USDC S.D. Florida, October 9, 2008

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Plaintiff, the alleged owner of the Mexican and U.S. copyright in a work assigned to it by the Mexican composer, sued defendants for copyright infringement and various state law claims. Defendant Carimusic claimed that it was assigned the U.S. copyright to the same work by the same composer, and held its own U.S. copyright registration for the work.

The plaintiff sued for copyright infringement. Defendants moved to dismiss the copyright infringement claim on the grounds that it was barred by the Copyright Act’s three-year statute of limitations. Defendants argued that, although plaintiff had alleged it only as a copyright infringement claim, the claim was, in actuality, a dispute over copyright ownership, which would be permanently barred three years from accrual. Defendants asserted that plaintiff’s claim to establish ownership of the copyright accrued in 1988 when defendant Carimusic registered its claim to the United States copyright.

The district court disagreed and denied the dismissal motion. The court, distinguishing a line of cases from the Southern District of New York, explained that in those cases the plaintiffs either were seeking co-ownership of the copyright or were acknowledged co-owners of the copyright (seeking a determination of sole ownership), whereas in the present case, defendants did not claim to own the Mexican copyright -- rather they claimed sole ownership of a “separate United State copyright.” Therefore, the court held, plaintiff’s action “can be maintained for all infringing acts which occurred within the last three years prior to this suit.”

The court also dismissed plaintiff’s reverse passing off claim because it is preempted by the Copyright Act, but did not dismiss plaintiff’s unfair trade practices claim, finding that the unfair or deceptive act constituted an “extra element” preventing preemption of the claim.