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Toying with Statute of Limitations for Copyright Ownership

Posted by James Juo | Aug 29, 2022 | 0 Comments

A lawsuit for copyright infringement must be brought “within three years after the claim accrued.” 17 U.S.C. § 507(b). For purposes of this statute of limitations under copyright law, the Ninth Circuit distinguishes between “infringement” claims and “ownership” claims.

Unlike infringement claims, “ownership claims accrue only once, at the time ‘when plain and express repudiation of co-ownership is communicated to the claimant, and are barred three years from the time of repudiation,' because ‘an infringement occurs every time the copyrighted work is published, but creation does not.'” Pak's Trading Eur. B.V. v. Target, No. SA CV 18-0536-DOC (DFMx), 2018 WL 8333362, at *5 (C.D. Cal. July 5, 2018) (quoting Zuill v. Shanahan, 80 F.3d 1366, 1369, 1371 (9th Cir. 1996)).

“[A]n untimely ownership claim will bar a claim for copyright infringement where the gravamen of the dispute is ownership, at least where . . . the parties are in a close relationship.” Seven Arts Filmed Ent. Ltd. v. Content Media Corp. PLC, 733 F.3d 1251, 1258 (9th Cir. 2013).

Pulp Fiction's Poster of Uma

In 1994, photographer Firooz Zahedi took several photographs of Uma Thurman in character in her now-famous role as Mia Wallace in the Quentin Tarantino film, Pulp Fiction. Miramax, the studio that produced Pulp Fiction, then used one of Zahedi's photographs with some changes on its poster for the film.

Since then, the image has also appeared on T-shirts, socks, and other merchandise.

In 2015, Zahedi received a Mia Wallace action figure as a gift. The packaging for the action figure prominently featured the poster, and the action figure also had a Miramax copyright mark. Zahedi believed the use of his photograph on the action figure infringed his rights. Indeed, Zahedi's stepson posted a photograph of Zahedi holding the action figure on Instagram, with the caption “Happy Birthday to my Stepdad @fitzphoto [emoji] Turns out he didn't get toy royalties for his famous photo of Uma™ . . . But at least he has the toy now . . .”

In 2019, Zahedi received another gift featuring his photograph. This time, it was a pair of socks. It was this gift that caused Zahedi to file for a copyright registration, and eventually sue Miramax for copyright infringement in May 2020 in the Central District of California. Zahedi v. Miramax, LLC, No. 20-cv-04512-MCS-E (C.D. Cal. Aug. 19, 2022).

No Written Agreement in Evidence

At the time of the photo shoot, Miramax paid Zahedi $10,000, but neither party could produce a signed agreement identifying what rights either party retained in the photograph.

Miramax alleges that it would not have hired Zahedi without a work-for-hire agreement, but was unable to locate such an agreement. Many Miramax files from its New York office apparently are difficult to search because they were contaminated by debris from the September 11, 2001 attacks on the World Trade Center.

Zahedi, on the other hand, argued that he took a low fee to work on an interesting shoot for a hotly anticipated indie film project, and that there was no work-for-hire agreement because Miramax “didn't do contracts.”

Copyright Notice

Miramax obtained a copyright registration for the poster as a “KEY ART TRANSPARENCY” from the Register of Copyrights in 2003. Miramax's copyright registration was for a “2 Dimensional artwork,” not a photograph, and does not identify Zahedi as a contributor.

Miramax claims it always attached a copyright notice identifying Miramax as the copyright holder. But Miramax Books published the 1994 script for the film which identifies the cover photograph (Zahedi's photograph) as copyright Firooz Zahedi.

Zahedi obtained a copyright registration for his photograph in 2019.  Zahedi's copyright registration states the title of the work is “Poster for Pulp Fiction” and identifies the work as a photograph.

Copyright Ownership Dispute

Where the gravamen of a claim is ownership, the statute of limitations will bar a claim if (1) the parties are in a “close relationship” and (2) there has been an “express repudiation” of the plaintiff's ownership claim. Seven Arts, 733 F.3d at 1254, 1256.

