MEMORANDUM AND ORDER
Plaintiff Jack Urbont (“Urbont”) brings the instant suit against defendants Dennis Coles p/k/a Ghostface Killah, Sony Music Entertainment d/b/a Epic Records, and Razor Sharp Records, LLC (together with Sony Music Entertainment, “Sony”), alleging infringement of his rights to the musical composition and sound recording of the “Iron Man Theme.” Presently before the Court is Sony’s motion to dismiss as untimely: (i) Urbont’s federal copyright infringement claims as they relate to alleged acts of infringement occurring prior to May 21, 2007; and (ii) all of Urbont’s state law claims. For the reasons stated below, Sony’s motion to dismiss is granted with respect to Urbont’s federal claims and denied with respect to his state law claims.
BACKGROUND
Urbont is a “lifelong songwriter, conductor, orchestrator and music producer.” (AC ¶ 5.) His work has spanned across the realms of theatre, film, radio, and television. {Id. ¶ 10.) Urbont’s television work in particular has been extensive, having composed the themes and lyrics for The Guiding Light, One Life to Live, and General Hospital and developed music for shows including All My Children, That 70s Show, The Oprah Winfrey Show, and Live with Regis and Kathie Lee. {Id. ¶ 11.) In fact, Urbont earned Broadcast Music, Inc.’s TV/Film Pioneer Award in 1986. {Id. ¶ 15.)
Urbont developed the “Iron Man Theme” as the theme song for the “Iron Man” segment of the 1960s television show The Marvel Super Heroes. {Id. ¶ 5.) Urbont asserts that he has complied with all federal laws pertinent to the musical composition of the “Iron Man Theme,” most recently having filed a copyright renewal notice for the song in 1994. {Id. ¶ 21.) Urbont also asserts that he recording of the “Iron Man Theme” under New York law.
Urbont suggests that he has actively protected his interests in the “Iron Man Theme.” He claims to have taken action in 1995 when he believed New World Entertainment, Ltd. and Marvel Entertainment Group, Inc. were violating his rights, and he notes that the musical composition of the “Iron Man Theme” was properly licensed and used by Paramount Pictures in the 2008 film Iron Man. {Id. ¶¶ 18, 31.)
Defendant Coles is a well-known “musician, performer, and producer,” formerly a member of the group the Wu-Tang Clan. {Id. ¶ 8; D. Ex. 3.) In 2000, Coles released his second solo album, Supreme Clientele.
Although he does not specify a precise date, Urbont implies that he first learned of the alleged infringement in late 2009 or early 2010. (Id. ¶ 39 (“Urbont learned of the wrongful use shortly before contacting defendants about their actions.”); Tr. of Oral Arg. at 11:17-12:3.) Urbont eventually entered into a tolling agreement with defendants which stopped the running of the statute of limitations on his claims as of May 21, 2010. (AC ¶ 39.)
Urbont filed a complaint in the instant matter on June 30, 2011 and filed the AC on August 29, 2011.
DISCUSSION
I. Pleading Standards
On a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure, the Court must accept as true all factual allegations in the complaint and draw all reasonable inferences in the plaintiffs favor. ATSI Commc’ns, Inc. v. Shaar Fund, Ltd.,
II. Copyright Act Claims
Civil actions under the Copyright Act must be “commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). The parties advance competing interpretations of the term “accrued” under this provision.
Under the injury rule, advanced by Sony, a claim accrues, at the time of each act of infringement, regardless of the copyright holder’s knowledge of the infringement. In contrast, under the discovery-rule, advocated by Urbont, a claim for copyright infringement does not accrue until the aggrieved party knows or has reason to know of the injury that forms the basis of the claim.
Following Stone, district courts in this Circuit applied the discovery rule to both ownership and infringement claims until Judge Kaplan’s 2004 decision in Auscape International v. National Geographic Society,
Since Auscape, a majority of district courts in the Southern District of New York have followed Judge Kaplan’s lead and applied the injury rule to infringement claims. See, e.g., Harris v. Simon & Schuster, Inc.,
For the reasons outlined below, we find the arguments advanced in favor of the injury rule to be persuasive and thus follow the majority approach within this jurisdiction.
