Nancey Silvers v. Sony Pictures Entertainment, Inc.

opinion states that written “[t]he law on this which that the case conclude We stating govern- the law open Supreme Court divergent to leave sufficiently issue is ... ing questions certified shall be res Nevada or of whether would question judicata parties.” based as to requirement adopt would further public policy goals. We on its own hereby court is direct- The Clerk of this case is a appellant this note that Court, Supreme ed to file in the Nevada plane injured when party, third who was seal of the Ninth Circuit under official such, backyard. As on him in his own fell copies of all relevant Appeals, Court of differently public may weigh the state of this original copies briefs and an and ten cover- precluding considerations of policy on the request with certificate of service case, party type where age this parties. IT IS SO ORDEREED. way ensuring coverage had no seeking policy preventing or compliance with Thus, question this

the crash. because impression first

represents an issue of for Nevada’s significant implications

has law, and we cannot be coverage

insurance Supreme Court how the Nevada

certain matter, we certi- believe

would resolve ap- of law to question on this be fication SILVERS, Nancey Plaintiff-Appellee, propriate. Question of Law III. ENTERTAINMENT, PICTURES SONY hereby certify is: of law we question INC., Defendant-Appellant. law, deny anmay insurer Under Nevada No. 01-56069. poli- under an aviation insurance

coverage unambigu- comply cy for failure Appeals, United States Court or is a causal requirement policy ous Circuit. Ninth noncom- between the insured’s connection required?4 and the accident En pliance Argued and Submitted 12, 2004. Banc Oct. Conclusion IV. 25, 2005. Filed March Ne- presents an issue of appeal Griffin’s be determinative state law which will vada dispute parties’

of an issue essential clearly control- there is no

and as to which Supreme from the Nevada

ling precedent reason, request this we For

Court. . accept and Supreme Nevada Court question herein certified. We

decide the Supreme the Nevada

agree abide by Rule 5 of specified decision

Court’s Procedure, Appellate Nevada Rules comply the sole i.e. must the failure required, which causal connection If a just preventable showing cause of the accident causation? party the burden of bears shown, accident? cause of the degree must be what of causation Also Rauchberg,

Ronald S. Proskauer Rose LLP, York, York, George New New P. Schiavelli, Crosby Heafey Reed Smith LLP, California, Angeles, Benjamin Los G. Shatz, Manatt, LLP, Phelps Phillips, & California, Angeles, Los for the defendant- appellant. Glaser, Rappaport

Steven Gelfand & Glaser, LLP, California, Angeles, Los plaintiff-appellee. Rotstein, McDermott, Robert H. &Will Emery, California, Angeles, Los for the amicus curiae. SCHROEDER,

Before: Judge, Chief REINHARDT, RYMER, KLEINFELD, GRABER, WARDLAW, FISHER, GOULD, PAEZ, BERZON, and BEA, Judges. Circuit Opinion by Judge GRABER. Dissenting Opinions by Judges BERZON and BEA. GRABER, “Stepmom” that the movie substantial- Judge. Circuit script for “The Other ly similar accrued holds an May assignee an Sony moved to dismiss on the Woman.” infringement, but who claim ground Silvers lacked interest in the legal or beneficial has no copyright infringement itself, in- an action for institute legal in or the absence of some beneficial analyzing the 1976 After fringement? underlying copyright. ownership history, as well as Act and its Copyright denied the motion and The district court scant, although persuasive, precedent interlocutory appeal. certified the issue for situations, we analogous available in that is (providing proce- Accordingly, “no.” question answer dure). court, ruling of the district reverse the we assignee allowed this action panel A of this court affirmed the dis proceed. Sony trict court’s decision. Silvers v. Pic (9th Entm’t, Inc., tures 330 F.3d 1204 Cir. PROCEDURAL FACTUAL AND 2003). to take this The court then voted BACKGROUND (9th Cir.2004), banc, case en 370 F.3d 1252 script of a Nancey Silvers wrote withdrawing opinion. “The movie called Oth- made-for-television wrote “The Although Silvers er Woman.” STANDARD OF REVIEW did not hold the script, she Other Woman” “The Other Woman” copyright, because review de novo the district We completed that Silvers was a work-for-hire Sony’s motion to court’s denial of dismiss. II, Films aka Von Zer- for Frank & Bob Inc., Holly Entm’t v. Tektronix Glen (“Frank & Bob Films neck/Sertner (9th Cir.2003). Likewise, 367, we Films”). Frank & Films was the Bob resolu review de novo the district court’s copyright to “The original owner of the legal Sys. Satellite v. tion of issues. Cal. Woman,” today. so and remains Other Seimon, Cir. 1985). “The years three after Other About network, aired on a broadcast

