IP Law Daily Infringement claims over sample in 2006 Justin Timberlake song not time-barred
Friday, October 5, 2018

Infringement claims over sample in 2006 Justin Timberlake song not time-barred

By Thomas Long, J.D.

A copyright infringement suit filed in February 2016, over a sample taken from a 1969 recording and used in a September 2006 release by pop star Justin Timberlake, was not barred by the Copyright Act’s three-year statute of limitations, the federal district court in New York City has decided. The owner of the copyrights to the 1969 work was not put on constructive notice of the alleged infringement simply because an album, tour, DVD, and HBO special containing the accused Timberlake song were commercially successful. The fact that Timberlake and other defendants apparently believed the 1969 work was owned by its recording artist—who had publicly repudiated the songwriter’s ownership assertions, although that artist was not a party to the suit—did not convert the rights owner’s claim to an ownership claim that accrued more than three years before the filing date. Under the "discovery rule" of claim accrual, the rights owner was not limited to damages occurring during the three-year period before suit was filed (PK Music Performance, Inc. v. Timberlake, September 30, 2018, Broderick, V.).

Perry Kibble wrote "A New Day Is Here At Last" ("Day") and obtained a copyright registration with an effective date of August 1, 1969. The song was recorded and released as a 45-rpm single by a colleague of Kibble, musician J.C. Davis. Kibble died in 1999, and ownership of the "Day" copyright passed to his sister, Janis McQuinton. In 2005, Davis released a remix of his "Day" recording under the Cali-Tex record label. The vinyl record stated that all music and lyrics for the "Day" remix were copyrighted by Davis and did not mention Kibble or McQuinton. In December 2015, McQuinton assigned her interests in "Day" to the plaintiff, PK Music Performance, Inc., of which McQuinton was the principal.

On or about September 12, 2006, the defendants commercially released the musical composition and sound recording "Damn Girl," on an album by Justin Timberlake. PK Music alleged that a substantial amount of "Damn Girl" was copied from "Day." The booklet with Timberlake’s album stated that "Damn Girl" contained a sample from "Day," listed Davis as a writer and publisher of the song, and stated that the sample was used with Davis’s permission pursuant to a license granted by Cali-Tex Records. Copyrights were registered for "Damn Girl" on September 24, 2006, and December 18, 2006. The first registration contained a references to "Day" as being a source of a sample and in the "Other Title" section. The second registration listed Davis as a copyright claimant. Timberlake performed the song on tour and included a concert performance of the song on a DVD. The DVD packaging listed Davis as a songwriter but contained no specific reference to "Day." The concert was also featured in an HBO special. The record, concert tour, DVD, and HBO special all were commercially successful.

On February 18, 2016, PK Music filed suit for copyright infringement against Timberlake and other individuals and entities involved in composing, recording, releasing, and exploiting "Damn Girl." PK Music alleged that McQuinton first discovered that the music in "Damn Girl" was copied from "Day" in August 2015. The defendants filed a motion to dismiss, contending that the copyright infringement claims should be dismissed as time-barred for all periods prior to February 17, 2013, under the Copyright Act’s three-year statute of limitations. According to the defendants, PK Music’s infringement claims were actually a copyright ownership claim, which accrued more than three years before the filing date. They also argued that, even if the claims were construed as infringement claims, PK Music knew or should have known of the alleged infringement by at least 2007, limiting PK Music to damages for acts of infringement occurring within the three-year window before filing. Finally, they argued that even if the claims accrued after 2007, PK Music was entitled only to damages for infringement occurring within the three years before filing.

