What 11th Circ. Guitar Ruling Means For Copyright Litigants

• Published date: 09 September 2020
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Douglas Rettew, Anna B. Naydonov and Patrick J. Rodgers

From the world of heavy metal rock-and-roll comes an important lesson for both putative copyright owners and accused infringers. If the accused infringer believes that the putative owner does not actually own the rights in the asserted copyright, it must speak up and repudiate ownership. Once that happens, the accuser must act within three years. If it doesn't, its claim is barred.

In a recent decision of first impression, the U.S. Court of Appeals for the Eleventh Circuit joined seven of its sister circuits in adopting the rule that copyright ownership claims accrue only once for purposes of the statute of limitations under the Copyright Act.¹

Not only does this rule clarify the copyright statute of limitations in the Eleventh Circuit, but it further solidifies the growing and consistent body of law holding that copyright ownership claims accrue only once, even though copyright infringement claims accrue each time a new infringement occurs.

Before jumping into the substance of the Webster v. Dean Guitars case, in which we represented Dean Guitars, some background on the key players. If you are a fan of metal music - and even if you aren't - odds are you have encountered the so-called Dean from Hell guitar and its distinctive lightning bolt graphic at issue in this case.

The origins of this guitar date back to the early 1980s when Darrell Abbott, then a teenager, won a maroon Dean ML, the model of the Dean from Hell, in a guitar contest. Abbott eventually sold that guitar to buy a car, and in 1984, a man named Buddy Webster acquired that same maroon Dean ML.

Webster made some physical alterations to the guitar and commissioned somebody to paint the lightning bolt design shown on the guitar. Webster gave the guitar back to Abbott in 1987. Abbott proceeded to name the guitar the Dean from Hell, and the rest is history. Abbott played the guitar for decades, making it famous by featuring it on stage, on Pantera album cover and in publications.

Fast-forward to November 2004, when Abbott entered into an endorsement agreement with Armadillo Distribution Enterprises Inc. - owner of the Dean Guitars brand - and licensed the Dean from Hell lightning bolt graphic to Armadillo. Unfortunately, Abbott did not live to see the release of these reissues because he was tragically shot and killed on stage by a deranged individual in December 2004. Armadillo continued to license the lightning graphic from Abbott's estate after his death, continuously making and selling Dean from Hell reissues.

It wasn't until after Abbott's death that Webster began claiming that he owned a copyright in the lightning graphic from the Dean from Hell guitar. In response to these claims, the CEO of Armadillo, the late Elliott Rubinson, emailed Webster on April 30, 2007, stating that Rubinson, and others in the know, believed that Darrell Abbott's estate owned the copyright, not Webster. Ten years later, on April 21, 2017, Webster sued Armadillo, the Abbott estate and others for copyright infringement.

But this wasn't a run-of-the-mill copyright infringement case because ownership was contested, not infringement...