Not the “Master of His Domain”: Disputed Copyright Ownership and the Statute of Limitations for Copyright Infringement Claims

A recently filed petition for certiorari in the U.S. Supreme Court presents an interesting issue in copyright law: When a copyright infringement claim hinges on which party owns the copyright in question, should the Copyright Act’s 3-year statute of limitations run from when the plaintiff’s ownership is contested, regardless whether infringing activity has yet occurred?

Disputed Ownership of Comedians in Cars Getting Coffee

In Christian Charles v. Jerry Seinfeld et al., No. 20-661 (petition filed November 9, 2020), the plaintiff alleged that his long-time collaborator Jerry Seinfeld stole his idea for the popular online series Comedians in Cars Getting Coffee. Charles also alleges that Seinfeld and the other defendants, in developing the series, illegally copied his treatment and a pilot episode that he and his production company produced in October 2011.

The central issue posed by the case is whether Charles is a rightful co-owner of the copyright in question. Charles alleged that he and Seinfeld had several disputes in 2012 over whether Charles would be treated as an owner of the show, or whether he would be compensated under a “work-for-hire” arrangement. Charles also alleged that although those disputes failed to resolve his authorship status, he hoped Seinfeld would eventually recognize his status as a co-owner of the copyright.

In 2018—more than three years after Seinfeld first disputed Charles’s ownership status—Charles filed suit in the Southern District of New York, asserting claims for, among other things, copyright infringement. Seinfeld moved to dismiss the copyright infringement claims as time-barred because they were first asserted more than three years after Charles’s ownership status was disputed.

The district court agreed with Seinfeld, holding the infringement claims were time-barred under the holding of a prior Second Circuit decision, Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011). In Kwan, the court held that a copyright infringement claim in which “ownership is the dispositive issue” must be brought within three years of when the plaintiff’s ownership interest is contested, “even if there had been infringing activity in the three years preceding the lawsuit.” Id. at 229.

Charles appealed, but the Second Circuit affirmed. Charles v. Seinfeld, Case No. 19-3335, Dkt. 102 (2d Cir. filed June 18, 2020). Charles’s petition for certiorari followed.

How Can the Statute Run Before Both Elements of a Copyright Infringement Claim Are Satisfied?

To prevail on a copyright infringement claim, a plaintiff must establish two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). Of course, the date on which a person becomes the owner of a copyright is usually a different date than when unauthorized copying of the copyrighted material occurs. But under the Second Circuit’s rule, the statute runs from when ownership is contested (element 1), even if infringement hasn’t occurred (element 2). This raises the possibility that the limitations period could expire before infringement occurred.

This dilemma appears to arise from the Second Circuit’s conflation of what it terms an “ownership claim,” on one hand, and an “infringement claim,” on the other. Kwan, 634 F.3d at 228. But in fact, these are not two different causes of action; rather, ownership and infringement are two elements of the same claim: copyright infringement. Under the Second Circuit’s rule, the statute runs once one element is disputed, even if the other element has not occurred. To avoid the time bar, a plaintiff may be forced, then, to assert a copyright infringement claim before both elements are satisfied. That seems odd.

In imposing this rule, the Second Circuit may have been dealing with a “round peg in a square hole” problem. In cases like the Seinfeld case, a copyright infringement claim seems ill-suited to resolve disputes over copyright ownership. Rather, the disputed facts seem to lend more naturally to a declaratory judgment or joint authorship claim. But a plaintiff is, of course, master of his complaint. That alone does not seem to justify having a different limitation rule for when ownership is contested than when infringement is disputed.

The Second Circuit’s rule could also be grounded in a policy concern that a plaintiff, once put on notice that others dispute his ownership of a copyright, should not be able to sit on his hands and wait to pounce on an unsuspecting defendant whose ability to defend herself as to ownership is impaired by the passage of time and the fading of memories and potentially probative evidence. But this policy concern does not eliminate the analytical inconsistency of having two limitation rules that apply to the same kind of claim.

Looking Forward

The lack of a genuine split of authority on this issue among the courts of appeals makes it unlikely that the Supreme Court will grant certiorari in this case. (In his cert petition, Charles argues that there is a split of authority between the Second and Sixth Circuits, but the cases cited in the petition are not in intractable conflict with each other.) However, the Second Circuit should consider revisiting Kwan in a future case heard en banc.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm or its clients. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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