Copyright Infringement – Time Limits to Bring Claims
For a party to bring a cause of action for federal copyright infringement, the cause of action must be brought within three years. But what does that mean? When is the start date? Is there “tolling”? This blog discusses some of the topics related to this concept.
Federal statute – U.S. Copyright Law [General Rule]
Section 507(b) of the copyright law states: No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued. A cause of action for copyright infringement accrues when one has knowledge of a violation or is chargeable with such knowledge. Wood v. Santa Barbara Chambers of Commerce, Inc., 507 F.Supp. 1128, 1135 (D.Nev.1980). This interpretation is consistent with the prevailing view that the statute bars recovery on any claim for damages that accrued more than three years before commencement of suit. See Roley v. New World Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994).
Section 507(b) of Title 17 of the United States Code provides that:
“[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). As Section 512(f) of Title 17 of the United States Code falls within “this title” – the Copyright Act – the three-year limitations period applies.
Under Section 507(b), “[a] claim ordinarily accrues ‘when [a] plaintiff has a complete and present cause of action.' [Citation].
In other words, the limitations period generally begins to run at the point when ‘the plaintiff can file suit and obtain relief.'” Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 670 (2014) (quoting Bay Area Laundry and Dry Cleaning Pension Trust Fund v. Ferbar Corp. of Cal., 552 U.S. 192, 201 (1997)); see also Roley v. New World Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994) (“A cause of action for copyright infringement accrues when one has knowledge of a violation or is chargeable with such knowledge”); Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 705-06 (9th Cir. 2004) (the discovery rule applies to copyright claims); Seven Arts Filmed Entertainment Ltd. v. Content Media Corp. PLC, 733 F.3d 1251, 1254 (9th Cir. 2013) (quoting Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996)) (“By contrast, we have held ‘that claims of co- ownership, as distinct from claims of infringement,' accrue only once, ‘when plain and express repudiation of co-ownership is communicated to the claimant, and are barred three years from the time of repudiation'”).
Damages that occur outside the three-year window (but suit filed within three years)
In Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 705–06 (9th Cir. 2004), the federal court noted:
In copyright litigation, the statute of limitations issue that often arises is that the plaintiff filed its copyright claim more than three years after it discovered or should have discovered infringement. Here, Timex makes a different, novel argument and asks us to rule that § 507(b) prohibits copyright plaintiffs from obtaining any damages resulting from infringement occurring more than three years before filing the copyright action, regardless of the date the plaintiff discovered the infringement. In Kling v. Hallmark Cards, Inc., 225 F.3d 1030, 1041–42 (9th Cir.2000), we left for another day precisely this argument; that day is now upon us.
We conclude that § 507(b) permits damages occurring outside of the three—year window, so long as the copyright owner did not discover—and reasonably could not have discovered—the infringement before the commencement of the three–year limitation period. Because Polar Bear did not discover Timex's infringement until within three years of filing suit, Polar Bear may recover damages for infringement that occurred outside of the three– year window.
As stated in Psihoyos v. John Wiley & Sons, Inc., an action must commence within three years of the claim accruing.
But also note, the US Supreme Court clearly addressed the issue of the Statute of Limitations in copyright law and how 17 USC 507(b) applies, finding that it does not operate as laches but rather limits a plaintiff to only the previous three years, as a look-back in damages. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 677-78 (2014).
Specifically, a plaintiff can only “...gain retrospective relief running only three years back from the date the complaint was filed.” There, the Court reviewed a case where the copyright holder knowingly waited 9 years to exercise her rights against an ongoing, continuous infringement.
Nevertheless, the Court granted relief, determining that the proper method of applying Section 507 was to limit the Plaintiff to just the three previous years of the infringement, not the full span of the infringement.
Additionally a claim accrues when the copyright owner is put on notice of the infringement. Wolf v. Travolta, 167 F. Supp. 3d 1077, 1089 and 1091 (C.D. Cal. 2016).
Even if a claim might be considered "time-barred," some Plaintiff's might still have an ability to apply for an "equitable exception including the delayed discovery rule.” citing O'Connor v. Boeing N. Am., 311 F.3d 1139, 1150 (9th Cir. 2002).
To preclude delayed discovery, a court must “...conclude both that plaintiffs:
(1) were unaware of defendants' infringement
(2) 'reasonably could not have discovered' such infringement....” At 1093, citing Polar Bear Prod. v. Timex Corp., 384 F.3d 700, 706 (9th Cir. 2004) (noting section 507(b)'s “statute of limitations does not prohibit recovery of damages incurred more than three years prior to the filing of suit if
 the copyright plaintiff was unaware of the infringement,
 that lack of knowledge was reasonable under the circumstances.”
