Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 1 of 16

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
PK MUSIC PERFORMANCE, INC.,
Plaintiff,

Civil Action No.: 16 Civ. 1215 (VSB)

ECF Case

- against JUSTIN TIMBERLAKE, WILL ADAMS p/k/a

WILL.I.AM and d/b/a WILL.I.AM MUSIC
PUBLISHING, ZOMBA RECORDING LLC
ARISTA US HOLDINGS, INC., SONY MUSIC
ENTERTAINMENT, TENNMAN TUNES, LLC,
UNIVERSAL MUSIC Z TUNES LLC,
I.AM.COMPOSING, LLC, BMG RIGHTS
MANAGEMENT (US) LLC d/b/a BMG
SAPPHIRE SONGS, WILL I AM MUSIC, INC.,
TENNMAN PRODUCTIONS LLC,
Defendants.

REPLY MEMORANDUM OF LAW OF DEFENDANTS WILLIAM ADAMS,

I.AM.COMPOSING, LLC, WILL.I.AM MUSIC, INC. AND BMG
RIGHTS MANAGEMENT (US) LLC IN SUPPORT OF MOTION TO DISMISS

MANATT, PHELPS & PHILLIPS, LLP

7 Times Square
New York, NY 10036
(212) 790-4500
Attorneys for Defendants
William Adams p/k/a will.i.am d/b/a will.i.am Music
Publishing, i.am.composing, llc, will.i.am music, inc. and
BMG Rights Management (US) LLC d/b/a BMG Sapphire Songs

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 2 of 16

TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT ................................................................................................... 1
ARGUMENT ................................................................................................................................. 1
I.

PLAINTIFFS ASSERTION THAT PETRELLAS ANALYSIS OF THE

THREE-YEAR LOOK BACK IS NON-BINDING DICTA IS BASELESS ................... 1

II.

PLAINTIFFS ATTEMPT TO AVOID THE SECOND CIRCUITS DECADESLONG RECOGNITION OF THE THREE-YEAR LOOK BACK IS FUTILE................ 3

III.

PSIHOYOS DOES NOT SUPPORT PLAINTIFF............................................................. 5

IV.

NONE OF THE OTHER SECOND CIRCUIT CASES THAT PLAINTIFF

CITES ALLOWS IT TO RECOVER DAMAGES BEFORE FEBRUARY 17,
2013.................................................................................................................................... 6

V.

THE OUT OF CIRCUIT CASES THAT PLAINTIFF CITES ALSO DO NOT

ALLOW IT TO RECOVER DAMAGES BEFORE FEBRUARY 17, 2013 .................... 7

VI.

THE THREE-YEAR LOOK BACK IS CONSISTENT WITH THE LANGUAGE

AND PURPOSE OF THE COPYRIGHT ACT AND THE DISCOVERY RULE ........... 8

CONCLUSION ............................................................................................................................ 10

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 3 of 16

TABLE OF AUTHORITIES
Page
CASES
Armstrong v. Virgin Records, Ltd.,
91 F. Supp. 2d 628 (S.D.N.Y. 2000)..........................................................................................7
Byron v. Chevrolet Motor Div. of Gen. Motors Corp.,
No. 93 Civ. 1116, 1995 WL 465130 (S.D.N.Y. Aug. 7, 1995) .................................................5
Castronuovo v. Sony Music Entmt,
No. 10-cv-428, 2013 WL 4597038 (M.D. Tenn. Aug. 29, 2013) ..............................................8
Cnty. of Allegheny v. Am. Civil Liberties Union Greater Pittsburgh Chapter,
492 U.S. 573 (1989) ...................................................................................................................1
Cooley v. Penguin Grp. (USA) Inc.,
31 F. Supp. 3d 599 .................................................................................................................3, 7
EMI Entmt World, Inc. v. Karen Records, Inc.,
603 F. Supp. 2d 759 (S.D.N.Y. 2009)........................................................................................4
Felix the Cat Prods., Inc. v. Cal. Clock Co.,
No. 04 Civ. 5714, 2007 WL 1032267 (S.D.N.Y. Mar. 30, 2007) .............................................4
Galet v. Carolace Embroidery Prods. Co.,
No. 91 Civ. 7991, 1994 WL 542275 (S.D.N.Y. Oct. 5, 1994) ..................................................5
Gaste v. Kaiserman,
669 F. Supp. 583 (S.D.N.Y. 1987).............................................................................................4
Grant Heilman Photography, Inc. v. McGraw-Hill Cos.,
28 F. Supp. 3d 399 (E.D. Pa. 2014) ...........................................................................................3
Groden v. Allen,
279 Fed. Appx 290 (5th Cir. 2008) ..........................................................................................8
Habersham Plantation Corp. v. Art & Frame Direct, Inc.,
No. 10-61532-CIV, 2011 WL 4005454 (S.D. Fla. Sept. 8, 2011) .............................................8
Huebbe v. Oklahoma Casting Co.,
No. Civ-06-306, 2009 WL 3245404 (W.D. Okla. Sept. 30, 2009) ............................................8
Hutson v. Notorious B.I.G., LLC,
No. 14-CV-2307, 2015 WL 9450623 (S.D.N.Y. Dec. 21, 2015) ..............................................7
John Wiley & Sons, Inc. v. Book Dog Books, LLC,
No. 13-CV-816, 2016 WL 3176620 (S.D.N.Y. June 6, 2016) ..................................................7
Kregos v. Associated Press,
3 F.3d 656 (2d Cir. 1993) ......................................................................................................3, 5
Kwan v. Schlein,
634 F.3d 224 (2d Cir. 2011).......................................................................................................5
ii

