Copyright Registration Does Not Trigger the Statute of Limitation for a Co-Authorship Claim - Brownstein v. Lindsay

by McDermott Will & Emery
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Addressing for the first time the issues of cancelation of copyright registration by a court and accrual of a joint authorship claim under the Copyright Act, the U.S. Court of Appeals for the Third Circuit reversed the lower court, holding that courts have no authority to cancel copyright registrations and that an authorship claim arises and accrues when a plaintiff’s authorship has been “expressly repudiated”, which does not occur upon the act of registration of a copyright, standing alone.  Brownstein v. Lindsay, Case No. 10-1581 (3d Cir., Jan. 1, 2004) (Greenaway Jr., J.).

Peter Brownstein and Tina Lindsay together developed an ethnic identification system, the Lindsay Cultural Identification Determinate (LCID), a computer program that implements rules for identifying the ethnicity of proper names for the purposes of direct marketing. Lindsay devised the idea and developed rules for categorizing names by ethnicity, which became known as the Ethnic Determinate System (EDS). She enlisted Brownstein to turn the rules into a computer code to run computer programs (the ETHN programs) that would predict the ethnicity of a random list of names from a direct mailing database. Lindsay and Brownstein were the sole authors of the EDS and the ETHN programs, respectively, both having an equal authorship in the LCID, a combination of the EDS and the ETHN programs.

Lindsay registered copyright for the EDS and then for an improved version of the EDS as a derivative work in December 1996. She included a copy of the ETHN programs as a “deposit copy” for the second registration. Several agreements were subsequently executed by Lindsay alone as the “Copyright Holder” of LCID program. Lindsay indicated her possible claim to sole authorship of the LCID program in a 2010 deposition during proceedings in a lawsuit filed by Brownstein against Lindsay. Brownstein filed for a declaratory judgment of joint authorship of the LCID program under the Copyright Act.  Lindsay counterclaimed for cancellation of Brownstein’s copyright registrations to the ETHN programs filed in 2009.

The district court granted Lindsay motion under Rule 50(a) for judgment as a matter of law on Brownstein’s joint authorship claim before conclusion of a jury trial on the basis that the three-year statute of limitations under the copyright act had run starting with upon the issuance of Lindsay’s copyright registrations. The court found that Brownstein had adequate notice of his authorship claim from his possession of Lindsay’s copyright registrations and his knowledge of several agreements by Lindsay purportedly showing her claim of sole authorship of the LCID program. The court also ruled that Brownstein was not a co-author of the LCID program based on lack of supporting evidence of record. The district court also granted summary judgment to cancel Brownstein’s copyright registrations, finding it had authority because the threshold determination of ownership of the work was within the province of the district court, as the counterclaimants had not sought invalidation of the registration based on some regulatory defect.   Brownstein appealed.

The 3d Circuit found that the district court erred in both of its factual determinations: Brownstein’s co-authorship of the LCID program and whether his claim of co-authorship was barred by the statute of limitations when grating the Rule 50 motion, because those determinations should have been made by the jury.

The 3d Circuit found that that Lindsay’s registrations covered only the EDS, and the inclusion of the ETHN programs in the “deposit copy” did not change the scope of the copyright. The court adopted the “express repudiation” rule from U.S. Courts of Appeal for the Ninth, Seventh and Second Circuits according to which “an author is alerted to the potential violation of his rights when his authorship has been expressly repudiated by his co-author.” In addition to finding that registering a copyright does not repudiate co-authorship, the court determined that an action not hostile to an author’s rights may not be sufficiently plain for express repudiation of authorship rights.  The court found no statutory authority in the Copyright Act that gives courts general authority to directly cancel copyright registrations.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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