Time Bars for Joint Authors and Copyright Registration Cancellation: The Third Circuit Weighs in on Two Issues of First Impression

On January 29, the Third Circuit issued an opinion in Brownstein v. Lindsay that addressed two issues of first impression under United States Copyright Law. One was whether a court has authority to cancel a copyright registration. The second was when the statute of limitations begins to toll on a co-author’s claim of copyright ownership against his or her co-author.

On the first issue, the Third Circuit held that the courts do not have authority to cancel copyright registrations granted by the U.S. Copyright Office. In making that decision, the court noted that the Copyright Act does not give “courts any general authority to cancel copyright registrations” whereas the Lanham Act “explicitly provides courts with the general authority to cancel trademarks.” Given the absence of express permission in the statute, the court held that the judiciary has “no authority to cancel copyright registrations.” Nonetheless, the Third Circuit acknowledged the federal courts’ authority to hold that a claim of ownership of a copyright is invalid.

On the second issue, the Third Circuit held that the three-year statue of limitations does not apply to joint authorship claims unless and until one party expressly repudiates the other’s status as co-author.

The work at issue in this action is a software program that Lindsay and Brownstein developed together. The program was designed to determine the ethnicity of individuals based on their names for use in direct marketing campaigns. Lindsay’s contribution was the series of “rules” for the program to follow, and Brownstein’s contribution was the corresponding code. The work underlying the court’s decision was treated as a joint work of authorship for purposes of the copyright analysis.

Section 507(b) of the Copyright Act, 17 USC §507(b), provides that civil copyright actions must be instituted within three years after a claim accrues. To determine when Brownstein’s claim accrued, the Third Circuit looked to the standard followed by the Second, Seventh and Ninth Circuits, and adopted an express repudiation rule. That rule provides that “a joint authorship claim arises and an author is alerted to the potential violation of his rights when his authorship has been expressly repudiated by his co-author.” The Third Circuit found that proper analysis of the statute of limitations bar in this case requires a determination of when Lindsay expressly repudiated Brownstein’s joint authorship of the program.

Lindsay argued that the statute of limitations should have begun to toll as the result of any one of several events that occurred more than three years prior to Brownstein’s commencement of the action. Among those instances were (a) Lindsay’s registration in her own name of copyrights in and to portions of the program; (b) a software license entered into by a company formed by Lindsay and Brownstein that purported to grant an “exclusive” license to the software to a third party; and (c) several other agreements that confirmed that the parties’ company owned the program and/or all underlying copyrights. Viewing all evidence in the light most favorable to Brownstein, the Third Circuit found that none of those events were sufficient to constitute “express repudiation.”

The court found that Lindsay’s copyright registrations did not qualify as an express repudiation, in part because they only covered her contribution to the work (i.e. the “rules” for the program). In addition, the court found that a registration alone does not expressly repudiate authorship, since “co-authors are not expected to investigate the copyright register for competing registrations.”

Each of the agreements pointed to by Lindsay were, when viewed in the light most favorable to Brownstein, also found insufficient to constitute an “express repudiation.” Notably, Brownstein never signed an assignment transferring his copyrights in the program to a third party, and such a writing is required under the Copyright Act. However, as a joint author, Lindsay had the ability to license and assign her rights in the work to third parties. The court found that Brownstein could have viewed the various agreements pointed to by Lindsay as relating only to her subset of rights, as opposed to a declaration that she was the sole author and repudiated Brownstein’s co-authorship of the program.

This case has now been remanded to the District Court for further consideration. Gibbons will continue to monitor developments in the action.

Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department. Catherine M.C. Farrelly, a former Director in the Gibbons Intellectual Property Department, co-authored this post.
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