The United States Court of Appeals for the Second Circuit has ruled that a time-bar for copyright ownership under the statute of limitations also bars a related copyright infringement claim. According to the 2d Circuit, a claim for copyright infringement based on an underlying claim of copyright ownership will be prohibited if that underlying claim is time-barred. Kwan v. Schlein, Case No. 09-5202 (2d Cir., Jan. 25, 2011) (Pooler, J.).
In 1998, Business Resources Bureau (BRB) hired plaintiff Shirley Y. Kwan to serve as an editor for Find It Online, a book to be authored by Alan M. Schlein. BRB engaged Kwan as an editor for 100 hours of work, and had promised to give her credit as an editor on the title page. After Kwan had worked on the project for more than 100 hours, Schlein asked BRB to continue her employment and offered her a percentage of the royalties from Find It Online as compensation. Before publication, Kwan and Schlein had a disagreement over whether Kwan would receive credit as a “ghostwriter” for the book or as an editor. Kwan asserted that she had essentially written the book and suggested the author byline, “Alan Schein with Shirley Kwan Kisaichi.” BRB published the book in 1999, citing Schlein as the author and Kwan as the editor. Schlein registered the work at the U.S. Copyright Office, naming himself and Kwan as authors. Kwan received royalty payments for her contribution to the 1999 edition, as well as a subsequent edition. In 2004 BRB informed Kwan that the book had been rewritten, and that she would receive no royalties beyond sales for the second edition.
Kwan initiated the lawsuit in 2005, alleging copyright infringement and seeking registration of her copyright interest as a co-author of Find It Outline. Schlein moved for summary judgment, arguing that Kwan’s claims for registration and to be named sole author were barred by the statute of limitations. Schlein filed a counterclaim, seeking declaratory judgment that Kwan was not an author of Find It Online. The district court granted Schlein’s motion for summary judgment, finding that Kwan first asserted authorship in the work in 1998 and that the statute of limitations began to run in September 1999, the date upon which Kwan collected her first royalty check. According to the district court, under 17 U.S.C. § 507(b), the three-year statute of limitations tolled in September 2002.
On appeal, the 2nd Circuit affirmed the district court’s grant of summary judgment to Schlein, holding that a time-barred ownership claim prevents a claim for copyright infringement “where, as here, the infringement claim cannot be decided without adjudication of a genuine dispute as to the plaintiff’s ownership of the copyright.” Judge Pooler, writing for the panel, noted that the ownership issue formed the “backbone” of the dispute over Find it Online—the nature, extent or scope of the alleged copying were not at issue. The dispute involved only whether Kwan’s contributions to the work were enough to qualify her as an author and by extension, as an owner of the copyright in Find It Online. The fact that one co-author cannot sue another for copyright infringement under the Copyright Act prevented Kwan from obtaining relief unless she was the sole author of the work. Consequently, the time-barred ownership claim precluded Kwan’s infringement claim as a matter of law.
Practice Note: A copyright infringement claim dependent upon a copyright ownership claim can be barred under the Copyright Act’s three-year statute of limitations, found in 17 U.S.C. § 507(b), if the ownership claim is itself barred by the statute of limitations.