Second Circuit - Joint Authorship in Copyright Law: Time-Barred Copyright Ownership Claims Bar Later Copyright Infringement Claims

In Kwan v. Schlein, (2d Cir. Jan. 25, 2011)(decision below), the Second Circuit determined that a time-barred copyright ownership claim barred a later copyright infringement claim.   The decision sorts through the facts involving an editor (Kwan/appellant) who was offered co-author credit by a book publisher.  The book's author protested.  The book was published, giving the editor no authorship credit, with copyrights registered in the author and publisher's name.   This publication, together with the author cashing a royalty check, was held to trigger a three-year statute of limitations on a copyright ownership claim.   Once the editor failed to pursue the ownership claim in a timely manner, her right to pursue any copyright infringement claims was cut off.

Once the defendant got summary judgment on the editor's claims, he voluntarily dismissed his counterclaims pursuant to Rule 41(a) of the Federal Rules of Civil Procedure without prejudice with leave of court.   Editor/Kwan attacked the district court's appoval of the without prejudice dismissal.

The Second Circuit analyzed the factors permitting such a without prejudice dismissal.  In this case, the defendant's representation that he would not pursue the counterclaims unless he was sued again if Kwan won the appeal and that the counterclaims had been asserted as a defensive measure in the first place were sufficent to satisfy the Zagano factors referenced in the court's opinion.

The defendant's voluntary dismissal of its counterclaims was a neat trick:  it forced Kwan to bear the burden of appealing, rather than proceeding to a trial on the counterclaims.

I deal with issues involving statutes of limitations in Chapter 5:  Calculating Dates Prior To Commencing Litigation in Copyright Litigation Handbook.   Chapter 8:  Copyright Ownership and Licensing Litigation delves further into issues of authorship and ownership.

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Kwan v Schlein decision below.
Copyright Litigation - Kwan v Schlein

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