UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
__________________
No. 93-3274 __________________
MAKEDWDE PUBLISHING COMPANY, RON PUBLISHING COMPANY, RIC RECORDS,
Plaintiffs-Appellees,
versus
ALVIN LEE JOHNSON, SR., ET AL.,
Defendants,
LYMAN L. JONES,
Defendant-Appellant.
______________________________________________
Appeal from the United States District Court for the Eastern District of Louisiana ______________________________________________
(October 24, 1994)
Before JOHNSON, GARWOOD and JOLLY, Circuit Judges.
GARWOOD, Circuit Judge:
In this interlocutory appeal under 28 U.S.C. § 1292(b),
defendant-appellant Lyman Jones challenges the district court's
denial of his motion for summary judgment in the instant copyright
infringement lawsuit. He asserts that the district court erred in
ruling that the Copyright Act allows for infringement claims
brought six years after his last act of infringement. We reverse. Facts and Proceedings Below
Appellees Joseph C. Jones, d/b/a Makedwde Publishing Co.
(Makedwde), and Joseph Ruffino, Jr. owner of Ron Publishing and Ric
Records (collectively the Plaintiffs) filed this pro se lawsuit
against defendant-appellant Lyman Jones and several other
defendants for copyright infringement pursuant to the Copyright
Act, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. §
1125(a). The Plaintiffs allege that, in 1960, Alvin Johnson
(Johnson) recorded a song entitled "Carnival Time" on Ric Records
and assigned his rights in the song to Ron Publishing Co., which
was acquired by Makedwde in 1985. They further allege that in
1979, contrary to the Plaintiffs' rights, Johnson registered a
copyright for the song with the assistance of his (Johnson's) then
attorney, appellant Lyman Jones (Jones). Thereafter, Johnson and
Jones allegedly incorporated Carnival Time Music and Records
(CTMRI) and arranged for the song to be sung by other defendants
named in the lawsuit. According to both parties, on January 2,
1985, Jones entirely terminated his involvement in CTMRI by
returning all corporate stock and resigning from his position as a
corporate officer. The records produced by CTMRI, however,
continue to be sold.
On March 4, 1991, the Plaintiffs filed this suit against
Jones, Johnson and numerous other defendants involved with the
recording and distributing of "Carnival Time" for CTMRI. On
November 18, 1992, Jones filed a motion for summary judgment,
asserting that the Plaintiffs' claims were barred by the Copyright
Act's three-year statute of limitations, 17 U.S.C. § 507(b),
2 because he had not been involved with CTMRI, or the distribution of
"Carnival Time", since his resignation in 1985.1
The district court acknowledged there was no genuine issue of
material fact regarding the date Jones ended his involvement with
CTMRI or the distribution of "Carnival Time," but concluded that
under a "continuing tort" theory the statute of limitations had not
run, and accordingly denied Jones' motion for summary judgment.
The district court stated its summary judgment order "involve[d] a
controlling question of law as to which there is substantial ground
for difference of opinion" and certified the question for
interlocutory appeal pursuant to 28 U.S.C. § 1292(b).
Subsequently, this court granted Jones permission to pursue an
interlocutory appeal.
Discussion
This Court reviews the grant of summary judgment de novo,
applying the same standard as the district court. Hansen v.
Continental Ins. Co., 940 F.2d 971, 975 (5th Cir. 1991). We
determine whether there are any disputed material facts, and
"whether the district court correctly applied the relevant law to
the undisputed facts." E.E.O.C. v. Boeing Services Int'l, 968 F.2d
549, 553 (5th Cir. 1992).
1 Jones' resignation from CTMRI is not in dispute. In fact, Jones referred to exhibits in the Plaintiffs' own pleadings to establish the date he left CTMRI. The exhibits mentioned by Jones were: (1) a January 2, 1985 letter from Jones to Johnson, in which Jones resigned as an officer in CTMRI; (2) a January 2, 1985 letter from Jones to Johnson, in which Jones enclosed an endorsed stock certificate for his shares in CTMRI; and (3) a January 2, 1985 stock certificate for thirty shares of CTMRI which was endorsed by Jones.
