Nancey Silvers v. Sony Pictures Entertainment, Inc.

Opinion by Judge GRABER. Dissenting Opinions by Judges BERZON and BEA.

May an assignee who holds an accrued claim for copyright infringement, but who has no legal or beneficial interest in the 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.” Accordingly, 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 Zer-neck/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…

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 *891 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:

17 U.S.C. § 501 (b). The majority relies on the notion that “[t]he meaning of that provision appears clear,” ante at 884, to conclude that the assignment to Silvers is invalid because she does not own an exclusive right under the copyright. Ante at 890.

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…

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 rehearing 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.

*896 I.

I quite agree with the Majority that the starting point in this case is necessarily the statute under which Silvers brought suit. See op. at 884. Section 501(b) of the 1976 Act provides, in pertinent part:

17 U.S.C. § 501 (b) (1976).

Turning to first principles,…

402 F.3d 881 Nancey SILVERS, Plaintiff-Appellee, v. SONY PICTURES ENTERTAINMENT, INC., Defendant-Appellant. No. 01-56069. United States Court of Appeals, Ninth Circuit. Argued and Submitted En Banc October 12, 2004. Filed March 25, 2005. Ronald S. Rauchberg, Proskauer Rose LLP, New York, New York, and George P. Schiavelli, Reed Smith Crosby Heafey LLP, Los Angeles, California, Benjamin G. Shatz, Manatt, Phelps & Phillips, LLP, Los Angeles, California, for the defendant-appellant. Steven Glaser, Gelfand Rappaport & Glaser, LLP, Los Angeles, California, for the plaintiff-appellee. Robert H. Rotstein, McDermott, Will & Emery, Los Angeles, California, for the amicus curiae. Appeal from the United States District Court for the Central District of California, Stephen V. Wilson, District Judge, Presiding. D.C. No. CV-00-06386-SVW. Before: SCHROEDER, Chief Judge, and REINHARDT, RYMER, KLEINFELD, GRABER, WARDLAW, FISHER, GOULD, PAEZ, BERZON, and BEA, Circuit Judges. GRABER, Circuit Judge. 1 May an assignee who holds an accrued claim for copyright infringement, but who has no legal or beneficial interest in the copyright itself, institute an action for infringement? After…