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TABLE OF AUTHORITIES
(continued)
Page
Lefkowitz v. McGraw-Hill Global Educ. Holdings, LLC,
23 F. Supp. 3d 344 (S.D.N.Y. 2014)..........................................................................................3
Merchant v. Levy,
92 F.3d 51 (2d Cir. 1996) ..................................................................................................3, 5, 6
Mount v. Book-of-the-Month Club, Inc.,
555 F.2d 1108 (2d Cir. 1977).....................................................................................................4
Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co.,
09-CV-2669, 2013 WL 4464002 (S.D.N.Y. Aug. 21, 2013) .....................................................3
Natl Football League v. PrimeTime 24 Joint Venture,
131 F. Supp. 2d 458 (S.D.N.Y. 2001)........................................................................................9
Nutter v. Clear Channel Commcns, Inc.,
No. 05-CV-65, 2007 WL 2773830 (N.D.W.Va. Sept. 21, 2007) ..............................................8
Panoramic Stock Images, Ltd. v. McGraw Hill Glob. Educ. Holdings, LLC,
No. 12 C 9881, 2015 WL 393381 (N.D. Ill. Jan. 27, 2015) ......................................................8
Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962 (2014) ..................................................................................................... passim
Polar Bear Prods., Inc. v. Timex Corp.,
384 F.3d 700 (9th Cir. 2004) .....................................................................................................8
Psihoyos v. John Wiley & Sons, Inc.,
748 F.3d 120 (2d Cir. 2014)............................................................................................. passim
Ranieri v. Adirondack Dev. Grp., LLC,
No. 11-CV-1013, 2016 WL 796061 (N.D.N.Y. Feb. 22, 2016) ................................................7
Rosette v. Rainbo Record Mfg. Corp.,
354 F. Supp. 1183 (S.D.N.Y. 1973)...........................................................................................5
Rouse v. Walter & Assocs., LLC,
513 F. Supp. 2d 1041 (S.D. Iowa 2007) ....................................................................................8
Seminole Tribe of Florida v. Florida,
517 U.S. 44 (1996) .....................................................................................................................1
Senisi v. John Wiley & Sons, Inc.,
No. 13-CV-3314, 2015 WL 7736545 (S.D.N.Y. Nov. 30, 2015) ..............................................7
Sharp v. Patterson,
No. 03 Civ. 8772, 2004 WL 2480426 (S.D.N.Y. Nov. 3, 2004) ...........................................4, 5
Skidmore v. Led Zeppelin,
No. 2:15-cv-03462-RGK-AGR (C.D. Cal.) ...............................................................................8

