IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- September 4, 2013

Table of Contents

Castronuovo v. Sony Music Entertainment, USDC, M.D. Tenn., August 29, 2013
 Click here to download a PDF of the full decision

  • District court denies defendant music companies’ motion for partial summary judgment seeking to confine scope of copyright damages to sales made in three years preceding plaintiff’s suit, where defendants conceded that plaintiff had not discovered the allegedly infringing song prior to three years before filing suit.

Plaintiff Ricardo Daniel Castronuovo, a professional musician, composer and songwriter in Argentina, claimed to have authored “Quien lo ve hoy” and “Nuestro Arbol” (collectively the compositions) in 1978 and 1981, respectively. In 1992, plaintiff had a mutual friend, Eduardo Menduina, deliver a demo tape containing recordings of the compositions to Juan Fernando Silvetti, an Argentine music producer living in Los Angeles. In 1993, defendants Sony Music Entertainment and Sony Music Entertainment US Latin LLC released the song “Amigo Amor.” The song was registered with the U.S. Copyright Office on June 29, 1993. Plaintiff brought suit against defendants in April 2010, alleging that their exploitation of the work “Amigo Amor” infringed his copyrights in “Quien lo ve hoy” and “Nuestro Arbol,” which he secured in 2010 after hearing the allegedly infringing song and prior to filing suit. Plaintiff claimed that he first heard “Amigo Amor” in late April or early May 2007 and, upon investigation, determined the circumstances surrounding the copyright registration and release of the song.

Defendants moved for partial summary judgment on all claims for copyright infringement prior to April 30, 2007, contending “[t]he three-year statute of limitations applicable to copyright-infringement claims bars claims for all sales made more than three years prior to [p]laintiff’s filing this lawsuit on April 30, 2010.” Defendants did not argue that plaintiff’s claims concerning infringement, which occurred within three years before plaintiff filed his original complaint, were untimely. Rather, for purposes of the summary judgment motion, the sole issue was whether plaintiff should be limited to recovering only those damages he suffered in the three years prior to filing suit or whether he could reach back beyond the three-year period preceding the lawsuit because he allegedly was unaware of the infringing conduct at that time.

After noting clear Sixth Circuit precedent that the discovery rule applies in copyright cases, the district court explained that the relevant question was one of damages, not the relevant limitations period. In the absence of clear Sixth Circuit precedent concerning the availability of damages for pre-discovery infringement, the court adopted the approach of the Ninth Circuit’s 2004 decision in Polar Bear Productions, Inc. v. Timex Corp. In Polar Bear, the Ninth Circuit held that the Copyright Act “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 commencing of the three-year limitation period.” The district court agreed with the Ninth Circuit’s interpretation allowing damages occurring outside the three-year period preceding the suit, noting that to the extent that Sixth Circuit decisions had failed to apply the reasoning of Polar Bear in previous cases, those decisions rested on distinguishable facts, including where the plaintiffs had earlier notice of the alleged infringements and their claims were therefore time-barred.

Plaintiff claimed that he did not discover the alleged infringement until almost three years before he filed his lawsuit (just barely in time to meet the statute of limitations requirements). Under the discovery rule, in order to bar plaintiff from collecting any damages, defendants would have to demonstrate, by undisputed facts, that he “knew or is chargeable with knowing” of alleged acts of infringement occurring more than three years before the lawsuit was filed. Because they had conceded for purposes of the motion that plaintiff was not aware of the allegedly infringing song prior to April 2007, the district court denied defendants’ partial motion for summary judgment as to potential damages.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we inform you that any advice (including in any attachment) (1) was not written and is not intended to be used, and cannot be used, for the purpose of avoiding any federal tax penalty that may be imposed on the taxpayer, and (2) may not be used in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein.



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