IP Law Daily Jury must decide whether family dispute over Everly Brothers hit ‘Cathy’s Clown’ is time-barred
Tuesday, May 5, 2020

Jury must decide whether family dispute over Everly Brothers hit ‘Cathy’s Clown’ is time-barred

By Thomas Long, J.D.

Although the time limit for the claim that Phil Everly was a co-author would begin running when Phil’s authorship was repudiated by Don Everly, factual issues precluded summary judgment on the issue.

A claim brought by the estate and children of deceased pop musician Phil Everly—one of the famous Everly Brothers—asserting that Phil was a co-author of the 1960 hit "Cathy’s Clown" was not time-barred as a matter of law, the U.S. Court of Appeals in Cincinnati has determined. In a split decision, the appellate court held that an authorship claim—like an ownership claim—accrues when the assertion of authorship is expressly repudiated (in the case of an authorship claim, by another person claiming sole authorship). There was a genuine issue of material fact as to whether the other Everly brother, Don Everly, had expressly repudiated Phil’s co-authorship of "Cathy’s Clown," or whether Phil had merely agreed to transfer certain ownership interests to Don. Accordingly, the appellate court reversed and remanded a district court’s grant of summary judgment to Don and holding that Phil’s successors were estopped from asserting ownership or termination rights in the song (Everly v. Everly, May 4, 2020, Bush, J.).

Composition copyrights. In 1960, the Everly Brothers (Don and Phil) recorded and released the song "Cathy’s Clown," which was a commercial and critical success. That same year they recorded and released two other songs, "Sigh, Cry Almost Die" and "That’s Just Too Much." (The court referred to the three songs together at "the Compositions"). Both Don and Phil were credited as authors on the copyright registrations for the Compositions. That same year, Don and Phil transferred the copyrights in their entireties to Acuff-Rose Publications.

After sharing credit for "Cathy’s Clown" for many years, the brothers had a falling out, Don allegedly asked Phil in 1980 to "take his name off" the song. Although the record was unclear as to the precise communications between the brothers, in June 1980, Don and Phil executed a "Release and Assignment" (the "1980 Release") in which Phil agreed to transfer all of his rights to the Compositions, including rights as a coauthor, to Don. Following the 1980 Release, Don received all royalty payments and public credit as author of "Cathy’s Clown," and Acuff-Rose changed its records to reflect Don as the sole composer. Both brothers, however, continued to make public statements referring to Phil as a co-author of the song.

In 2011 Don sought to terminate the 1960 Grants to Acuff-Rose ("2011 Termination") in a notice of termination recorded with the Copyright Office on July 15, 2011, with an effective date of April 14, 2016. Don claimed to have exclusive copyright ownership of the Compositions. He also sought to remove Phil’s name as an author of the original registrations, but the Copyright Office rejected that request as untimely.

In 2007 and 2012, Phil exercised termination rights of his own to certain compositions but he never attempted to terminate the 1960 Grants or any other grant related to the three Compositions at issue, including "Cathy’s Clown." After Phil’s death in 2014, his children filed notices of termination as to the 1960 Grants, and in 2016 they filed a notice of termination of Phil’s 1980 assignment to Don of the "Cathy’s Clown" rights.

Declaratory relief action. On November 8, 2017, Don Everly filed a complaint for declaratory relief against Patti Everly, Jason Everly, and Chris Everly as the statutory successors to Phil’s termination rights, and against the Phillip Everly Trust and Everly and Sons Music (BMI) as legal owner or successor to Phil Everly’s rights or as legal owner of the statutory successors’ rights. Don sought an order declaring that (1) Phil Everly is not an author of "Cathy’s Clown"; (2) the 1980 Release is not a grant subject to termination under 17 U.S.C. §§ 304(c), 203(a); and (3) Don Everly owns 100% of the copyright termination rights in "Cathy’s Clown" and 100% of the songwriter royalties to the Compositions.

The defendants responded by seeking declarations that (1) Phil Everly is an author of "Cathy’s Clown"; (2) the defendants’ notice of termination of the 1980 Release was valid; and (3) defendants are entitled to 50% of the income earned from "Cathy’s Clown." The defendants’ pleadings did not address the other two Compositions.

Don moved for summary judgment, contending that the defendants’ counterclaims were barred by the statute of limitations. The district court granted summary judgment in favor of Don on the first and third counterclaims after finding that Phil’s authorship had been expressly repudiated no later than 2011, when Don filed his notice of termination of the 1960 Grants, thus triggering the statute of limitations. The district court also dismissed the second counterclaim because the question of whether the 1980 Release could be subject to termination was mooted in light of the court’s finding that the defendants had no claim to authorship and, accordingly, no termination rights. The district court further ruled that the defendants were estopped from asserting termination rights based on Phil’s co-authorship of the Compositions and that Don was entitled to all songwriter royalties derived from them.

Issues on appeal. The defendants appealed to the Sixth Circuit. Because other arguments made by the defendants were deemed untimely, the only issue under consideration on appeal was whether Don expressly repudiated Phil’s claim, triggering the statute of limitations. According to the court, the central question was: did Don expressly repudiate Phil’s status as a co-author, or did he simply exercise the rights to royalties and public credit that Phil voluntarily granted him in the 1980 Release without changing Phil’s status as a co-author of the Compositions?

