United States v. 2005-03-24 | 01-56069 | SILVERS VSONY PICTURES | precedential | opinion |

Volume 1 of 2
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
 NANCEY SILVERS,
Plaintiff-Appellee, No. 01-56069
v. D.C. No.
 CV-00-06386-SVWSONY PICTURES ENTERTAINMENT,
INC., OPINION
Defendant-Appellant. 
Appeal from the United States District Court
for the Central District of California
Stephen V. Wilson, District Judge, Presiding
Argued and Submitted En Banc
October 12, 2004—San Francisco, California
Filed March 25, 2005
Before: Mary M. Schroeder, Chief Judge, and
Stephen Reinhardt, Pamela Ann Rymer, Andrew J. Kleinfeld,
Susan P. Graber, Kim McLane Wardlaw,
Raymond C. Fisher, Ronald M. Gould, Richard A. Paez,
Marsha S. Berzon, and Carlos T. Bea, Circuit Judges.
Opinion by Judge Graber;
Dissent by Judge Berzon;
Dissent by Judge Bea
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COUNSEL
Ronald L. Rauchberg, Proskauer Rose LLP, New York, New
York, and George P. Schiavelli, Reed Smith Crosby Heafey
LLP, for the defendant-appellant.
Steven Glaser, Gelfand Rappaport & Glaser, LLP, Los Ange-
les, California, for the plaintiff-appellee.
Robert H. Rotstein, McDermott, Will & Emery, Los Angeles,
California, for the amicus curiae.
OPINION
GRABER, Circuit Judge:
May an assignee who holds an accrued claim for copyright
infringement, but who has no legal or beneficial interest in the
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copyright itself, institute an action for infringement? After
analyzing the 1976 Copyright Act and its history, as well as
the scant, although persuasive, precedent that is available in
analogous situations, we answer that question “no.” Accord-
ingly, we reverse the ruling of the district court, which
allowed this action by the assignee to proceed.
FACTUAL AND PROCEDURAL BACKGROUND
Nancey Silvers wrote the script of a made-for-television
movie called “The Other Woman.” Although Silvers wrote
“The Other Woman” script, she did not hold the copyright,
because “The Other Woman” was a work-for-hire that Silvers
completed for Frank & Bob Films II, aka Von Zerneck/
Sertner Films (“Frank & Bob Films”). Frank & Bob Films
was the original owner of the copyright to “The Other
Woman,” and remains so today.
About three years after “The Other Woman” aired on a
broadcast network, 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” in favor of Silvers. Frank &
Bob Films retained ownership of the underlying copyright to
“The Other Woman” script, but assigned to Silvers “all right,
title and interest in and to any claims and causes of action
against Sony Pictures Entertainment, Inc., Columbia TriStar,
and any other appropriate persons or entities, with respect to
the screenplay ‘The Other Woman’ . . . and the motion picture
‘Stepmom.’ ”
Silvers then filed a complaint against Sony for copyright
infringement, alleging that the movie “Stepmom” was sub-
stantially similar to the script for “The Other Woman.” Sony
moved to dismiss on the ground that Silvers lacked standing
to bring an action for copyright infringement in the absence
of some legal or beneficial ownership in the underlying copy-
right. The district court denied the motion and certified the
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issue for interlocutory appeal. See 28 U.S.C. § 1292(a) (pro-
viding procedure).
A panel of this court affirmed the district court’s decision.
Silvers v. Sony Pictures Entm’t, Inc., 330 F.3d 1204 (9th Cir.
2003). The court then voted to take this case en banc, 370
F.3d 1252 (9th Cir. 2004), withdrawing that opinion.
STANDARD OF REVIEW
We review de novo the district court’s denial of Sony’s
motion to dismiss. Glen Holly Entm’t v. Tektronix Inc., 352
F.3d 367, 368 (9th Cir. 2003). Likewise, we review de novo
the district court’s resolution of legal issues. Cal. Satellite Sys.
v. Seimon, 767 F.2d 1364, 1366 (9th Cir. 1985).
DISCUSSION
A. The Statute
Article I, section 8, clause 8, of the Constitution states:
“The Congress shall have Power . . . To promote the Progress
of Science and useful Arts by securing for limited Times to
Authors . . . the exclusive Right to their . . . Writings . . . .”
As is clear from its text, that clause of the Constitution grants
no substantive protections to authors. Rather, Congress is
empowered to provide copyright protection.
[1] Copyright, therefore, is a creature of statute, and the
only rights that exist under copyright law are those granted by
statute. As the Supreme Court wrote 170 years ago:
This right [in copyright] . . . does not exist at com-
mon law—it originated, if at all, under the acts of
congress. No one can deny that when the legislature
are about to vest an exclusive right in an author or
an inventor, they have the power to prescribe the
conditions on which such right shall be enjoyed . . . .
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Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663-64 (1834); see
also Stewart v. Abend, 495 U.S. 207, 251 (1990) (Stevens, J.,
dissenting) (stating that copyright is statutorily created); M.
Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 432 (4th Cir.
1986) (“The right of copyright is a creature of federal statute,
with its constitutional base in Article I, § 8, cl. 8.”); Russell
v. Price, 612 F.2d 1123, 1129 n.17 (9th Cir. 1979)
(“Common-law copyright is no longer recognized under the
[1976] Act . . . .”); Microsoft Corp. v. Grey Computer, 910
F. Supp. 1077, 1084 (D. Md. 1995) (“Unlike contracts, copy-
rights and the rights flowing therefrom are entirely creatures
of statute . . . .”). Accordingly, our starting point is the statute.
[2] Section 501(b) of the 1976 Copyright Act establishes
who is legally authorized to sue for infringement of a copy-
right:
The legal or beneficial owner of an exclusive right
under a copyright is entitled, subject to the require-
ments of section 411, to institute an action for any
infringement of that particular right committed while
he or she is the owner of it.
17 U.S.C. § 501(b) (emphasis added). The meaning of that
provision appears clear. To be entitled to sue for copyright
infringement, the plaintiff must be the “legal or beneficial
owner of an exclusive right under a copyright.” See 4 Busi-
ness and Commercial Litigation in Federal Courts, at 1062,
§ 65.3(a)(4) (Robert L. Haig ed.) (West Group & ABA 1998)
(“If a claimant is not a proper owner of copyright rights, then
it cannot invoke copyright protection stemming from the
exclusive rights belonging to the owner, including infringe-
ment of the copyright.”).
[3] Section 106 of the 1976 Copyright Act, in turn, defines
“exclusive rights”:
(1) to reproduce the copyrighted work in copies or
phonorecords;
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(2) to prepare derivative works based upon the
copyrighted work;
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other trans-
fer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion pic-
tures and other audiovisual works, to perform the
copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial,
graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual
work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital
audio transmission.
17 U.S.C. § 106. The right to sue for an accrued claim for
infringement is not an exclusive right under § 106. Section
201(d) refers to exclusive rights and provides:
(1) The ownership of a copyright may be trans-
ferred in whole or in part by any means of convey-
ance or by operation of law, and may be bequeathed
by will or pass as personal property by the applicable
laws of intestate succession.
(2) Any of the exclusive rights comprised in a
copyright, including any subdivision of any of the
rights specified by section 106, may be transferred as
provided by clause (1) and owned separately. The
owner of any particular exclusive right is entitled, to
the extent of that right, to all of the protection and
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remedies accorded to the copyright owner by this
title.
17 U.S.C. § 201(d). Exclusive rights in a copyright may be
transferred and owned separately, but § 201(d) creates no
exclusive rights other than those listed in § 106, nor does it
create an exception to § 501(b).
Section 501(b) must also be read in conjunction with
§ 501(a), which provides that one who “violates any of the
exclusive rights of the copyright owner as provided by sec-
tions 106 through 122 . . . is an infringer.” The definition of
an infringer in subsection (a) is parallel to the definition of a
proper plaintiff in subsection (b). Common to both subsec-
tions is an exclusive copyright interest.
In addition, when a copyright interest is transferred it must
be recorded to protect the copyright holder’s right to bring an
infringement suit. 17 U.S.C. § 205(d); see H.R. Rep. No. 94-
1476, at 129 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5744 (“The provisions of subsection (d)[ ] requir[e] recorda-
tion of transfers as a prerequisite to the institution of an
infringement suit . . . .”). This requirement ensures that pro-
spective buyers or transferees have notice of the copyright
interests owned by others. See H.R. Rep. No. 94-1476, at 128,
reprinted in 1976 U.S.C.C.A.N. at 5744 (stating that a copy-
right recorded in compliance with subsection (c) provides
constructive notice of its contents). By contrast, the recording
statute does not contemplate a transfer of anything other than
an ownership interest in the copyright, along with the con-
comitant exclusive rights.
Returning to the operative section, under § 501(b) the
plaintiff must have a legal or beneficial interest in at least one
of the exclusive rights described in § 106. Additionally, in
order for a plaintiff to be “entitled . . . to institute an action”
for infringement, the infringement must be “committed while
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he or she is the owner of” the particular exclusive right alleg-
edly infringed. 17 U.S.C. § 501(b).
[4] The statute does not say expressly that only a legal or
beneficial owner of an exclusive right is entitled to sue. But,
under traditional principles of statutory interpretation, Con-
gress’ explicit listing of who may sue for copyright infringe-
ment should be understood as an exclusion of others from
suing for infringement. The doctrine of expressio unius est
exclusio alterius “as applied to statutory interpretation creates
a presumption that when a statute designates certain persons,
things, or manners of operation, all omissions should be
understood as exclusions.” Boudette v. Barnette, 923 F.2d
754, 756-57 (9th Cir. 1991).
There are two particularly important reasons to apply such
a presumption here. First, we are mindful of the principle with
which we began our discussion: Copyright is a creature of
statute, so we will not lightly insert common law principles
that Congress has left out. Second, the durational limitation in
§ 501(b) shows that Congress restricted even the legal or ben-
eficial owner of a copyright; the owner is not entitled to sue
unless the alleged infringement occurred “while he or she
[was] the owner of it.” In other words, Congress’ grant of the
right to sue was carefully circumscribed.
We think the meaning of § 501(b) is clear, but we recog-
nize that its omission explicitly to address the present ques-
tion may create an ambiguity. Therefore, we consult
legislative history. See United States v. Daas, 198 F.3d 1167,
1174 (9th Cir. 1999) (“The first step in ascertaining congres-
sional intent is to look to the plain language of the statute . . . .
If the statute is ambiguous . . . courts may look to its legisla-
tive history for evidence of congressional intent.”).
B. Legislative History
[5] The 1976 Copyright Act was the result of 15 years of
drafting, deliberations, and compromise. See H.R. Rep. No.
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94-1476. The House Report suggests strongly that Congress
intended to limit the class of persons who may sue for
infringement:
Subsection (b) of section 501 enables the owner of
a particular right to bring an infringement action in
that owner’s name alone, while at the same time
insuring to the extent possible that the other owners
whose rights may be affected are notified and given
a chance to join the action.
The first sentence of subsection (b) empowers the
“legal or beneficial owner of an exclusive right” to
bring suit for “any infringement of that particular
right committed while he or she is the owner of it.”
A “beneficial owner” for this purpose would include,
for example, an author who had parted with legal
title to the copyright in exchange for percentage roy-
alties based on sales or license fees.
H.R. Rep. No. 94-1476, at 159, reprinted in 1976
U.S.C.C.A.N. at 5775 (emphasis added). Non-owners claim-
ing a bare right to sue, such as Silvers, are not entitled to
notice or joinder, which suggests that Congress did not envi-
sion their existence, or that the right to sue was a right sever-
able from ownership of one of the authorized exclusive rights.
