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Special Feature -- Copyright Owners: Keep Your Eye on the Road


Friday, December 20, 2013

By W. Drew Kastner, Erin Hennessy, Mark Mutterperl, Jeff Whittle, Jessica Parise, and Matt Schneller of Bracewell & Giuliani LLP

Drew Kastner is senior counsel in Bracewell & Giuliani’s New York office who focuses his practice on trademark and copyright licensing and general intellectual property matters. Mr. Kastner can be reached at drew.kastner@bgllp.com

Erin Hennessy is an intellectual property partner in the firm’s Seattle and Washington, D.C. offices. Her practice focuses on worldwide trademark matters. Ms. Hennessy can be reached at erin.hennessy@bgllp.com.

Jeffrey Whittle serves as the Head of the firm’s Technology Law Section. He has experience representing clients in various technology-based transactions, including licenses and agreements. Mr. Whittle can be reached at jeffrey.whittle@bgllp.com.

Mark Mutterperl is a partner in the firm’s New York Office. He focuses his practice on brand protection and intellectual property issues. Mr. Mutterperl can be reached at mark.mutterperl@bgllp.com

Jessica Parise is senior counsel in the firm’s New York Office, where she litigates infringement, dilution and counterfeiting matters. Jessica also manages trademark portfolios and the IP aspects of corporate transactions. Ms. Parise can be reached at jessica.parise@bgllp.com.

Matt Schneller is an associate in the Seattle office. He has particular domain name registration, transfer, and enforcement experience. Mr. Schneller can be reached at matt.schneller@bgllp.com.have drafted a client alert on The Ninth Circuit Court of Appeals decision to affirm a District Court ruling that held that a copyright infringement claim was barred by the Copyright Act’s three-year statute of limitations.

Copyright owners need to stay alert! If you have an infringement, ownership interest, or other claim to assert in a copyrighted work and fail to do so within the three year statute of limitations you risk being barred from asserting that claim thereafter. In other words, keep your eyes open and be diligent in enforcing your copyright interests. Following similar rulings by the Second and Sixth Circuits, the Ninth Circuit Court of Appeals recently affirmed a lower court ruling that held a copyright infringement claim was barred by the Copyright Act’s three-year statute of limitations on ownership interest claims. The Ninth Circuit held that where an ownership interest claim is time-barred and ownership is dispositive of the issue, then any attendant infringement claims also should fail under the same time barred basis. Because these three circuits arguably are the most active and precedential for copyright issues, the Ninth Circuit ruling has significant impact. So take care as you drive down that “copyright” road, and plan your future actions and contractual agreements accordingly.

In the Ninth Circuit case Seven Arts Filmed Entm't Ltd. v. Content Media Corp. PLC,1 Seven Arts Filmed Entertainment, Ltd. (“Seven Arts”) previously had asserted its ownership interests in three motion pictures against a predecessor of Content Media Corp. (“Content Media”) and against Paramount Pictures Corp. (“Paramount”), a distributor of the motion pictures. A series of actions were filed by Seven Arts in the U.S. and Canada beginning in 2002. Seven Arts ownership claims and corresponding demands for an accounting of royalties were rejected by the defendants. Eventually, Seven Arts obtained a summary judgment order in Canada, and then many years later, Seven Arts filed a new action in the District of California, for copyright infringement, a declaration of ownership and an accounting against Content Media and Paramount. The District Court dismissed the complaint with prejudice on the ground that Seven Arts’ claims were barred by the three-year statute of limitation, even though Paramount had conceded that it was exploiting the motion pictures.

The Ninth Circuit decided to be guided by the rulings of the Second and Sixth Circuits on the issue and held that “where the gravamen of a copyright infringement claim is ownership, and a free-standing ownership claim would be time-barred, any infringement claims are also barred.”2 Put another way, where the ownership claim is time-barred and ownership is the dispositive issue, any attendant infringement claims must also fail.3 Because Seven Arts fully was aware that Content Media and Paramount had rejected its ownership claims for almost a decade before the infringement action was prosecuted in the U.S., the claims well exceeded the three-year statute of limitations, and the action was barred.

The lesson to be learned for those who create, develop and produce original copyrighted content is this – if you assert a claim for copyright ownership or infringement against a third-party and your assertion is rejected or otherwise disputed, you must be diligent in enforcing your rights. Although a claim arguably may become more valuable over the passage of time as damages accrue, you must keep your eye on the copyright road.

Endnotes

1 No. 11-56759, 2013 WL 5928356 (9th Cir. Nov. 6, 2013)

2 Seven Arts, 2013 WL 5928356, at *3.

3 See Kwan v. Schlein, 634 F.3d 224, 229–30 (2d Cir. 2011); Ritchie v. Williams, 395 F.3d 283, 288 n. 5 (6th Cir. 2005); see also Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 389–90 (6th Cir. 2007).



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