Copyright ownership. Although the complaint stated that PK Music was bringing claims for infringement, the defendants argued that the court should construe it as bringing a claim for copyright ownership due to purported repudiations of PK Music’s ownership by Davis in the mid-2000s. They contended that Davis had made "numerous public and unequivocal repudiations of McQuinton’s purported ownership of the Daycopyright in 2005, 2006, and 2007," and that these transformed the infringement claims into an ownership claim. The court disagreed. None of the parties asserted that the defendants had any ownership rights in "Day," the court noted. The purported repudiations were made by Davis, not any of the defendants. If PK Music had an ownership claim, it would be against Davis, not the defendants. Davis was not a party and had not sought to intervene in the case to protect his asserted rights. Generally, a third party’s theoretical challenge to a plaintiff’s ownership rights could not transform an infringement claim to an ownership claim, and even if it could, the court found no basis to do so here. Any ownership challenge by Davis at this point would probably be time-barred because Davis was on notice of Kibble’s assertion of ownership in 1969. According to the court, the defendants had asserted no more than "unsupported defects in ownership," which was insufficient to convert PK Music’s infringement claims into an ownership claim for purposes of the statute of limitations.

Copyright infringement. Turning to the three-year limitations period for infringement claims, the court pointed out that the Second Circuit, and all other circuits addressing the issue, had adopted the "discovery rule" to determine when an infringement claim accrues. The discovery rule provides that copyright infringement claims do not accrue until actual or constructive discovery of the infringing acts takes place. The question of whether a plaintiff should have discovered the relevant infringement was objective in nature. PK Music alleged that its principal, McQuinton, discovered the infringements in August 2015. The defendants contented that McQuinton had the means to discover the infringements no later than 2007, considering the popularity and success of Timberlake’s album, tour, DVD, and HBO special. The court rejected this argument, finding it unpersuasive that the success of Timberlake’s works gave rise to constructive or inquiry notice. There was no indication that "Damn Girl" was ever played on the radio or that PK Music had the opportunity to hear it. The only way PK Music could have heard the song was by purchasing the album or DVD (or obtaining a recording of the song in some other way), tuning into the HBO broadcast of the special, or attending a concert on the tour. To be considered "diligent," a plaintiff was not required to obtain or consume all popular music products and scour them for potential infringements, the court said. There was no indication that "Damn Girl" itself had been singled out for acclaim or awards, or that it had been brought to the public’s attention except as part of the album and other works. Nor were the copyright registrations for "Day" sufficient to put PK Music on notice of the alleged infringement.

Three-year damages lookback. The defendants contended that even if the infringement claims did not accrue until 2015, PK Music was not entitled to damages for any alleged infringements that occurred more than three years prior to the commencement of this action under the statute of limitations on civil copyright actions pursuant to 17 U.S.C. §507(b). However, in the court’s view, the Supreme Court’s references to a three-year lookback period in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), were to be read in the context of the Court’s discussion of the "injury rule" as the method to determine claim accrual. The Court explained that an infringement claim accrued when an infringing act occurred, and each infringing act started a new limitations period. According to the district court, Petrella recognized that under the injury rule, a party may recover damages for, at most, the three years prior to bringing a claim because a claim accrues upon the relevant infringement and must be brought within three years therefrom, but the Court also acknowledged that "nine Courts of Appeals have adopted, as an alternative to the incident of injury rule, a ‘discovery rule,’" and that it was not passing on the question of which rule should be applied. Thus, the district court concluded, Petrella did not require a three-year limitation on damages when applying the discovery rule.

Accordingly, the court denied the motion to dismiss the claims occurring before February 17, 2013.

This case is No. 1:16-cv-01215-VSB.

Attorneys: Brian S. Levenson (Schwartz, Ponterio & Levenson, PLLC) and Steven M. Lester (La Reddola, Lester & Associates, LLP) for PK Music Performance, Inc. Marcia B. Paul (Davis Wright Tremaine LLP) for Justin Timberlake, Zomba Recording LLC, Sony Music Entertainment, Tennman Tunes, LLC, and Tennman Productions, LLC.

Companies: PK Music Performance, Inc.; Zomba Recording LLC; Sony Music Entertainment; Tennman Tunes, LLC; Tennman Productions, LLC

MainStory: TopStory Copyright NewYorkNews

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