SECOND CIRCUIT - COPYRIGHT LAW - COPYRIGHT OWNERSHIP - SOUND RECORDINGS - ACCRUAL OF COPYRIGHT OWNERSHIP CLAIMS - ATTORNEYS FEES - MUSIC LAW
If you think you are a co-owner of a copyrighted work, when do you need to speak up or sue before you lose your rights?
The Second Circuit considered this question in Mahan v. Roc Nation LLC, --- Fed. Appx. --- (2d Cir. February 24, 2016). Chauncey Mahan brought an action for a declaratory judgment that he was the co-owner of copyrights in songs that he engineered for Roc-A-Fella records in 1999 and 2000, as well as claims for conspiracy, conversion and trespass to chattels. Here's the background: fourteen years after the sessions, Mahan sent a demand for $100k for storage fees for unpublished sound recordings. Roc-A-Fella responded by sending the LAPD to seize Mahan's materials. Mahan responded with the lawsuit.
Claims of co-ownership of a copyright must be brought within three years of accrual. A claim accrues when a reasonably diligent plaintiff knows or has reason to know of the injury upon which the claim is premised. Claims of co-ownership typically accrue upon an "express repudiation" of ownership. This may happen, for example, where a book is published without the alleged co-author's name or an alleged co-owner does not receive royalties.
Mahan lost the case. Additionally, because the Second Circuit agreed that his claims were "objectively unreasonable" it upheld the district court's grant of attorneys fees at 90% of the lodestar rate.
My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) contains information for attorneys evaluating legal claims before they go to court. As Mahan shows, legal fees may be assessed against a plaintiff under the Copyright Act. Copyright Litigation Handbook has an entire chapter on attorneys fees under the Copyright Act.
Read the full text of Mahan here.
Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
(b) How to Present Defenses. Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required. But a party may assert the following defenses by motion:
(7) failure to join a party under Rule 19.
Rule 12(b)(6) is a big shortcut. It saves the defendant the time and money of having to prepare a responsive pleading (answer and counterclaims).
So Snow's lawyers made a motion to dismiss the complaint pursuant to Rule 12(b)(6) and attached Sissom's book, Snow's book and did a comparison showing that there was no copyright infringement.
The district court granted the motion and dismissed the case. Relying on the "incorporation by reference" doctrine, the district court relied on the books referred to in the complaint, but actually supplied by Snow's motion to dismiss. Sissom appealed to the Seventh Circuit.
The Seventh Circuit found that the district court erred by considering materials not attached to the complaint on a Rule 12(b)(6) motion and stated that the motion should have been considered as a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.
The Seventh Circuit found the error to be harmless, and affirmed the dismissal of Sissom's claims against Snow with prejudice.
Not mentioned in the Seventh Circuit's decision is Rule 12(d) of the Federal Rules of Civil Procedure which says:
(d) Result of Presenting Matters Outside the Pleadings. If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion.
Using the incorporation by reference doctrine is, as the Seventh Circuit's decision shows, a tricky path. Practice Tip: In making a motion to dismiss pursuant to Rule 12(b)(6), consider asking in the alternative (in case your motion is not granted) for permission to move for summary judgment also under Rule 56. This will give the court the flexibility to move the case quickly if it feels that additional evidence should be reviewed. Moving for summary judgment requires some additional work and time (preparation of a list of undisputed facts and law for example) and a longer briefing schedule, but may be a surer route to a quick and lasting victory.
My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) contains many practice tips designed to assist attorneys in making litigation decisions and engaging in motion practice. Unlike other works dedicated to copyright law, it seeks to aid the practitioner by showing how to work with clients and investigations, and to navigate the Copyright Office and courts in handling litigation-related matters.