Silvers v. Sony Pictures Entertainment, Inc.

• Decision Date: 25 March 2005
• Docket Number: No. 01-56069.,01-56069.
• Citation: 402 F.3d 881
• Parties: Nancey SILVERS, Plaintiff-Appellee, v. SONY PICTURES ENTERTAINMENT, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

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.

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 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 substantially 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 copyright. The district court denied the motion and certified the issue for interlocutory appeal. See 28 U.S.C. § 1292(b) (providing 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.

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 common 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....

Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663-64, 8 L.Ed. 1055 (1834); see also Stewart v. Abend, 495 U.S. 207, 251, 110 S.Ct. 1750, 109 L.Ed.2d 184 (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, copyrights and the rights flowing therefrom are entirely creatures of statute...."). Accordingly, our starting point is the statute.

Section 501(b) of the 1976 Copyright Act establishes who is legally authorized to sue for infringement of a copyright:

The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements 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 Business 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 infringement of the copyright.").

Section 106 of the 1976 Copyright Act, in turn, defines "exclusive rights":

(1) to reproduce the copyrighted work in copies or phonorecords;

(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 transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures 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 transferred in whole or in part by any means of conveyance 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 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 sections 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 subsections 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] recordation of transfers as a prerequisite to the institution of an infringement suit...."). This requirement ensures that prospective 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 copyright 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 concomitant 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 he or she is the owner of" the particular exclusive right allegedly infringed. 17 U.S.C. § 501(b).

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...