Woman” Entertainment, Inc., Pictures re- Sony DISCUSSION Af- picture “Stepmom.” motion leased the Frank & A. The Statute “Stepmom,” release of ter the “Assignment Bob Films executed I, clause Article section Action” in favor of and Causes of Claims Congress shall states: “The Constitution retained Frank & Bob Films Silvers. promote Progress ... To have Power underlying copyright to ownership of the by securing Arts and useful Science assigned script, “The but Other Woman” ... Times to Authors the exclusive limited right, “all title and interest to Silvers ” As is Writings.... to their ... Right of action any claims and causes text, of the Con- from its that clause clear Entertainment, Sony Pictures against protections grants no substantive stitution TriStar, appropri- other Columbia Rather, Congress empow- is to authors. entities, respect to the persons ate copyright protection. provide ered to ’ ... and ‘The screenplay Other Woman ” picture ‘Stepmom.’ motion therefore, a creature Copyright, statute, that exist only rights and the complaint against Silvers then filed granted copyright law are those alleging under Sony copyright infringement, ed.) 65.3(a)(4) (Robert Haig wrote 170 at L. Supreme As the Court statute. (West 1998) (“If years ABA ago: Group & a claimant proper copyright rights, is not a owner of ... copyright] does [in This then it cannot invoke copyright protection if originated, law-it exist at common stemming from all, congress. No one the exclusive be- under the acts owner, legislature longing deny including infringe- can that when copyright.”). vest an exclusive an ment of about to Andrews, 783 F.2d federal torily crosoft F.Supp. (“Common-law copyright ognized under the art v. 663-64, L.Ed. 1055 dissenting) Wheaton (“The 1750, 109 L.Ed.2d 184 which such power author or an Article Abend, right created); statute, 8 Corp. I, (stating § Peters, of prescribe 495 U.S. 8, with its copyright 1129 n. M. Kramer cl. inventor, that 421, Grey Computer, ^[1976] 8.”); 33 U.S. (D.Md.1995) (“Unlike shall be (1834); (1990) (Stevens, J„ 207, 251, 110 constitutional base the conditions on copyright is no Russell v. is a creature of Act....”); they (9th Cir.1979) see also Stew- (8 Pet.) Mfg. enjoyed.... longer have the Cir.1986) is statu- Price, Co. v. S.Ct. rec- Mi- righted tomimes, public by sale or other transfer of own- dramatic, audiovisual dramatic, upon the copyrighted ords of the ership, Section 106 of the 1976 turn, (5) (4) (3) (2) copies defines “exclusive in the to distribute to work or reproduce prepare the case of or phonorecords; and motion and and by works, publicly; case copyrighted choreographic choreographic rental, lease, derivative works based of copies work; pictures perform literary, literary, musical, copyrighted rights”: Copyright work or works, works, or phonorec- and other musical, lending; to copy- work pan- pan- Act, tomimes, pictorial, and graphic, or contracts, copyrights rights and the flow- works, sculptural including the individu- ing entirely therefrom are creatures of al images picture of a motion or other ”). Accordingly, starting statute.... our work, display audiovisual point is the statute. righted publicly; work and 501(b) Copy of the 1976 Section (6) in the recordings, case of sound right legally Act establishes who is author perform copyrighted publicly work infringement copyright: ized to sue for of a by a digital means of audio transmission. legal The or owner an beneficial of § right U.S.C. The to sue for an right exclusive under a is en- accrued claim for infringement is not an titled, subject requirements of right § exclusive under 106. Section any section action for institute an 201(d) refers to rights pro- exclusive and infringement particular right of that vides: committed while he or she is the owner (1)