[6] In other words, Congress wanted to ensure that an
owner of any exclusive right in the copyright was entitled to
bring a suit for infringement. Congress foresaw a permissible
division of exclusive rights; the owner of any one of those
exclusive rights may sue, with other owners being entitled to
notice and joinder. In this sense, Congress intended to “un-
bundle” the exclusive rights.
[7] Under the 1909 Copyright Act, which was the predeces-
sor of the Copyright Act of 1976, a copyright “proprietor”
was the only individual who had standing to sue for an
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infringement. 17 U.S.C. § 101(b) (1952); Gardner v. Nike,
Inc., 279 F.3d 774, 777-78 (9th Cir. 2002). Courts interpreted
the 1909 statute as providing a proprietor with an indivisible
bundle of rights arising from a copyright—rights that could
not be assigned piecemeal. Id. at 778. This enforced unity of
rights created serious hardships for copyright holders who
were interested in assigning the various property rights arising
from a copyright separately, for instance selling the motion
picture rights in a novel separately from the right to print the
novel in book form. See Roger D. Blair & Thomas F. Cotter,
The Elusive Logic of Standing Doctrine in Intellectual Prop-
erty Law, 74 Tul. L. Rev. 1323, 1366-67 (2000) (discussing
history). Congress, aware of these constraints on commercial
dealings, largely dispensed with the doctrine of indivisibility
in the Copyright Act of 1976. Id.; see also H.R. Rep. No. 94-
1476, at 123, reprinted in 1976 U.S.C.C.A.N. at 5738-39
(noting that the right to assign separate property interests in
a copyright had “long been sought by authors and their repre-
sentatives” and had “attracted wide support from other
groups”). Although Congress allowed for divisibility of own-
ership interests under a copyright, it did not alter the require-
ment that only owners of an exclusive right in the copyright
could bring suit.
[8] The legislative history makes clear, too, that the list of
exclusive rights found in § 106 is exhaustive. The House
Report states:
The exclusive rights accorded to a copyright
owner under section 106 are “to do and to authorize”
any of the activities specified in the five numbered
clauses.
H.R. Rep. No. 94-1476, at 61, reprinted in 1976
U.S.C.C.A.N. at 5674. If a right is not “specified,” then it is
not one of the exclusive rights granted by Congress. The
House Report that deals with the exclusive rights provided in
§ 106 also explains that “[e]ach of the five enumerated rights
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may be subdivided indefinitely and, . . . in connection with
section 201 [governing transfer of rights], each subdivision of
an exclusive right may be owned and enforced separately.” Id.
(emphasis added). In other words, exclusive rights may be
chopped up and owned separately, and each separate owner
of a subdivided exclusive right may sue to enforce that owned
portion of an exclusive right, no matter how small. For
instance, A may own the copyright in a book, while B may
own the right to develop the book into a screenplay. A may
sue an infringer of the book; B may sue an infringer of the
screenplay. But only owners of an exclusive right in a copy-
right may sue. For instance, neither A nor B in the example
above could assign an accrued claim for copyright infringe-
ment to C if C had no legal or beneficial interest in the copy-
right.
C. Patent Law
[9] We have long noted the strong connection between
copyright and patent law: “Where precedent in copyright
cases is lacking, it is appropriate to look for guidance to
patent law ‘because of the historic kinship between patent law
and copyright law.’ ” Harris v. Emus Records Corp., 734 F.2d
1329, 1333 (9th Cir. 1984) (quoting Sony Corp. of Am. v. Uni-
versal City Studios, 464 U.S. 417, 439 (1984)); see also Gard-
ner, 279 F.3d at 780-81 (relying in part on patent law to hold
that rights under an exclusive copyright license could not be
assigned without the original licensor’s consent and holding
that assignee lacked standing to sue). Although the Supreme
Court has not addressed the issue at hand, it has addressed the
question whether a bare assignment can give rise to a cause
of action in the context of patent law.
[10] The Patent Act of 1952 provides that “[a] patentee
shall have remedy by civil action for infringement of his
patent.” 35 U.S.C. § 281 (1988). Like the 1976 Copyright
Act, the Patent Act does not explicitly forbid an assignment
of causes of action separate from an assignment of substantive
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rights in the protected work. Nonetheless, the Supreme Court
has interpreted the Patent Act to provide that only a holder of
patent rights may sue.
In Crown Die & Tool Co. v. Nye Tool & Machine Works,
261 U.S. 24, 26, 33-35 (1923), the Supreme Court considered
whether a patent holder could assign its claims for infringe-
ment to another party without also transferring rights in the
patent. Like the 1976 Copyright Act, the Patent Act that was
in force at the time the Supreme Court decided Crown Die did
not explicitly forbid the assignment of bare causes of action
for infringement:
Every patent or any interest therein shall be
assignable in law by an instrument in writing, and
the patentee or his assigns or legal representatives
may in like manner grant and convey an exclusive
right under his patent to the whole or any specified
part of the United States.
Pub. L. No. 147, § 6, 42 Stat. 389, 391 (1922) (amending R.S.
§ 4849). Nevertheless, the Supreme Court held that a bare
assignment cannot give rise to a cause of action for infringe-
ment. The Court expressed its holding in durational terms that
echo 17 U.S.C. § 501(b): “If the owner of the patent when the
infringements took place has assigned his patent to one, and
his claims for damages for infringement to another, then the
latter cannot sue at law at all but must compel his assignor of
the claims to sue for him.” Id. at 44. The Court reasoned:
“The [patent] monopoly did not exist at common
law, and the rights, therefore, which may be exer-
cised under it cannot be regulated by the rules of the
common law. It is created by the act of Congress;
and no rights can be acquired in it unless authorized
by statute, and in the manner the statute prescribes.”
Id. at 40 (quoting Gayler v. Wilder, 51 U.S. (10 How.) 477,
494 (1850)). That text is substantively identical to the Court’s
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expression of the nature of copyright in Wheaton, 33 U.S. at
663-64:
This right [in copyright] . . . does not exist at com-
mon law—it originated, if at all, under the acts of
congress. No one can deny that when the legislature
are about to vest an exclusive right in an author or
an inventor, they have the power to prescribe the
conditions on which such right shall be enjoyed . . . .
Crown Die effectively creates a presumption that, when we
consider standing under a statutory scheme involving intellec-
tual property, common law doctrine does not apply.
[11] Courts continue to read the patent statute to mean that,
in general, only a patentee (or an exclusive licensee who pos-
sesses all substantial rights in the patent) may institute an
action for infringement. See Prima Tek II, L.L.C. v. A-Roo
Co., 222 F.3d 1372, 1381 (Fed. Cir. 2000) (“Standing to sue
for infringement depends entirely on the putative plaintiff’s
proprietary interest in the patent, not on any contractual
arrangements among the parties regarding who may sue and
who will be bound by judgments. . . . [A] ‘right to sue’ clause
cannot confer standing on a bare licensee . . . .”); Ortho
Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1030 (Fed.
Cir. 1995) (“Thus, the statute requires that the parties to an
infringement suit will have the patentee on one side and the
accused infringer on the other. Without the patentee as plain-
tiff, the remedies provided in the patent statute are unavailable
except in extraordinary circumstances as where the patentee
is the infringer, and cannot sue himself.” (internal quotation
marks omitted)).
[12] We should interpret the Copyright Act consistently
with the requirement of the Patent Act. Despite the differ-
ences between patents and copyrights, and between the stat-
utes governing them, the common question is whether a
substantive, exclusive right to intellectual property may be
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divorced from a cause of action for infringement of that sub-
stantive right. Under both copyright and patent law, substan-
tive rights are assignable; the question whether those rights
are severable from the entitlement to sue someone for infring-
ing those rights requires a similar analysis. Crown Die
rejected the centerpiece of the district court’s reasoning here,
viz.: that because Congress did not expressly proscribe the
right to assign a cause of action alone, such a right must exist.
Instead, the Court used the same logic that we have applied:
No rights exist with respect to patents unless they are created
affirmatively by Congress, and courts may recognize only
those rights that appear in the statute.
D. Cases From Other Circuits
Last but not least, we turn for guidance to the case law of
other courts. Two other circuits have faced questions some-
what similar to the one we confront here. We find the Fifth
Circuit’s decision under the 1909 Copyright Act to be less
persuasive than the Second Circuit’s more recent opinion
under the 1976 Copyright Act.
In Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 699
(5th Cir. 1969), an author’s publisher assigned to the author
both the copyright to the author’s work and the accrued
causes of action related to the work. When the author sued the
publisher for copyright infringement, the publisher claimed
that the author lacked standing to sue. Id. The Fifth Circuit
disagreed and held that the publisher clearly had transferred
the right to sue to the author; the author, therefore, could
maintain an action for infringement. Id. at 700.
Prather is unhelpful authority for two reasons. First, it was
decided before the 1976 Copyright Act was enacted and thus
does not bear on how we should interpret § 501(b). The pre-
decessor to the 1976 Act, the 1909 Act, simply afforded the
“proprietor” of a copyright the right to sue for infringement.
17 U.S.C. § 101(b) (1952); see also Melville B. Nimmer &
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David Nimmer, Nimmer on Copyright § 132 (1976). The
1909 Act did not define “proprietor” or “exclusive rights,” nor
did it provide that “legal or beneficial owners” of exclusive
rights were entitled to sue for infringement. 17 U.S.C.
§ 101(b) (1952). Those features, missing in the 1909 Act, but
present in the 1976 Act, are central to a decision on the pres-
ent question.
Second, the assignment in Prather involved both accrued
causes of action and some of what we now would call exclu-
sive rights. The contract included an assignment of “all . . .
right, title and interest in and to the copyright” of the book
involved. Prather, 410 F.2d at 699 n.1. Therefore, the Prather
court was not faced, as we are, with a situation in which the
owner of all the exclusive rights and the owner of the accrued
causes of action are two different people.
[13] The Second Circuit came to a different conclusion
under the 1976 Copyright Act. In Eden Toys, Inc. v. Florelee
Undergarment Co., 697 F.2d 27 (2d Cir. 1982), superseded by
rule and statute on other grounds, the court held that one who
owns no exclusive right in a copyright may not sue for
infringement. The court explained:
Eden apparently believed that a third basis for
standing under the Copyright Act existed, namely
authorization by the copyright holder of suit by a
person other than an exclusive licensee. Clause 9 of
the 1975 Eden/Paddington agreement . . . contem-
plates such an arrangement. We do not believe that
the Copyright Act permits holders of rights under
copyrights to choose third parties to bring suits on
their behalf. While F. R. Civ. P. 17(a) ordinarily per-
mits the real party in interest to ratify a suit brought
by another party, the Copyright Law is quite specific
in stating that only the “owner of an exclusive right
under a copyright” may bring suit.
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Id. at 32 n.3 (citations omitted).
It is not entirely clear whether the copyright holder in Eden
Toys had granted to Eden the right to sue on accrued causes
of action, as is the case here, or only the right to sue prospec-
tively. Whether the assignment was prospective or retrospec-
tive, however, the court made plain the basic principle, which
we also have derived from § 501(b) and its context and his-
tory, that only the owner of an exclusive right under the copy-
right is entitled to sue for infringement.
A few years later, the Second Circuit decided ABKCO
Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d
Cir. 1991), a copyright case in which ABKCO had bought
both the copyright to a song and “any and all rights assertable
under copyright against the Infringing Composition in any
part of the world which may have heretofore arisen or which
may hereafter arise.” (Internal quotation marks omitted.)
Although the infringement in question had occurred before
ABKCO bought the copyright, the court held that ABKCO
could sue the infringer “not out of its ownership of the copy-
right, but from its ownership of the claims themselves which
it purchased, along with the copyright, in 1978.” Id. at 981.
