The U.S. Court of Appeals for the Ninth Circuit has held that an assignee of an accrued claim for copyright infringement who has no legal or beneficial interest in the copyright may not sue for infringement. Silvers v. Sony Pictures Entertainment, Inc., Case No. 01-56069 (9th Cir. Mar. 25, 2005) (en banc) (Graber, J.; dissents by Berzon, J. and Bea, J.).
Nancy Silvers wrote the script for The Other Woman as a work-for-hire for Frank and Bob Films II (FBF), which owns the copyright in the work. After Sony released Stepmom, FBF assigned Silvers any claims and causes of action against Sony with respect to infringement of the copyright in The Other Woman. FBH retained ownership of the copyright. Silvers sued Sony for copyright infringement alleging that Stepmom was substantially similar to The Other Woman. Sony moved to dismiss Silvers’ complaint for lack of standing. The district court denied Sony’s motion; and a panel of the Ninth Circuit affirmed; but the en banc the Ninth Circuit—in a 7-4 decision—reversed the district court.
The Ninth Circuit held that §501(b) of the Copyright Act confers the right to sue for copyright infringement on the "legal or beneficial owners of an exclusive right under copyright." To sue for copyright infringement, the Court reasoned, a plaintiff must have at least one of the exclusive rights described in §106: (a) the right to reproduce the work; (b) the right to prepare derivative works; (c) the right to distribute copies of the work; (d) the right to perform the work publicly; (e) the right to display the work publicly or (f) the right to perform the work by means of digital audio transmission.
Although the statute does not expressly limit the right to sue to only beneficial or legal owners, the Ninth Circuit read the legislative history to convey Congress’s intent that the listing be exclusive.
Judge Berzon (joined by Reinhardt) dissented on the grounds that consistent with Congress’s intent, Silvers, as the original creator of The Other Woman, should be allowed to pursue the accrued claims assigned by FBH even if a complete stranger to the creative process could not. Judge Bea (joined by Kleinfeld) also dissented, arguing Congress never intended to strip owners of bare assignments of standing to sue under the Copyright Act.
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