In Kwan v. Schlein, (2d Cir. Jan. 25, 2011)(decision below), the Second Circuit determined that a time-barred copyright ownership claim barred a later copyright infringement claim. The decision sorts through the facts involving an editor (Kwan/appellant) who was offered co-author credit by a book publisher. The book's author protested. The book was published, giving the editor no authorship credit, with copyrights registered in the author and publisher's name. This publication, together with the author cashing a royalty check, was held to trigger a three-year statute of limitations on a copyright ownership claim. Once the editor failed to pursue the ownership claim in a timely manner, her right to pursue any copyright infringement claims was cut off.
Once the defendant got summary judgment on the editor's claims, he voluntarily dismissed his counterclaims pursuant to Rule 41(a) of the Federal Rules of Civil Procedure without prejudice with leave of court. Editor/Kwan attacked the district court's appoval of the without prejudice dismissal.
The Second Circuit analyzed the factors permitting such a without prejudice dismissal. In this case, the defendant's representation that he would not pursue the counterclaims unless he was sued again if Kwan won the appeal and that the counterclaims had been asserted as a defensive measure in the first place were sufficent to satisfy the Zagano factors referenced in the court's opinion.
The defendant's voluntary dismissal of its counterclaims was a neat trick: it forced Kwan to bear the burden of appealing, rather than proceeding to a trial on the counterclaims.
I deal with issues involving statutes of limitations in Chapter 5: Calculating Dates Prior To Commencing Litigation in Copyright Litigation Handbook. Chapter 8: Copyright Ownership and Licensing Litigation delves further into issues of authorship and ownership.
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Kwan v Schlein decision below.
Copyright Litigation - Kwan v Schlein
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Saturday, February 05, 2011
Second Circuit - Joint Authorship in Copyright Law: Time-Barred Copyright Ownership Claims Bar Later Copyright Infringement Claims
Posted by Ray Dowd at Saturday, February 05, 2011
Labels: alan schlein, book publishing, copyright infringement, copyright law, copyright litigation, copyright ownership, joint authorship, publishing law, second circuit, shirley kwan, statute of limitations
Partner in law firm Dunnington Bartholow & Miller LLP in New York City litigating in federal and state courts and arbitrations. Experienced trial and appellate practitioner. Author: Copyright Litigation Handbook (Thomson Reuters 2019-2020). The New York Law Journal called it "an indispensable guide". Board of Directors of the Fordham Law Alumni Association, former General Counsel & Director Federal Bar Association, FBA Chair of the Circuit VPs, ViP for Second Circuit. Member Board of Governors, National Arts Club. President, Network of Bar Leaders (2013-2014). Attorney advertising disclaimer - prior results do not guarantee success. The statements and opinions voiced here are my own and not of my law firm.
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