of it. ownership copyright may The of a be transferred whole or in part added). 501(b) § (emphasis any conveyance by opera- means of or meaning appears of that provision clear. law, may bequeathed by tion of To be entitled to sue for in- will or pass personal property by fringement, plaintiff “legal must be the applicable laws of intestate succession. or beneficial owner of an exclusive (2) under a copyright.” Any See Business and rights the exclusive com- Courts, Litigation Commercial in Federal prised copyright, including any sub- section, un- Returning operative to the any rights specified division 501(b) legal § must have a plaintiff der pro- transferred as may be section in at least interest one beneficial separate- by clause owned vided §in 106. Addi- rights exclusive described exclu- any particular owner ly. The tionally, plaintiff in order for a to be “enti- entitled, to the extent is sive in- ... to institute an action” for tled protection all of the right, fringement, infringement must be own- accorded remedies or she the owner “committed while he by this title. er right allegedly exclusive particular of’ the 201(d). in a rights Exclusive § 501(b). § infringed. U.S.C. owned may be transferred and say expressly does not The statute 201(d) no exclu- but creates separately, or beneficial owner of an legal §in than those listed sive other But, is entitled to sue. 501(b). §to exception nor does create statutory principles traditional in con- must also be read Section explicit listing of interpretation, Congress’ 501(a), provides junction with sue the exclusive “violates one who be understood as an exclusion should provided owner as rights of suing infringement. others from 122 ... is an through sections expressio doctrine of unius est exclusio infringer of an The definition infringer.” statutory interpre applied alterius to “as (a) definition parallel is in subsection that a presumption tation a when creates (b). in plaintiff subsection proper of a designates persons, things, certain statute an exclu- to both is Common subsections all operation, or manners of omissions copyright interest. sive be understood exclusions.” should Barnette, 754, 756-57 v. 923 F.2d Boudette addition, interest when a (9th Cir.1991). pro- it must be recorded is transferred particularly important There are two bring right holder’s tect the presumption a here. apply reasons to 205(d); § infringement suit. 17 U.S.C. an First, principle mindful of we are (1976), 94-1476, at H.R.Rep. No. see Copyright began we our discussion: which in 1976 U.S.C.C.A.N. reprinted statute, we so will is a creature (d)[] (“The of subsection provisions that principles law lightly common insert as a of transfers requir[e] recordation Second, the dura- Congress has left out. of an in- to the institution prerequisite 501(b) § that tional limitation shows suit....”). requirement This fringement ben- legal even the Congress restricted buyers or trans- prospective that ensures is copyright; a eficial owner owner inter- of the have notice ferees in- alleged unless the to sue not entitled H.R.Rep. No. by others. See ests owned “while he or she fringement [was] occurred 94-1476, in 1976 reprinted words, In other Con- owner of it.” (stating at 5744 that U.S.C.C.A.N. to sue care- was gress’ grant compliance with subsec- right recorded fully circumscribed. (c) of its provides constructive notice tion 501(b) meaning of is contents). contrast, recording We think By clear, that its recognize omission but we a transfer of contemplate statute does present question to address ownership explicitly interest than an anything other Therefore, we ambiguity. an may create concomi- copyright, along in the with the history. See United legislative consult rights. tant exclusive Daas, infringement. Congress 198 F.3d suit for foresaw a States v. Cir.1999) (“The step ascertaining permissible rights; division of first the owner of one of those exclusive congressional plain intent is to look to the sue, rights may being If with other owners language of the statute.... the statute joinder. entitled notice and In this ambiguous may ... courts look to its sense, Congress intended to “unbundle” legislative history congres- for evidence of intent.”). rights. the exclusive sional Act, Copyright the 1909 Under Legislative History B. predecessor Act Copyright Act was the Copyright result a copyright “proprietor” was the deliberations, years drafting, of 15 individual who had to sue for compromise. H.R.Rep. No. 94-1476. an infringement. Report suggests strongly The House (1952); Nike, Inc., Gardner Congress intended to limit the class of (9th Cir.2002). 774, 777-78 Courts inter- persons infringement: sue for preted providing the 1909 statute as (b) Subsection of section 501 enables the proprietor with an indivisible bundle of particular owner rights arising from a copyright -rights — that owner’s assigned piecemeal. could not be Id. alone, name while at the same time in- unity at 778. This enforced of rights cre- suring possible to the extent hardships ated serious hold- other rights may oumers whose be af- assigning ers who were interested in given fected are notified and a chance to property rights arising various from a join the action. copyright separately, for selling instance (b)