Essentially, the Wolf decision establishes that the discovery rule still applies, post Petrella.
Date of "the last infringing act"
In copyright infringement actions, the period of limitation begins on the date of the last infringing act in some jurisdictions. Baxter v. Curtis Industries, Inc., 201 F.Supp. 100 (N.D.Ohio 1962). The trial record reflects the unauthorized duplication of legitimate copyrighted tapes in the same year of the indictment, thereby satisfying the three-year Statute of Limitations. See United States v. Shabazz, 724 F.2d 1536, 1540 (11th Cir. 1984).
The 9th circuit (which covers California and Arizona) also adopted this position in the Seven Arts case:
SEVEN ARTS FILMED ENTERTAINMENT LIMITED, an English corporation, Plaintiff-Appellant, v. CONTENT MEDIA CORPORATION PLC, an English corporation, Defendant
"For ordinary claims of copyright infringement, each new infringing act causes a new claim to accrue; thus, we have held that “an action may be brought for all acts that accrued within the three years preceding the filing of the suit.” Roley v. New World Pictures, Ltd., 19 F.3d 479, 481–82 (9th Cir. 1994)
When does a Plaintiff learn about Copyright Infringement? [The Discovery Rule vs. Injury Rule]
in another case, a federal court noted: Defendant also moves to dismiss the Amended Complaint as time-barred. In the Eleventh Circuit, dismissal on statute of limitations grounds is appropriate “if it is apparent from the face of the complaint that the claim is time-barred.” La Grasta v. First Union Sec., Inc., 358 F.3d 840, 845 (11th Cir.2004). The Federal Copyright Act states, “ No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” 17 U.S.C. § 507(b).
There are two tests for when the statute of limitations begins to run in copyright cases. The majority of federal courts use the “discovery rule. See Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390–91 (6th Cir.2007); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 706–707 (9th Cir.2004); Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir.2004); Lyons P'ship, L.P. v. Morris, 243 F.3d 789, 796 (4th Cir.2001); Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir.1992). The minority follow the “injury rule.” See, e.g., Auscape Int'l v. Nat'l Geographic Soc'y, 409 F.Supp.2d 235, 242–48 (S.D.N.Y.2004). Under the discovery rule, a copyright infringement cause of action accrues when a copyright owner knew or should have known of the alleged infringement. Under the injury rule, the statute of limitations begins to run when the alleged infringement occurred. The Eleventh Circuit has not explicitly adopted either the majority or the minority position in the civil copyright infringement context. However, in deciding a 42 U.S.C. § 1983 case, the Eleventh Circuit has held, “ A federal claim is generally considered to accrue when the plaintiff knows or has reason to know of the injury which is the basis of the action.” Corn v. City of Lauderdale Lakes, 904 F.2d 585, 588 (11th Cir.1990).
A concurring Eleventh Circuit opinion applied the discovery rule to an infringement action. Calhoun v. Lillenas Pub., 298 F.3d 1228, 1236 (11th Cir.2002) (Birch, J., concurring) (“ The limitations period may be triggered when a plaintiff knows or, in the exercise of reasonable diligence, should have known about an infringement.”). Moreover, cases in the Southern and Middle Districts of Florida have applied the discovery rule in copyright infringement cases. Lorentz v. Sunshine Health Prods., Inc., No. 09–61529–civ, 2010 (S.D.Fla. Aug. 27, 2010); Thornton v. J Jargon Co., 580 F.Supp.2d 1261, 1284–85 (M.D.Fla.2008); Tingley Sys., Inc. v. HealthLink, Inc., 509 F.Supp.2d 1209, 1218 (M.D.Fla.2007). Given the weight of authority supporting the discovery rule, and determining it to be the better practice, this Court applies the discovery rule to the instant case and finds that the statute of limitations period began to run when Plaintiff learned of or, in the exercise of reasonable diligence, should have learned of Defendant Arquitectonica's alleged infringement. “Should have learned,” means whether a reasonably prudent person in Plaintiff's position would have become aware of the alleged infringement. McTigue, 531 F.3d at 44; Stone, 970 F.2d at 1048. “A reasonably prudent person is charged with a duty of diligence.” Luar Music Corp. v. Universal Music Group, Inc., 847 F.Supp.2d 299, 309 (D.P.R.2012) (citing McTigue, 531 F.3d at 44).
A plaintiff is put on notice and the statute of limitations begins to run once a plaintiff “possesses information fairly suggesting some reason to investigate whether he may have suffered an injury at the hands of a putative infringer.”
