Wilson v. Dynatone Publ'g Co.
892 F.3d 112
2d Cir.2018Background
- Plaintiffs (members of Sly Slick & Wicked) allege they authored the 1973 musical composition and sound recording "Sho' Nuff" and own the renewal-term copyrights under 17 U.S.C. § 304(a).
- Initial registrations/credits from the 1970s listed third parties (record label, publishers) and Polydor/People Records registered the sound recording claiming "Employer for Hire." Plaintiffs allege they never signed agreements transferring renewal rights.
- UMG (successor to Polydor) registered a renewal-term copyright in the sound recording in 2001; Plaintiffs filed a renewal registration for the composition in 2015.
- In 2013, Justin Timberlake and J. Cole sampled the Sho' Nuff master without paying Plaintiffs; Plaintiffs sued in 2016 seeking declaratory relief and accounting for 2013–2016 revenues.
- The district court dismissed under Rule 12(b)(6) as time-barred, reasoning earlier repudiation during the original term triggered the three-year statute (17 U.S.C. § 507(b)). Plaintiffs appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether acts during the original term (1973–74 registrations, credits, nonpayment) repudiated renewal-term ownership so claims accrued earlier | Plaintiffs: those acts repudiated only original-term rights; renewal rights vest automatically in authors under § 304 and accrual did not occur until sampling in 2013 | Defendants: 1970s credits, registrations, and subsequent conduct put Plaintiffs on notice long before 2013, so the three-year limitations period expired | Court: Reversed district court — repudiation during original term does not automatically trigger accrual of renewal claims; 2013 sampling fell within three-year period, so claims survive pleading stage |
| Whether UMG’s 2001 renewal registration triggered accrual | Plaintiffs: mere registration without notice does not require plaintiffs to constantly monitor — it did not trigger accrual | Defendants: UMG’s 2001 registration put Plaintiffs on notice | Court: 2001 registration alone did not constitute repudiation that would start the statute; would be overly burdensome to require constant monitoring |
| Whether the 1973 registration claiming "Employer for Hire" repudiated renewal rights in the sound recording | Plaintiffs: they were not on notice that the registration asserted work-for-hire; allegations do not show effective repudiation | Defendants: the work-for-hire claim shows repudiation of Plaintiffs’ renewal claim | Court: Work-for-hire claim could repudiate renewal rights if plaintiffs had adequate notice, but as pleaded the registration (without notice to Plaintiffs) did not effect accrual at the pleading stage |
| Whether Plaintiffs stated a New York claim for an accounting | Plaintiffs: seek accounting of royalties for three years prior to suit | Defendants: accounting claim fails as untimely and because plaintiffs did not allege a fiduciary relationship | Court: Affirmed dismissal of accounting — plaintiffs failed to allege the requisite fiduciary duty (untimeliness ruling vacated as to federal copyright claims) |
Key Cases Cited
- Stewart v. Abend, 495 U.S. 207 (1990) (renewal term gives authors a fresh estate to renegotiate with patrons)
- Gary Friedrich Enters., LLC v. Marvel Characters, Inc., 716 F.3d 302 (3d Cir. 2013) (three-year limitations period applies to ownership claims)
- Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011) (ownership claim accrues when a reasonably diligent plaintiff would be put on inquiry)
- Stone v. Williams, 970 F.2d 1043 (2d Cir. 1992) (accrual standard for copyright ownership claims)
- PC Films Corp. v. MGM/UA Home Video Inc., 138 F.3d 453 (2d Cir. 1998) (presumption against conveyance of renewal rights)
- G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951) (renewal estate is "clear of all rights, interests or licenses" under the original copyright)
- Doe v. Columbia Univ., 831 F.3d 46 (2d Cir. 2016) (pleading standard on Rule 12(b)(6) review)