Court Finds Copyright Ownership Claim Time-Barred, Allows Work-for-Hire Defense

In a June 26, 2015 ruling, Judge Kimba M. Wood ruled that the counterclaim plaintiff’s copyright ownership claim over certain photographs taken by the counterclaim defendant was barred by the three year statute of limitations. The Court wrote that the statute begins to run “‘when a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right.’” Judge Wood found that the counterclaim plaintiff had been put on notice of the counterclaim defendant’s “‘express assertion of sole authorship or ownership’” more than three years before suit. Judge Wood nevertheless permitted the counterclaim plaintiff to assert its work-for-hire defense in response to the counterclaim defendant’s copyright ownership claim, noting that the statute of limitations does not bar a defense. In considering the work-for-hire defense, the Court wrote that merely because the counterclaim defendant’s job responsibilities included taking photographs at times, that does not automatically mean that every photograph the counterclaim defendant took (for example, while “off the clock”) was in the scope of his employment duties, and thus denied in part summary judgment on the defense.

Court Awards Ownership of Copyrights in Four Songs to Estate of Oscar Peterson

In a January 29, 2014 ruling, Judge Jed S. Rakoff, after a three day bench trial, awarded co-ownership of four song recordings by legendary jazz pianist Oscar Peterson to his estate and to Jayarvee, Inc., the owner and operator of the Birdland jazz club in New York City. The four recordings were duets, with Peterson on the piano, and jazz singer Hilary Kolodin, who is known professionally as Hilary Kole, as the singer. At the time of the recordings, Kole and the principal of Jayarvee, John Valenti, were in a relationship. After the relationship ended, Kole disputed ownership of the recordings.

The central issue in the case was the validity of an assignment of the recordings that was inarguably signed by Kole, although the assignee was not specifically identified. Valenti testified that the assignment, which was produced in the lawsuit from his possession, was intended to assign the recordings from Kole to Jayarvee. Kole testified that the assignment was meaningless, and that she filled it out and executed it merely to show another musician how to fill out such a form. Judge Rakoff, with some seeming dismay about Kole’s testimony, credited Valenti’s testimony and declined to credit Kole’s. The Court thus concluded that “any copyright interest Kole may have had in any of the Recordings was transferred to Jayarvee through the” assignment.

Judge Rakoff also found that “there is a threat of infringement of that ownership interest sufficient to support plaintiffs’ request for a permanent injunction” because Kole attempted to register her own copyrights in slightly modified recordings, and also caused one of the songs to be played on an Internet website. So the Court concluded that “plaintiffs are entitled both to a declaration that they are owners of the copyrights in all versions of the Recordings and to an injunction permanently barring Kole from any sale, distribution, or other public use of the recordings.” Judge Rakoff denied an award of fees, though, finding that in the circumstances of the case, “an award of fees would be excessive.”

Court Refuses to Return Christmas Song to Authors

In a December 16, 2013 ruling, Judge Shira A. Scheindlin rejected the plaintiffs' copyright termination notice to the song "Santa Claus Is Coming to Town," and left ownership of the copyright with defendant EMI Feist Catalog, Inc.  The parties cross-moved for summary judgment, and EMI moved to exclude the plaintiffs' "purported copyright law expert" under Daubert.  Judge Scheindlin granted EMI's motions.

With regard to the expert testimony, the Court noted that the expert "opines on one issue:  the meaning of Sections 304 and 203 of the Copyright Act."  Judge Scheindlin excluded the opinion, ruling that the "Second Circuit has held that the testimony of an expert on matters of domestic law is inadmissible for any purpose.  Courts have an obligation to exclude affidavits that purport to construe Copyright Law.  Alter's [the expert's] affidavit expresses legal conclusions on the meaning of the 1976 [Copyright] Act, with the sole exception of some brief historical background on the Act."

With regard to the merits, the Court noted that the "sole issue in this case is whether Plaintiffs have the right to terminate EMI's copyright ownership in the Song."  The Court concluded that the plaintiffs did not have the right to do so because they failed to record a 1981 notice that terminated a 1951 agreement regarding ownership.  The failure to record the 1981 termination notice leaves the 1951 agreement in place until 2029.  Judge Scheindlin also found that the failure to record the 1981 notice of termination rendered subsequent notices ineffective even though those notices were served and filed according to the correct procedures.  The Court thus granted summary judgment in favor of EMI.