The recent case of Urbont v. Sony Music Entertainment, 11 Civ. 4516 (S.D.N.Y. March 27, 2012), highlights the disagreement among some federal courts as to when the three-year statute of limitations for copyright infringement claims begins its countdown. Directly at issue is whether the clock starts ticking when the infringement starts (the “injury rule”), or when the plaintiff discovers the infringement (the “discovery rule”).
Television composer Jacques “Jack” Urbont composed the theme song, known as the “Iron Man Theme,” for the 1960s television show “The Marvel Super Heroes.” In his suit against Sony, Urbont alleged that in 2011 he discovered that rapper Dennis Coles (p/k/a Ghostface Killah, a former member of the Wu Tang Clan), used “The Iron Man theme” verbatim in Coles’ 2000 album “Supreme Clientele.” Urbont filed a suit on August 29, 2011 – over ten years after the album debuted.
Sony fired back, moving to dismiss Urbont’s lawsuit as untimely, and advocating for the application of the “injury rule” for determining the date of accrual. Notably, Urbont only alleged acts of infringement prior to May 21, 2007, four years before he filed suit, and beyond the Copyright Act’s three-year statute of limitations.
Urbont responded that he would not have been likely to discover the use of a sample in a rap album, “Urbont is over 80 years-old and would not normally encounter the defendant’s rap music in the ordinary course of his dealings in the music industry or otherwise.”
With these facts, Judge Buchwald was faced with the issue of whether a copyright infringement claim accrues on the date of the claimant’s discovery or on the date that the injury actually occurred. The court noted that the majority of jurisdictions favor the “discovery rule”. Those jurisdictions have held that the three-year statute of limitations in a copyright infringement claim begins its countdown when the plaintiff learns, or reasonably should have learned, that its rights have been violated. The “discovery rule” protects the unknowing plaintiff who, as Urbont argued he was, should not be charged with an affirmative obligation to closely monitor his or her intellectual property rights.
On the other hand, proponents of the “injury rule” contend that it offers defendants predictability and peace of mind when it comes to calculating exposure for infringement claims.
Ultimately, despite the Second Circuit’s application of the claimant-friendly “discovery rule” in the context of copyright ownership claims, see Stone v. Williams, 970 F.2d 1034 (2d Cir. 1992), in this case the court held nonetheless that when it comes to infringement claims, the “injury rule” is the appropriate guidepost. The court reached this conclusion by noting the fundamental differences between copyright ownership and infringement claims (for example, where the facts that give rise to an ownership claim can only accrue once, acts of infringement can give rise to multiple, ongoing claims) and noted the Supreme Court’s caution against the liberal application of the “discovery rule,” which is largely reserved for cases of fraudulent concealment, latent disease, and medical malpractice.
Accordingly, the court applied the “injury rule” and dismissed Urbont’s claims of infringement occurring before May 21, 2007 as time-barred. Until the Second Circuit adjudicates this issue and a bright-line rule is established, copyright holders may wish to err on the side of vigilance, remain on the lookout, and take action before time runs out.