The Second Circuit made clear that its decision was limited
to the situation in which the same entity purchased both the
copyright and accrued claims;1 the only issue was one of tim-
ing, whether ownership of the copyright and occurrence of the
infringement had to coincide. The court reaffirmed the princi-
ple of Eden Toys that a party that has no ownership interest
1This holding makes perfect sense, as it is consistent with the Act and
with the constitutional purpose of encouraging authors and inventors by
creating a limited monopoly on their works and inventions. When one
acquires a copyright that has been infringed, one is acquiring a copyright
whose value has been impaired. Consequently, to receive maximum value
for the impaired copyright, one must also convey the right to recover the
value of the impairment by instituting a copyright action. Of course, in this
sort of commercial transaction the ultimate payment would be calculated
minus the costs of suit.
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has no standing to sue; “the Copyright Act does not permit
copyright holders to choose third parties to bring suits on their
behalf.” Id. at 980.
[14] We think it important to parallel the Second Circuit for
two reasons. First, and more importantly, our independent
analysis leads us to the same conclusion. Second, the creation
of a circuit split would be particularly troublesome in the
realm of copyright.2 The Supreme Court has noted “Congress’
paramount goal in revising the 1976 Act of enhancing predict-
ability and certainty of copyright ownership.” Cmty. for Cre-
ative Non-Violence v. Reid, 490 U.S. 730, 749 (1989). As we
have phrased it, “[c]ongressional intent to have national uni-
formity in copyright laws is clear.” Syntek Semiconductor Co.
v. Microchip Tech. Inc., 307 F.3d 775, 781 (9th Cir. 2002).
That admonition makes sense, given the nature of intellectual
property. Inconsistent rules among the circuits would lead to
different levels of protection in different areas of the country,
even if the same alleged infringement is occurring nation-
wide.
CONCLUSION
[15] The bare assignment of an accrued cause of action is
impermissible under 17 U.S.C. § 501(b). Because that is all
Frank & Bob Films conveyed to Silvers, Silvers was not enti-
tled to institute and may not maintain this action against Sony
for alleged infringement of the copyright in “The Other
Woman.”
REVERSED.
2Prather arose under the 1909 Copyright Act, not under the 1976 Copy-
right Act. Therefore, we create no split with the Fifth Circuit, which has
yet to decide anything about the meaning of 17 U.S.C. § 501(b), a provi-
sion that had no direct analogue in the earlier statute.
3627 SILVERS v. SONY PICTURES ENTERTAINMENT

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BERZON, Circuit Judge, with whom REINHARDT, Circuit
Judge, joins, dissenting:
I respectfully dissent. Applying the usual mode of analysis
used in this circuit for determining whether a statute allows
assignment of claims, I would conclude that Nancey Silvers,
as the original creator of “The Other Woman,” should be
allowed to pursue the accrued causes of action that Frank &
Bob Films II assigned to her.
Section 501(b) of the 1976 Copyright Act establishes the
standing requirement for infringement actions:
The legal or beneficial owner of an exclusive right
under a copyright is entitled, subject to the require-
ments of section 411, to institute an action for any
infringement of that particular right committed while
he or she is the owner of it.
17 U.S.C. § 501(b). The majority relies on the notion that
“[t]he meaning of that provision appears clear,” ante at 3615,
to conclude that the assignment to Silvers is invalid because
she does not own an exclusive right under the copyright. Ante
at 3627.
The majority opinion, however, is internally inconsistent,
provides inadequate support for its conclusion, and ignores
our analogous precedents.
1. The inconsistency turns on the majority’s citation of
§ 501(b)’s durational limitation, i.e., that the owner is not
entitled to sue unless the alleged infringement occurred
“while he or she [was] the owner of [the copyright right],” as
evidence of Congress’s tight circumscription of persons who
have standing to sue. Ante at 3617-18. The majority maintains
that “Congress’ explicit listing of who may sue for copyright
infringement should be understood as an exclusion of others
from suing for infringement.” Ante at 3618.
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As the majority later acknowledges, however, the dura-
tional limitation is hardly airtight. After a copyright holder
sells a copyright, in whole or in part, the new owner may pur-
sue a cause of action that accrued before purchase, as long as
the cause of action is transferred along with the copyright.
Ante at 3626, fn.1. The majority maintains that this “makes
perfect sense,” because “[w]hen one acquires a copyright that
has been infringed, one is acquiring a copyright whose value
has been impaired,” and “[c]onsequently, to receive maxi-
mum value for the impaired copyright, one must also convey
the right to recover the value of the impairment by instituting
a copyright action.” Ante at 3626, fn.1.
However practical this analysis, the fact remains that it can-
not be squared with a literal reading of section 501(b), on
which the majority otherwise rests. And, as the language of
section 501(b) is not necessarily determinative in deciding the
viability of assignments of accrued rights to sue for copyright
infringement, section 501(b) cannot, absent further analysis,
dictate the majority’s conclusion that no assignment of
accrued causes of action without transfer of the underlying
copyright is permissible.
2. If the language of § 501(b) is not determinative, then
what is? I agree with Judge Bea that the assumption that back-
ground common law principles apply with regard to assign-
ment of accrued causes of action applies to the Copyright Act
as to other federal statutes. Post at 3649-51. I part company
with Judge Bea, however, at the point at which he suggests
that an entirely free market for accrued causes of action in
copyright is the proper antidote to the majority’s preclusion of
effective transfer of such accrued causes of action. Post at
3656. Instead, I would hold that Silvers, given her status as
the original creator of the contested “work-for-hire,” may pur-
sue the accrued claims assigned by Frank & Bob Films, while
a complete stranger to the creative process could not.
Contrary to the majority’s strict statutory approach, the
question of valid assignment “is appropriate for the develop-
3629 SILVERS v. SONY PICTURES ENTERTAINMENT

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ment of interstitial federal common law [to ensure] harmony
with the overall purposes of the [Copyright Act].” Gulfstream
III Assocs. v. Gulfstream Aerospace Corp., 995 F.2d 425, 438
(3d Cir. 1993). Our circuit’s precedents support approach to
the general question of whether claims created by federal stat-
ute are assignable. In particular, this circuit’s cases deciding
whether to enforce assignments of Employee Retirement
Income Security Act (“ERISA”) claims, which focus on
whether “the general goal of the statute would be served by
prohibiting the type of assignments involved in th[e] case,”
Misic v. Bldg. Serv. Employees Health & Welfare Trust, 789
F.2d 1374, 1377 (9th Cir. 1986) (per curiam), provide a help-
ful analog for consideration of Silvers’ case.
Misic decided that a health care provider, assigned accrued
causes of action for health welfare benefits by his patients,
could pursue his ERISA lawsuit. Our analysis proceeded in
two steps. First, we reviewed the statutory text to decide
whether ERISA permitted assignment of the claims for reim-
bursement of welfare benefits. Id. at 1376-77. The statute spe-
cifically precludes assignment or alienation of pension
benefits, but is silent as to assignment of welfare benefits.1
We interpreted ERISA’s silence on assignment in the welfare
benefit plan context, in light of the explicit anti-assignment
provision for pension claims, to allow assignment of welfare
claims, because “[n]either the specific purpose of the anti-
1ERISA provides:
Assignment or alienation of benefits
(1) Each pension plan shall provide that benefits provided
under the plan may not be assigned or alienated.
(2) For the purposes of paragraph (1) of this subsection,
there shall not be taken into account any voluntary and
revocable assignment of not to exceed 10 percent of
any benefit payment, or of any irrevocable assignment
or alienation of benefits executed before September 2,
1974.
29 U.S.C. § 1056(d).
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assignment provision nor the general goal of the statute
would be served by prohibiting the type of assignment
involved in [the] case.” Id. at 1377 (emphases added).
Second, we decided that the assignee, Misic, had standing
to sue, even though the statutory provision authorizing suit
identified only “participants, beneficiaries, fiduciaries, and the
Secretary of Labor” as the parties with standing bring suit.2 Id.
at 1378 (citing 29 U.S.C. § 1132(a)). Unlike the majority in
this case, we did not consider the statutory language determi-
native on the question of assignability of accrued causes of
action. Instead, we looked to the relevant statute to determine
whether the assignors had standing, not to decide whether to
honor the assignment. We concluded that the assignment was
permissible because “Dr. Misic ‘st[ood] in the shoes of the
[b]eneficiaries;’ and Dr. Misic’s assignors, beneficiaries
under the Act [were] expressly authorized by [the statute] to
sue to recover benefits due under a plan.” Id. (emphasis
added, second alteration in original).
We took the same general approach, albeit with the oppo-
site result, in Simon v. Value Behavioral Health, Inc., 208
F.3d 1073 (9th Cir. 2000). Although we read Misic to allow
assignment to healthcare providers, we refused in Simon to
honor the assignment of claims from “health care providers to
whom the beneficiaries originally assigned their claims.” Id.
at 1081. Simon explains that in Misic,
we granted derivative standing to health care provid-
ers not because we believed that federal common
law on derivative standing trumps the plain language
of [the statute]. We granted it because permitting
2The statute provided, in relevant part: “A civil action may be brought
(1) by a participant or beneficiary . . . (B) to recover benefits due to him
under the terms of his plan, to enforce his rights under the terms of the
plan, or to clarify his rights to future benefits under the terms of the plan.”
29 U.S.C. § 1132(a) (emphasis added).
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health care providers to sue in place of the beneficia-
ries they had treated was consistent with Congressio-
nal intent in enacting ERISA.
Id. Our decision to disallow assignment of claims by health
care providers was related to underlying public policy con-
cerns, as “grant[ing] Simon standing would [have] be[en] tan-
tamount to transforming health benefit claims into a freely
tradable commodity.” Id. Predicting that the opposite result
“would allow third parties with no relationship to the benefi-
ciary to acquire claims solely for the purpose of litigating
them,” we declined to recognize the assignment as it was
unclear “how such a result would further ERISA’s purpose.”
Id.
Both this circuit and others have used similar policy-based
analyses in deciding whether assignments of other federal
statutory claims were valid. See, e.g., Simon, 208 F.3d at
1082-83 (antitrust claim under the Clayton act); Klamath Lake
Pharm. Ass’n v. Klamath Med. Serv. Bureau, 701 F.2d 1276
(9th Cir. 1983) (considering the background rule that only a
real party in interest may prosecute claims in federal court to
hold that an assignment was valid); Pac. Coast Agric. Export
Ass’n v. Sunkist Growers, Inc., 526 F.2d 1196 (9th Cir. 1975);
see also Tex. Life, Accident, Health & Hosp. Serv. Ins. Guar.
Ass’n v. Gaylord Entm’t Group, 105 F.3d 210, 215 (5th Cir.
1997) (using Misic’s approach to consider whether “deriva-
tive standing to assignees of breach of fiduciary duty claims
. . . [would] frustrate ERISA’s purpose”). I would do so here
as well.
3. I turn, therefore, to whether Frank & Bob Films’ assign-
ment of the accrued cause of action to Silvers, the original
creator of “The Other Woman,” should be permitted under 17
U.S.C. § 501(b).
As the majority makes clear, Silvers is not the owner of the
copyright and therefore would not ordinarily be permitted to
3632 SILVERS v. SONY PICTURES ENTERTAINMENT

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pursue a copyright infringement claim. Following our
approach in the ERISA cases discussed above, the relevant
inquiry is whether recognition of the assignment to Silvers is
consistent with Congress’ overall intent in enacting the 1976
Copyright Act.
The basic purpose of copyright is “to promote the creation
and publication of free expression.” Eldred v. Ashcroft, 537
U.S. 186, 219 (2003). Congress has struck “a difficult balance
between the interests of authors and inventors in the control
and exploitation of their writings and discoveries on the one
hand, and society’s competing interest in the free flow of
ideas, information, and commerce on the other hand.” Sony
Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429
(1984). To achieve that balance, embedded in “the traditional
contours of copyright protection,” Eldred, 537 U.S. at 221,
are two major First Amendment protections: (1) as “between
ideas and expression . . . only the latter [is] eligible for copy-
right protection,” id. at 219; and (2) “the ‘fair use’ defense
allows the public to use not only facts and ideas contained in
a copyrighted work, but also expression itself in certain cir-
cumstances.” Id. (citing 17 U.S.C. § 107).