As an initial matter, we note that the previously referenced Second Circuit line of cases applying the discovery rule to copyright ownership claims does not compel application of the discovery rule in the present context. Although the same limitations provision governs all civil claims brought under the Copyright Act, the Second Circuit has repeatedly emphasized the distinct nature of the accrual of infringement and ownership claims. Whereas an ownership claim accrues only once, each act of infringement triggers a separate claim for relief and thus a separate accrual period attendant to that claim. See Kwan,
B. Text and Structure of Copyright Act
Urbont contends that despite any differences between ownership and infringement claims, the “text and structure” of the Copyright Act compel application of the discovery rule to all civil copyright claims. Specifically, Urbont points to the distinct language employed in the Copyright Act’s criminal and civil limitations provisions. Whereas civil claims must be “commenced within three years after the claim accrued,” 17 U.S.C. § 507(b), criminal actions must be “commenced within [five] years after the cause of action arose,” id. § 507(a). Urbont contends that we must assume from this difference in language that Congress intended the provisions to carry different meanings, and because the Supreme Court had previously interpreted language similar to that in the criminal provision to embody an injury rule, we can infer that Congress intended the civil provision to embody a discovery rule. See William A. Graham Co.,
This argument is not without appeal, but we ultimately find it unconvincing. The term “accrue” does not, on its face, compel an understanding consistent with the discovery rule. If anything, the term suggests that the limitations period begins to run as soon as the plaintiff acquires the right to sue, regardless of the plaintiffs knowledge of that right. See Webster’s Third New International Dictionary 13 (1966) (defining accrue as “to come into existence as an enforceable claim: vest as a right”). This conclusion holds true even when the term is read in juxtaposition to the use of “arose” in the criminal limitations provision, as the term “arose” is itself
Moreover, the legislative history of 17 U.S.C. § 507(b) undercuts the notion that Congress intended the difference in terminology between the two provisions to have a substantive implication. At the time that Congress enacted 17 U.S.C. § 507(b), the limitations period under the criminal provision was also three years. The legislative history is devoid of any discussion of a desire to have distinct treatment of the civil and criminal limitations periods, and, in fact, the Senate Report indicated: “With respect to the question of having equal criminal and civil statutes of limitations the committee understands that actions brought under the criminal copyright provisions are extremely rare. Therefore, the committee sees no substantial reason for not having statutes of equal periods for both criminal and civil copyright actions.” S.Rep. No. 85-1014, at 2 (1957), reprinted in 1957 U.S.C.C.A.N. 1961, 1962. This statement belies the notion that Congress purposively intended for the two limitations periods to operate in different manners.
As the statutory text does not compel either of the parties’ interpretations, we must look to additional factors in reaching our determination.
C. Supreme Court Jurisprudence
Recent Supreme Court case law provides substantial guidance as to the suitability of reading the discovery rule into statutes of limitations. In TRW, the Supreme Court interpreted the accrual of claims under the Fair Credit Reporting Act (“FCRA”). The FCRA contains a general limitations provision as well as an exception for willful misrepresentation, the latter allowing for claims to be brought within two years after the discovery of a willful misrepresentation. See TRW,
In reaching this holding, the Court also cast disfavor on any presumption in favor of the discovery rule as a general matter. The Court noted that it had “never endorsed the. view that Congress can convey its refusal to adopt a discovery rule only by explicit command,” and it highlighted that other than in cases of fraud or concealment, it has recognized a discovery rule only in two contexts-latent disease and medical malpractice — “where the cry for such a rule is loudest.” Id. at 27-28,
In Merck & Co. v. Reynolds, — U.S. -,
These precedents strongly counsel against applying the discovery rule to claims of copyright infringement. In stark contrast to claims of fraud, latent disease, or medical malpractice, acts of copyright infringement are not “inherently self-concealing” but rather are open and notorious in nature. In fact, the Senate Report issued in 1957 upon passage of the Copyright Act’s civil limitations provision noted that “due to the nature of publication of works of art[,] generally the person injured receives reasonably prompt notice or can easily ascertain any infringement of his rights.” S.Rep. No. 85-1014, at 2, reprinted in 1957 U.S.C.C.A.N. at 1962.