iii

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TABLE OF AUTHORITIES
(continued)
Page
Stone v. Williams,
970 F.2d 1043 (2d Cir. 1992).........................................................................................3, 4, 5, 6
Taylor v. Meirick,
712 F.2d 1112 (7th Cir. 1983) ...................................................................................................8
Torres-Negron v. Rivera,
No. Civ. 02-1728, 2005 WL 1308675 (D.P.R. May 18, 2005)..................................................8
Town of Greece, New York v. Galloway,
134 S. Ct. 1811 (2014) ...............................................................................................................2
UMG Recordings Inc. v. Escape Media Grp., Inc.,
No. 11 Civ. 8407, 2014 WL 5089743 (S.D.N.Y. Sept. 29, 2014) .............................................4
William A. Graham Co. v. Haughey,
568 F.3d 425 (3d Cir. 2009).......................................................................................................8
Wu v. John Wiley & Sons, Inc.,
No. 14 Civ. 6746, 2015 WL 5254885 (S.D.N.Y. Sept. 10, 2015) .............................................4
STATUTES
17 U.S.C. 507(b) .......................................................................................................................2, 9
OTHER AUTHORITIES
1-12 NIMMER ON COPYRIGHT 12.05(B)(2)(c) (2015) ....................................................................9
Civil Copyright Actions Statute of Limitations, S. Rep. No. 85-1014, reprinted
in 1957 U.S.C.C.A.N. 1961, 1963, available at 1957 WL 5137 ...............................................9
RULES
Fed. R. Civ. P. 12(b)(6)..................................................................................................................10

iv

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PRELIMINARY STATEMENT
Defendants opening brief demonstrates that Petrella and more than 40 years of Second
Circuit law prohibit Plaintiff from seeking relief for any time period before February 17, 2013,
and that Psihoyos reaffirmed the application of the discovery rule for claim accrual purposes
without altering the traditional three-year look back period for damages. In its opposition papers,
Plaintiff ignores the distinction recognized by Petrella, the Second Circuit and Nimmer
between the manner in which copyright infringement claims accrue and the temporal limits on
the recovery available for them. Plaintiff compounds this shortcoming by mischaracterizing
Defendants brief and authorities, misstating the law, ignoring the Copyright Acts plain
language and legislative history, and selectively relying on out-of-circuit decisions to argue that
the discovery rule opens the door to an unlimited recovery period. None of Plaintiffs arguments
withstands scrutiny.
ARGUMENT
I.

PLAINTIFFS ASSERTION THAT PETRELLAS ANALYSIS OF THE

THREE-YEAR LOOK BACK IS NON-BINDING DICTA IS BASELESS
Defendants moving papers show that Petrellas analysis of the statute of limitations

and the three-year look back in particular is critical to its holding. (Br. 5-6) Plaintiff attempts
to sidestep this analysis by characterizing it as dicta. (Opp. 15) This assertion is baseless.
The Supreme Court has made clear that [w]hen an opinion issues for the Court, it is not
only the result but also those portions of the opinion necessary to that result by which [the courts
are] bound. Seminole Tribe of Florida v. Florida, 517 U.S. 44, 67 (1996); see also Cnty. of
Allegheny v. Am. Civil Liberties Union Greater Pittsburgh Chapter, 492 U.S. 573, 668 (1989)
(As a general rule, the principle of stare decisis directs us to adhere not only to the holdings of
our prior cases, but also to their explications of the governing rules of law.) (Kennedy, J.,

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concurring and dissenting), abrogated on other grounds, Town of Greece, New York v.
Galloway, 134 S. Ct. 1811 (2014). Here, Petrella itself confirms that its statute of limitations
and look back analysis is necessary to its laches holding. 134 S. Ct. at 1968-77. The Court
described this analysis as the most significant to its decision, id. at 1968, before underscoring
three different times that copyright plaintiffs are not entitled to relief more than three years
before suit. Id. at 1970, 1973, 1977. The Court rejected the laches defense because the
Copyright Acts statute of limitations already takes account of delay, id. at 1973, and
incentivizes plaintiffs to file suit promptly by preventing them from pursuing claims and
recovering damages more than three years prior to suit. Id. at 1970, 1973, 1977. The Courts
references to the three-year look back, thus, both explicate the governing rules of law under the
Act, and supply the rationale for the Courts decision. See, e.g., id. at 1970 (the look back is one
of two controlling time prescriptions for which Congress provided in the Act); id. at 1973
(The Ninth Circuit erred, we hold, in failing to recognize that the copyright statute of
limitations, 507(b), itself takes account of delay. As earlier observed . . . , a successful plaintiff
can gain retrospective relief only three years back from the time of suit. No recovery may be had
for infringement in earlier years. Profits made in those years remain the defendants to keep.);
id. at 1977 (lower courts acceptance of a laches defense was erroneous in light of Congress
time provisions, including the look back, which regime leaves little place for a doctrine that
would further limit the timeliness of a copyright owners suit) (internal quotation marks &
citation omitted). Plaintiff, therefore, has no conceivable argument that Petrellas three-year
look back analysis is dicta that this Court is free to disregard.1

Plaintiffs related arguments that Petrella is inapplicable because of supposed factual differences and that
subsequent decisions expressly declined to apply Petrella beyond its limited holding on laches are equally
specious. (Opp. 13-16) Petrella makes clear that its factual setting played no part in its recognition and analysis of
the three-year look back. And, far from limiting Petrellas reach, the decisions that Plaintiff cites merely stand for

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 8 of 16

II.