I see nothing in the assignment of accrued claims of Frank
& Bob Films for infringement of a work created by Silvers
to Silvers that violates these background principles. Silvers
has a significant interest in the infringement of “The Other
Woman,” as she was the original creator. She might well her-
self have held the copyright had she not contracted with Frank
& Bob Films to create a work-for-hire. Although she relin-
quished the right to the copyright through her contract with
Frank & Bob Films, she maintained an interest in how her
work was used. More importantly, Silvers, as the creator, is
the person for whom the copyright system is designed to pro-
vide incentives for more creations.
In addition, allowing this assignment is consistent with “the
need for free alienability and divisibility” of copyright. Gard-
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ner v. Nike, Inc., 279 F.3d 774, 781 (9th Cir. 2002). It also
conforms with “the necessity [of] preserv[ing] the rights and
control of . . . owners and creators.” Id.
Supporting this result is the consideration, discussed above,
that section 501(b)’s limitations have not been and should not
be read as narrowly as possible. As noted, the majority makes
clear that allowing a copyright owner to pursue claims that
accrued before he held the copyright, once assigned along
with the copyright, is eminently sensible. Ante at 3626, fn.1.
I see no reason why allowing assignment to original creators
of copyrighted works without the copyright would any more
undermine the delicate balance that Congress has struck.
Moreover, as Judge Bea notes, post at 3646-47, Congress is
perfectly capable of including anti-assignment provisions in
federal statutory schemes, but declined to so in the 1976 Act.
I would hold, therefore, that Frank & Bob Films, for whom
Silvers completed her work-for-hire, may assign its accrued
causes of action related to that work-for-hire to Silvers.
4. The majority places significant weight on Crown Die &
Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (1923),
dealing with a somewhat similar question under patent law.
The differences between copyright and patent law, and
between the nature of the assignment in Crown Die and this
case, are significant enough to warrant a different result.
In general, “patents and copyrights do not entail the same
exchange.” Eldred, 537 U.S. at 216. “The disclosure required
by the Patent Act is ‘the quid pro quo of the right to
exclude.’ ” J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l,
Inc., 534 U.S. 124, 142 (2001) (quoting Kewanee Oil Co. v.
Bicron Corp., 416 U.S. 470, 484 (1974)). “For the author
seeking copyright protection, in contrast, disclosure is the
desired objective, not something exacted from the author in
exchange for the copyright.” Eldred, 537 U.S. at 216-17.
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These distinctions are reflected in the rules governing suits
for infringements of copyrights and patents. Patentees, for
example, “should be joined, either voluntarily or involuntar-
ily, in any infringement suit brought by an exclusive licens-
ee.” Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377
(Fed. Cir. 2000) (emphasis added). This scheme differs mark-
edly from that of copyright infringement suits, as a copyright
holder may transfer the “ ‘exclusive’ rights to use and to
authorize the use of his work in five qualified ways.”3 Sony
Corp., 464 U.S. at 433 (citing 17 U.S.C. § 106). Once he does
so, “[t]he owner of any particular exclusive right is entitled,
to the extent of that right, to all of the protection and remedies
accorded to the copyright owner.” 17 U.S.C. § 201(d)(2).
With these differences in mind, I do not find the majority’s
reliance on Crown Die, 261 U.S. 24 (1923), persuasive in the
current circumstances. The majority states that “Crown Die
effectively creates a presumption that, when we consider
standing under a statutory scheme involving intellectual prop-
erty, common law doctrine does not apply.” Ante at 3623. I
find no support for such a broad statement, given the signifi-
cant changes to copyright law since Crown Die was decided.
Issuance of a copyright no longer “vest[s] an exclusive right
in an author,” Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663
(1834) (emphasis added), but several exclusive rights that the
copyright holder may then divide infinitely. Furthermore,
unlike an inventor who holds a patent, the original copyright
holder need not remain involved in every infringement action
brought under a copyright.
In addition, and critically, Crown Die dealt with a very dif-
ferent factual scenario than the one we have here. Reed Man-
3As the majority notes, ante at 3620-21, the 1976 Act’s legislative his-
tory indicates that “[e]ach of the five enumerated rights may be subdivided
indefinitely and, . . . each subdivision of an exclusive right may be owned
and enforced separately.” H.R. Rep. No. 94-1476, at 61, reprinted in 1976
U.S.C.C.A.N. 5659, 5674 (emphases added).
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ufacturing, the patentee of a screw-thread cutting device
invented by Wright and Hubbard, assigned its infringement
claims against Crown Die & Tool Company to Nye Tool &
Machine Works, a competitor of Crown Die. Crown Die, 261
U.S. at 25-26. The assignment would have been analogous to
the one before us if Reed had assigned its claims to Wright
and Hubbard, rather than to a competitor of Crown Die.
Crown Die did not, therefore, decide the precise question we
have before us.
A different result in Crown Die would not only have cre-
ated significant tension with the nature of the monopoly that
a patentee holds, but it would have made an accrued cause of
action a commodity on an open market, permitting assignees
without connection to the patented invention to pursue
infringement claims, “with the sole motive of harassing
[infringers].” Id at 39. That Nye and Crown Die were compet-
itors could only have reinforced this concern.
The 1976 Act ushered in a new era of copyright law, while
leaving in place the general principal goal of copyright: “to
promote the creation and publication of free expression.”
Eldred, 537 U.S. at 219. I find no reason why Frank & Bob’s
Films’ assignment of accrued claims against Sony to Nancey
Silvers does not comport with that goal. I respectfully dissent.
3636 SILVERS v. SONY PICTURES ENTERTAINMENT

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Volume 2 of 2
3637 SILVERS v. SONY PICTURES ENTERTAINMENT

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BEA, Circuit Judge, with whom KLEINFELD, Circuit Judge,
joins, dissenting:
The question presented in this case is whether an assignee
of an accrued cause of action for copyright infringement, who
has no legal or beneficial interest in the copyright itself, has
standing to sue for copyright infringement. Sony Pictures
Entertainment Inc. (“Sony”) appeals the district court’s order
denying its motion to dismiss Nancey Silvers’s (“Silvers”)
claim for copyright infringement under 17 U.S.C. § 501(b) for
lack of standing under Fed. R. Civ. P. 12(b)(1). After rehear-
ing en banc, the Majority now holds such assignees do not
have standing to sue for copyright infringement and reverses
the district court’s order denying Sony’s motion to dismiss.
I believe that the text, purpose and history of the 1976
Copyright Act (“1976 Act”) allow such assignees of an
accrued copyright claim to sue for infringement. Accordingly,
I respectfully dissent.
I.
I quite agree with the Majority that the starting point in this
case is necessarily the statute under which Silvers brought
suit. See slip op. at 3615. Section 501(b) of the 1976 Act pro-
vides, in pertinent part:
The legal or beneficial owner of an exclusive right
under a copyright is entitled, subject to the require-
ments of section 411,1 to institute an action for any
infringement of that particular right committed while
he or she is the owner of it.
17 U.S.C. § 501(b) (1976).
1Section 411 provides that no action shall be commenced unless the
copyright has been registered. 17 U.S.C. § 411.
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Turning to first principles, then, it is well-established that
courts should interpret a statute according to its plain mean-
ing. See United States v. Robinson, 94 F.3d 1325, 1328 (9th
Cir. 1996) (“If the language of a statute is unambiguous, the
plain meaning controls.”). However, where a statute is ambig-
uous, courts should consult a statute’s legislative history to
discern Congressional intent. See United States v. Daas, 198
F.3d 1167, 1174 (9th Cir. 1999). Here, as the Majority
acknowledges, the statute does not address the present ques-
tion and is therefore ambiguous.2 See slip op. at 3618 (“[w]e
recognize that [Section 501(b)’s] omission explicitly to
address the present question may create an ambiguity.”).
The key to understanding the legislative history of the 1976
Act, then, is an understanding of the history of standing to sue
under copyright law as it existed prior to the 1976 Act. When
read in context with copyright law that existed before the
1976 Act, and the portions of the law that were not changed
by such Act, a conclusion different from the Majority’s read-
ing emerges.
A. History of the 1909 Copyright Act
Under the Copyright Act of 1909 (“1909 Act”) (codifying
copyright law before the enactment of the 1976 Act), the
“proprietor” of a copyright was afforded the right to sue for
copyright infringement.3 17 U.S.C. § 101(b) (1909). While the
2Indeed, the language of the statute cannot be all that clear, even to the
Majority, since even it eschews “plain meaning” rules of interpretation
and recurs to legislative sources. Slip op. at 3618-21.
3The 1909 Copyright Act, 17 U.S.C. § 101(b) (1909), provided, in perti-
nent part:
§ 101. Infringement
If any person shall infringe the copyright in any work protected
under the copyright laws of the United States such person shall
be liable:
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1909 Act did not define the term “proprietor,” courts inter-
preted that term to mean the “sole owner” of the copyright.
See, e.g., Gardner v. Nike, Inc., 279 F.3d 774, 777-778 (9th
Cir. 2002) (discussing the general history of the 1909 Act and
holding that a sublicensee of a copyright lacked standing to
sue under the 1976 Act).
The 1909 Act was predicated on the “doctrine of indivisi-
bility.” Id. at 778. That is, under the Act, a copyright owner
possessed an indivisible “bundle of rights” which were “inca-
pable of assignment in part.” Id. Accordingly, assignment
under the 1909 Act included “the totality of rights com-
manded by copyright.” Id. Transfer of “[a]nything less than
an assignment was considered a license.” Id. Regardless the
particular use of the copyright, “only the copyright proprietor
(which would include an assignee but not a licensee) had
standing to bring an infringement action.” Id. (emphasis
added).
Even though the statute granted standing solely to the “pro-
prietor” of the entire copyright, courts nevertheless allowed
assignees of an accrued cause of action for copyright infringe-
ment to sue for infringement of their property rights.4 See
Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 700 (5th Cir.
1969) (assignee of accrued cause of action had standing to sue
for copyright infringement); see also Moran v. London
***
(b) Damages and profits; amount; other remedies.
To pay to the copyright proprietor such damages as the copyright
proprietor may have suffered due to the infringement, as well as
all the profits which the infringer shall have made from such
infringement . . . .
17 U.S.C. § 101(b) (1909) (emphasis added).
4In addition, courts denied standing to mere licensees of partial rights
or uses of the copyright. See Prather, 410 F.2d at 700.
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Records, Ltd., 827 F.2d 180, 183 (7th Cir. 1987) (noting that
courts applying the 1909 Act held that assignees had standing
to sue for copyright infringement). The infringement claim,
like any other contingent asset,5 could be sold, much like the
copyright holder’s claim against a trade debtor or a coupon
clipped from the copyright holder’s bond portfolio.
Moreover, all defenses against the assignor were valid
against the assignee, who “stood in the shoes” of the assignor.
See T. B. Harms & Francis, Day & Hunter v. Stern, 231 F.
645, 647 (2d Cir. 1916) (holding that plaintiffs, as assignees
of composer’s rights under the contract, “stand in [the] shoes”
of the assignor and could assert the defense of lack of mutual-
ity of contract). See also 17 U.S.C. § 201(d)(2) (1976) (“[t]he
owner of any particular exclusive right is entitled, to the
extent of that right, to all the protection and remedies
accorded to the copyright owner.”).
B. History of the 1976 Copyright Act
The 1976 Act was the result of 15 years of debate on pro-
posed legislation and was precipitated by Congress’s recogni-
tion that the nature of copyrighted works had changed.
