At the end of January 2014, in a case entitled Brownstein v. Lindsay, a case that stretched out over nearly 20 years, a case that involved multiple lawsuits and multiple settlement agreements, and a case so full of facts that it might make weary Tom Jarndyce of Dickens’ Bleak House smile and count his lucky stars that even his Chancery case was not so dizzyingly complicated, the Third Circuit Court of Appeals made two clear and helpful rulings: one concerns the statute of limitations deadline for asserting joint authorship of copyright claims, and the second concerns the limits of judicial power over the Copyright Office.
STORM WARNINGS AND THE STATUTE OF LIMITATIONS
A copyrightable work has joint authorship when two or more people contribute to its creation in such a way that (a) each author’s contribution constitutes creative and original intellectual expression to the work, such that each contribution would be copyrightable on its own, regardless of its size in relation to the whole work, and, (b) the component contributions are interdependent and inseparable within the whole work. If those two conditions are fulfilled, the joint authors become co-owners of the copyright, and each enjoys an undivided interest in the whole work. Joint authors are often compared to tenants in common in real property, and in that comparison the pitfalls become clear: if the joint tenants want different things, if one wants to start an organic vegetable farm on the property but the other wants to use it to build a high-rise condominium, the exercise of joint rights can become problematic, to say the least. It’s the same with joint copyright ownership: the joint owners need to cooperate with each other so that both can earn revenue from the joint work.
As you may have already guessed, that did not happen with Brownstein and Lindsay and the software they created together. Lindsay registered two copyrights for the software in which she listed herself as the sole author, but Brownstein said he was unaware of this until many years later. The statute of limitations for bringing a claim under the Copyright Act is three years (17 USC § 507(b)), so the Court had to decide if time had run out for Brownstein to challenge Lindsay. Making that determination depended on finding out, first, when Brownstein’s claim arose, and, second, when Brownstein should have known his claim arose. To answer the first question, the Court adopted the “express repudiation” rule, which has been used by the Ninth, Seventh, and Second Circuits and which holds that a joint author’s claim arises when the other joint author expressly repudiates the first joint author’s claim. To answer the second, the Court used the traditional “discovery” rule, which holds that a claim arises when a plaintiff, exercising due diligence, would be able to “discover” the injury if the due diligence showed that there were sufficient storm warnings of wrongdoing to put the plaintiff on notice.
“Fusing these two concepts,” said the Court, “the discovery rule will only apply once a plaintiff’s authorship has been expressly repudiated since he can only be on inquiry notice once his rights have been violated.” Applying this rule to the Lindsay and Brownstein facts, the Court overturned the District Court’s ruling that Brownstein was on notice that his claim had arisen when Lindsay registered her copyrights in her own name without including him as joint author. The problem with that ruling is that people do not have an affirmative duty to investigate the copyright register to see if they have been injured by someone else’s registration. In the words of the Court: “The peril of the District Court’s rationale is apparent: a challenger to a plaintiff’s authorship could surreptitiously apply for copyright registration of the plaintiff’s work to start the statute of limitations running and, if the plaintiff did not discover the registration until three years thereafter, the plaintiff’s authorship would be nullified.” In other words, said the Court “the way to expressly repudiate your co-author’s authorship is not to register the copyright in your name” because such an act does not stir up sufficient storm warnings of an injury. By refusing to recognize that the act of registering a copyright that excludes a joint author constitutes an express repudiation, and thus refusing to impose on Brownstein the burden of constantly monitoring the copyright register to see if Lindsay had filed registrations in her own name, the Court has provided a clear rule that should help future joint authors, if not by helping them to get along better, at least by helping them to know when their rights have been violated.
JUDICIAL AUTHORITY MAY STOP AT DOOR TO THE COPYRIGHT OFFICE
The Court’s second clear and helpful ruling came when it reversed the District Court’s order cancelling copyright registrations filed by Brownstein: “We hold that courts have no authority to cancel copyright registrations because there is no statutory indication whatsoever that courts have such authority.” In making this ruling, the Court followed similar reasoning from the Ninth Circuit. “Most decisively, there is no statutory authority in the Copyright Act that gives courts any general authority to cancel copyright registrations.” Section 701 of the Copyright Act, which delineates the activities of the Copyright Office, says that “[a]ll administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights.” Because the cancellation of a copyright registration is an administrative function, a court cannot issue such an order, and a party seeking a cancellation must seek it from the Copyright Office. The Court noted, in support of its reasoning, that the Trademark Act explicitly provides courts with the general authority to cancel trademark registrations, but such explicit authority is clearly absent from the Copyright Act.
After making this determination, the Court qualified it by saying that “This does not mean that courts have no place in the cancellation process and that aggrieved parties are without recourse to the courts when faced with faulty registrations,” and the Court reasoned that because the Copyright Office is subject to the federal Administrative Procedure Act (APA), “aggrieved parties may challenge an unfavorable decision by the Copyright Office in a cancellation matter by challenging its decision in court under the APA.”
So from this complicated case, two clear and practical rules emerge that should help future plaintiffs: first, a copyright registration that excludes a joint author does not constitute an act of express repudiation which would trigger the start of the statute of limitations for a joint author’s claim; and, second, if an author does not get a remedy for a faulty copyright registration from the Copyright Office and wants to challenge the copyright registration in a federal court, the author must bring the claim under the Administrative Procedure Act.