See Sieger Suarez Architectural P'ship, Inc. v. Arquitectonica Int'l Corp., 998 F. Supp. 2d 1340, 1354–55 (S.D. Fla. 2014), appeal dismissed (Sept. 5, 2014)
What about ‘continuing' copyright violations
In a case of continuing copyright infringements, an action may be brought for all acts that accrued within the three years preceding the filing of the suit. Baxter v. Curtis Indus., Inc., 201 F.Supp. 100, 101 (N.D.Ohio 1962); see also Kalem Co. v. Harper Bros., 222 U.S. 55, 61–62, 32 S.Ct. 20, 21, 56 L.Ed. 92 (1911); Hampton v. Paramount Pictures Corp., 279 F.2d 100, 105 (9th Cir.1960); *482 Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 365 (9th Cir.1947); Cain v. Universal Pictures Co., 47 F.Supp. 1013, 1017–18 (S.D.Cal.1942). See Roley v. New World Pictures, Ltd., 19 F.3d 479, 481–82 (9th Cir. 1994).
Can copyright infringement actions be “tolled?
The copyright infringement statute of limitations may be equitably tolled if justified under the circumstances. See Wood v. Santa Barbara Chamber of Commerce, Inc., 705 F.2d 1515 (9th Cir.1983). See Kregos v. Associated Press, 795 F. Supp. 1325, 1330 (S.D.N.Y. 1992), aff'd, 3 F.3d 656 (2d Cir. 1993). In another case a federal court held:
The Doctrine of Equitable Tolling would be inappropriate to apply here given the facts as alleged. See Podobnik v. United States Postal Service, 409 F.3d 584, 591 (3d Cir.2005)(noting that the doctrine of equitable tolling should be applied “sparingly” to stop a statute of limitations period from running). The Third Circuit has stated that there are three principle situations in which equitable tolling might be appropriate: (1) where the defendant has actively misled the plaintiff respecting the plaintiff's cause of action; (2) where the plaintiff in some extraordinary way has been prevented from asserting his or her rights; or (3) where the plaintiff has timely asserted his or her rights in the wrong forum. Plaintiff has not alleged facts to support any of these circumstances, and thus there is no basis to equitably toll the limitations period in Plaintiff's claim. See id. (“Appellant bears the burden of proving that the equitable tolling doctrine applies here.”). See Hunter v. Squirrel Hill Associates, L.P., 413 F. Supp. 2d 517, 521 (E.D. Pa. 2005).
Fraudulent Concealment may toll the statute of limitations
In any event, there is no doubt that the copyright statute of limitations is tolled by “fraudulent concealment” of the infringement. See, e.g., Prather v. Neva Paperbacks, Inc., 446 F.2d 338, 340–41 (5th Cir.1971); Charlotte Telecasters, Inc. v. Jefferson-Pilot Corp., 546 F.2d 570, 573–74 (4th Cir.1976). Although these are not decisions under the 1976 Copyright Act, the statute of limitations in that Act was taken without material change from the one that had been added to the previous Act in 1957. See Act of Sept. 7, 1957, Pub.L. 85–313, 71 Stat. 633; H.Rep. No. 1476, 94th Cong., 2d Sess. 164 (1976), U.S.Code Cong. & Admin.News 1976, p. 5659.
The term “fraudulent concealment” implies active misconduct, but there was that here. Meirick had put his own copyright notice on his copies of Taylor's maps. This was calculated to throw purchasers, and Taylor himself, off the scent; only a close inspection of Meirick's maps would have revealed that they were copies. Modern maps of the same area resemble each other closely—it would be most unsettling if, like medieval maps, they did not! The features that made Taylor's maps copyrightable—and we repeat that the validity of his copyrights is not contested—were subtle and would easily escape notice with another's name affixed as copyright holder. See Taylor v. Meirick, 712 F.2d 1112, 1118 (7th Cir. 1983).
Copyright & Laches
When a claim for copyright infringement is brought within the statute of limitations period, there is a strong presumption that there is no unreasonable delay. See Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 997 (9th Cir.2006) (holding that if a plaintiff “files suit within the applicable period of limitations for his claim, there is a strong presumption that laches does not bar the claims”); Novell, Inc. v. Unicom Sales, Inc., (N.D.Cal.2004) (applying the “strong presumption” that laches does not apply to a copyright claim filed within the applicable limitations period).