The first sentence of subsection picture rights the motion in a sepa- novel empowers “legal or beneficial owner rately print from the the novel of an right” bring exclusive to suit for Roger book form. See D. Blair & Thomas “any infringement particular of that Cotter, F. Logic Standing Elusive right committed he or while she is the Law, Doctrine in Intellectual Property owner of it.” A (2000) (discuss- “beneficial owner” for 1323, Tul. L.Rev. 1366-67 include, purpose this would for example, ing history). Congress, aware of these an author parted legal who had title on dealings, largely constraints commercial exchange per- in dispensed with the indivisibility doctrine of centage royalties based on li- sales or Id.; in Copyright Act of 1976. see also cense fees. 94-1476, H.R.Rep. No. at reprinted in (noting 1976 U.S.C.C.A.N. at 5738-39 that 94-1476, H.R.Rep. reprinted No. at in right assign separate property inter- 1976 U.S.C.C.A.N. at (emphasis add- in “long ests a had ed). sought been claiming Non-owners right bare representatives” authors and their sue, Silvers, such as are not entitled to had support “attracted wide from other joinder, notice or suggests that Con- groups”). Although Congress allowed for gress existence, did not envision their divisibility of ownership interests under a right that the a right sue was severable copyright, it did not alter requirement ownership one of the authorized only that owners an in right exclusive rights. exclusive bring could suit. words, In Congress other wanted to en- sure that an right clear, too, owner of exclusive legislative history makes in the copyright was entitled to that rights the list of exclusive found in (1984)); Gardner, Report L.Ed.2d 574 see also The House § 106 is exhaustive. (relying in part patent F.3d at 780-81 states: rights law to hold that under an exclusive to a rights accorded The exclusive assigned license could not be section 106 are copyright owner under original without the licensor’s consent and any of the and to authorize” “to do holding assignee that lacked the five numbered specified activities in sue). Although Supreme Court has clauses. hand, not addressed the issue at it has 94-1476, H.R.Rep. reprinted No. question addressed the whether a bare right at 5674. If a 1976 U.S.C.C.A.N. assignment give can rise to a cause of it is not one of the “specified,” then patent action in the context law. granted by Congress. rights exclusive Report that deals with the The House provides The Patent Act of 1952 §in rights provided 106 also ex- exclusive patentee remedy by have civil “[a] shall enumerated of the five plains “[e]ach patent.” action for his and, indefinitely rights may be subdivided (1988). Copy- Like the 1976 [govern- ... in connection with section Act, right explicit- Patent Act does each subdivision of ing rights], transfer of ly assignment forbid an of causes of right may be owned and en- an exclusive separate from an of substan- added). separately.” (emphasis Id. forced protected tive work. None- words, rights may be In other theless, Supreme interpret- Court has up separately, and owned chopped provide only a ed the Patent Act to of a subdivided exclu- separate each owner patent rights may holder sue. may that owned sue to enforce sive Nye Die Tool Co. v. Tool & Crown & right, of an exclusive no matter portion Works, 33-35, Machine U.S. instance, mayA For own the how small. (1923), 254, 67 L.Ed. 516 the Su S.Ct. book, mayB in a while own the preme patent considered whether a Court into a screen- develop the book infringe assign holder could its claims book; may infringer A play. sue party another without also trans ment to may infringer screenplay. B sue an Like the 1976 ferring rights patent. of an exclusive But owners Act, the Patent Act that was Copyright instance, For neither sue. Supreme time the Court decid force at the example assign A B in the above could nor the explicitly did not forbid ed Crown Die infringe- an accrued claim for of action for of bare causes assignment legal if had no or beneficial ment C C infringement: in copyright. interest the Every any or interest therein patent Law C. Patent by in an instru- assignable shall be law strong con long We have noted the patentee in and the or his writing, ment and law: patent nection between inmay assigns legal representatives or in cases is precedent “Where convey an exclu- grant like manner and guid lacking, appropriate it is look for patent his to the whole right sive under of the historic patent ance to ‘because law any specified part of the United law and kinship patent between States. ” Corp., Records 734 law.’ Harris v. Emus 389, Cir.1984) 147, 6, § 42 Stat. 391 (quoting Pub.L. No. 1333 4849). (amending R.S. Neverthe- City Sony Am. v. Stu Corp. Universal less, held that a bare dios, 417, 439, Supreme Court 78 464 U.S. S.Ct. putative plaintiffs proprietary in give cannot rise to a cause of on the patent, not on contractual ex- terest infringement. The Court arrangements among parties regarding in durational terms pressed holding its may by 501(b): sue and who will be bound “If the that echo 17 own- can judgments.... [A]’right to sue’ clause infringements patent er of the when standing not confer on a bare licen one, patent to place assigned has his took ”); Corp. see .... Pharm. v. Ortho Genetics damages infringe- and his claims for (Fed.Cir. Inst., another, latter cannot sue ment to then the 1995) (“Thus, requires the statute that the compel assignor at all must his at law but parties infringement to an suit will have at of the claims to for him.” Id. sue patentee on one side and the accused reasoned: S.Ct. The Court infringer paten- on the other. Without the did not exist at [patent] monopoly “The plaintiff, provided tee as the remedies law, therefore, rights, common patent except statute are unavailable exercised under it cannot be extraordinary circumstances as where common regulated by the rules patentee infringer, is the and cannot law. It the act of is created Con- (internal quotation sue himself.” marks gress; rights acquired and no can be omitted)). statute, and in unless authorized interpret Copyright We should prescribes.” the manner the statute consistently requirement Act with the (quoting Gayler Id. at S.Ct. Despite the Patent Act. the differences (10 How.) Wilder, 477, 494, U.S. patents copyrights, between and be (1850)). L.Ed. 504 That text is substan- them, governing tween the statutes tively expression identical to the Court’s substantive, question common whether Wheaton, the nature of right property may intellectual U.S. at 663-64: be divorced from a cause of action for right copyright] This ... does not [in right. of that substantive if originated, exist at common law—it law, patent Under both sub all, congress. under the acts of No one stantive rights assignable; ques are deny legislature can that when the tion rights whether those are severable right about to vest an exclusive in an from the entitlement to sue someone for inventor, they author or an have the infringing rights requires those a similar power prescribe the conditions on analysis. rejected Crown Die the center enjoyed.... which such shall be piece here, reasoning the district court’s effectively a presump- Crown Die creates viz.: Congress because did not ex that, tion when we consider pressly proscribe assign statutory involving scheme intellectual alone, cause of action such a must property, common law doctrine does not Instead, exist. the Court used the same apply. logic that applied: we have No exist patent Courts to the continue read stat- with respect patents they to unless that, general, only paten- ute to mean in a affirmatively by Congress, created (or possesses tee an exclusive licensee may recognize only rights courts those may all substantial rights patent) appear the that in the statute. institute an infringement. action for D. Cases From Other Circuits II, Co.,