PLAINTIFFS ATTEMPT TO AVOID THE SECOND CIRCUITS DECADESLONG RECOGNITION OF THE THREE-YEAR LOOK BACK IS FUTILE
Defendants opening brief demonstrates that myriad Second Circuit cases spanning more

than four decades simultaneously apply the discovery rule for claim accrual purposes and the
three-year look back for damages purposes, or otherwise use the look back to limit recovery to
the three-year period prior to suit. (Br. 6-8) Knowing this, Plaintiff mischaracterizes and
highlights irrelevant distinctions in the cases in an effort to convince this Court to disregard
them. (Opp. 18-22) Plaintiffs effort fails in its entirety.
None of Plaintiffs arguments casts doubt on the application of the look back here:

Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) and Stone v. Williams, 970 F.2d 1043 (2d Cir.
1992) apply the discovery rule, not the injury rule, as Plaintiff asserts. (Opp. 17-18) See
Merchant, 92 F.3d at 56 (A cause of action accrues when a plaintiff knows or has reason to
know of the injury upon which the claim is premised); Stone, 970 F.2d at 1048 (same); see
also Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 09-CV-2669, 2013
WL 4464002, at *5 (S.D.N.Y. Aug. 21, 2013) (Merchant and Stone instruct that courts
should apply the discovery rule in copyright infringement cases). Further, Merchants
statement that, in copyright infringement actions, recovery is barred for any infringing acts
occurring more than three years prior to suit, 92 F.3d at 57 n.8, is in no way limited to
claims by co-authors.

Stone also does not support Plaintiffs position that delays in discovering ongoing infringing
activity allow recovery more than three years before suit. Stone expressly rejects the
continuing infringement doctrine, and holds that, even when infringements occur during the
limitations period [, r]ecovery is allowed only for those acts occurring within three years of
suit, and is disallowed for earlier infringing acts. Stone, 970 F.2d at 1049-50.

Plaintiff suggests that Kregos v. Associated Press applies the injury rule (Opp. 18-19), but
the Court there held that plaintiffs earliest claim was untimely because the plaintiff knew
about the wrongdoing shortly after it first occurred, and waited more than three years after it
had ended to file suit. See 3 F.3d 656, 659-61 (2d Cir. 1993). The Court did not apply the
injury rule (or even analyze the accrual issue), but, even if it had, its application of the threeyear look back had nothing to do with the manner in which the claims had accrued. See id. at
662 (the unavailability of the continuing infringement doctrine and the holding in Stone

the proposition that Petrella did not decide whether the injury rule or the discovery rule governs the accrual of
copyright claims, thereby leaving the latter rule in place in the Second and Third Circuits. See Cooley v. Penguin
Grp. (USA) Inc., 31 F. Supp. 3d 599, 611 n.76 (S.D.N.Y. 2014); Grant Heilman Photography, Inc. v. McGraw-Hill
Cos., 28 F. Supp. 3d 399, 410-11 (E.D. Pa. 2014); Lefkowitz v. McGraw-Hill Global Educ. Holdings, LLC, 23 F.
Supp. 3d 344, 357 n.11 (S.D.N.Y. 2014).

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 9 of 16

foreclose recovery more than three years before suit).

Plaintiffs assertion that Mount v. Book-of-the-Month Club, Inc. applies the injury rule, (Opp.
19-20), is belied by the fact that Mount holds that plaintiffs knowledge about his first claim
start[ed] the statute of limitations running. See 555 F.2d 1108, 1110 (2d Cir. 1977).
Mount also held that a second claim, which arose from ongoing conduct that had started five
years before suit, was timely under the discovery rule, but nonetheless applied the three-year
look back. Id. at 1111. In 1992, Stone applied the latter holding in a case under the 1976
Copyright Act, confirming that this holding is not limited to the 1909 Copyright Act. See
Stone, 970 F.3d at 1049.

