Kwan v. Schlein
634 F.3d 224
| 2d Cir. | 2011Background
- BRB Publications engaged Alan M. Schlein to author FIOL; Shirley Y. Kwan was hired to edit and would receive royalties as a percentage of Schlein's book royalties.
- Disputes arose over FIOL cover credit: Kwan sought co-authorship or byline credit, while Schlein preferred 'Edited by' credit or sole authorship by Schlein.
- January 1999 FIOL was published with Schlein as author and Kwan listed as editor; BRB and Schlein jointly registered FIOL's copyright; Kwan began receiving royalties in 1999.
- BRB issued additional FIOL editions (1999, 2002, 2004) with subsequent copyrights registered; Kwan did not communicate about FIOL cover credit from 1999 to 2005.
- January 14, 2005, Kwan filed suit alleging BRB infringed her FIOL copyright; she later amended registration to identify herself as sole author.
- January-February 2009, the district court granted BRB summary judgment on Kwan's copyright claim as time-barred and dismissed BRB/Schlein's counterclaims without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| accrual and timeliness of ownership claim | Kwan's ownership accrual was ongoing; ownership disputes did not accrue until unresolved. | Ownership dispute accrued no later than January 1999; ownership claim time-barred, barring infringement claims. | Ownership claim time-barred; infringement claims reliant on ownership also barred. |
| Infringement claims contingent on ownership | Infringement claims independent of ownership should survive if timely. | Infringement is based on ownership dispute; where ownership is time-barred, infringement claims fail. | If ownership is time-barred, related infringement claims fail. |
| Summary judgment on ownership issue | There were triable factual questions about authorship and ownership. | The record shows Kwan knew of the ownership dispute by 1999; ownership accrual occurred then, justifying summary judgment. | District court proper in granting summary judgment on ownership/timeout grounds. |
| Dismissal of counterclaims without prejudice | BRB/Schlein risked legal prejudice by dismissing counterclaims without prejudice. | Camilli/Zagano factors show no plain legal prejudice and counterclaims were defensively asserted. | District court did not abuse discretion; dismissal without prejudice affirmed. |
| Scope of Zagano factors | Zagano factors favored preservation of BRB/Schlein claims. | Factors, including diligence and progress, supported dismissal as non-prejudicial. | Zagano factors weighed against reinstatement; no reversible error. |
Key Cases Cited
- Stone v. Williams, 970 F.2d 1043 (2d Cir. 1992) (ownership accrues when a diligent plaintiff is put on inquiry)
- Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) (ownership accrual and infringement timing principles applied)
- Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989) (coauthors cannot sue one another for infringement; ownership essential)
- Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976) (ownership vs. infringement as the gravamen of the claim)
- Camilli v. Grimes, 436 F.3d 120 (2d Cir. 2006) (dismissal without prejudice analyzed via Zagano factors; no automatic prejudice)
- Zagano v. Fordham Univ., 900 F.2d 12 (2d Cir. 1990) (Zagano factors guiding dismissal without prejudice analysis)
- Zuill v. Shanahan, 80 F.3d 1366 (9th Cir. 1996) (creation rather than infringement governs accrual when ownership is disputed)
- Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383 (6th Cir. 2007) (timeliness of infringement depends on ownership timeliness where ownership disputed)