Jackson v. Axton
| Decision Date | 06 June 1994 |
| Docket Number | Nos. 92-56580,93-55423,s. 92-56580 |
| Citation | 25 F.3d 884 |
| Parties | , 1994 Copr.L.Dec. P 27,275, 31 U.S.P.Q.2d 1037 David Pancost JACKSON, Jr., Plaintiff-Appellant, v. Hoyt AXTON, dba Lady Jane Music; Rondor Music International, Inc., Defendants-Appellees. David Pancost JACKSON, Jr., Plaintiff-Appellee, v. Hoyt AXTON, dba Lady Jane Music; Rondor Music International, Inc., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Evan S. Cohen and S. Martin Keleti, Cohen and Luckenbacher, Los Angeles, CA, for plaintiff-appellant-plaintiff-appellee.
Russell J. Frackman and Jeffrey D. Goldman, Mitchell, Silberberg & Knupp, Los Angeles, CA, for defendants-appellees-defendants-appellants.
Appeal from the United States District Court for the Central District of California.
Before: HUG, WIGGINS, and NOONAN, Circuit Judges.
Opinion by Judge WIGGINS.
I.
"Joy to the World" (the "Song") was composed in 1970. 1 One day that year, Hoyt Axton rented a studio in order to record a demo tape of his solo musical work. He hired a band. David P. Jackson, Jr. was to play piano. The group recorded four or five Axton compositions. Axton had previously composed fragments of the Song. Just before the recording session ended, Axton, with the group's help, attempted to complete the fragments and record the Song. Axton finished the lyrics. Jackson contends that he, Jackson, wrote much of the music. The Song was later released on Axton's solo album, in late 1970 or early 1971. Soon thereafter, Axton registered for copyright as sole author and owner of all versions of the Song. Axton was issued copyright registration reflecting that exclusive claim.
For some time after the Song was written, however, Axton routinely told live audiences that the Song was written by himself and "D.P.J.J.R.," Axton's nickname for Jackson. One night, after the band had performed in public, Axton asked Jackson to sign a songwriter's agreement conveying Jackson's rights in the Song to Axton's company in exchange for royalties. Jackson refused. In 1975, Jackson asked Axton if Axton would buy Jackson's interest in the Song for a lump sum. Axton refused, saying Jackson had nothing to do with writing the Song. But in late 1975, Axton said in an interview with a magazine that Jackson "co-wrote" the Song.
After 1975, Jackson no longer asked Axton for compensation. Jackson asserts that he respected Axton and felt Axton would eventually do the right thing. Jackson knew in 1976 that he could file suit but felt litigation would not be the right way to address the problem. Axton has since that time licensed the Song numerous times for use in films, TV shows, commercials, etc. The Song is Axton's best-known work. Jackson has never been credited on any published version of the Song. In 1991, Jackson began again to perform in Axton's band. At that time, the issue of who wrote the Song's music surfaced again after Axton claimed sole authorship of another song that Jackson had clearly helped write. Jackson filed the instant suit shortly thereafter.
Jackson's complaint seeks (1) a declaration that he coauthored the Song with Axton and (2) an accounting for profits. Because Axton had recently licensed the Song to Rondor Music International, Inc. ("Rondor"), Jackson's complaint names as defendants both Axton and Rondor ("Appellees"). Appellees moved for summary judgment, arguing Jackson's suit was barred by both laches and the statute of limitations, 17 U.S.C. Sec. 507(b). Appellees also argued that any work done by Jackson on the Song was merely "work for hire." The district court held Jackson's action was barred by laches. Jackson v. Axton, 814 F.Supp. 42, 43-44 (C.D.Cal.1993). The court found that Jackson's delay presumptively prejudiced Axton. The court also found actual prejudice in that since 1970 circumstances have changed, memories have faded, and relevant evidence has been destroyed. Id. at 44. The district court denied Axton and Rondor's request for attorney's fees. All parties appealed, and the appeals have been consolidated.
II.
Jackson argues that laches should never be a defense to an action seeking a declaration of coauthorship or co-ownership. He also argues that, even if laches may be a defense, summary judgment in this case is inappropriate because a dispute exists as to material facts.
Whether laches may be a defense to an action seeking a declaration of coauthorship of a copyrightable work and co-ownership of the copyright is a question of law. It is therefore subject to de novo review. United States v. McConney, 728 F.2d 1195, 1201 (9th Cir.), cert. denied, 469 U.S. 824, 105 S.Ct. 101, 83 L.Ed.2d 46 (1984).