Plaintiffs suggestion that the Court should disregard Gaste v. Kaiserman because it relies on
Mount and did not apply the discovery rule, (Opp. 22), is baseless in light of the above
discussion of Mount, and the fact that Gaste did not analyze the accrual issue, let alone tie the
three-year look back to the manner in which the claim at issue accrued. See 669 F. Supp.
583, 584 (S.D.N.Y. 1987).

In Wu v. John Wiley & Sons, Inc., the Court specifically noted testimony indicating that the
infringing activity began as early as seven years prior to suit.2 See No. 14 Civ. 6746, 2015
WL 5254885, at *3 (S.D.N.Y. Sept. 10, 2015). That this opinion is a report and
recommendation, (Opp. 20), proves nothing: the fact remains that the Court applied the
discovery rule and found that the copyright infringement claim was timely, yet limited
damages to the three-year period before suit. See id. at *7.

Plaintiff mischaracterizes an argument by a party that plaintiff knew of the alleged

infringement more than three years before suit was filed, (Opp. 20), as the holding of EMI
Entmt World, Inc. v. Karen Records, Inc., 603 F. Supp. 2d 759 (S.D.N.Y. 2009). It was not.
Regardless, the Court there limited damages to three years prior to suit, and ruled that
defendant was not liable for earlier damages. See id. at 768-69.

Plaintiff seeks to distinguish Felix the Cat Prods., Inc. v. Cal. Clock Co. because the claimant
there only sought damages for three years prior to suit, (Opp. 20), but the decision, which
applies both the discovery rule and the three-year look back, underscores that accrual
measurement and damages recovery are separate issues. See No. 04 Civ. 5714, 2007 WL
1032267, at *2 (S.D.N.Y. Mar. 30, 2007).

Contrary to Plaintiffs claim, (Opp. 21), Judge Lynchs decision in Sharp v. Patterson is
crystal clear that plaintiff filed suit in 2003, targeting infringements dating back as far as
1996; her claims were timely because the alleged wrongdoing was ongoing; but, because the
Second Circuit disallows recovery for infringing acts more than three years before suit and
rejects the continuing infringement doctrine, all damages prior to 2000 were time-barred.

Plaintiff ignores Wu in arguing that Defendants only cite one post-Petrella decision, UMG Recordings Inc. v.
Escape Media Grp., Inc., No. 11 Civ. 8407, 2014 WL 5089743 (S.D.N.Y. Sept. 29, 2014) (UMG), to support their
position. (Opp. 18) And, although Plaintiff may be correct that UMG did not explicitly limit the time period for
recovery, as Defendants previously suggested, the case still is of no help to Plaintiff because, in contrast to the
defendants there, Defendants do not dispute that Plaintiffs claim is timely for purposes of this motion.

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 10 of 16

See No. 03 Civ. 8772, 2004 WL 2480426, at *12 (S.D.N.Y. Nov. 3, 2004) (citing Kregos, 3
F.3d at 662; Stone, 970 F.2d at 1049-50). Sharp cites two injury rule cases, but only to
explain that the separate accrual rule applies to each infringement at issue and why the
ongoing nature of the infringements rendered the claims timely. See id.

Plaintiff correctly notes that the court dismissed the plaintiffs claim as time-barred in Byron
v. Chevrolet Motor Div. of Gen. Motors Corp. (Opp. 21); however, the court specifically
rejected the continuing violation doctrine that Plaintiff seeks to rely on here, limiting
recovery to the three-year look back. See No. 93 Civ. 1116, 1995 WL 465130, at *3
(S.D.N.Y. Aug. 7, 1995).

Plaintiff ignores Justice Sotomayors ruling in Galet v. Carolace Embroidery Prods. Co., No.
91 Civ. 7991, 1994 WL 542275 (S.D.N.Y. Oct. 5, 1994) altogether, focusing instead on
procedural issues that have no bearing on the ruling. (Opp. 21)

Plaintiff asserts that Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y.
1973) expressly applied the injury rule based on the fact that the decision limited plaintiffs
recovery to the three-year period prior to suit. (Opp. 22) Plaintiff is wrong not only because
it (again) conflates the injury rule and three-year look back, but also because the Court did
not apply the injury rule, and only allowed plaintiff to recover damages three years prior to
suit. See Rosette, 354 F. Supp. at 1194.

Plaintiff quotes extensively from Kwan v. Schlein, (Opp. 22), but glosses over the Courts
dispositive statement that, while copyright infringement plaintiffs are free to file suit within
three years of any infringing act, regardless of any prior acts of infringement, the statute of
limitations bars their recovery for infringing acts occurring outside the three-year period.
634 F.3d 224, 228 (2d Cir. 2011) (citing Merchant, 92 F.3d at 57 n.8).

