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Mitchell v. Capitol Records, LLC

In copyright action involving 1989 song “If It Ain’t Ruff” by hip-hop group N.W.A., district court denies defendants’ motion to limit potential damages to infringements that occurred within three years of commencement of suit in February 2015, where plaintiff allegedly did not discover infringements until May 2014.

Plaintiff Leroy Mitchell, who authored the musical composition “Star in the Ghetto,” filed a copyright infringement action against defendants Capitol Records and Andre Young, aka Dr. Dre, alleging that the song “If It Ain’t Ruff,” released on N.W.A.’s iconic “Straight Outta Compton” album, infringed the composition and sound recording of “Star in the Ghetto.” Defendants filed two motions for partial summary judgment.

Defendants’ first motion argued that Mitchell should be precluded from recovering any damages for copyright infringements that occurred more than three years prior to the filing of the action because they fall outside the Copyright Act’s three-year statute of limitations period. To support their motion, defendants cited to the U.S. Supreme Court’s 2014 decision in Petrella v. Metro-Goldwyn-Mayer, which stated that “a successful plaintiff can gain retrospective relief only three years back from the time of suit.” The district court disagreed, reasoning that Petrella does not require the court to ignore the Sixth Circuit’s “discovery rule,” which provides that the statute of limitations for copyright claims begins to accrue when the plaintiff learns of the potential violation or is charged with that knowledge, and does not necessarily begin when the infringing act occurs. In reaching this conclusion, the court noted that Petrella did not specifically abrogate application of the discovery rule, and it acknowledged that other federal courts may still apply the rule. The court also explained that Petrella acknowledged that most circuit courts modify the rule that a “copyright claim [] arises or accrues when an infringing act occurs,” and instead focus on the date of discovery. Thus, damages are limited to those infringements that accrued within three years of the suit, with accrual being determined by the rules of the circuit –— either the date of occurrence or the date of discovery.

The court noted that other courts — including the Second and Ninth Circuits — have continued to apply the discovery rule to copyright infringement actions even after Petrella. However, the court declined to follow a decision by the Southern District of New York that interpreted Petrella as limiting damages to infringements that occurred within three years of suit.

Because Mitchell presented evidence — which defendants did not dispute at this stage of the case — that his claim did not accrue until May 2014, and his suit was timely filed in February 2015, the court declined to preclude Mitchell from seeking damages that accrued within three years of commencement of the action, regardless of the date the infringement occurred.

In their second motion, defendants argued that Mitchell may not assert a claim for infringement of the “A Star in the Ghetto” sound recording because he does not own the copyright in the recording. The court noted that the copyright in a musical composition (which initially subsists in the songwriter) is separate and distinct from the copyright in a recording of a performance of that composition (which generally vests in the performer whose performance is fixed).

The court found that Mitchell had not provided any evidence that he owned the sound recording, which was made by Ben E. King and the Average White Band, not Mitchell. Indeed, there was evidence that Atlantic Records owned the copyright for the sound recording, including phonograph labels and album sleeves that contained some variation of “ 1977 Atlantic,” which is the statutorily prescribed manner in which ownership of a copyright in a sound recording is notated under 17 U.S.C. § 402(b)(1). The court also explained that a mechanical license that Mitchell’s company had granted to Atlantic Records merely showed that Mitchell owned the underlying musical composition, not the resulting recording. The court therefore granted defendants’ motion for partial summary judgment on Mitchell’s claim for infringement of the sound recording copyright.

Summary prepared by Tal Dickstein and Lisa Rubin