Warner Chappell has urged the American Supreme Court to reject a position stated by the US Copyright Office regarding how far back damages can be claimed in a copyright infringement lawsuit, as part of a legal dispute over a sample in 2008 Flo Rida track ‘In The Ayer’.
The Copyright Office says that damages can be backdated to when an infringement took place, providing a lawsuit is filed within three years of the plaintiff becoming aware of the infringement. Warner Chappell says that is wrong. In the past different US courts have been inconsistent on this matter, so the music publisher now wants clarification in its favour.
At the heart of this is what is known as the 'discovery rule'. There is a three year statute of limitations for copyright infringement litigation, but under the discovery rule that means a copyright owner must sue an alleged infringer within three years of them becoming aware of any infringement, rather than three years from the date the infringement actually took place.
The big question here is: if the infringement actually occurred earlier, can the copyright owner claim damages all the way back to the date of infringement or just for the three years prior filing to their lawsuit? That depends on whether you apply the discovery rule in a ‘broad’ way that means it applies to damages as well as the ability to sue.
Flo Rida's 'In The Ayer' sampled 1984 track 'Jam The Box' by Tony Butler, aka Pretty Tony. Flo Rida's team cleared the sample with Butler's team. However, years later, a man called Sherman Nealy claimed that he actually owned the copyright in 'Jam The Box', having signed Butler to his Miami-based label Music Specialist back in the 1980s. That meant, he alleged, the sample was not properly licensed.
Nealy sued in 2018, ten years after the release of 'In The Ayer'. However, he was serving a prison sentence at the time the record came out and therefore was not aware of the unlicensed sample until years later. Relying on the discovery rule, he argued that he could still sue and also claim back damages to 2008. Warner Chappell disputed the damages claim, but the Eleventh Circuit Appeals Court concurred with Nealy.
Noting that different US courts have actually ruled differently on this question, the music publisher requested that the Supreme Court intervene. The court accepted the case last year, with judges now due to consider each side's arguments later this month.
The US Copyright Office submitted an amicus brief as part of the Supreme Court proceedings. It agreed with both Nealy and the Eleventh Circuit and said there was no three year limit on damages. However, Warner Chappell insists it is wrong, certainly when the specifics of the dispute over the Flo Rida sample are taken into account.
In a new filing with the US Supreme Court yesterday, the music publisher states that the government agency "simply assumes that a broad discovery rule applies because numerous courts of appeals have adopted such a rule, but they gloss over the fact that at least three courts of appeals do not apply the discovery rule where, as here, the dispute concerns ownership of a copyrighted work, not infringement".
It then added: "In order to resolve this case, all the court need decide with regard to the discovery rule is that a broad version of that rule - under which a plaintiff can obtain potentially decades’ worth of retrospective relief if he neither knew nor reasonably could have known of his copyright claim - is inconsistent with the text of [the Copyright Act]".