For the above reasons and those in Defendants opening brief, Plaintiff cannot overcome the
Second Circuits longstanding prohibition against recovery more than three years before suit.
Plaintiffs claim for damages prior to February 17, 2013 must be dismissed.
III.

PSIHOYOS DOES NOT SUPPORT PLAINTIFF

Defendants opening brief demonstrates that Psihoyos holds that the discovery rule

determines the accrual of copyright infringement claims, but does not discuss the time period
during which damages may be recovered for such claims. (Br. 9-10) The brief also establishes
that it would be unreasonable to infer from the Courts silence that it intended to depart from its
decades-long adherence to the three-year look back and rejection of the continuing infringement

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 11 of 16

doctrine. (Id.) Plaintiff ignores this altogether, arguing instead that Psihoyos affirmed the
district courts holding that damages beyond three years were recoverable. (Opp. 5-6) This
simply is not true.3
First, as noted already, Psihoyos contains no ruling let alone any analysis concerning
the time period for which plaintiff could recover on his claims. Psihoyos merely holds that the
discovery rule governs the accrual of plaintiffs claims, and that, under this measure, the statute
of limitations does not bar any of them. See 748 F.3d at 124-25.
Second, Psihoyoss discussion of the jurys statutory damages award likewise does not
address the appropriate time period that may be considered in awarding such damages. See id. at
127. Thus, nothing in Psihoyos remotely supports Plaintiffs speculative assumptions that (i) the
jury there based its statutory damages award on profits that the defendant had received more than
three years prior to suit; and (ii) the Court actually considered and approved the use of such an
extended timeframe in making such an award, notwithstanding more than 40 years of contrary
precedent mentioned nowhere in its decision.4 (Opp. 5-6) Plaintiffs position must be rejected.
IV.

NONE OF THE OTHER SECOND CIRCUIT CASES THAT PLAINTIFF

CITES ALLOWS IT TO RECOVER DAMAGES BEFORE FEBRUARY 17, 2013
In an effort to counter the overwhelming Second Circuit authority supporting

Defendants position (Br. 6-8), Plaintiff cites a single decision from 2000 by Judge Sweet and
five other district court cases post-dating Psihoyos that supposedly allow it to recover damages

Plaintiff attempts to rebut Defendants related argument that it would be improper for this Court to assume that the
panel that decided Psihoyos intended to depart from Stone, Merchant and other precedents applying the three-year
look back. (Opp. 17 n.6) In doing so, Plaintiff misquotes Defendants argument in order to suggest that Defendants
contend that those precedents used the injury rule, and that Psihoyos erred by not doing so. Compare Br. 10 with
Opp. 17 n.6. However, Plaintiff misapprehends the facts and the law. While Plaintiff is correct that a departure
from Circuit precedent may be permissible in light of an intervening Supreme Court decision, Psihoyos is not such a
departure; rather, it reaffirms Second Circuit precedent applying the discovery rule to copyright infringement claims.
4
Plaintiffs suggestion that the District Courts comment that Mr. Psihoyos had demonstrated that the defendant had
garnered substantial profits supports an inference that the Second Circuit considered and decided to abandon the
three-year look back is absurd. (Opp. 5)

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 12 of 16

beyond the three-year look back period. (Opp. 4-8) These cases do no such thing.
As an initial matter, Plaintiff misrepresents the holding in Judge Sweets decision,
Armstrong v. Virgin Records, Ltd., 91 F. Supp. 2d 628 (S.D.N.Y. 2000). Though Judge Sweet
considered the application of the three-year look-back, Plaintiff fails to mention that he did so in
response to the parties cross-motions for summary judgment on this issue (and others), and
expressly declined to rule on it because of factual disputes in the record. See id. 642-43. Thus,
contrary to Plaintiffs assertion (Opp. 4), Judge Sweet did not hold that recovery could be had
for the earlier infringements.
The five post-Psihoyos decisions upon which Plaintiff relies also do not stand for the
proposition for which Plaintiff cites them. (Opp. 7-8) Four applied the discovery rule, but did
not address whether the plaintiffs could recover damages more than three years before suit.5 As
discussed in Defendants opening brief (Br. 12), the footnote in the fifth case on which Plaintiff
relies Hutson v. Notorious B.I.G., LLC, No. 14-CV-2307, 2015 WL 9450623, at *4 n.4
(S.D.N.Y. Dec. 21, 2015) is dicta and, thus, irrelevant. Plaintiff makes no attempt to
demonstrate otherwise, or even acknowledge this shortcoming. None of the Second Circuit
cases that Plaintiff relies on supports its position.
V.