Congress noted that, during the half-century since the passage
of the 1909 Act, “a wide range of new techniques for captur-
ing and communicating printed matter, visual images, and
recorded sounds have come into use.” H.R. Rep. No. 94-1476
at 159, reprinted in 1976 U.S.C.C.A.N. 5659 at 5775. For
example, no longer was an opera performed only in a theater,
but such a work could be performed in movies, television,
videos, records, and other forms. Such technical advances
“generated new industries and new methods for the produc-
5Contingent liability is defined as “an existing condition, situation, or
set of circumstances involving uncertainty as to possible gain [ ] or loss
[ ] to an enterprise that will ultimately be resolved when one or more
future events occur of fail to occur.” Statement of Financial Accounting
Standards No. 5, Accounting for Contingencies ¶1 (FASB March 1975).
3641 SILVERS v. SONY PICTURES ENTERTAINMENT

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tion and dissemination of copyrighted works, and the business
relations between authors and users have evolved new pat-
terns.” Id.
Toward that end, Congress recognized the commercial need
to divide and “infinitely subdivide” copyright uses in recogni-
tion of increasing technologically driven varieties of means of
reproduction and distribution. Thus, one main purpose of the
1976 Act was, for the first time, to recognize the principle of
“divisibility” of uses of a copyright, and the ability to convey
the rights to uses separately to various reproducers, which
divisible rights did not exist under the 1909 Act. See H.R.
Rep. No. 94-1476 at 159, reprinted in 1976 U.S.C.C.A.N.
5659 at 5775, infra.
Congress further recognized that allowing for “divisibility”
of the copyright required a mechanism whereby heretofore
barred owners of exclusive licenses could now sue for copy-
right infringement. Accordingly, Congress enacted Section
501 of the 1976 Act to provide access to the courts for the
owner of one or more rights to exclusive use, but did not men-
tion the right of the owner of the overall copyright to sue. See
17 U.S.C. § 501(b).
Indeed, in providing for the right of exclusive licensees to
sue, the drafters of the 1976 Act stated:
The principle of the divisibility of copyright owner-
ship, established by section 201(d), carries with it
the need in infringement actions to safeguard the
rights of all copyright owners and to avoid a multi-
plicity of suits. Subsection (b) of section 501 enables
the owner of a particular right to bring an infringe-
ment action in that owner’s name alone, while at the
same time insuring to the extent possible that the
other owners whose rights may be affected are noti-
fied and given a chance to join the action.
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H.R. Rep. No. 94-1476 at 159, reprinted in 1976
U.S.C.C.A.N. 5659 at 5775 (emphasis added).6
Far from “suggest[ing] strongly that Congress intended to
limit the class of persons who may sue for infringement,” slip
op. at 3619 (emphasis added), the statement above in italics
— and omitted from the Majority Opinion — demonstrates
that Congress intended to enlarge the ability to bring suit to
the owners of exclusive rights.7
Read in context with provisions of the 1909 Act (to the
extent the acts are not inconsistent), and contrary to the
Majority’s conclusion, the 1976 Act’s Section 501(b) was an
enlargement of infringement action rights. Henceforth, stand-
ing was not limited only to the “proprietor”8 of the original
6See also Testimony of George D. Cary, Copyright Office, Copyright
Law Revision Part 4: reprinted in George S. Grossman, Omnibus Copy-
right Revision Legislative History, Vol. 3 (2001) (“Committee Report”) at
116 (stating that “[s]ubsection (b) provides for the institution of an action
by “any owner of an exclusive right. This section was so worded in an
effort to take care of the problem of divisibility.”) (emphasis added). This
statement was in reference to Section 35(b) of an earlier draft of the 1976
Act. Like the enacted Section 501(b), Section 35(b) provided that the
“legal or beneficial owner” could bring suit. See Committee Report at 116-
117.
7To the extent the statute purports to limit those persons able to bring
suit, it limits the rights of non-exclusive licensees from bringing suit. This
is consistent with the purpose of the 1976 Act. See Staff of Senate Comm.
on the Judiciary, 86th Cong., Study No. 11: Divisibility of Copyrights, 71,
Statement of Ralph S. Brown (Comm. Print 1960) (“[a]lleged infringers
should probably be protected against multiple suits by nonexclusive
licensees.”); See Staff of Senate Comm. On the Judiciary, 86th Cong.,
Study No. 11: Divisibility of Copyrights, 71, Statement of Ernest S. Mey-
ers (Comm. Print 1960) (“[t]he law should include a provision permitting
an exclusive licensee to sue without joining his grantor; Provided, That
such a provision is restricted to an exclusive license of enumerated
rights.”) (emphasis in original).
8Note that the 1909 Act did not create a private right of action or give
standing to the “proprietor” by any such language as did Section 501(b)
of the 1976 Act. See 17 U.S.C. §101(b) (1909). Rather, it enumerated the
“remedies” which the “proprietor” had under the 1909 Act. As any other
“proprietor” — a person owning property — it was implied he had a right
to sue for damages to his property.
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copyright; a legal or beneficial owner of exclusive rights sev-
ered by assignment from the original copyright also had
standing to sue for infringement. However, nothing in the
1976 Act eliminated the rights of copyright owners under
Section 101 of the 1909 Act to their remedies, nor the right
of property owners to enjoy the property rights granted by the
statute, including the assignment and enforcement of accrued
causes of action.
That, I believe, is the way — and the only way — to read
Section 501(b).
II.
The Majority concludes that because the statute does not
expressly grant standing to assignees of an accrued cause of
action, such persons do not have standing. See slip op. at
3618. Rather, the Majority reasons that, applying the maxim
of statutory construction expressio unius exclusio alterius est,
“Congress’ explicit listing of who may sue for copyright
infringement should be understood as an exclusion of others
from suing for infringement.” Slip op. at 3618 (emphasis in
original). In my view, the Majority misapplies this maxim of
statutory construction.
First, such maxims of statutory construction are to be used
only when Congressional intent cannot be discerned. Indeed,
we have noted:
Most strongly put, the expressio unius, or inclusio
unius, principle is that ‘[w]hen a statute limits a
thing to be done in a particular mode, it includes a
negative of any other mode.’ This is a rule of inter-
pretation, not a rule of law. The maxim is ‘a product
of logic and common sense,’ properly applied only
when it makes sense as a matter of legislative pur-
pose. . . . [T]he expressio unius principle describes
what we usually mean by a particular manner of
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expression, but does not prescribe how we must
interpret a phrase once written. Understood as a
descriptive generalization about language rather than
a prescriptive rule of construction, the maxim use-
fully describes a common syntactical implication.
‘My children are Jonathan, Rebecca and Seth’ means
‘none of my children are Samuel.’ Sometimes there
is no negative pregnant: ‘get milk, bread, peanut but-
ter and eggs at the grocery’ probably does not mean
‘do not get ice cream.’ ”
Longview Fibre Co. v. Rasmussen, 980 F.2d 1307, 1313 (9th
Cir. 1992) (internal citations omitted). See also Nat’l R.R.
Passenger Corp. v. Nat’l Ass’n of R.R. Passengers, 414 U.S.
453, 458 (1974) (“This principle of statutory construction
reflects an ancient maxim — expressio unius est exclusion
alterius . . . But even the most basic general principles of stat-
utory construction must yield to clear contrary evidence of
legislative intent.”). Here, Congressional intent is readily dis-
cernible, and, as demonstrated above, contrary to the Majori-
ty’s application of the maxim.
Second, commentators have noted that the use of maxims
of statutory construction such as “expressio unius” are prob-
lematic insofar as there is no hierarchy of maxims of statutory
interpretation. Why choose expressio unius rather than
another maxim, indeed, the exact opposite: that listing some
cases may include others? (see fn. 9, infra). In his recent
book, A Matter of Interpretation, Justice Scalia wrote, “[t]he
hard truth of the matter is that American courts have no intel-
ligible, generally accepted, and consistently applied theory of
statutory interpretation.”9 Antonin Scalia, A Matter of Inter-
9See Stephen J. Safranek, Scalia’s Lament, 8 TEX. REV. L. & POL. 315,
316 (Spring 2004) (noting the lack of hierarchy among maxims of statu-
tory interpretation; “in the cases where judges apply interpretive aids, the
aids are often used in isolation and are not necessarily the controlling
method by which the statute is interpreted.”); see also Karl N. Llewellyn,
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pretation, 14 (1997) (quoting Henry M. Hart, Jr. & Albert M.
Sacks, The Legal Process 1169 (William N. Eskridge, Jr. &
Philip P. Frickey eds., 1994)).
Third, while maxims of statutory construction may, indeed,
be helpful in interpreting statutes, they are not binding. The
Founders, including Alexander Hamilton, recognized as
much. See Alexander Hamilton, The Federalist Papers, No.
83 at 464 (Clinton Rossiter ed., 1961) (“The rules of legal
interpretation are rules of common sense, adopted by the
courts in the construction of laws. The true test of a just appli-
cation of them is its conformity with the source from which
they are derived.”).
Hence, rather than be guided by a Latin maxim nowhere
mentioned by the 1976 Act or our jurisprudence as hierarchi-
cally preferable to other means of statutory interpretation, we
should be guided by plain legislative intent, which, as our
Supreme Court reminds us, trumps the ancient Latin maxim
underpinning the Majority Opinion’s conclusion. See Nat’l
R.R. Passenger Corp., 414 U.S. at 459.
Indeed, it should be noted that where Congress chooses to
expressly prohibit assignment, it knows how to do so explic-
itly. See, e.g., Federal Anti-Assignment Act of 1862, 41
U.S.C. § 15 (expressly prohibiting public contract claims
against the U.S. government from being assigned); Federal
Assignment of Claims Act of 1940, 31 U.S.C. § 3727
(expressly prohibiting assignment of federal claims against
the U.S. government from being assigned); Employee Retire-
ment Income Security Act of 1974 (“ERISA”), 29 U.S.C.
Remarks on the Theory of Appellate Decision and The Rules or Canons
About How Statutes Are to Be Construed, 3 VAND. L. REV. 395, 405
(1949-1950) (noting that “there are two opposing canons on almost every
point”; and noting that the opposing canon for the expressio unius exclusio
alterius est is “[t]he language may fairly comprehend many different cases
where some only are expressly mentioned by way of example”).
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§ 1056 (expressly prohibiting the assignment of pension bene-
fits). Here, that Congress did not prohibit assignment of
infringement claims may well carry a negative pregnant that
it intended not to prohibit assignment.
A second consideration in statutory interpretation is practi-
cality, or put another way, the avoidance of an absurd result.
See Royal Foods Co., Inc. v. RJR Holdings Inc., 252 F.3d
1102 (9th Cir. 2001) (courts will not interpret a statute in a
way that results in an absurd or unreasonable result). Here,
were the statute to be read literally, it would result in absurd
or unreasonable results.
It has long been recognized that assignment of the copy-
right does not automatically include assignment of accrued
causes of action for earlier infringements of the copyright. See
Prather, 410 F.2d at 700 (“ ‘a mere assignment of a copyright
does not itself transfer to the assignee any cause of action for
infringements that occurred prior to the assignment. Unless
the assignment of copyright contains language explicitly
transferring causes of action for prior infringements, the
assignee cannot maintain a suit for infringements which hap-
pened before the effective date of the assignment.’ ”) (internal
citations omitted). See also DeSilva Construction Corp. v.
Herrald, 213 F. Supp. 184, 192 (M.D. Fla. 1962) (holding
that the assignment of copyright under 1909 Act does not
include the right to sue for “infringements antedating the
assignment” and since the assignment as written failed to con-
tain such a grant, “no such right is conferred by the assign-
ment”).
The recognition that the right to an accrued cause of action
did not (in the absence of an express contractual assignment
of such rights) automatically follow the assignment of the
copyright is necessarily a recognition that the two rights
should be capable of being separate assets. As separate assets,
like any other property right, the two rights can be separately
alienated. That much was squarely decided in Prather, supra.