3 Both parties acknowledge that Jones' involvement with CTMRI
and the recording and distribution of "Carnival Time" did not
extend past his resignation from CTMRI in 1985, more than six years
before Plaintiffs filed this suit. Certainly there is no summary
judgment evidence to the contrary.
The Copyright Act provides that "[n]o civil action shall be
maintained under the provisions of this title unless it is
commenced within three years after the claim accrued." 17 U.S.C.
§ 507(b). Therefore, the question is when did the Plaintiffs'
claim against Jones accrue.
The Plaintiffs urge this Court to follow the decision of the
district court which reasoned that Jones' pre-1985 actions led to
subsequent and still continuing acts of infringement by others, and
as a result, the statute of limitations has not run. Jones,
however, asserts that this court should follow the plain language
of the Copyright Act and hold that the Plaintiffs' infringement
claim against him accrued on the date of his last act of
infringement, i.e. the last date he was involved with CTMRI. The
issue is one of first impression in this Court.
The district court denied Jones' motion for summary judgment
based upon the continuing tort theory developed by the Seventh
Circuit in Taylor v. Meirick, 712 F.2d 1112, 1117 (7th Cir. 1983).2
2 The district court also relied on the Eleventh Circuit's decision in United States v. Shabazz, 724 F.2d 1536 (11th Cir. 1984) as support for the continuing tort doctrine. Shabazz involved a criminal prosecution for copyright infringement, as to which the relevant statute of limitations is 17 U.S.C. § 507(a). The conviction was affirmed, the Shabazz court stating that "the period of limitation begins on the date of the last infringing act" and that "[t]he trial record reflects the unauthorized
4 In Taylor, the defendant had copied and sold the plaintiff's maps
over three years prior to the lawsuit. The court held that the
"initial copying was not a separate and completed wrong but simply
the first step in a course of wrongful conduct that continued till
the last copy of the infringing map was sold by [the defendant] or
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UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
__________________
No. 93-3274 __________________
MAKEDWDE PUBLISHING COMPANY, RON PUBLISHING COMPANY, RIC RECORDS,
Plaintiffs-Appellees,
versus
ALVIN LEE JOHNSON, SR., ET AL.,
Defendants,
LYMAN L. JONES,
Defendant-Appellant.
______________________________________________
Appeal from the United States District Court for the Eastern District of Louisiana ______________________________________________
(October 24, 1994)
Before JOHNSON, GARWOOD and JOLLY, Circuit Judges.
GARWOOD, Circuit Judge:
In this interlocutory appeal under 28 U.S.C. § 1292(b),
defendant-appellant Lyman Jones challenges the district court's
denial of his motion for summary judgment in the instant copyright
infringement lawsuit. He asserts that the district court erred in
ruling that the Copyright Act allows for infringement claims
brought six years after his last act of infringement. We reverse. Facts and Proceedings Below
Appellees Joseph C. Jones, d/b/a Makedwde Publishing Co.
(Makedwde), and Joseph Ruffino, Jr. owner of Ron Publishing and Ric
Records (collectively the Plaintiffs) filed this pro se lawsuit
against defendant-appellant Lyman Jones and several other
defendants for copyright infringement pursuant to the Copyright
Act, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. §
1125(a). The Plaintiffs allege that, in 1960, Alvin Johnson
(Johnson) recorded a song entitled "Carnival Time" on Ric Records
and assigned his rights in the song to Ron Publishing Co., which
was acquired by Makedwde in 1985. They further allege that in
1979, contrary to the Plaintiffs' rights, Johnson registered a
copyright for the song with the assistance of his (Johnson's) then
attorney, appellant Lyman Jones (Jones). Thereafter, Johnson and
Jones allegedly incorporated Carnival Time Music and Records
(CTMRI) and arranged for the song to be sung by other defendants
named in the lawsuit. According to both parties, on January 2,
1985, Jones entirely terminated his involvement in CTMRI by
returning all corporate stock and resigning from his position as a
corporate officer. The records produced by CTMRI, however,
continue to be sold.