Close Relationship

The Court found a “close relationship” because the parties had entered into a contract or express agreement regarding the work in question.

There is no dispute that even if Zahedi owns the copyright in his photograph, he took the photograph at Miramax Film Corp.'s request and granted Miramax Film Corp. at least a limited license to use it for certain purposes. Zahedi had a prior business relationship and at least a verbal agreement with Miramax Film Corp. regarding his photograph.

In addition, there was contractual privity because even through his agreement was with Miramax, LLC's predecessor, Miramax Film Corp., a contract with a predecessor-in-interest regarding the work in question establishes that the parties were in a close relationship. See Seven Arts, 733 F.3d at 1256–7.

Express Repudiation

Express repudiation of someone else's copyright ownership claim can be accomplished through a letter or other direct communication claiming ownership for yourself.

Repudiation also can be accomplished through a competing copyright registration, a failure to provide credit, and a failure to pay royalties. See Seven Arts, 733 F.3d at 1257 (three letters from defendant to plaintiff repudiating ownership); Aalmuhammed v. Lee, 202 F.3d 1227, 1231 (9th Cir. 2000) (movie credits “plainly and expressly repudiated authorship” by listing the plaintiff “far below the more prominent names”), Saenger Org., Inc., v. Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55, 66 (1st Cir. 1997) (copyright registration constituted constructive notice of a claim of exclusive copyright ownership), SantaRosa v. Combo Recs., 471 F.3d 224, 228 (1st Cir. 2006) (applying Ninth Circuit test to find that openly and notoriously selling records without paying royalties constituted plain and express repudiation of coownership); see also Straughter v. Concord Music, No. ED CV 19-1360-JFW (SHKx), 2020 WL 6821313, at *4–5 (C.D. Cal. Oct. 13, 2020) (finding clear and express repudiation where a party obtained a copyright registration and a mechanical license for music royalties).

The purported repudiation should be an act that is adverse to the party whose ownership is being repudiated. See Everly v. Everly, 958 F.3d 442, 453 (6th Cir. 2020) (citing Brownstein v. Lindsay, 742 F.3d 55, 72 (3d Cir. 2014)); Gaiman v. McFarlane, 360 F.3d 644, 654 (7th Cir. 2004).

The Court here was “skeptical of the notion that mere registration of copyright, or even registration of copyright plus Miramax's assertion of its copyright on items using the photograph, rises to the level of express repudiation, especially since the copyright registration does not clearly claim ownership of Zahedi's photograph.” Furthermore, “Miramax's copyright registration does not provide constructive notice of Miramax's claim of exclusive copyright ownership because Miramax's copyright registration could plausibly be understood to cover only the poster, and not the underlying photograph.”

Rather than relying on constructive notice, however, the Court also found that Zahedi had “actual” notice of Miramax's repudiation.

Where, as here, Zahedi actually knew that Miramax was exploiting a photograph of which he claimed ownership without giving him credit or royalties, his failure to bring suit to assert his ownership rights is fatal to his case.


           Zahedi's receipt in 2015 of an action figure prominently featuring the iconic photo, bearing Miramax's copyright notice, and failing to credit Zahedi is uncontroverted evidence of his actual knowledge of Miramax's plain and express repudiation of his ownership. There is no genuine dispute that Zahedi understood it as such. While it may be true that Miramax changed its position on its copyright claim over the decades since 1994—Zahedi is correct that Miramax credited Zahedi as the owner of the photograph on the cover of its 1994 script, and the record does not clarify at what point Miramax stopped crediting Zahedi—it is clear that Zahedi understood in 2015 that Miramax claimed more rights in the photograph than Zahedi believed it had.

Finding no genuine dispute as to actual notice of repudiation, the Court dismissed Zahedi's claim against Miramax as barred by the statute of limitations.

The Court also noted that “this case implicates several of the policy justifications for imposing a statute of limitations.” Evidence such as Miramax's original concept sketches has been lost, and “witnesses' memories, and Miramax's institutional memory, have faded.” And the alleged written work-for-hire agreement also could not be located, giving rise to a factual dispute regarding its existence.

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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