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Similar to the 1909 Act, courts have interpreted the 1976
Act to mean that an assignment of a copyright does not auto-
matically carry with it accrued claims unless such claims are
specifically named in the contract of assignment. For exam-
ple, in Infodek, Inc. v. Meredith-Webb Printing Co., Inc., 830
F. Supp. 614 (N.D. Georgia 1993), in interpreting the 1976
Act, the court held “the case law clearly states that a transfer
of interest for accrued damages must be stated in no uncertain
terms. It follows that the transfer of interest to past infringe-
ments did not pass from [assignor] to [plaintiff assignee] in
the first assignment despite the alleged intent to transfer any
and all accrued damages.” Infodek, 830 F. Supp. at 620 (citing
Prather, 410 F.2d at 700).
The recognition under both the 1909 and 1976 Acts that an
accrued cause of action for copyright infringement is an asset
separate from the copyright or the exclusive uses of the copy-
right saves 501(b) from some absurd results.
Read as the Majority does, Section 501 of the 1976 Act
converts a claim for relief for infringement into a life estate,
by providing a cause of action for copyright infringement but
only for the person who owned the exclusive right at the time
of the infringement. The statute would preclude an assignee of
the copyright and accrued causes of action from suing on an
accrued cause of action — which infringement, by definition
was not “committed while he or she was the owner of it.”
The following result would obtain: if a copyright owner
instituted suit for copyright infringement (“while he was the
owner”), and then assigned the copyright after instituting such
suit, the assignee of the copyright and the accrued cause of
action could not maintain such suit, for the assignee was not
the owner when the infringement occurred. In addition, the
text would have to be read such that when the “he” or “she”
who owned the exclusive right at the time of the infringement
of the copyright dies, “his” or “her” heirs cannot institute the
infringement action, for the same reason.
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Luckily, Section 501(b) has not been so interpreted. See 17
U.S.C. § 501(b). Rather, the section has been interpreted to
allow the post-1976 assignee of the accrued cause of action to
maintain the suit for accrued causes of action. Indeed, courts
have recognized that assignees of a copyright may maintain
an action instituted by the previous owner during which such
previous ownership the infringement claim arose. See, e.g.,
ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971
(2d Cir. 1991) (allowing plaintiff to bring suit for copyright
infringement that had occurred prior to plaintiff’s owning any
copyright interest where plaintiff was assigned the right to
accrued causes of action); see also 17 U.S.C. § 201(d)(2)
(1976) (“[t]he owner of any particular exclusive right is enti-
tled, to the extent of that right, to all the protection and reme-
dies accorded to the copyright owner.”).
Accordingly, if individuals can bring suit on an accrued
infringement claim that did not accrue while he or she was the
owner, there is no reason the accrued cause of action cannot
be assigned here.
Other fundamental principles lead to the conclusion that
Congress did not intend to preclude owners of a bare assign-
ment of accrued causes of action from having standing to
bring suit.
First, it is well-established that contract rights are assign-
able at common law. See Restatement (Second) Contracts
§ 317(2)(b) (1979) (contract rights assignable unless the
assignment is “forbidden by statute”). See also TransWorld
Airlines, Inc. v. American Coupon Exchange, 913 F.2d 676,
685 (9th Cir. 1990) (noting that “the presumption is in favor
of assignment [of contract]”). Here, the assignment of an
accrued cause of action for copyright infringement to an
assignee is nothing more than “simple assignment of a chose
in action.” See Prather, 410 F.2d at 699-700.
As a general matter, common law rights existing prior to
the enactment of a statute remain in vigor unless expressly
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abrogated by statute. “[S]tatutes which invade the common
law . . . are to be read with a presumption favoring the reten-
tion of long-established and familiar principles, except when
a statutory purpose to the contrary is evident.” United States
v. Texas, 507 U.S. 529, 534 (1993) (holding that states remain
subject to common-law prejudgment interest liability where
the federal debt collection legislation did not directly speak to
the common law right of the federal government to collect
prejudgment interest on debts owed to it by the states) (inter-
nal quotation marks and citation omitted). Indeed, the
Supreme Court recognized that “in such cases, Congress does
not write upon a clean slate.” Id. Rather, “to abrogate a
common-law principle, the statute must ‘speak directly’ to the
question addressed by the common law.” Id. (internal quota-
tion marks and citation omitted).
That is, courts will not construe a statute “in derogation of
common law” unless there is express Congressional intent:
The courts have consistently held legislation deroga-
tive of the common law accountable to an exactness
of expression, and have not allowed the effects of
such legislation to be extended beyond the necessary
and unavoidable meaning of its terms. The presump-
tion runs against such innovation.
Scharfeld v. Richardson, 133 F.2d 340, 341 (D.C. Cir. 1942).
See also In re Chateaugay Corp., 94 F.3d 772, 779 (2d Cir.
1996) (“there is nothing, either in the language of the statute
or in its legislative history, that would lead us to believe that
Congress meant the statute to abrogate common law rights of
setoff against refunds . . . .”); Attorney General of Canada v.
R.J. Reynolds Tobacco Holdings, Inc., 268 F.3d 103, 128 (2d
Cir. 2001) (construing civil RICO statute to preserve the
common-law doctrine known as the “revenue rule,” which
prohibits one sovereign from enforcing tax judgments or
claims of another sovereign, “absent clear evidence of con-
gressional intent to abrogate it.”).
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In the case at bar, there is nothing in the 1976 Act which
expressly forbids the assignment of the basic contract right at
issue here.
Accordingly, the Majority errs in reasoning that copyright
“is a creature of statute, and the only rights that exist under
copyright law are those granted by statute.” Slip op. at 3614.
See also slip op. at 3618. (“Copyright is a creature of statute,
so we will not lightly insert common law principles that Con-
gress has left out.”). This conclusion is in tension with the
principle that common law rights will be deemed to be
retained except where there is statutory language and purpose
to the contrary. This principle militates in favor of the court’s
retention of the common law right to assignment of contract.
Accordingly, the Majority’s reluctance to “insert common law
principles” is unfounded here and it errs in abrogating the
right to assign contract rights.10
Second, courts have interpreted other federal statutes which
expressly confer standing on certain persons also to grant
standing to assignees of the rights. For example, courts have
held that assignees of antitrust claims that accrue under the
Clayton Antitrust Act, 15 U.S.C. § 15, have standing to sue
for antitrust violations. The act provides that “any person who
shall be injured” can sue and yet courts have interpreted the
statute to confer standing on assignees of antitrust claims. See,
e.g., Gulfstream III Associates, Inc. v. Gulfstream Aerospace
Corp., 995 F.2d 425, 438-40 (3d Cir. 1993) (Though the
Clayton Antitrust Act, 15 U.S.C. § 15, provides that “any per-
son who shall be injured” can sue, antitrust claims are assign-
able).
10Although the court in Crown Die does not apply the baseline principle
that common law rights survive unless expressly abrogated by statute, it
does so on the ground that there was express legislative intent that there
be no assignment. Here, the legislative history cuts the other way. See dis-
cussion of Crown Die, infra.
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Other federal statutes have been similarly interpreted. See,
e.g., Lerman v. Joyce Int’l, Inc., 10 F.3d 106, 112-113 (3d
Cir. 1993) (RICO statute provides that “any person injured in
his business or property” may sue; court held that RICO
claims are assignable); see also Misic v. The Building Service
Employees Health and Welfare Trust, 789 F.2d 1374, 1377-78
(9th Cir. 1986) (per curiam) (ERISA statute, 29 U.S.C.
§ 1056(d), prohibited the assignment of pension benefits, but
did not expressly prohibit the assignment of health and wel-
fare benefits; though the statute, 29 U.S.C. § 1132(a), pro-
vides that: “A civil action may be brought by a participant or
beneficiary . . . to recover benefits due to him under the terms
of his plan,” (emphasis added), health and welfare claims are
assignable).
III.
Next, the Majority argues that the case law that has devel-
oped in the area of patent law is analogous here. With respect,
it is not. In particular, the Majority asserts that the U.S.
Supreme Court’s 1923 decision in Crown Die & Tool Co. v.
Nye Tool & Machine Works, 261 U.S. 24 (1923) (per Taft,
C.J.), dealing with the question of whether an accrued cause
of action for patent infringement, is analogous and, indeed,
controls here. I respectfully disagree.
In Crown Die, inventors Wright & Hubbard invented a
machine for forming a screw-thread cutting device. Id. at 25.
Wright & Hubbard assigned the patent to the Reed Manufac-
turing Company (“Reed”). Id. Thereafter, Nye Tool &
Machine Works (“Nye Tool”), first obtained from Reed “all
claims recoverable in law or in equity, whether for damages,
profits, savings, or any other kind or description which the
Reed Manufacturing Company has against the Crown Die &
Tool Company arising out of the infringement by the Crown
Die & Tool Company.” Id. at 26. Nye Tool then brought suit
to prevent Crown Die & Tool Company (“Crown Die”), a tool
company and competitor, from using the screw-thread cutting
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device. Id. at 24. While not stated in the opinion, it stands to
reason that plaintiff Nye Tool brought suit under the Patent
Act of 1874, which provided that a “patentee, assignee, or
grantee” could bring suit for patent infringement.11
Crown Die moved to dismiss the complaint on the grounds
that Nye Tool did not have standing to bring suit, for Reed
owned the patent and had only granted Nye Tool a portion of
its rights thereunder. Id. at 27. The court of appeals reversed
the district court’s order granting defendant’s motion to dis-
miss and the U.S. Supreme Court reversed the court of
appeals. Id. at 36. In reversing the court of appeals and affirm-
ing the district court’s dismissal of the complaint, Chief Jus-
tice Taft reasoned that the common law doctrine of
assignment of a cause of action does not apply to patent law
because patent law is a creation of statute. Id. More specifi-
cally, Chief Justice Taft reasoned that the patent right was
“created by the act of Congress; and no rights can be acquired
in it unless authorized by statute, and in the manner the statute
prescribes.” Id. at 40 (quoting Gayler v. Wilder, 51 U.S. 477,
494 (1850)).
In so holding, the court reasoned that there was no legisla-
tive intent to permit splitting of the claim from the underlying
right because to do so would result in an aftermarket in patent
claims.12 The court reasoned that:
11The first Patent Act was passed in 1793. See Diamond v. Chakrabarty,
447 U.S. 303, 308-09 (1980). Later patent acts were passed in 1836 (5
Stat. 117), 1870 (16 Stat. 198), 1874 (18 Stat. 78) and 1952. Id. Presum-
ably, therefore, litigation commenced in or around 1923 would have been
brought under the Patent Act of 1874. That Act provided, in pertinent part:
“[d]amages for the infringement of any patent may be recovered by action
on the case, in the name of the party interested, either as patentee,
assignee, or grantee.” Patent Act of 1874, 18 Stat. 78, Section 4919.
Accord, Patent Act of 1952, 35 U.S.C. 281 (“A patentee shall have remedy
by civil action for infringement of his patent.”).
12Indeed, Amicus Curiae in this case, Motion Picture Association of
America, Inc., argues this precise point. In its brief, it argues:
3653 SILVERS v. SONY PICTURES ENTERTAINMENT

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[I]t was obviously not the intention of the Legisla-
ture to permit several monopolies to be made out of
one, and divided among different persons within the
same limits. Such a division would inevitably lead to
fraudulent impositions upon persons who desired to
purchase the use of the improvement, and would
subject a party who, under a mistake as to his rights,
used the invention without authority, to be harassed
by a multiplicity of suits instead of one, and to suc-
cessive recoveries of damages by different persons
in the same place.
Id. at 38 (quoting Gayler v. Wilder, 51 U.S. 477, 494 (1870))
(internal quotation marks omitted) (emphasis added).
