This is an update to our prior post Forever(ly) Brothers, Forever(ly) Rivals: The Everly Brothers' Epic Battle Over Authorship of "Cathy's Clown."

Don and Phil Everly - the rock duo known as Everly Brothers - gained fame in the late 1950s for their innovative harmonies. Behind the scenes, however, they had a complicated and contentious relationship, and their deaths (Phil died in 2014, Don in 2021) brokered no reconciliation among their heirs. 

Before he died, Don sued Phil's estate seeking a declaration that Don was the sole author of the duo's hit Cathy's Clown. Phil's estate countered that Don and Phil were co-authors. Why would this matter more than half a century after the song was released? Because both estates are trying to regain copyright ownership over the composition by terminating, pursuant to 17 U.S.C. § 304(c), the 1960 assignment of the song's copyright to the duo's publisher.

The case boils down to whether Phil's estate is time-barred from asserting that Phil was a co-author. Under § 507(b), a copyright claim must be brought "within three years after the claim accrued.” Don's estate argued that Phil's co-authorship claim accrued decades ago (in the 1980s) when Don expressly repudiated that Phil was a co-author. (See our prior post for a discussion about when claims of copyright infringement, ownership and authorship accrue.) In 2020, the Sixth Circuit held that a genuine factual dispute existed as to whether Don, in fact, had expressly repudiated Phil’s authorship of Cathy’s Clown and remanded for further proceedings. Following a bench trial, the district court determined that (1) Don had repudiated Phil’s authorship in 1980, (2) Phil failed to reassert that he was an author within three years of the repudiation, and (3) due to that failure, Phil's estate was time-barred from asserting that Phil was a co-author. 

This time, the Sixth Circuit affirmed the court below, potentially bringing to an end this epic battle.

The panel began by noting that "while both brothers may have co-authored the lyrics and tune as a matter of fact," the question before them was whether Phil's estate can assert that Phil was an author, at this point, "as a matter of copyright law" (emphasis added). The circumstances surrounding who actually wrote Cathy's Clown are complicated and a little murky. Initially, both brothers were listed as co-authors on the copyright registration, both received royalties from sales, and both were recognized as authors when the song won awards. However, sometime around 1980, Don began pressuring (Phil’s widow described it as bullying) Phil to take his name off the song. Ultimately, Phil signed five documents titled “Release and Assignment" that provided that “Phil Everly desires to release, and transfer, to the said Don Everly all of his rights, interests and claim in and to [‘Cathy’s Clown’], including rights to royalties and his claim as co-composer, effective June 1, 1980.” After that, although only Don received royalties, both brothers occasionally made public statements that indicated that Phil had, in fact, been a co-author. The district court sifted through the contradictory evidence and concluded that, by a preponderance of the evidence, Don "plainly and expressly repudiated Phil’s authorship of Cathy’s Clown." The Sixth Circuit affirmed this conclusion as not clearly erroneous.

In the alternative, Phil's estate argued that even if it was barred by the statute of limitations from bringing an affirmative co-authorship claim, it was still entitled to raise co-authorship as a defense to Don's claim seeking a declaration that Phil was not a co-author of Cathy's Clown. Generally speaking, statutes of limitations do not apply to defenses, "at least in part, because the ability to raise a defense is not expected to stir up litigation about old issues" and because "if defenses could expire, a potential plaintiff could wait until defenses are time barred and then 'pounce' on the defendant." As the Second Circuit put in Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149 (2003), "potential defendants are not required to seek at the earliest opportunity a declaration that a defense to a claim not yet brought is valid.” However, an exception to this general rule applies in "the limited situation where a defendant is seeking affirmative relief packaged within a defense and is attempting to dodge a statute of limitations that is an important part of the statutory framework." 

Here, an objective assessment of the litigation posture of the parties caused the Sixth Circuit panel to conclude that it was "hard to see how Phil’s estate is not seeking affirmative relief." Phil's estate originally brought an affirmative claim (as a counterclaim), seeking a declaration that Phil was a co-author and entitled to half of the income derived from Cathy's Clown. In other words, Phil's estate was seeking credit and money. This affirmative claim was "the exact same claim" as the defense that Phil's estate asserted to the claims brought by Don's estate. Having concluded that Phil's affirmative claim was time-barred, the court was unwilling to "adopt a formalistic approach that would allow Phil’s estate to relabel its assertions as a defense in order to employ a 'jurisdictional jujitsu' to evade a statute of limitations." (Citations omitted.) 

The panel included this limitation on its holding:

"We do not hold, however, that Phil’s estate may never raise Phil’s authorship as a defense. For example, if Don’s estate were seeking damages for infringement, for defamation, or the like, Phil’s estate perhaps could rely on Phil’s factual authorship of Cathy’s Clown, if proved, to reduce its liability to the extent authorship is relevant. But here, Phil’s estate attempts to use a defense to secure the benefits of authorship - despite its authorship claims being barred. ... Therefore, Phil’s authorship can conceivably be used as a defense in other contexts, but not in a legal contest over who owns the rights to and profits from Cathy’s Clown—an issue that was settled by Don’s repudiation long ago." (Cleaned up and citations omitted.)

Garza v. Everly, 

__ F.4th __, 2023 WL 1873339 (6th Cir. Feb. 2, 2023)