Copyright Law - Standing - Ninth Circuit Denies Standing under the Copyright Act of 1976 to Assignee of Infringement Claim

Harvard Law Review, December 2005 | Go to article overview

Copyright Law - Standing - Ninth Circuit Denies Standing under the Copyright Act of 1976 to Assignee of Infringement Claim


COPYRIGHT LAW--STANDING--NINTH CIRCUIT DENIES STANDING UNDER THE COPYRIGHT ACT OF 1976 TO ASSIGNEE OF INFRINGEMENT CLAIM.--Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881 (9th Cir.) (en banc), cert. denied, 126 S. Ct. 367 (2005).

Courts have struggled mightily over how much protection copyright law provides. While the debate has focused on the scope of protection for original copyright owners, courts have seldom addressed whether copyright owners may authorize others to invoke that protection by bringing infringement lawsuits on their behalf. Recently, in Silvers v. Sony Pictures Entertainment, Inc., (1) the Ninth Circuit, sitting en banc, rejected that possibility in holding that the creator of a copyrighted work who does not own the copyright lacks standing to sue notwithstanding an assignment of the claim. (2) In seeking answers to this narrow issue in specific legislative intent, both the majority opinion and Judge Bea's dissent ignored the constitutional purpose behind the copyright statute. As a result, both arrived at rules unmoored from existing background norms. Judge Berzon's dissent, in contrast, correctly recognized that no clear congressional intent existed to provide a rule of decision and crafted a sensible rule based on the background norms embodied in the Copyright Clause of the Constitution. Judge Berzon's reasoning, however, ultimately detracted from the persuasiveness of her opinion because it failed to explain adequately how her rule promoted the goals of the Copyright Clause.

In 1991, television producer and writer Nancy Silvers began work on a script for The Other Woman, a 1995 CBS made-for-television movie. (3) Silvers wrote the script as a work for hire for Frank and Bob Films II, which owned the copyright to the movie. (4) After the release of Stepmom by Sony in 1998, Frank and Bob Films II assigned to Silvers all infringement claims against Sony based on alleged similarities between the two films but retained ownership of the copyright. (5) In 2000, Silvers filed a lawsuit against Sony in federal district court. (6) Sony moved to dismiss the case, arguing that Silvers lacked standing to sue under section 501(b) of the Copyright Act of 1976. (7) The district court denied the motion but allowed Sony to make an interlocutory appeal. (8)

A unanimous Ninth Circuit panel affirmed. Writing for the panel, Judge Brunetti (9) held that Silvers had standing to sue because [section] 501(b) does not alter preexisting common law permitting the assignment of accrued claims. (10) Judge Brunetti distinguished the chief case cited by Sony, Eden Toys, Inc. v. Florelee Undergarment Co., (11) on the ground that Eden Toys denied standing only for assignees of prospective claims. (12)

On rehearing en banc, the Ninth Circuit reversed. Writing for the majority, Judge Graber (13) held that a "bare assignment of an accrued cause of action is impermissible under 17 U.S.C. [section] 501(b)" (14) and offered four reasons supporting this conclusion. First, applying the canon of expressio unius est exclusio alterius, the court held that the numerous references to the remedies available to legal and beneficial copyright owners evinced a clear legislative intent to omit and exclude parties such as Silvers. (15) Nevertheless, the court "recognize[d] that [the statute's] omission explicitly to address the present question may create an ambiguity" and turned to legislative history for evidence of congressional intent. (16) The court found that although the 1976 Act split a copyright from an indivisible set of rights into a bundle of separately transferable rights, accrued claims for infringement of any one of these rights did not comprise an independent category of entitlements within the bundle of rights that were also separately transferable. (17)

The court next looked to analogous features of patent law, as well as other circuits' case law. Drawing attention to interpretations of patent statutes that preclude assignment of infringement claims, the court opined that copyright law likewise precludes such assignments. …

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