THE OUT OF CIRCUIT CASES THAT PLAINTIFF CITES ALSO DO

NOT ALLOW IT TO RECOVER DAMAGES BEFORE FEBRUARY 17, 2013
Plaintiff cites numerous out-of-circuit decisions to argue that there is total consensus

among all Circuits that the discovery rule allows copyright infringement plaintiffs to recover
damages more than three years prior to suit. (Opp. 8-12) This argument is baseless.
Despite the wide net it casts, Plaintiff fails to mention that the jury instructions given just
5

See Ranieri v. Adirondack Dev. Grp., LLC, No. 11-CV-1013, 2016 WL 796061 (N.D.N.Y. Feb. 22, 2016); Cooley,
31 F. Supp. 3d at 612; Senisi v. John Wiley & Sons, Inc., No. 13-CV-3314, 2015 WL 7736545 (S.D.N.Y. Nov. 30,
2015); John Wiley & Sons, Inc. v. Book Dog Books, LLC, No. 13-CV-816, 2016 WL 3176620 (S.D.N.Y. June 6,
2016).

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 13 of 16

10 weeks ago in the Ninth Circuit case targeting Led Zeppelins song Stairway To Heaven one
of the most prominent music infringement cases in history expressly limited the potential
recovery of the plaintiff there to the three-year period prior to suit in light of Petrella. See
Skidmore v. Led Zeppelin, No. 2:15-cv-03462-RGK-AGR (C.D. Cal.), Dkt. 1 (complaint filed
May 31, 2014); Dkt. 196 at 81 (Defendants Disputed Jury Instructions No. 48 asks court to
prohibit jury from awarding damages for alleged infringements that occurred before May 31,
2011 based on Petrella); Dkt. 273 at 28 (Jury Instruction No. 26 informs the jury that it may
not award any profits attributable to alleged infringements that occurred before May 31, 2011).6
This case alone dooms Plaintiffs consensus argument.
In any event, the out of circuit cases that Plaintiff cites are of no help to it. The appellate
decisions and some of the trial court decisions that Plaintiff cites are irrelevant because they predate and are otherwise inconsistent with Petrella, and because they do not reflect Second Circuit
law.7 Several of the cited cases also are irrelevant because they apply the continuing
infringement doctrine,8 which is unavailable in the Second Circuit. (Br. 8) Virtually all of the
remaining cases either bar the plaintiffs from recovering damages more than three years prior to
suit,9 or do not analyze the look-back issue at all.10
VI.

THE THREE-YEAR LOOK BACK IS CONSISTENT WITH THE LANGUAGE

AND PURPOSE OF THE COPYRIGHT ACT AND THE DISCOVERY RULE
Contrary to Plaintiffs central thesis, the discovery rule and three-year look back are not

The accompanying Declaration of Prana A. Topper attaches true and correct copies of the cited case materials.
See William A. Graham Co. v. Haughey, 568 F.3d 425 (3d Cir. 2009); Groden v. Allen, 279 Fed. Appx 290 (5th
Cir. 2008); Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700 (9th Cir. 2004); Taylor v. Meirick, 712 F.2d 1112
(7th Cir. 1983); Castronuovo v. Sony Music Entmt, No. 10-cv-428, 2013 WL 4597038 (M.D. Tenn. Aug. 29, 2013).
8
See Taylor, 712 F.2d at 1119; Polar Bear, 384 F.3d at 706-07; Panoramic Stock Images, Ltd. v. McGraw Hill
Glob. Educ. Holdings, LLC, No. 12 C 9881, 2015 WL 393381 (N.D. Ill. Jan. 27, 2015).
9
See Rouse v. Walter & Assocs., LLC, 513 F. Supp. 2d 1041, 1067 (S.D. Iowa 2007); Nutter v. Clear Channel
Commcns, Inc., No. 05-CV-65, 2007 WL 2773830 (N.D.W.Va. Sept. 21, 2007).
10
See Habersham Plantation Corp. v. Art & Frame Direct, Inc., No. 10-61532-CIV, 2011 WL 4005454, at *8 (S.D.
Fla. Sept. 8, 2011); Huebbe v. Oklahoma Casting Co., No. Civ-06-306, 2009 WL 3245404 (W.D. Okla. Sept. 30,
2009); Torres-Negron v. Rivera, No. Civ. 02-1728, 2005 WL 1308675 (D.P.R. May 18, 2005).
7