Jackson asserts that Neva, Inc. v. Christian Duplications Int'l, Inc., 743 F.Supp. 1533, 1548 (M.D.Fla.1990), holds that laches cannot apply. Jackson would have us adopt his reading of Neva. Jackson concedes, however, that two other cases imply that laches may apply: Edward B. Marks Music Corp. v. Wonnell, 61 F.Supp. 722, 728-29 (S.D.N.Y.1945) (), and Stone v. Williams, 873 F.2d 620 (2d Cir.) (applying laches to bar a claim) ["Stone I "], cert. denied, 493 U.S. 959, 110 S.Ct. 377, 107 L.Ed.2d 362, vacated, Stone v. Williams, 891 F.2d 401 (2d Cir.1989) () ["Stone II "], cert. denied, 496 U.S. 937, 110 S.Ct. 3215, 110 L.Ed.2d 662 (1990). The district court relied on Stone I. 814 F.Supp. at 43. Jackson contends this reliance was misplaced because Stone I was vacated on rehearing.
Jackson also claims that applying laches to coauthorship/co-ownership claims is inconsistent with the statute of limitations applicable to copyright actions, 17 U.S.C. Sec. 507(b). Specifically, Jackson asserts that filing an invalid copyright claim is not copyright infringement and neither starts the statutory limitations period (for infringement actions) running nor tolls it, Austin v. Steiner, 207 F.Supp. 776, 779-80 (N.D.Ill.1962). Jackson claims the same rule should apply with respect to laches: Jackson's ability to claim ownership or make a copyright filing should not start a clock running that might result in a finding of unreasonable delay or laches. In support, Jackson notes that in Wonnell and Goodman v. Lee, 815 F.2d 1030 (5th Cir.1987), no co-ownership claim was brought until decades after composition of the works at issue, yet the court in neither case dismissed the claim on statute of limitations or laches grounds.
Finally, Jackson claims laches does not apply to future violations. Hayden v. Chalfant Press, Inc., 177 F.Supp. 303, 307 (S.D.Cal.1959), aff'd, 281 F.2d 543 (9th Cir.1960). Jackson asserts that this aspect of laches gives him a new, unbarred claim each time Appellees exploit the Song. 2
In rebuttal, Appellees argue that this court should follow Stone I and Wonnell. Appellees contend Neva is inapposite. In Neva, the plaintiff, the registered copyright owner, sued for infringement and included a claim for a declaration of ownership. Appellees explain that laches was not applied to bar the plaintiff's declaration claim because the plaintiff, the obvious owner of the copyright, never needed to prove his ownership prior to bringing the infringement claim. Delay in seeking an unnecessary declaration could not be used to bar a recognized copyright owner's assertion of his rights. Thus, Appellees conclude, Neva did not hold that laches is unavailable as a defense; Neva held merely that laches was inapplicable in that case. 743 F.Supp. at 1548; see Pamfiloff v. Giant Records, Inc., 794 F.Supp. 933, 937 (N.D.Cal.1992). Goodman is also inapposite, Appellees claim, because Goodman addressed only subject matter jurisdiction, not laches. 815 F.2d at 1030-31.
Appellees also assert that the principles governing statutes of limitations differ from those governing laches. Statutes of limitations bar claims only upon the passage of time; laches bars claims because prejudice would otherwise result to the defendant. Appellees claim Jackson's delay made their defense substantially more difficult. This fact is enough to support application of laches, Appellees claim, even if no statute of limitations period would have run. Finally, Appellees note that a claim seeking a declaration of property ownership is a classic, equitable claim to which laches may be applied.
This is an issue of first impression in the Ninth Circuit. We hold that laches may be a defense to an action seeking a declaration of coauthorship (and resulting co-ownership) of a copyrightable work. Claims of ownership are traditionally subject to the defense of laches. E.g., Shelton v. Daniel, 236 Ark. 454, 366 S.W.2d 709, 711-12 (1963) (); Poore v. Poore, 210 Ga. 371, 80 S.E.2d 294, 295 (1954) (same); Tristram's Group, Inc. v. Morrow, 22 Mass.App. 980, 496 N.E.2d 176, 178 (1986) (same); Aspinwall v. Ryan, 190 Or. 530, 226 P.2d 814, 818-19 (1951) (same).
Moreover, other cases imply that laches may bar a claim for ownership of a copyright. Edward B. Marks Music Corp. v. Charles K. Harris Music Pub. Co., 255 F.2d 518, 522-23 (2d Cir.) ( a laches claim on only factual grounds), cert. denied, 358 U.S. 831, 79 S.Ct. 51, 3 L.Ed.2d 69 (1958); Wonnell, 61 F.Supp. at 728-29 (same). That these cases did not address coauthorship but only co-ownership does not render them inapposite. Jackson actually seeks a declaration of ownership; declaring that Jackson is an author would be without legal effect in this case unless he is also declared a co-owner.
Neva and Goodman are distinguishable for reasons noted by Appellee. Moreover, rules applicable to statutes of limitations do not necessarily apply to laches. Though both laches and statutes of limitations...
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