Kraut, Barbara Fox

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DePaul Journal of Art, Technology & Intellectual Property Law Volume 3 Issue 1 Fall 1992 Article 10 Stone v. Williams 970 F.2d 1043 (2d Cir. 1992) Barbara Fox Kraut Follow this and additional works at: https://via.library.depaul.edu/jatip Recommended Citation Barbara F. Kraut, Stone v. Williams 970 F.2d 1043 (2d Cir. 1992), 3 DePaul J. Art, Tech. & Intell. Prop. L. 39 (1992) Available at: https://via.library.depaul.edu/jatip/vol3/iss1/10 This Case Summaries is brought to you for free and open access by the College of Law at Via Sapientiae. It has been accepted for inclusion in DePaul Journal of Art, Technology & Intellectual Property Law by an authorized editor of Via Sapientiae. For more information, please contact digitalservices@depaul.edu. Accordingly, the Appellate Court analyzed thenature of Goodman's actions between 1968 and 1973and not his intent. The court reasoned thatGoodman's lawsuit was not merely one against aninfringing user. He also sought recovery of royalties,an injunction to force compliance with the manage-ment contract and a declaration of sole ownership.Thus, in addition to seeking sole ownership,Goodman also sought to continue his use of the tradename by continuing to perform his managerial duties.Therefore, the lawsuit satisfied the Silverman userequirement and Goodman did not abandon the tradename. It was then unnecessary for the court to con-sider the second prong of the Silverman test regard-ing whether Goodman intended to resume use of thetrade name in the reasonably foreseeable future.CONCLUSIONIn finding Goodman did not abandon his owner-ship rights to the trade name "The Diamonds", theSecond Circuit expanded the Silverman standard. Byrecognizing that use of a trade name depends on theoccupation of the owner, the court allowed for thepresent situation in which, due to Goodman's occupa-tion as band manager, litigation became his onlymeans of using the trade name and avoiding an aban-donment claim. Moreover, since such a lawsuit mustbe targeted at promoting the use of the name in com-merce rather than simply prohibiting its use by anoth-er, this expansion adhered to the underlying policy inSilverman that an owner must maintain a trade nameas an economically viable asset or otherwise risk for-feiting it.Ann E. Dustman1. Stetson v. Wolf & Assocs., 955 F.2d 847, 850 (2nd Cir.1992) (citing Silverman v. CBS Inc., 870 F.2d 40, 45-46 (2nd. Cir.1989)).2. Id. at 849.3. See Id. at 851; see also 15 U.S.C. S 1127 (Supp. 1992).4. 955 F.2d at 850 (citing Silverman, 870 F.2d at 45).5. Silverman involved a dispute over the use of popularradio and television characters where the plaintiff wanted to usethe characters as a basis for his play and CBS held the trademarkand copyrights but discontinued broadcasting the shows inresponse to criticism from civil rights groups. See, 955 F.2d at 851(citing Silverman, 870 F.2d at 47-48); See also 15 U.S.C.A. S 1127(West Supp. 1992) (defining abandonment of trade name).6. 955 F.2d at 851 (citing Silverman, 870 F.2d at 47-48).7. See Id. at 851-52.Stone v. Williams,970 F.2d 1043 (2d Cir. 1992).INTRODUCTIONCathy Stone ("Stone"), the illegitimate daughter ofthe late Hank Williams sued Hank Williams Jr. andothers for past royalties based on her claimed copy-right renewal interest. Stone claimed she was thechild of Williams within the meaning of sections 24and 304(a) of the Copyright Act. The Court ofAppeals for the Second Circuit held that Stone wasentitled to a share of the copyright renewals underboth the Copyright Act of 1909 and the Copyright Actof 1976, because under state law she was included inthe definition of a child entitled to inherit.FACTSStone is the illegitimate daughter of the late HankWilliams, the famous country and western composerand performer. The defendants are Hank Williams, Jr.,the son of Hank Williams, Billie Jean Williams Berlin,the widow of Hank Williams, and assignees of certainof their interests, including assignees of their interestin the renewal copyrights.On October, 17, 1979, Stone was told by heradoptive mother that she may be Hank Williams'daughter. On September 12, 1985 Stone filed suit inthe United States District Court for the SouthernDistrict of New York seeking a declaration that shewas Williams' child within the meaning of sections 24and 304(a) of the Copyright Acts of 1909 and 1976and entitled to a property interest in the copyrightrenewals for Williams songs.'In the meantime, the defendants sued in Alabamastate court, seeking a declaration that Stone wasbarred from demonstrating that she was the naturalchild of Williams entitled to a share of his estate.Recognizing the trial court's decision that Stone wasthe natural child of Williams, the Alabama SupremeCourt found her entitled to a share of the proceeds ofWilliams' estate.' After the Alabama Supreme Courtdecision, the District Court for the Southern District ofNew York held that Stone's action for renewal copy-rights was barred by the Copyright Acts' three yearstatute of limitations.' Stone appealed.LEGAL ANALYSISStone claimed that as the child of Williams she isentitled to an interest in the renewal copyrights of hissongs and royalty payments. On appeal, the issue waswhether Stone's action seeking an interest in copy-right renewals was time-barred.First, the Copyright Act of 1976 ("Act") states thatno cause of action under the Act can be maintainedunless it is brought "within three years after the claimaccrued."4 Declaratory Judgment is a proceduraldevice used to vindicate substantive rights. It is time-barred only if relief on a direct claim based on thesubstantive rights is also barred.' In determining if theplaintiff's claim is timely, a court should look atwhether the plaintiffs substantive cause of action isbarred. A cause of action accrues when the plaintiffknows or has reason to know of the injury uponwhich the claim is based.6The court reasoned that since Stone claimed adeprivation of a statutory entitlement, the statute ofFaIl, 1992 3939ll, 1Kraut: Stone v. Williams 970 F.2d 1043 (2d Cir. 1992)Published by Via Sapientiae, 2016

Stone v. Williams 970 F.2d 1043 (2d Cir. 1992)

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Stone v. Williams 970 F.2d 1043 (2d Cir. 1992)

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