Nancey Silvers v. Sony Pictures Entertainment, Inc.
402 F.3d 881, 33 Media L. Rep. (BNA) 1455, 74 U.S.P.Q. 2d (BNA) 1065 (2005)
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Rule of Law:
Under the 1976 Copyright Act, only the legal or beneficial owner of an exclusive right in a copyright has standing to sue for infringement. An assignee who holds only an accrued claim for infringement, without any legal or beneficial interest in the copyright itself, cannot institute an infringement action.
Facts:
- Nancey Silvers wrote the script for a made-for-television movie titled 'The Other Woman'.
- Because the script was a 'work-for-hire', the copyright was owned by Frank & Bob Films II, not Silvers.
- Several years later, Sony Pictures Entertainment, Inc. released the motion picture 'Stepmom'.
- After the release of 'Stepmom', Frank & Bob Films executed an 'Assignment of Claims and Causes of Action' to Silvers.
- This assignment granted Silvers all rights to any claims against Sony Pictures regarding the screenplay 'The Other Woman' and the movie 'Stepmom'.
- Frank & Bob Films retained full ownership of the underlying copyright to the script for 'The Other Woman'.
Procedural Posture:
- Nancey Silvers filed a complaint against Sony Pictures Entertainment, Inc. for copyright infringement in a federal district court.
- Sony moved to dismiss the complaint, arguing that Silvers lacked standing.
- The district court, acting as the trial court, denied Sony's motion to dismiss.
- The district court certified the issue of standing for an interlocutory appeal.
- A three-judge panel of the U.S. Court of Appeals for the Ninth Circuit affirmed the district court's decision.
- The U.S. Court of Appeals for the Ninth Circuit then voted to rehear the case en banc, withdrawing the original panel's opinion.
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Issue:
Does the 1976 Copyright Act permit an assignee of an accrued copyright infringement claim, who holds no legal or beneficial interest in the copyright itself, to institute an action for infringement?
Opinions:
Majority - Judge Graber
No. Under the 1976 Copyright Act, a party must be the legal or beneficial owner of an exclusive right in a copyright to have standing to sue for infringement. The plain text of § 501(b) of the Act states that the 'legal or beneficial owner of an exclusive right under a copyright is entitled... to institute an action for any infringement.' Applying the canon of statutory interpretation 'expressio unius est exclusio alterius,' Congress's explicit grant of standing to owners implies the exclusion of non-owners. Because copyright is a creature of statute, common law principles of assignability do not apply unless specified by Congress. This interpretation is supported by the legislative history, which aimed to allow owners of divisible rights to sue but did not extend standing to non-owners, and by analogous precedent in patent law, such as Crown Die & Tool Co. v. Nye Tool & Machine Works, which prohibits the assignment of a bare cause of action for patent infringement.
Dissenting - Judge Berzon
Yes. The assignment of an accrued cause of action to the work's original creator should be permitted. The majority's strict reading of § 501(b) is inconsistent, as it acknowledges that a new copyright owner can sue for past infringements, which contradicts a literal reading of the statute's durational requirement. Courts should develop interstitial federal common law consistent with the Copyright Act's purpose, which is to incentivize creators. Allowing Silvers, the original author, to pursue the claim serves this purpose, unlike allowing a complete stranger to trade in claims. The majority's reliance on patent law precedent is misplaced due to significant differences between the two legal regimes and the factual context of Crown Die.
Dissenting - Judge Bea
Yes. The 1976 Copyright Act should be interpreted to permit the assignment of an accrued cause of action for infringement. The Act's primary purpose regarding standing was to enlarge the class of plaintiffs by allowing owners of divisible exclusive rights to sue, not to abrogate the pre-existing common law right to assign a chose in action. For a statute to abrogate a common law right, it must do so explicitly, which the Copyright Act does not. The majority's application of expressio unius is improper, and its reliance on patent law is unpersuasive because the 1976 Act explicitly embraced the divisibility of rights that patent law disfavored, thus eliminating the policy concerns underlying the Crown Die decision.
Analysis:
This decision establishes a bright-line rule for standing in copyright infringement cases, reinforcing a textualist interpretation of the Copyright Act. It prevents the creation of a secondary market for copyright claims, where entities without an ownership stake in the work could purchase and litigate infringement actions. While this promotes predictability and may curb speculative litigation, it restricts the flexibility of copyright owners who might wish to transfer accrued claims without selling the underlying copyright, potentially limiting recourse for parties like the original author who have a strong non-economic interest in the work's integrity.
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