By: Garth Mashmann

Claims of copyright infringement must be initiated within three years from the date that such claims accrue, according to the statute of limitations provision of the Copyright Act in 17 USC §507(b). Under what circumstances the claim will “accrue” is therefore important in determining whether a case is even allowed to proceed. The recent Second Circuit decision in Kwan v. Schlein is an illustrative example of how an author can lose the right to sue for infringement by delaying bringing an action where a known ownership dispute over the work existed for more than three years.

In Kwan, the plaintiff-editor was engaged to edit copies of a book for the defendant. According to the agreement, Schlein, the named author of the book, produced a draft which was reviewed by Kwan. An edited version was returned to Schlein for changes and updates and the process was repeated as necessary. Towards the end of 1998, as the book was nearing completion, the publisher requested a clarification regarding the byline of the book. Although initially brought on as an editor, Kwan felt that she should be included as an author, and voiced those concerns. However, the book was published and registered with Schlein as the sole author.

Although Kwan raised objections to the publisher, she did not formally contest the authorship in a court of law or before the copyright office. Kwan received royalty payments for the first two editions of the book, but was informed that she would not receive any payments for subsequent editions, which allegedly had significant changes. In 2005 Kwan challenged the authorship of the book through a lawsuit, combined with claims of copyright infringement. However, Kwan had failed to challenge the authorship of the book in 1998 when she first became aware of the controversy. Her awareness of the ownership controversy started the statute of limitations, which had expired by 2005 when she finally filed her lawsuit. Had Kwan acted earlier she may have been able to change the authorship on the book and in the copyright office. However, she failed to establish that she was an author/owner before the statute of limitations had run, and therefore could not maintain her suit for infringement.

Generally speaking, being named an author can guarantee an individual many important rights. Unless an author agrees otherwise by contract, the author has the right to reproduce a work and exclude other from producing a work. There are several situations where it can be difficult to determine who the author of a work is. For example, these situations can arise when more than one author work together, or when an employee or independent contractor creates a work in the course of employment. As illustrated by Kwan, authorship should be settled early, and written agreements governing ownership of a work can be used where necessary. We would be happy to assist you with any questions you may have regarding authorship or ownership of copyrighted works.