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 14 of 16

inherently inconsistent. In fact, the two can and do coexist because of the availability of, and
purposes served by, statutory damages (among other remedies) under the Act.
The instant issue implicates several policy concerns under the Copyright Act. First, the
three-year statute of limitations in 17 U.S.C. 507(b) does not extinguish the right to an
infringement action, but rather applies merely to the remedy, barring damages falling outside
that window. See Civil Copyright Actions Statute of Limitations, S. Rep. No. 85-1014,
reprinted in 1957 U.S.C.C.A.N. 1961, 1963, available at 1957 WL 5137 (the basic right is not
extinguished, but the limitation is applied merely to the remedy). Second, statutory damages
are available under the Copyright Act in recognition of the fact that plaintiffs cannot always
prove actual damages and profits. See, e.g., Natl Football League v. PrimeTime 24 Joint
Venture, 131 F. Supp. 2d 458, 472 (S.D.N.Y. 2001) (Since actual damages and profits
frequently are difficult to prove, the Copyright Act provides for minimum and maximum
statutory damages . . . without proof of actual damage.) (quoting 2 William F. Patry,
COPYRIGHT LAW & PRACTICE 1170 (1994)). Third, the discovery rule acknowledges that it may
be unfair to bar plaintiffs from bringing suit for an infringement of which they had no knowledge
or, with the exercise of reasonable diligence, could not have discovered. Thus, when a plaintiff
discovers an infringement more than three years after it occurred and the defendant did not
realize any profits within the look back period, the Copyright Act ensures that the plaintiff will
still have a right to statutory damages and other remedies, provided that the plaintiff timely
complied with the Acts registration requirements, putting would-be infringers on notice. See 112 NIMMER ON COPYRIGHT 12.05(B)(2)(c) (2015) (although copyright infringement plaintiffs
cannot recover profits realized from infringing activity, they still are entitled to statutory
damages when they discover the activity and file suit more than three years after it ended).

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 15 of 16

In this way, the discovery rule, statutory damages and the built-in three-year look back
work together to balance and further these potentially competing interests. In contrast, under
Plaintiffs theory, it would almost always behoove a copyright plaintiff to turn a blind eye and
wait until the last possible moment to sue after more evidence and witnesses potentially
disappear in order to maximize recovery of profits resulting from the infringement. Such a
theory not only eviscerates Petrellas rationale, but it also undermines all of the policy
considerations underlying the Copyright Act.
CONCLUSION
For all of the reasons above and in their opening brief, Defendants respectfully request
that the Court dismiss Plaintiffs copyright claim for all periods prior to February 17, 2013 with
prejudice pursuant to Rule 12(b)(6).
Dated:

New York, New York

September 9, 2016

Respectfully submitted,
MANATT, PHELPS & PHILLIPS, LLP
By:

/s/ Robert A. Jacobs

Robert A. Jacobs
Prana A. Topper
7 Times Square
New York, NY 10036
Telephone: (212) 790-4500
Facsimile: (212) 790-4545
E-Mail: rjacobs@manatt.com
E-Mail: ptopper@manatt.com
Attorneys for William Adams p/k/a will.i.am
d/b/a will.i.am Music Publishing,
i.am.composing, llc, will.i.am music, inc.
and BMG Rights Management (US) LLC
d/b/a BMG Sapphire Songs

10

Case 1:16-cv-01215-VSB Document 68 Filed 09/09/16 Page 16 of 16

DAVIS WRIGHT TREMAINE LLP

COWAN, LIEBOWITZ & LATMAN P.C.

Marcia B. Paul
1251 Avenue of the Americas
New York, NY 10020
Telephone: (212) 603-6427
Facsimile: (212) 489-8340
E-mail: marciapaul@dwt.com

Richard S. Mandel
Bridget A. Crawford
114 West 47th Street
New York, NY 10036
Telephone: (212) 790-9200
Facsimile: (212) 575-0671
E-mail: rsm@cll.com
E-mail: bac@cll.com

Attorneys for Tennman Productions, LLC,

Tennman Tunes, LLC, Justin Timberlake, Sony
Music Entertainment and Zomba Recording
LLC

Attorneys for Universal Music-Z Tunes LLC

11