Tyrone Simmons is a hip-hop music writer and performer. In February 2006, Simmons bought an exclusive license to use a particular beat from hip-hop producer William C. Stanberry, Jr. Although Stanberry granted an exclusive license to Simmons, precluding everyone but Simmons from using the beat, Stanberry and rapper Curtis Jackson (aka 50 Cent) collaborated to release a song using the beat, “I Get Money,” in the summer of 2007. The Stanberry/Jackson song achieved immediate success. In the meantime, Stanberry attempted to repudiate Simmons’ license in a May 2007 email.
Simmons brought suit for copyright infringement against Stanberry, Jackson and others in December 2010. The district court dismissed Simmons’ suit as untimely. The Second Circuit Court of Appeals affirmed the district court’s decision to dismiss the suit as untimely.
The statute of limitations for copyright infringement is three years. 17 U.S.C. §507(b). The Second Circuit held that it’s decision in Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011) controls.
In Kwan, the plaintiff demanded to receive publication credit as the co-author of a book and not as the editor. The author and publisher refused and published the book, listing Kwan as the editor. Almost six years after the original publication, Kwan sued the author and publisher for copyright infringement.
Our court ruled that, notwithstanding the occurrence of allegedly infringing acts within three years of filing the action, the suit was nonetheless barred by the Copyright Act’s three-year statute of limitations, 17 U.S.C. § 507(b), because the plaintiff, although aware of the defendants’ acts of infringement done in rejection of plaintiff’s claim of a copyright interest, had waited more than three years to sue.
Where the plaintiff’s claims were rooted in her contested assertion of an ownership interest in the copyright, and that claim of ownership interest was time-barred because of the plaintiff’s delay in suing, the plaintiff could not resuscitate the untimely claim by relying on claims against the defendants’ continuing course of infringing publication after the plaintiff’s ownership claim became time-barred. We wrote, ‘Where the ownership claim is time-barred, and ownership is the dispositive issue, any attendant infringement claims must fail.’
(Opinion pdf pages 3 – 4).
The Second Circuit rejected Simmons’ attempt to distinguish his case from Kwan on the basis that Kwan claimed to be an owner, but that Simmons claims to be an exclusive licensee.
The distinction is not material for these purposes. An exclusive licensee as to all rights to a work effectively exercises the rights that flow from ownership. The Copyright Act recognizes that an exclusive license is effectively a transfer of ownership over the rights licensed. The Act includes exclusive licenses among the list of transactions that can effect a transfer of copyright ownership, 17 U.S.C. § 101, and exclusive licensees stand in the shoes of creators for enforcement purposes, 17 U.S.C. § 201(d). We can see no reason why the statute of limitations should apply differently in Simmons’s case than in Kwan’s.
(Opinion pdf page 5).
This case is different from the Raging Bull case I blogged on in my post, Raging Bull Copyright Owner KO’s Film Studios. In that case, copyright owner Paula Petrella waited 18 years from the time she acquired ownership of the copyright to file suit on her copyright infringement claim. The alleged infringers, creators of the motion picture Raging Bull, did not dispute Petrella’s copyright ownership. The alleged infringers argued that Petrella’s lawsuit was barred by laches because she unreasonable delayed in filing suit. The question was whether laches entirely prevents a copyright owner from claiming copyright infringement when the copyright term has not expired. The U.S. Supreme Court ruled no, that Petrella’s conduct in failing to diligently pursue her rights as a copyright owner did not bar her infringement suit, but could be considered in fashioning the remedy.
This case is Simmons v. Stanberry, No. 14-3106-cv, Second Circuit Court of Appeals.