Makedwde Pub. Co. v. Johnson

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

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No. 93-3274
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MAKEDWDE PUBLISHING COMPANY, RON
PUBLISHING COMPANY, RIC RECORDS,

Plaintiffs-Appellees,

versus

ALVIN LEE JOHNSON, SR., ET AL.,

Defendants,

LYMAN L. JONES,

Defendant-Appellant.

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Appeal from the United States District Court for the
Eastern District of Louisiana
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(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.

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 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

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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.

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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,

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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.

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