Statute of limitations—authorship claims. Copyright claims are subject to the three-year statute of limitations provided for by Section 507(b) of the Copyright Act. Furthermore, although infringement claims can re-accrue when new infringe acts occur, ownership claims accrue only once, and an action to establish ownership must be brought within three years of that date, the court explained. An ownership claim accrues when the plaintiff (the person asserting ownership) learns, or should reasonably have learned, that the defendant repudiated the plaintiff’s ownership.

Commentators and courts have analogized repudiation in the copyright context to the doctrine of adverse possession in real property. The most straightforward form of repudiation is a direct statement from one party to another claiming ownership of a work. An ownership claim also may be repudiated if a work is published but the plaintiff is not credited as an author. Additionally, an ownership claim can be repudiated when a purported co-owner learns that he or she is entitled to royalties but is not receiving them. The Second Circuit refers to these three forms of repudiation as direct repudiation, public repudiation, and implicit repudiation. The Sixth Circuit found this terminology consistent with its caselaw.

Although, as the appellate court pointed out, copyright ownership was not at issue here, but rather an assertion of copyright authorship, the parties as well as the court agreed that the express repudiation test should apply to an authorship claim. "Authorship status has important implications, such as determining the copyright’s duration as well as the accrual of the renewal term," the court said. "Allowing authors to sleep on their rights even after they have been repudiated would inject instability into an area of copyright law that calls out for certainty."

Accordingly, the Sixth Circuit held, "an authorship claim will not accrue until the putative author’s status as an author is expressly repudiated; actions repudiating ownership are irrelevant to begin the statute of limitations for an authorship claim because repudiation of ownership is not adverse to the author’s claim as such." Furthermore, regardless of whether repudiation of authorship is made privately, publicly, or implicitly, it must be made by someone asserting authorship of the work, and not a third party.

Evidence of repudiation. Don contended that his evidence established express repudiation. According to Don, he (1) privately and directly communicated to Phil a repudiation of Phil’s co-authorship; (2) publicly repudiated Phil’s co-authorship, such as through his acceptance of sole-authorship recognition and credit from BMI, Acuff-Rose, and Reba McEntire (who recorded a hit cover of the song in 1990); and (3) implicitly repudiated Phil as a co-author through receipt of all royalties from the Compositions to the exclusion of Phil.

In response, the defendants contended that Don’s evidence was not dispositive as to whether Don expressly repudiated Phil’s co-authorship rights. They argued that while Phil gave up certain ownership rights, Don never expressly repudiated Phil’s status as an author. The defendants interpreted the 1980 Release as only a transfer by Phil to Don of the rights to profits and public recognition for the Compositions, without any repudiation by Don of Phil’s co-authorship rights or acquiescence by Phil to any such repudiation. The defendants also pointed to post-1980 evidence, such as a television interview in 1984, in which Don continued to represent that he and his brother were co-authors of "Cathy’s Clown."

The parties agreed that the 1980 Release did not and could not itself transfer authorship status. However, Don argued that it was strong evidence that Phil was on notice that Don disputed Phil’s authorship. Don also pointed out that Acuff-Rose had taken Phil’s name off of its authorship records for the song, and other instances in which Don was recognized as its only composer. In the court’s view, there was a genuine factual dispute as to whether the 1980 Release reflected a repudiation of Phil’s authorship, or where it instead indicated a voluntary transfer of certain ownership rights. The court concluded that none of the evidence relied upon by Don established as a matter of law that he plainly and expressly repudiated Phil’s authorship. Rather, said the court, there was a genuine issue of material fact as to whether such repudiation occurred.

Accordingly, the court reversed the district court’s grant of summary judgment and remanded for further proceedings.

Concurring opinion. Circuit Judge Eric E. Murphy wrote a separate concurring opinion. Judge Murphy joined the court’s opinion because it followed current Sixth Circuit precedent and because a fact dispute existed over whether Don plainly and expressly repudiated Phil’s authorship interest in the song. "I write separately to express doubt over whether our test is the right way to think about the start date for this statute of limitations," Judge Murphy said. According to Judge Murphy, the plain text of the Copyright Act’s statute of limitations contained an occurrence rule, not a discovery rule. An occurrence rule would start the limitations period on the date that a violation of the plaintiff’s legal right has occurred—typically the first day a plaintiff could assert a cause of action for that violation in court. Under this interpretation, the statute of limitations would not begin to run from the date of the repudiation; it would begin to run from the date of the completed claim—the act of copying in violation of 17 U.S.C. § 501. However, a putative co-owner may not seek a share of royalties using Section 501(b) because two undisputed co-owners cannot sue each other for infringement. Instead, when no contract governs the parties’ relationship, a co-owner likely must pursue an equitable claim for a division of the profits. "Perhaps this fact means that the Copyright Act’s statute of limitations should simply fall out of the picture and the relevant state statute of limitations should apply," Judge Murphy suggested.

Dissenting opinion. Circuit Judge Ralph B. Guy, Jr., dissented, arguing that no reasonable jury could conclude other than that Don expressly repudiated Phil’s claim of co-authorship more than three years before this action was commenced in November 2017. In Judge Guy’s opinion, Phil’s written disavowal in 1980 of his rights as a co-composer was evidence that Don had made a demand that challenged Phil’s co-authorship of "Cathy’s Clown." Therefore, Judge Guy would affirm the district court’s grant of summary judgment to Don.

This case is No. 19-5150.

Attorneys: Joshua Counts Cumby (Adams & Reese LLP) for Isaac Donald Everly. William Parsons (Shackelford Bowen McKinley & Norton LLP) for Patrice Y. Everly.

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