Cynthia Allison Foss v. Eastern States Exposition was the latest in a series of similar captions in both Massachusetts state court and the U.S. District Court of Massachusetts. All of the cases concerned alleged copyright infringement of a photorealistic wall mural created by artist Cynthia Allison Foss in 2016.
Foss had created a room-sized mural commissioned by Spencer Brewery for its space at the 2016 “Big E” fair, which was a yearly event presented by Eastern States Exposition (“Eastern”). Foss’s original license had two stipulations: 1) that she retain copyright ownership over the installation, and 2) that the brewery “only show the installation in person and only to paying patrons of the 2016 Big E physically present at the installation space.”
Foss later learned that Spencer Brewery, in conjunction with Eastern, included the mural in a video it used to promote the 2017 Big E fair. Foss requested that a visual or verbal credit be inserted in the video, but for whatever reason, Eastern did not comply. Foss noted that Facebook users were encouraged to use the platform’s “share” function to spread copies of the video.
Foss subsequently filed for copyright registration for the mural, and later brought a copyright infringement case against Eastern in early 2018, claiming that the work was used beyond the scope of her license. That case was dismissed without prejudice because Foss could not provide the date of registration, a Section 411 (a) requirement for starting a copyright infringement lawsuit — because the mural had yet to receive its registration (Mistake No. 1; she should have filed and obtained registration before filing the lawsuit). Since the case was dismissed without prejudice, Foss had the ability to amend her complaint until such time as she obtained a registration date (which would be effective as of the date of filing the application).
Instead, Foss brought an entirely new lawsuit (Mistake No. 2) in Massachusetts state court (Mistake No. 3) in July of 2018. Because the case involved a “federal question” (that is, the U.S. Copyright Act), it was removed from the state court to the federal court which again dismissed the case. Again, dismissal was without prejudice, affording Foss time to file an amended complaint.
Foss then took no action for two years (Mistake No. 4), but eventually filed a new lawsuit in the District of Massachusetts in December of 2020. Notably, by that time, the three-year statute of limitations for copyright infringement for the 2017 claim had run out, and the case was dismissed, “again” (in this third lawsuit).
Foss appealed to the First Circuit, saying she shouldn’t be time-barred because every day that the brewery used her work should count as a separate accrual of the action. By her reckoning, if the brewery was still posting the video today, the statute of limitations would start to run again from today’s date.
The First Circuit did not agree, finding that each day was not a separate instance of infringement. Foss had already alleged in her complaint that the infringing videos were published in 2017, and her new theory about recurring infringements had only been raised on appeal. The statute of limitations therefore began to run when the brewery and Eastern first posted the video containing Foss’s work. The harm, the court said, stemmed from the original posting of the video; it was not a string of new violations that might implicate the separate accrual rule. For ongoing infringement, the court said, a new claim can only be made within three years of the initial infringement.
The second argument Foss made on appeal was that the timeliness of her registration was beyond her control as it made its way through the Copyright Office. In Fourth Estate Public Benefit Corp. v. Wallstreet.com, LLC, the issue of when the statute of limitations begins to toll was settled by the Supreme Court. (There had been a circuit split as to whether tolling began when the application for registration was submitted, like the Second Circuit used to do; or only after the registration had been granted, like the Eleventh Circuit had found. In a unanimous decision, the Supreme Court sided with the Eleventh Circuit.) The Fourth Estate Court also held that delays from the Copyright Office cannot be used to rescue a claim that is time-barred by a statute of limitations.
Foss had asserted that the time during which her application was pending with the Copyright Office should be equitably tolled, but the record did not show when (if ever) she had received registration. The appellate court was not convinced that the circumstances that led to Foss’s work not being registered were beyond her control. Accordingly, she didn’t have the grounds to say that the lower court erred in declining to equitably toll the statute of limitations.
Mistake No. 5: Expedited treatment of applications was always available for a fee, a step that we often take before bringing a lawsuit for clients who have not yet received their registration as required before commencing a lawsuit.
The morals of this story are relatively simple: If your case is dismissed, amend the complaint if you can. Dismissal doesn’t mean give up. If it’s without prejudice, dismissal means “Stay where you are, so you can preserve that earlier date of filing.” If it was dismissed because you didn’t have a registration, then pay extra to expedite the registration and bring another lawsuit within the three-year statute of limitations.
Also, a learning opportunity for the defendant: if you have a license for limited use during a limited time period, stick with the contract or negotiate an extension and expansion of the license’s scope of use (like “video” and “social media”). It could save you from the costs of defending against a saga of multiple lawsuits and an appeal (even if you eventually win).
