Timeliness! The Cornerstone of Any Copyright Claim

Understanding the difference between ownership and infringement claims in copyright is vital, and the recent case of Zahedi v. Miramax underscores this crucial distinction, serving as a warning to potential rights-holders regarding the timeliness of their claims.

Case Background

A spotlight highlights Mia Wallace laying on her stomach facing the camera, wearing a low-cut shirt, capris, high heels, and a bob hairdo—all jet black—with one hand lazily draped over an open magazine cover and the other languidly clutching a cigarette that smolders only slightly less than Mia’s own gaze towards the camera. The cover photograph of Quentin Tarantino’s 1994 Pulp Fiction is as well-known as the film itself, and the performance of Mia Wallace earned actress Uma Thurman a nomination for an Academy Award for Best Supporting Actress in 1995. The photograph has since been used extensively in consumer products associated with the film, from apparel to action figures. 

Photographer Firooz Zahedi captured the iconic image at his private Los Angeles studio in 1994. In May 2020, Zahedi sued Miramax and its now-parent company Disney in the Central District of California, alleging copyright infringement. Miramax insisted that Zahedi took the photograph under a work-for-hire agreement, and so any copyright in the resulting photograph would be assigned to Miramax, but no such agreement could be located or produced by the studio. The court denied Miramax’s early Motion to Dismiss and Motion to Strike the complaint, finding that the claims were not barred by the statute of limitations because Zahedi may have reasonably only become aware of the alleged infringement in 2019, and the reasonableness of his lack of knowledge of prior infringement was a question of fact.

Outcome & Analysis

What proved fatal to Zahedi’s case was not the miraculous discovery of a work-for-hire agreement in a glowing briefcase, but rather a 2015 Instagram post by his stepson showing the photographer holding a Mia Wallace action figure, the packaging for which prominently displayed the contested photograph and did not attribute credit to Zahedi. The post noted that Zahedi “didn’t get toy royalties for his famous photo,” and Zahedi replied in the comments that sometimes one had to “settle for the little things in life.”

The federal statute of limitations for copyright claims is three years, but exactly when that clock starts ticking is determined by whether the claim arises in ownership or infringement. When a claim sounds in ownership, the three-year clock begins when “a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right.” This is an event that happens, if at all, only once. If the claim instead sounds in infringement, then a timely complaint is filed “within three years of any infringing act.” Therefore, a new infringement claim’s clock begins running each time a new infringement is committed. To determine whether the gravamen of a claim arises from ownership or infringement, courts will look to the substance of the claim rather than how a plaintiff labels the claim. Here, there was little dispute that Miramax had been exploiting the photograph for decades, and Miramax denied that Zahedi owned any copyright in the image. Therefore, the gravamen of the case was ownership of the photograph.

Where ownership is at issue, the three-year statute of limitations bars a claim when there is a close relationship between the parties and there has been an “express repudiation” of the plaintiff’s ownership claim. Zahedi undeniably took the photograph at Miramax’s request, so despite the lack of a contract a close relationship existed. The court also reasoned that receipt of the action figure without any attributions to Zahedi gave the photographer actual notice of Miramax’s plain and express repudiation of his ownership, five years before filing the original complaint. Even if Zahedi only became aware of the potential infringement in 2015, it was too late; the statute of limitations had begun, and his claim was barred.

Practical Takeaways

Putting aside the question of whether it was reasonable for Zahedi to be unaware of Miramax’s quarter-century of use and exploitation of the Pulp Fiction cover photograph, Zahedi v. Miramax serves as a harsh reminder for entertainment companies and copyright claimants alike.

For entertainment companies that hire outside creatives as part of their development and production processes, this case highlights the importance of documenting any and all work-for-hire agreements. It requires little imagination to envision a reality where Miramax’s apparent stance that they “didn’t do contracts” in the 1990s could have cost them (and Disney) millions of dollars in damages today. Being able to produce a signed, written agreement detailing the exact license or assignment provided by Zahedi to Miramax could have ended this claim before it began, saving Miramax (and Disney) the headache and uncertainty of litigation.

For outside creatives hired by entertainment companies, this case highlights not only the same importance of documenting exactly what work is being done and what rights are being assigned, but also of understanding the key differences in copyright claims arising in ownership disputes and in individual acts of infringement. If you suspect that your ownership rights in a work are being infringed, it is best to move swiftly; the “reasonably diligent plaintiff” keeps an eye on their rights and must be timely in protecting them or else risk their loss.

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Tyz Law Group is a boutique litigation and IP counseling firm comprised of former big law and in-house attorneys with highly specialized expertise in the technology sector.  If you have any questions about the issues discussed in this article, please do not hesitate to contact us at (415) 868-6900 or contact@tyzlaw.com.

 

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