2d 279 (S.D.N.Y. 2012), the Southern District applied a three-year statute of limitations, per the suit parties' agreement, to a state copyright claim as “an action to recover damages for an injury to property” under NY C.P.L.R. '214(4). The district court also ruled that “each alleged wrongful act gave rise to a separate common law cause of action.” ( Urbont involved a common law infringement claim by composer/record producer Jack Urbont over the unauthorized use by the music act Ghostface Killah of a recording of Urbont's 1960s “Iron Man Theme” from The Marvel Super Heroes TV show.)

New York CPLR '213(1) provides a six-year statute of limitations for actions “for which no limitation is specifically prescribed by law.” In Harrison Greenwich, Justice Kornreich noted: “The CPLR does not provide a statute of limitations for copyright infringement, nor does such claim appear to fall under the ambit of claims with set limitations periods, such as personal injury, breach of contract, and fraud.”

The trial court justice acknowledged that use of a three-year statute of limitations would be more practical in light of the same limitations period in federal copyright cases. “This, indeed, is logical,” Justice Kornreich wrote, but she added that “logic, no matter how compelling, is not a basis to disregard the plain language of the CPLR. A straightforward reading of CPLR 213(1) militates in favor of a six-year statute of limitations.”

Declining to rule on the issue, however, Justice Kornreich instead asked the parties to brief it in more detail, “given the novelty of this issue and the conflicting federal case law.”

The digital music era certainly seems like the right time to decide on a consistent statute of limitations for common-law copyright infringement claims, at least until U.S. legislators agree its time to give federal copyright protection to pre-1972 recordings. With the national and international reach of music streaming, common-law copyright holders deserve some certainty when assessing the timetable for filing infringement claims in different state jurisdictions.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.