Declaratory Judgment of Non-Infringement Brought More Than Three Years After Repudiation Not Time-Barred​

The court granted plaintiff’s motion for summary judgment on its declaratory claim that its musical did not infringe defendants’ works and rejected defendants’ argument that the declaratory judgment action was barred by the statute of limitations. “⁠[I]t is undisputed that, ‘⁠[i]n 1997, [defendants] expressly and unequivocally repudiated [plaintiff’s] claims that he could produce his musical without infringing [defendants’] rights.’ Defendants argue that because Plaintiff waited until 2013 to seek a declaration that ‘his musical does not infringe upon any copyright or trademark interest of [defendants]⁠’— well over three years since their 1997 ‘repudiation’—the statute of limitations bars Plaintiff’s claim. Plaintiff, on the other hand, argues that the statute of limitations does not bar his declaratory judgment claim because he ‘submit[s] [it] as a defense to Defendants yet-to-be asserted copyright infringement claims.’ Defendants are correct that the statute of limitations can apply to a claim for declaratory relief. As the Ninth Circuit has directed, the analysis must focus on the substance of the underlying claim; where the statute of limitations would bar a claim brought for affirmative relief . . . it would also bar a declaratory judgment claim that effectively seeks the same result . . . . [H]owever, the declaratory relief that Plaintiff seeks is a declaration that ‘his musical does not infringe upon any copyright or trademark interest of [defendants]⁠’—i.e., if Plaintiff were to produce his musical tomorrow, it would not infringe Defendants’ intellectual property. If Plaintiff were to produce his musical tomorrow, the statute of limitations would not bar an infringement claim by Defendants.”

Cabell v. Zorro Productions, Inc. et al, 5-15-cv-00771 (CAND 2018-05-11, Order) (Edward J. Davila)

2018-05-15T12:02:03+00:00 May 15th, 2018|Copyright, Docket Report|