Copyright Lawsuit Over Timberlake Royalties Is Revived

The former members of 1970s R&B group Sly, Slick, and Wicked will get a chance to pursue royalties for sampling by current pop acts Justin Timberlake and J. Cole.

The U.S. Court of Appeals for the Second Circuit reversed a decision throwing out the dispute over ownership of the 1973 release “Sho’ Nuff.” Timberlake’s “Suit and Tie” and Cole’s “Chaining Day” both sampled the song in 2013.

Sly, Slick, and Wicked can argue that they hold renewal rights in the song. The appeals court rejected a ruling that the group lost its chance to seek royalties for the sample by not opposing to contest a music publishing company’s copyright claim.

The ruling signals to the original authors of works that they won’t lose copyrights by failing to contest an adverse copyright registration by someone else.

“An author is not under a duty to constantly monitor filings in the Copyright Office on pain of losing her copyright,” the Second Circuit said.

Authors Assert Renewal Rights

John Wilson, Charles Still, and Terrance Stubbs performed as Sly, Slick, and Wicked, and registered their composition with the Copyright Office in 1973. Music publishers and labels later filed conflicting registrations claiming rights in the musical composition and sound recording of “Sho ‘Nuff.”

Before the Copyright Act of 1976, a registered work was protected for 28 years. The copyright holder then could renew the registration for an additional 28 years. The original term of protection expired in 2001, beginning the renewal term. UMG Recordings Inc. filed a renewal registration at that time.

Sly, Slick and Wicked registered their copyright interests for renewal in 2015 because they had decided to sue UMG and the publishing companies for royalties coming from the Timberlake and Cole sampling.

The U.S. District Court for the Southern District of New York threw out their claims under the Copyright Act’s three-year statute of limitations. The court said Sly, Slick, and Wicked should have filed their lawsuit for renewal rights within three years of 2001, when UMG filed its renewal registration.

According to the appeals court, UMG’s renewal registration didn’t put Sly, Slick, and Wicked on notice to file a lawsuit.

“If mere registration of a copyright without more sufficed to trigger the accrual of an ownership claim, then rightful owners would be forced to maintain constant vigil over new registrations,” the court said. “Such a requirement would be vastly more burdensome than the obligations that ‘a reasonably diligent plaintiff’ would undertake.”

Judge Pierre N. Leval issued the court’s ruling, joined by Judges Guido Calabresi and Jose A. Cabranes.

Lita Rosario PLLC represented Sly, Slick, and Wicked. Manatt, Phelps & Phillips LLP represented the music publishers and record label.

The case is WIlson v. Dynatone Publ’g Co., 2d Cir., No. 17-1549, 6/6/18.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com