On March 4, 1991, the Plaintiffs filed this suit against
Jones, Johnson and numerous other defendants involved with the
recording and distributing of "Carnival Time" for CTMRI. On
November 18, 1992, Jones filed a motion for summary judgment,
asserting that the Plaintiffs' claims were barred by the Copyright
Act's three-year statute of limitations, 17 U.S.C. § 507(b),
2 because he had not been involved with CTMRI, or the distribution of
"Carnival Time", since his resignation in 1985.1
The district court acknowledged there was no genuine issue of
material fact regarding the date Jones ended his involvement with
CTMRI or the distribution of "Carnival Time," but concluded that
under a "continuing tort" theory the statute of limitations had not
run, and accordingly denied Jones' motion for summary judgment.
The district court stated its summary judgment order "involve[d] a
controlling question of law as to which there is substantial ground
for difference of opinion" and certified the question for
interlocutory appeal pursuant to 28 U.S.C. § 1292(b).
Subsequently, this court granted Jones permission to pursue an
interlocutory appeal.
Discussion
This Court reviews the grant of summary judgment de novo,
applying the same standard as the district court. Hansen v.
Continental Ins. Co., 940 F.2d 971, 975 (5th Cir. 1991). We
determine whether there are any disputed material facts, and
"whether the district court correctly applied the relevant law to
the undisputed facts." E.E.O.C. v. Boeing Services Int'l, 968 F.2d
549, 553 (5th Cir. 1992).
1 Jones' resignation from CTMRI is not in dispute. In fact, Jones referred to exhibits in the Plaintiffs' own pleadings to establish the date he left CTMRI. The exhibits mentioned by Jones were: (1) a January 2, 1985 letter from Jones to Johnson, in which Jones resigned as an officer in CTMRI; (2) a January 2, 1985 letter from Jones to Johnson, in which Jones enclosed an endorsed stock certificate for his shares in CTMRI; and (3) a January 2, 1985 stock certificate for thirty shares of CTMRI which was endorsed by Jones.
3 Both parties acknowledge that Jones' involvement with CTMRI
and the recording and distribution of "Carnival Time" did not
extend past his resignation from CTMRI in 1985, more than six years
before Plaintiffs filed this suit. Certainly there is no summary
judgment evidence to the contrary.
The Copyright Act provides that "[n]o civil action shall be
maintained under the provisions of this title unless it is
commenced within three years after the claim accrued." 17 U.S.C.
§ 507(b). Therefore, the question is when did the Plaintiffs'
claim against Jones accrue.
The Plaintiffs urge this Court to follow the decision of the
district court which reasoned that Jones' pre-1985 actions led to
subsequent and still continuing acts of infringement by others, and
as a result, the statute of limitations has not run. Jones,
however, asserts that this court should follow the plain language
of the Copyright Act and hold that the Plaintiffs' infringement
claim against him accrued on the date of his last act of
infringement, i.e. the last date he was involved with CTMRI. The
issue is one of first impression in this Court.
The district court denied Jones' motion for summary judgment
based upon the continuing tort theory developed by the Seventh
Circuit in Taylor v. Meirick, 712 F.2d 1112, 1117 (7th Cir. 1983).2
2 The district court also relied on the Eleventh Circuit's decision in United States v. Shabazz, 724 F.2d 1536 (11th Cir. 1984) as support for the continuing tort doctrine. Shabazz involved a criminal prosecution for copyright infringement, as to which the relevant statute of limitations is 17 U.S.C. § 507(a). The conviction was affirmed, the Shabazz court stating that "the period of limitation begins on the date of the last infringing act" and that "[t]he trial record reflects the unauthorized
4 In Taylor, the defendant had copied and sold the plaintiff's maps
over three years prior to the lawsuit. The court held that the
"initial copying was not a separate and completed wrong but simply
the first step in a course of wrongful conduct that continued till
the last copy of the infringing map was sold by [the defendant] or
with his connivance." Id. at 1119. Following the reasoning of
Taylor, the district court held that even if Jones had not himself
committed any acts of infringement within the three-year statute of
limitations period, he is still subject to suit if he fails to take
reasonable steps to prevent others with whom he had previously
collaborated from continuing to infringe.