First, in contrast to the Chief Justice’s 1923 reading of an
1874 Patent Law, it clearly was the intent of the 1976 Legisla-
ture to “permit several monopolies to be made of one,” inso-
Should an assignee of nothing more than a naked infringement
cause of action have standing to sue, the number of copyright
infringement lawsuits could increase markedly . . . one can envi-
sion a market developing in which speculators with no relation-
ship to the copyrighted work pay a small sum to the copyright
owner — who might have no belief in the merits of an infringe-
ment claim and no incentive to sue — in exchange for the ability
to pursue a high volume of nuisance settlements or unwarranted
jury verdicts.
Brief of Amicus Curiae Motion Picture Ass’n of America, Inc. at 4
(emphasis added).
Amicus leaves a faint whiff of nostalgia for the restrictions of the Age
of Guilds. Imagine what mischief would ensue if cafes across the street
from the Burbank studios were to be trolled by risk-seeking men clutching
cash. Why, the next thing that would happen would be to allow something
similar to what did happen in London: non-ship owners being paid to take
the risks of shipwreck, and, by subrogation, gaining the right to sue negli-
gent captains and owners, all of this mendacious money-grubbing taking
place at Lloyd’s Coffee House!
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far as the six individual and separate uses of a single
copyright (Section 201(d)) could not only be “divided among
different persons,” but subdivided infinitely. See 17 U.S.C.
§ 201(d).
Second, avoidance of fraud upon purchasers of “several”
copyright uses was to be avoided by regulation: copyright
registration. See 1909 Act, Section 12 (1909) (“no action or
proceeding shall be maintained for infringement of copyright
in any work until the provisions of this Act with respect to the
deposit of copies and registration of such work shall have
been complied with”).13 Accord, 17 U.S.C. § 411(a) (1976)
(“[n]o action for infringement of the copyright in any work
shall be instituted until registration of the copyright claim has
been made in accordance with this title.”).
Third, the concern of multiplicity of suits14 because of sev-
eral owners of copyright uses seems expressly overcome by
allowing suit by the owner of “an” (not “all”) exclusive right
(§ 501(b)) to bring suit.
Moreover, while the notion of severability of the incidents
of ownership of property was in its infancy in 1923 at the time
Crown Die was decided, such is not the case today. Indeed,
the underlying premise upon which the Majority relies is that
there should not be an aftermarket in causes of action for
copyright infringement. Given the growth of an aftermarket in
derivative rights such as puts, calls and credit insurance
against bankruptcy risks on corporate debt, the notion that an
aftermarket in accrued causes of action for copyright infringe-
13See also 17 U.S.C. § 30 (1952) ([e]very assignment of copyright shall
be recorded in the copyright office”); 17 U.S.C. § 205 (1976) (“any trans-
fer of copyright ownership or other document pertaining to a copyright
may be recorded in the Copyright Office.”).
14This has never been made very clear. Why should an alleged patent
infringer not be protected against all five partners who owned a patent, if
he had a defense judgment of no infringement in an action brought by one
of them?
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ment is to be prohibited is at best passe and at worst an
unwarranted restraint on alienation. See Bank of America,
N.A. v. Moglia, 330 F.3d 942, 947 (7th Cir. 2003) (Posner, J.)
(“restraint[s] on alienation are traditionally disfavored.”).
Indeed, such limitations, on those able to bring suit, harken
back to the Tudor Kings of England who limited inheritance
to primogeniture and descent by fee tail.
Here, the market will account for the fact that a copyright
holder is selling accrued causes of action and not the underly-
ing copyright. To be sure, prices will fluctuate depending on
whether the copyright itself is included.
Finally, while courts have recognized that “[w]here prece-
dent in copyright cases is lacking, it is appropriate to look for
guidance to patent law ‘because of the historic kinship
between patent law and copyright law,’ ” (see slip op. at
3621) (internal citation omitted), courts have also recognized
that “[these] two areas of the law, naturally, are not identical
twins, and we exercise the caution which we have expressed
in the past in applying doctrine formulated in one area to the
other.” Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417, 439 n. 19 (1984). See also Mazer v. Stein, 347
U.S. 201, 217-218 (1954) (declining to apply patent law to
copyright law due to differences in bodies of law). For these
reasons, Crown Die does not compel a contrary result here.15
IV.
Unlike circumstances in which the proliferation of lawsuits
has been restrained on the basis of public policy, such as the
15Similarly, the Majority’s reliance on Prima Tek II, L.L.C. v. A-Roo
Co., 222 F.3d 1372, 1381 (Fed. Cir. 2000) is misplaced. See slip op. at
3623. That case does not involve the standing of an assignee of an accrued
cause of action under patent law. Rather, the Federal Circuit held that non-
exclusive licensees of patent right did not have standing to sue. The case
is therefore inapposite.
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prohibition on assignment of personal injury claims in tort,
here there is no reason to prevent the assignment of a copy-
right claim. Indeed, the court in Prather expressly held there
was no such public policy. See Prather, 410 F.2d at 700
(“[t]here is no public policy against such assignments.”).
Courts have upheld restrictions on the assignment of claims
where such assignment has been deemed to be in violation of
public policy. This anti-assignment policy was rooted in the
common law prohibition on champerty.16 See, e.g., United
Food & Commercial Workers & Employers Arizona Health &
Welfare Trust v. Pacyga, 801 F.2d 1157, 1159 (9th Cir. 1986)
(noting that assignment of personal injury claims is prohibited
by common law in Arizona); See also Desenne v. Jamestown
Boat Yard, Inc., 968 F.2d 1388, 1390 (1st Cir. 1992) (noting
that anti-assignment of personal injury claims rooted in prohi-
bition on champerty).
Similarly, courts have held that legal malpractice claims are
not assignable for public policy reasons. See, e.g., Forgione
v. Dennis Pirtle Agency, Inc., 93 F.3d 758, 760 (11th Cir.
1996) (“[a] majority of jurisdictions prohibit the assignment
of [legal malpractice] actions because the personal nature of
legal services which involve highly confidential relation-
ships”) (internal quotation and citation omitted). Moreover,
courts have upheld restrictions on in-person attorney solicita-
tion, enacted to prevent the public’s perception of attorneys
from falling in further disrepute, as rooted in the common law
doctrine of barratry.17 See Florida Bar v. Went For It, Inc.,
16Champerty is defined as “[a]n agreement between an officious inter-
meddler in a lawsuit and a litigant by which the intermeddler helps pursue
the litigant’s claim as consideration for receiving part of any judgment.”
Black’s Law Dictionary (8th Ed. 2004) at 246.
17The common law prohibited barratry, which was defined as “the
offence of frequently exciting and stirring up quarrels and suits” because
such litigation was for the benefit of the promoter rather than for the bene-
fit of the real party in interest. Vitaphone Corp. v. Hutchinson Amusement
Co., 28 F. Supp. 526, 530 (D. Mass. 1939).
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515 U.S. 618, 626 (1995). See also Bailey v. Morales, 190
F.3d 320, 323 (5th Cir. 1999) (legal profession barred from
soliciting under ancient doctrine prohibiting barratry).
In addition, courts have upheld restrictions on assignment
of certain federal claims where assignment of such claims
would result in nuisance suits. For example, in Smith v. Ayres,
977 F.2d 946, 950 (5th Cir. 1992), the plaintiff shareholder
brought suit under section 10(b) of the Securities Exchange
Act of 1934, which provides that “purchasers or sellers” of
securities may bring suit. The plaintiff had been granted an
express assignment of the claim. The defendant moved to dis-
miss on the ground that plaintiff lacked standing and the dis-
trict court granted the motion. The Fifth Circuit affirmed,
concluding that such a result was warranted by (1) the fact
that “Congress was concerned with blackmail, nuisance, and
strike suits, and drafted the act to circumscribe the class of
plaintiffs who may sue under the Act for the very purpose of
eliminating such suits” and (2) “the evidentiary problems
inherent in allowing a non-purchaser or non-seller to bring a
Rule 10b-5 action.” Id. at 950 (internal citations omitted).
None of such policy concerns underlie the Majority’s opin-
ion. Nor indeed is there a reasoned policy consideration given
for prohibiting suit upon an accrued cause of action for infringe-
ment.18
V.
In reaching its conclusion, the Majority argues that this cir-
cuit should follow the Second Circuit’s decision in Eden Toys,
Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir.
1982) to avoid the creation of a circuit split. See slip op. at
3625-26. In my view, Eden Toys is inapposite. To avoid the
18As noted above, (see fn. 7), there is a public policy rationale for limit-
ing standing to holders of exclusive licensees and prohibiting non-
exclusive licensees from suing. That rationale, however, is absent here.
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creation of a circuit split, this circuit should rather follow the
rationale of Prather.
A. Prather v. Neva Paperbacks, Inc.
In Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (1969),
the Fifth Circuit squarely held that an assignee of an accrued
cause of action is a proper party to bring suit for copyright
infringement. In my view, this case provides persuasive
authority that this circuit should follow.
Plaintiff Prather (“Prather”) was the author of several
books. Prather held the copyright on one of the books and the
copyright to the remaining books was held by Prather’s pub-
lisher, Fawcett Publications. Prather discovered that the copy-
right on one of the books (the rights to which were owned by
Fawcett) had been infringed by book publisher Neva Paper-
backs, Inc. (“Neva”). After discovering the infringement, Pra-
ther obtained some of the copyright rights and an assignment
of all present, past and future causes of action.19 Significantly,
however, Fawcett “simultaneously” with assigning the copy-
right to Prather, retained an exclusive license to the English
language rights for books throughout the world. Id. at 699 n.1.
Prather brought suit against Neva for copyright infringe-
ment. Neva moved to dismiss, arguing that plaintiff Prather
did not have standing to bring suit because Prather was not
the “proprietor” of the copyright as required under the 1909
Act. See 17 U.S.C. § 101(a) (1952). Rather, Neva argued that
because the copyright rights had been “split,” Prather was a
mere “licensee” and not the sole “proprietor” under Section
101.
19Prather was assigned “all . . . right, title and interest in and to the
copyright” and was further assigned “any and all causes of action that may
have heretofore accrued in [the holder’s] favor for infringement of said
copyright.” Id. at 699 n.1.
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The Fifth Circuit affirmed the trial court’s denial of the
defendant’s motion to dismiss and held that Prather did, in
fact, have standing to sue. In so holding, the Fifth Circuit rea-
soned that the assignment was simply a “simple assignment
of a chose in action” — a contract — that contained express
language of assignment. See Prather, 410 F.2d at 699-700.
The court concluded:
As an assignee of the causes of action for infringe-
ment damages past, present and future, Prather has
the right to maintain the action under 17 U.S.C.A.
[§]§101 et seq. For infringement. There is no public
policy against such assignments and under
F[ED].R.CIV.P. 17 such assignee of all choses in
action for infringement, whether a ‘proprietor’ or
not, has standing to sue and the court has effective
power to avoid altogether the risk of double suit or
double recovery.
Id. at 700 (emphasis added).
Under Prather, then, courts will not require plaintiff to hold
ownership of one or more of the exclusive rights of a copy-
right owner to have standing.
The Majority states that Prather is “unhelpful” authority
for two reasons: (1) it was decided under the 1909 Act, and
not the 1976 Act; and (2) “the assignment in Prather involved
both accrued causes of action and some of what we now call
exclusive rights.” Slip op. at 3625 (emphasis in original). The
Majority argues “the Prather court was not faced, as we are,
with a situation in which the owner of all the exclusive rights
and the owner of the accrued causes of action are two differ-
ent people.” Slip op. at 3625. Neither distinction is persua-
sive.
