634 F. App'x 329
2d Cir.2016Background
- From 1999–2000 Mahan worked as a sound engineer on songs released by Roc-A-Fella Records; he was paid a flat fee and received no royalties.
- Roc-A-Fella released most recordings on commercially distributed albums (the "Albums") that bear a copyright notice listing Roc-A-Fella as sole owner; Roc-A-Fella later registered copyrights listing itself as sole owner.
- Some recordings remained unpublished (the "Unpublished Recordings"); in 2014 Mahan demanded a $100,000 storage fee for those recordings and threatened to auction them if unpaid.
- Roc Nation contacted LAPD, which seized the Unpublished Recordings; no criminal charges were filed.
- Mahan sued for (1) declaratory judgment that he is a co-owner of the Albums and Unpublished Recordings (copyright co-ownership) and (2) damages for a conspiracy to commit conversion and/or trespass to chattel; the district court dismissed the copyright claims as time-barred, the tort claim as barred by privilege, and awarded defendants attorneys’ fees; the Second Circuit affirmed and remanded to calculate appellate fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Statute of limitations for copyright co-ownership claim | Mahan claimed co-ownership and sought relief decades after recording | Defendants argued claims accrued when albums published/registrations listed Roc-A-Fella as sole owner and when Mahan received no royalties | Held: Claims time-barred; accrual occurred on express repudiation (publication, registrations, and lack of royalties) |
| Privilege for reporting to police (conversion/trespass conspiracy) | Mahan argued Roc Nation’s contact with LAPD caused tortious seizure of his property | Defendants argued communications to law enforcement are absolutely privileged under California law | Held: Dismissed; communications to LAPD are absolutely privileged, barring tort claim |
| Award of attorneys’ fees under 17 U.S.C. § 505 (district court) | Mahan contended his claims were colorable | Defendants argued claims were objectively unreasonable and fees should deter frivolous suits | Held: Affirmed; district court did not abuse discretion in awarding fees and using 90% lodestar |
| Award of appellate attorneys’ fees under § 505 | Mahan appealed the dismissal and fee award | Defendants sought fees for appeal as deterrence | Held: Remanded to district court to calculate appellate fees and consider counsel liability |
Key Cases Cited
- Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) (three-year limitations for co-ownership claims and accrual when plaintiff knows of injury)
- Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011) (accrual when plaintiff has reason to know of injury)
- Gary Friedrich Enter., LLC v. Marvel Characters, Inc., 716 F.3d 302 (2d Cir. 2013) (express repudiation triggers co-ownership claim accrual)
- Fink v. Time Warner Cable, 714 F.3d 739 (2d Cir. 2013) (standard of review on motion to dismiss)
- Matthew Bender & Co. v. West Publ’g Co., 240 F.3d 116 (2d Cir. 2001) (standard for reviewing copyright fee awards)
- Hagberg v. Cal. Fed. Bank FSB, 32 Cal.4th 350 (Cal. 2004) (absolute privilege for communications to law enforcement)
- Action Apartment Ass’n, Inc. v. City of Santa Monica, 41 Cal.4th 1232 (Cal. 2007) (application of privilege to communications to authorities)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (U.S. 1994) (factors for awarding attorneys’ fees in copyright cases)