“[T]he cry for” a discovery rule in the infringement context is thus rather subdued, and as such, it would seem appropriate to apply the “general limitations rule” that a claim accrues when a plaintiff has a “complete and present cause of action.” Merck,
D. Potential for Equitable Tolling
Another factor weighing in favor of the injury rule is the possibility of equitable tolling of infringement claims. As noted by Judge Kaplan in Auscape, the possibility of such tolling is highly probative of Congress’ intent in enacting the limitations provision. The legislative history of 17 U.S.C. § 507(b) is replete with discussion over whether Congress should have enumerated specific circumstances in which equitable tolling would be granted for civil copyright actions, such as in situations of fraudulent concealment. See, e.g., S.Rep. No. 85-1014, at 2, reprinted in 1957 U.S.C.C.A.N. at 1962-63. If Congress had envisaged that a discovery rule would govern civil copyright claims, statutory exceptions for fraudulent concealment or other instances in which a plaintiff was justifiably ignorant of his claim would have been superfluous. See Vasquez,
Although Congress ultimately did not enumerate grounds for equitable tolling, this choice was not motivated by a desire to adopt a discovery rule but rather was attributable to Congress’ view that “federal district courts, generally, recognize these equitable exceptions anyway.” S.Rep. No. 85-1014, at 2, reprinted in 1957 U.S.C.C.A.N. at 1963. (quoting H.R.Rep. No. 85-150, at 2 (1957)). As Congress had hoped, courts have indeed continued to allow for the possibility of equitable tolling in the context of infringement claims. See, e.g., Broadvision,
In our view, the possibility of equitable tolling, particularly for cases of fraudulent concealment, works in concert with the injury rule to create a sensible regime under which infringement claims accrue in a predictable and consistent manner and yet plaintiffs may be excused for ignorance
E. Summary
After considering the legislative history of 17 U.S.C. § 507(b), the availability of equitable tolling, and the recent Supreme Court and Second Circuit guidance on the limited applicability of the discovery rule, we hold that the injury rule is the appropriate rubric for the accrual of infringement claims under the Copyright Act. Thus, Urbont is time-barred from bringing federal copyright claims for acts of infringement occurring prior to May 21, 2007, that is, three years prior to the effective date of the tolling agreement.
III. State Law Claims
Sony contends that Urbont’s state law claims for common law copyright infringement, unfair competition, and misappropriation should be dismissed in their entirety. Urbont concedes that his state law claims for acts occurring prior to May 21, 2007 are untimely,
The parties agree that N.Y. C.P.L.R. § 214(4) sets forth the applicable statute of limitations for Urbont’s state law claims. Under this provision, a three-year statute of limitations applies to “an action to recover damages for an injury to property.” N.Y. C.P.L.R. § 214(4). ■
There is surprisingly scant case law addressing the accrual of New York common law claims that are predicated on an underlying copyright infringement. We find guidance principally from the New York Court of Appeals’ decision in Sporn v. MCA Records, Inc.,
The court determined that whether the plaintiffs claims were time-barred under
The court explained that an action should be treated as one for trespass if the “defendant merely interfered with the plaintiffs property,” whereas the action should be considered one for conversion if “the conduct the plaintiff seeks to recover for amounts to the destruction or taking of the property.” Id. The court illustrated this distinction with the following example: “If defendant hits plaintiffs horse repeatedly, plaintiff has a new cause of action upon each striking; but if defendant destroys plaintiffs horse, or takes it and claims it as his own, plaintiffs right accrues immediately and he must sue within the period of limitation measured from that date — or never.” Id. at 487,
The court held that the plaintiffs action was properly classified as one for conversion. The court found that “[t]he conduct of the defendant [ ] constituted a denial of both the plaintiffs right to the master recording and a total usurping of plaintiffs right to possess the master recording.” Id. at 488,
Here, unlike in Sporn, there is no allegation that defendants wrongfully possessed and denied Urbont his right to a tangible piece of property. As Urbont accurately observes, “[t]here was no change in Urbont’s relationship to the [sound recording] with Sony’s initial infringement.” (Pl.’s Mem. at 23.) In fact, Urbont remained unaware of Sony’s alleged infringement for roughly ten years following the release of Supreme Clientele, and he even licensed the “Iron Man Theme” to Paramount Pictures in 2008 for the film Iron Man. It is clear that Sony’s alleged actions did not result in a total deprivation of Urbont’s property rights.