Jones asserts that the court should reject the continuing tort
theory and follow decisions of Hoste v. Radio Corp. of America, 654
F.2d 11, 11 (6th Cir. 1981) and Stone v. Williams, 970 F.2d 1043
(2nd Cir. 1992), cert. denied, 113 S.Ct. 2331 (1993). In a per
curiam decision the Sixth Circuit in Hoste interpreted section
507(b) as barring recovery of any claims for damages which accrued
over three years prior to the lawsuit. In Stone, the Second
Circuit stated that "[e]ach act of infringement is a distinct harm
giving rise to an independent claim for relief." 970 F.2d at 1049.
The Stone court concluded "[r]ecovery is allowed only for those
duplication of legitimate copyrighted tapes in the same year of the indictment . . . ." Id. at 1540. We do not understand the Shabazz opinion to rely on a continuing tort type theory. Even if this Court finds that the civil statute of limitations begins on the date of the last infringing act, that would not aid the Plaintiffs unless we expand the definition of infringement to include continuing infringement by others as a result of the defendant's past actions outside the limitations period.
5 acts occurring within three years of suit, and disallowed for
earlier infringing acts." Id. 1049-50. See also, Kregos v.
Associated Press, 3 F.3d 656, 662 (2nd. Cir. 1993) (specifically
rejecting the continuous tort doctrine of Taylor). The Stone
approach was followed by the Ninth Circuit in Roley v. New World
Pictures, Ltd., 19 F.3d 479 (9th Cir. 1994), which likewise
rejected Taylor. Roley at 481-82.
The conflict between the Seventh Circuit decision in Taylor
and the Second Circuit decision in Stone turns on each court's
definition of infringement. The Taylor court seems to have
expanded the definition of infringement to include a defendant's
actions outside the limitations period which continue to cause harm
to the plaintiff within the period. For example, Jones' previous
involvement in CTMRI may be indirectly responsible for its ability
to continue to sell recordings of "Carnival Time", and if so, then
under Taylor, Jones would arguably still be subject to liability.
However, the court in Stone viewed each act of infringement as
giving rise to a separate claim. Under this approach, Jones'
previous acts of infringement through CTMRI between 1979 and 1985
are distinct from CTMRI's acts of infringement occurring after
Jones' 1985 resignation and termination of any involvement with
CTMRI or the distribution of "Carnival Time."
We are persuaded by the Ninth, Sixth and Second Circuits'
interpretation of section 507(b). Jones is only liable for his
acts of infringement committed within three years prior to
Plaintiffs' lawsuit. Jones' last involvement with CTMRI or the
recording and distribution of "Carnival Time" was on January 2,
6 1985. After January 2, 1985, Jones was not responsible "directly
or vicariously, individually or jointly" in the operations of
CTMRI. Maloney v. Stone, 171 F.Supp. 29, 32 (D. Mass 1959). To
hold Jones liable "would be a socially preposterous and
commercially disastrous doctrine." Id.3
The Plaintiffs' filed their lawsuit six years after any claim
they had against Jones accrued. Under section 507 the statute of
limitations has run,4 and as a result, the Plaintiffs' claim
against Jones for damages is barred. For the foregoing reasons the
order of the district court is
REVERSED.
3 In Maloney, which was decided prior to the enactment of section 507(b) and the Copyright Act of 1976, the district court applied the state prescribed two-year statute of limitations to a copyright infringement lawsuit. Maloney involved a defendant who allegedly printed copyrighted material for a third party over two years prior to the plaintiff's suit. Id. The court held that there was "no merit to plaintiff's suggestion that [the defendant] merely because he was printer is liable for each sale that [is] made, and that the liability flowing from such sale arises for the first time when it is made." Id.
4 In Prather v. Neva Paperbacks, Inc., this Court noted that "once a defendant has shown that a claim is time barred by the applicable statute of limitations, it is incumbent upon the plaintiff, if he is to avoid the bar, to come forward and demonstrate that for some equitable reason the statute should be tolled in his case." 446 F.2d 338, 340 (5th Cir. 1971). The Prather opinion also held that "fraudulent concealment of a cause of action by the defendant will toll the statute of limitations." Id. at 341. The Plaintiffs do not contend that Jones, at any time, attempted to conceal his involvement in the recording and distribution of "Carnival Time" for CTMRI. No reason is shown to toll the statute in the instant case.