First, the Majority’s attempt to distinguish Prather as pred-
icated on the 1909 Act is unpersuasive, given that courts have
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recognized that “[i]n enacting § 501(b)’s standing provision,
Congress ‘merely codified the case law that had developed
[under the 1909 Act] with respect to the beneficial owner’s
standing to sue.’ ”20 Moran v. London Records, Ltd., 827 F.2d
180, 183 (7th Cir. 1987) (internal citation omitted). See also
Gardner, 279 F.3d at 778 (9th Cir. 2002) (holding that a sub-
licensee of a copyright lacked standing to sue under the 1976
Act on the ground that the pre-1976 law so prohibited).21
Accord, H.R. 94-1476 at 47, reprinted in 1976 U.S.C.C.A.N.
5659, 5660 (“[t]he present copyright law, title 17 of the
United States Code, is basically the same as the act of
1909.”).
Second, that Prather owned rights to the books (other than
the English language rights), Neva argued, made Prather a
licensee of book rights — not the owner of what we would
now call “exclusive rights.” An assignee could not be the
owner of book rights because the “exclusive right” to repub-
lish could not be split away from the copyright under the 1909
Act; that is precisely what the 1976 Act changed. Licensees
did not have standing to bring suit under the 1909 Act. There-
fore, Prather, as a (mere) licensee, could not have had stand-
20Indeed, Congress relied upon this principle in drafting another section,
Section 201(a). See 17 U.S.C. § 201(a) (“[c]opyright in a work protected
under this title vests initially in the author or authors of the work.”).
Regarding the provision, Congress stated: “There is [ ] no need for a spe-
cific statutory provision concerning the rights and duties of the co-owners
of a work; court made law on this point is left undisturbed.” H.R. Rep. No.
94-1476 at 121, reprinted in 1976 U.S.C.C.A.N. 5659 at 5737.
21In Gardner, the court concluded:
Although neither party’s plain language arguments is dispositive,
the fact that Congress chose not to explicitly address this issue in
the 1976 Act and the limiting ‘protection and remedies’ language
of § 201(d)(2) indicates that the state of the law remains
unchanged. Thus, we hold that the 1976 Act does not allow a
copyright licensee to transfer its rights under an exclusive license,
without the consent of the original licensor.
Id. at 780.
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ing to sue but for his standing as the assignee of an “accrued
cause of action for infringement.” See, e.g., Gardner, 279
F.3d at 778 (“only the copyright proprietor (which would
include an assignee but not a licensee) had standing to bring
an infringement action.”).
Moreover, the assignment to Prather of “some rights” did
not help Prather establish his right to sue; just the opposite.
The fact that he got “some” but not “all” rights of copyright
was used by the defendants to undermine his standing and
was in no sense a grounds used by the Prather court to vali-
date the assignment. Indeed, the court rejected this argument
and refused to get into the “metaphysical dialectic” of the
“button game” of determining who had the copyright. Pra-
ther, 410 F.2d at 699.
In my view, to interpret Prather as holding that an assignee
of an accrued cause of action was required to be an assignee
of some rights under the copyright would be a profound mis-
reading of the case. Rather than essential to establish stand-
ing, having (only) some rights made out what defendant Neva
urged as an affirmative defense.
B. Eden Toys, Inc. v. Florelee Undergarment Co., Inc.
By contrast, the Second Circuit’s decision in Eden Toys,
Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir.
1982) involves a different factual situation and thus is entitled
to little weight here.
In Eden Toys, Paddington Bear & Company, Ltd.
(“Paddington Bear”) held the copyright to children’s books
which featured the fictional character Paddington Bear. Id. at
29. In 1975, Paddington Bear entered into an agreement with
Eden Toys, Inc. (“Eden Toys”), an American corporation,
whereby Eden Toys was granted an exclusive license to use
licensor Paddington Bear’s copyright and characters in North
America. Id. In 1980, that agreement was amended to grant
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Eden Toys exclusive North American rights to all Paddington
products except books, tapes, records, stage plays, motion pic-
tures, radio and television productions. Id. at 30. Under the
agreement, Paddington Bear retained the right to sue for copy-
right infringement on Eden Toys’ license. Id. In particular, the
agreement allowed Paddington Bear to sue, or choose not to,
but let Eden Toys bring suits on Paddington’s behalf.22 Id. at
30 n. 2.
Eden Toys brought suit against Florelee Undergarment Co.
(“Florelee”), alleging copyright infringement, and seeking to
enjoin Florelee’s use of the Paddington Bear image. Id. at 31.
Florelee moved to dismiss the complaint on the ground that
Eden Toys lacked standing to sue under 17 U.S.C. § 501(b)
(1976). Id. The Second Circuit affirmed the district court’s
dismissal of the claim, holding that “[the court] do[es] not
believe that the [1976] Copyright Act permits holders of
rights under copyrights to choose third parties to bring suits
on their behalf.” Id. at 32 n. 3.
The Majority contends that the court in Eden Toys “made
plain the basic principle, which we also have derived from
§ 501(b) and its context and history, that only the owner of an
exclusive right under the copyright is entitled to sue for
infringement.” Slip op. at 3626.
22The EdenToys-Paddington Agreement provided, in pertinent part:
(a) In the event that Eden or its licensees shall be exposed to
competition, direct or indirect, from infringers of the copy-
right or trademark rights which are licensed hereunder . . .
Paddington shall, at its option, take all necessary legal
action to enjoin such infringement and protect Eden and its
licensees.
(b) In the event such infringement and Paddington’s election to
take no legal action . . . Eden shall have the right, at its
option: (i) to institute appropriate legal action against the
infringer . . . .
Eden Toys, 697 F.2d at 30 n. 2.
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I respectfully disagree. In my view, the holding of Eden
Toys is far more narrow. The court in Eden Toys held that a
copyright holder who maintains ownership of the exclusive
right to reproduce cannot assign to a third party the bare right
to sue should the copyright holder choose not to do so. It does
not hold that a copyright holder may not assign the accrued
cause of action, on which a new owner can sue.
Indeed, the specific contractual agreement between Eden
Toys and Paddington Bear did not (as it does here) assign all
rights to any claims, but merely assigned the right to sue
where Eden Toys or its licensees was “exposed to competi-
tion, direct or indirect, from infringers of the copyright or
trademark rights which are licensed hereunder.” Id. at 30 n.2.
There was no assignment to Eden Toys of pre-existing
accrued causes of action. Accordingly, there was no real “as-
signment” of any accrued cause of action. Rather, the Eden-
Paddington Bear agreement was interpreted as an agreement
merely designating Eden as the agent for purposes of suit.
Thus, Eden Toys merely holds that the proper party plaintiff,
the “real party in interest,” is the owner of the cause of action
for infringement, not some hand-picked stand-in.
C. ABKCO Music, Inc. v. Harrisongs Music, Ltd.
Finally, I respectfully disagree with the Majority’s reading
of the Second Circuit’s decision in ABKCO Music, Inc. v.
Harrisongs Music, Ltd., 944 F.2d 971 (2d Cir. 1990). Far
from “reaffirm[ing] the principle of Eden Toys that a party
that has no ownership interest has no standing to sue,” as the
Majority asserts (slip op. at 3626-27), in my view, the deci-
sion clearly holds that copyright ownership is not the sine qua
non of standing, but that assignees of accrued causes of action
may sue for copyright infringement.
In 1971, Bright Tunes Music Corporation, which owned the
copyright to a song entitled “He’s So Fine,” sued musician
(and Beatles band member) George Harrison and Harrisongs
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Music claiming that Harrison’s tune “My Sweet Lord”
infringed Bright Tunes’ copyright. The trial court agreed and
ruled in favor of Bright Tunes, but reserved judgment on the
issue of damages. Id. at 975.
In 1971, at the time Bright Tunes sued Harrison, ABKCO
Music, Inc. and its president served as business manager for
the Beatles. Id. at 975. In 1978, ABKCO purchased all of
Bright Tunes’ interest in “He’s So Fine” including the copy-
right and “any and all rights assertable under copyright
against the infringing composition (“My Sweet Lord”) in any
part of the world which may have heretofore arisen or which
may arise hereafter.” Id. at 980. Accordingly, ABKCO was
substituted as the sole party plaintiff in the action against Har-
risongs Music. Id. at 975. However, Harrison had claims
against ABKCO and its principal Klein which required
ABKCO to convey the old Bright Tunes copyright to “He’s
So Fine” to Harrison on the payment of a sum.
On appeal, ABKCO claimed that if it conveyed the old
Bright Tunes “He’s So Fine” copyright to Harrison, it could
not participate in the 1980 foreign settlements and it would
lose its pre-1970 infringement claims.
As concerns us, the dispositive question was a determina-
tion of what rights were at issue in the 1980 foreign settle-
ments: ABKCO’s possession of the copyright to “He’s So
Fine” or merely its ownership of the infringement claims. The
Second Circuit held it was merely the ownership of the
infringement claims, and held that ABKCO’s right to bring
the claims derived from its ownership of the accrued infringe-
ment claims.
In so holding, the Second Circuit noted that although
ABKCO now owned the copyright and the accrued infringe-
ment claims, it need not continue to own the copyright to
enforce its accrued-in-1970 causes of action for copyright
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infringement arising from the 1980 settlement. The court rea-
soned:
Hence, the claims had already accrued when
ABKCO purchased all of Bright Tunes’ rights in
“He’s So Fine.” As a consequence, ABKCO’s right
to bring the claims arises not out of its ownership of
the copyright, but from its ownership of the claims
themselves which it purchased, along with the copy-
right, in 1978. We therefore conclude that ABKCO’s
ownership of the “He’s So Fine” copyrights was not
a necessary predicate to its participation in the 1980
settlements. ABKCO could participate in the 1980
settlements because it owned the infringement
claims accrued in 1970, not because it owned the
copyright. Thus, ABKCO’s ownership of the copy-
right was not affected by the 1980 settlements, and
ABKCO must surrender the copyright to the Harri-
son Interests upon proper payment.
Id. at 980-981 (emphasis added).
Thus, under the holding in ABKCO, ownership of the copy-
right is not a requirement for the enforcement of accrued
claims assigned to the assignee (ABKCO) so long as the
claims arose during the period when the assignor (Bright
Tunes) was the owner of the copyright. Moreover, ABKCO
could continue to assert such accrued copyright infringement
claims even though it would be forced to give up the copy-
right.
According to the Majority, “[t]he Second Circuit [in
ABKCO] made clear that its decision was limited to the situa-
tion in which the same entity purchased both the copyright
and accrued claims; the only issue was one of timing, whether
ownership of the copyright and occurrence of the infringe-
ment had to coincide.” Slip op. at 3626. I respectfully dis-
agree. In ABKCO, ownership of both the copyright and the
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accrued causes of action was merely coincident — not
required — for ABKCO to have standing to sue.
Indeed, ABKCO, like Silvers, did not own the copyright to
“He’s So Fine” when George Harrison and the Beatles plagia-
rized it into “My Sweet Lord.” The copyright to “He’s So
Fine” was owned by Bright Tunes; the infringements took
place before 1970.
In the case at bar, there is no dispute that Frank & Bob
Films II owned the copyright when the alleged Sony infringe-
ment took place and that they, like Bright Tunes, assigned
those accrued infringement claims to Silvers. Thus, like
ABKCO, Silvers has standing to pursue those accrued
infringement claims.
Accordingly, I respectfully disagree with the Majority: to
avoid the creation of a circuit-split, slip op. at 3626-27, this
court should follow the Fifth Circuit’s decision in Prather,
rather than the Second Circuit’s decision in Eden Toys, as the
facts in Eden Toys are clearly distinguishable. In addition, in
ABKCO, a more recent decision, the Second Circuit expressly
held that ownership of both the copyright and the accrued
causes of action is not necessary for the owner of those claims
to bring suit.
VI.
For the foregoing reasons, I would affirm the district
court’s denial of Sony’s motion to dismiss Silvers’ complaint
against Sony for the alleged infringement of the copyright of
her script, “The Other Woman.” I respectfully dissent.
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