Only in unusual circumstances will an action filed within the statutory period be considered a sufficiently unreasonable delay to permit a laches defense. See Danjaq LLC v. Sony Corp., 263 F.3d 942, 950–54 (9th Cir.2001) (finding that laches defense applied when re-released DVD material was identical in nature to an original infringing work and that although the statute of limitations would permit the lawsuit, the thirty-six year time lapse from the initial infringement was an unreasonable delay sufficient to support a laches defense). See Oracle USA, Inc. v. Rimini St., Inc., 6 F. Supp. 3d 1108, 1127 (D. Nev. 2014), order clarified sub nom. Oracle USA, Inc. v. Rimini St., Inc.., No. 210-CV-00106-LRH-PAL, 2014 WL 5285963 (D. Nev. Oct. 14, 2014).
More on the law of laches in the 9th circuit of California
Here are a few more snippets of case law discussing laches:
1. LACHES AND WILLFUL INFRINGEMENT: "Move Press argues Peloton's willful infringement bars the application of the laches defense. In Danjaq LLC v. Sony Corp., the Ninth Circuit held that the definition of willful infringement under the Copyright Act -- infringement that occurs “‘with the knowledge that the defendant's conduct constitutes copyright infringement'” -- is the standard by which courts should assess whether willful infringement bars the application of laches. 263 F.3d at 957 (quoting Columbia Pictures Television v. Krypton Broad., 106 F.3d 284, 293 (9th Cir.1997) (alterations and omissions in original) rev'd on other grounds sub nom. Feltner v. Columbia Pictures Television, 523 U.S. 340 (1998)).
District courts in the Ninth Circuit have applied this standard to trademark infringement, and the parties do not dispute that it applies here. See Fitbug, 78 F. Supp. 3d at 1195; FLIR Sys. Inc. v. Sierra Media, Inc., 965 F.Supp.2d 1184, 1210 (D. Or. 2013)."
2. PREJUDICE NEEDED TO PROVE LACHES: "Even where a defendant establishes that a plaintiff delayed unreasonably in filing suit, laches will not bar a claim unless that delay prejudiced the defendant.” Eat Right Foods, 880 F.3d at 1119 (citing Grand Canyon Trust v. Tucson Elec. Power Co., 391 F.3d 979, 988 (9th Cir. 2004)).
Two types of prejudice can give rise to laches: “expectations-based prejudice and evidentiary prejudice.” Id. Peloton maintains that the undisputed evidence shows Peloton will suffer prejudice from Move Press's unreasonable delay. Dkt. 36 at 25. Expectations-based prejudice exists where “a defendant ‘took actions or suffered consequences that it would not have, had the plaintiff brought suit promptly.'” Evergreen, 697 F.3d at 1227 (quoting Danjaq, 263 F.3d at 955). A defendant can establish prejudice by demonstrating that, during the plaintiff's delay, “it invested money to expand its business or entered into business transactions based on [its] presumed rights” in a disputed mark. Eat Right Foods, 880 F.3d at 1119 (quoting Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 999 (9th Cir. 2006)......Additionally, “at least some reliance on the absence of a lawsuit” is necessary to show prejudice. Seller Agency Council, Inc. v. Kennedy Ctr. for Real Estate Educ., Inc., 621 F.3d 981, 989 (9th Cir. 2010).
This determination focuses on whether Peloton “would have acted differently had [Move Press] filed suit earlier.
3. UNREASONABLE DELAY IN FILING SUIT: "To determine whether a delay is reasonable, a court must “look to the cause of the delay.” Evergreen, 697 F.3d at 1227. The Ninth Circuit has identified six factors that can be considered in determining whether a delay is reasonable. E–Systems Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir. 1983). They are as follows:
(i) strength and value of trademark rights asserted;
(ii) plaintiff's diligence in enforcing mark;
(iii) harm to senior user if relief denied;
(iv) good faith ignorance by junior user;
(v) competition between senior and junior users;
(vi) extent of harm suffered by junior user because of senior user's delay
4. LACHES IN GENERAL: “Laches is an equitable time limitation on a party's right to bring suit, resting on the maxim that one who seeks the help of a court of equity must not sleep on his rights.” Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir.2002) (internal citations and quotation marks omitted). Laches is a defense to both Lanham Act claims (including trademark infringement and unfair competition) as well as to California state law claims. Id. Courts make laches determinations “with reference to the limitations period for the analogous action at law.” Jarrow, 304 F.3d at 835–36. “If the plaintiff filed within that period, there is a strong presumption against laches. If the plaintiff filed outside that period, the presumption is reversed.” Tillamook Country Smoker, Inc. v. Tillamook Cty. Creamery Ass'n, 465 F.3d 1102, 1108 (9th Cir. 2006). To establish that laches bars a claim, a defendant must “prove both an unreasonable delay by the plaintiff and prejudice to itself.” Evergreen Safety Council v. RSA Network Inc., 697 F.3d 1221, 1226 (9th Cir. 2012) (quotation omitted).
Contact an Intellectual Property Law Firm
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