We therefore hold that Urbont’s state law claims allege mere interference with his property and each alleged wrongful act gave rise to a separate common law cause of action. See Stein v. RKO Radio Pictures, Inc.,
CONCLUSION
For the reasons stated above, Sony’s motion to dismiss is granted with regard to Urbont’s Copyright Act claims and denied with regard to Urbont’s state law claims.
SO ORDERED.
Notes
. As of the filing of Sony’s motion to dismiss on August 5, 2011, Urbont had yet to effect service of process on defendant Coles, and as of the date of this Memorandum and Order, Urbont and Coles continue to dispute whether Coles has a valid, common law copyright in the sound has been properly served. The instant motion to dismiss is therefore only on behalf of Sony, although the fundamental legal analysis herein would be broadly applicable.
. This background is derived from the amended complaint ("AC”), filed August 26, 2011, and the exhibits annexed to Sony’s Notice of Motion to Dismiss Pursuant to Fed.R.Civ.P. 12(b)(6) ("D. Ex.”).
. Thus, Urbont's federal claims pertain to the musical composition of the "Iron Man Theme,” while his state claims pertain to the sound recording of the "Iron Man Theme.” This distinction arises because the Copyright Act does not currently apply to sound recordings created prior to February 15, 1972. See Capitol Records, Inc. v. Naxos of Am., Inc.,
. The AC was file'd on the same day that Urbont filed his opposition brief to the motion to dismiss. Even though the AC was thus filed subsequent to the motion, with the parties’ consent, we apply the motion to dismiss to the AC.
. In Kwan, the Second Circuit also addressed the timeliness of an infringement claim, but the infringement claim in question was premised on a disputed underlying ownership claim. See Kwan,
. For instance, the discovery rule may be more appropriate in the context of an ownership claim, where such a claim accrues only once and the aggrieved party is in greater danger of being entirely without redress, as compared to an infringement claim, where the aggrieved party will often have multiple claims for relief based on repeated acts of infringement. In addition, given that an aggrieved party will often learn of related acts of infringement at a single point in time, application of the discovery rule would seem to undercut the purpose of providing for separate claims for each act of infringement. That is, if the discovery rule were to apply, in situations in which a plaintiff learned (or should have learned) of related acts of infringement all at once, it would often be the case that either all of the plaintiff's claims would be timely or none of the claims would be timely. Such a result would not pass under the injury rule.
. Our conclusion is supported by the Second Circuit's discussion of the fraudulent concealment doctrine in Gabelli, in which the court highlighted the distinction between the fraudulent concealment doctrine and the discovery rule:
The fraudulent concealment doctrine ... is an equitable tolling doctrine, not an accrual doctrine. Under the fraudulent concealment doctrine, even when a claim has already accrued, a plaintiff may benefit from equitable tolling in the event that the defendant took specific steps to conceal her activities from the plaintiff. Thus, whereas the discovery rule does not ordinarily apply to non-fraud claims (as it is generally expected that a plaintiff will be able to discover the conduct underlying non-fraud claims), the fraudulent concealment doctrine may be used to toll the limitations period for non-fraud claims where the plaintiff is able to establish that the defendant took affirmative steps beyond the allegedly wrongful activity itself to conceal her activity from the plaintiff.
Gabelli,
. Plaintiff’s counsel tentatively made this concession at oral argument and then confirmed this position in a letter to the Court dated March 19, 2012. (Tr. of Oral Arg. at 21:2-10; 31:8-16.)