Common Law Copyright Claims are Subject to Three-Year Statute of Limitations: S.D.N.Y. | Practical Law

Common Law Copyright Claims are Subject to Three-Year Statute of Limitations: S.D.N.Y. | Practical Law

In ABS Entertainment, Inc. v. CBS Corp., the US District Court for the Southern District of New York held that claims for common-law copyright infringement of pre-1972 sound recordings are subject to a three-year statute of limitations under New York state law.

Common Law Copyright Claims are Subject to Three-Year Statute of Limitations: S.D.N.Y.

by Practical Law Intellectual Property & Technology
Published on 22 Feb 2016 • USA (National/Federal)
In ABS Entertainment, Inc. v. CBS Corp., the US District Court for the Southern District of New York held that claims for common-law copyright infringement of pre-1972 sound recordings are subject to a three-year statute of limitations under New York state law.
On February 18, 2016, in ABS Entertainment, Inc. v. CBS Corp., the US District Court for the Southern District of New York dismissed class-action plaintiffs' common law copyright infringement claims, which arose more than three years ago, seeking damages for defendants' unlicensed broadcast of plaintiffs' sound recordings that were recorded prior to February 15, 1972 ( (S.D.N.Y. Feb. 18, 2016)).
ABS Entertainment, Inc. claimed to own sound recordings that were recorded before 1972, before the Copyright Act protected sound recordings (see 17 U.S.C. § 102(a)(7)). ABS, later joined by Barnaby Records, Brunswick Record Corporation, and Malaco Inc. (the class), filed a class action complaint against CBS Corporation and others alleging common law copyright infringement and unfair competition for CBS's broadcast of their sound recordings on the radio and internet.
As part of the common law copyright infringement claim, the class sought compensatory damages in excess of $5,000,000 and an injunction enjoining CBS from further infringement.
The district court asked the parties to brief which New York statute of limitations applies to common law copyright infringement claims. It noted that New York's highest court has not addressed whether common law copyright infringement claims are subject to a three or six year statute of limitations, and recent decisions have been split on the issue. The class argued for a six-year statute of limitations, and CBS argued that a three-year statute of limitations applied.
The court explained that under New York Civil Practice Law & Rules (CPLR):
  • Section 214(4), a three-year statute of limitations applies to an action to recover damages for an injury to property.
  • Section 213(1), a six-year statute of limitations applies if the CPLR do not prescribe a specific statute of limitations.
The court then determined that:
  • The term "property" in CPLR Section 214(4) is broad and does not exclude intellectual property, or other intangible property.
  • Cases deciding analogous causes of action applied the three-year statute of limitations to intangible property claims including:
    • claims of misappropriation of trade secrets;
    • misappropriation of design claims; and
    • unfair competition claims.
The district court therefore agreed with CBS that the class's copyright infringement claims were an action for damages to property subject to the three-year statute of limitations.
The district court also rejected the class's argument that the statute of limitations for the claim for equitable relief should control both the equitable relief and the money damages claim. The court explained that in New York, where both a legal and an equitable remedy exist, the equitable claim is under the same statutory bar as the legal remedy. Nonetheless, the court recognized that if legal remedies provide an incomplete or imperfect remedy, the equitable claims remain separate and subject to a six-year statute of limitations.
As a result, the district court dismissed the class's claims seeking damages for common law copyright infringement that arose more than three years before filing the complaint.