• Is the Claim Time-Barred?

    by  • February 3, 2011 • copyright

    So here are the facts:

    Business Resources Bureau, Inc. (BRB) was the publisher. Alan M. Schlein was the author. BRB hired Shirley Kwan, at Schlein’s request, to do 100 hours of editing. BRB told Kwan that she would “be given a credit or byline on the title page as editor on the project.” After the 100 hours was up, Schlein asked that Kwan be allowed to continue and she would be compensated based on royalty.

    When time came to publish the book in 1998, these emails were exchanged:

    BRB to Kwan and Schlien (Dec. 14): “On cover, we were planning to put both names–AMS [Schlein] and SKK [Kwan] … Alan has brought it up that he may want something different. Need to have the two of you to agree on how you want your names listed
    AMS and SKK
    AMS with SKK
    ? ? ? ? need to know this week”
    Schlein to BRB, but not Kwan (Dec. 14): “As we discussed, I want the authorship to read as follows By Alan M. Schlein Edited by Shirley…. If this is not the way you plan to do the book I would like to talk to you about it immediately!! Please contact me ASAP Tuesday if you have any plans otherwise. Your offering a co-authorship to Shirley has put me in an awkward position. She was brought in as a contract editor, and while I appreciate all her significant efforts, it was her and my agreement to have her listed as an editor.”
    Kwan to BRB (Dec. 15): “After due consideration, I’ve decided to request the following title credit: by Alan Schlein with Shirley Kwan Kisaichi,” because “[e]ssentially, I have ghostwritten this book.”
    The book was published in 1999 with Schlien listed as author and Kwan as editor.  The second edition was also published in 1999.  On May 23, 2002, Kwan was told she would not get royalties on the third edition because the book had been “completely rewritten.”  The third and fourth editions were published in July, 2002 and August, 2004.

    On January 14, 2005 Kwan filed a lawsuit alleging that BRB infringed her copyright in the book.  The question on summary judgment was statute of limitations, which is three years.  For a claim of copyright ownership, the statute begins to run when “a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right.”  For an infringement claim, the statute of limitations bars only recovery for infringing acts outside the three-year period.  But, where the ownership claim is dispositive, if the ownership claim is time-barred then the infringement claim is time-barred.

    So what happens here?  Is the ownership claim time-barred?  When did Kwan have notice that BRB didn’t believe she was an author as the term is used in the Copyright Act?

    The court thought that the above emails were notice to Kwan that copyright ownership was disputed. I’m not so sure, though. Characterization of one as “author” or “editor” isn’t necessarily determinative of copyright ownership. The court described the working relationship thus: “Schlein would prepare first drafts of FIOL chapters and send them to Kwan for editing. Kwan would comment on these chapters and then return them to Schlein for further work. After Schlein had revised the chapters based upon Kwan’s comments, he would return them to her for a second round of editing.” Certainly Kwan could have thought this was enough to make her a joint author. There’s no mention whether Kwan edited the second edition, but she was getting royalty payments for it.  All this sounds like it was reasonable for Kwan to think that no one disputed she was a joint author, albeit one called “editor” on the book cover, until they refused to pay her for royalties on a subsequent revision to the work.
    But no matter; the Second Circuit has spoken.

    Kwan v. Schlein, No 09-5205-cv (2d Cir. Jan.. 25, 2011)

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