Prima Tek 222 L.L.C. v. A-Roo (Fed.Cir.2000) least, (“Standing not guidance Last but we turn for infringement depends entirely to sue for to the case law of other courts. Two other a the owner of all situation which questions faced somewhat circuits have rights confront here. We the exclusive and the owner of the to the one we similar the decision under action are two find the Fifth Circuit’s accrued causes of different persuasive toAct be less Copyright people. more recent than the Second Circuit’s to a The Second Circuit came different Act. Copyright the 1976 opinion under Copyright conclusion under the 1976 Act. Paperbacks, v. Neva In Prather Toys, Undergar In Eden Inc. v. Florelee (5th Cir.1969), an au- 410 F.2d Co., (2d Cir.1982), super ment the author assigned to publisher thor’s on other by seded rule and statute to the author’s work the both that grounds, the court held one who owns causes of action related and the accrued right no exclusive a pub- the author sued the the work. When infringement. for The court ex sue infringement, pub- the lisher plained: that the author lacked lisher claimed believed that a third apparently Eden Id. The Fifth Circuit standing to sue. Copyright under the basis for publisher that and held disagreed existed, namely Act authorization right to sue to clearly had transferred person a copyright holder suit author, therefore, author; could than an licensee. other infringement. Id. maintain an action for Eden/Paddington 9 of the 1975 Clause at 700. agreement contemplates ... such an ar- two unhelpful authority for Prather rangement. do not believe that the We First, it decided before the was reasons. Act holders of Copyright permits Act enacted and thus Copyright parties third copyrights to choose interpret on how we should does bear suits on their behalf. While 501(b). § to the 1976 predecessor 17(a) ordinarily permits P. F.R. Civ. Act, Act, simply afforded the the 1909 a ratify in interest suit party real to sue “proprietor” of Copy- brought by party, another 101(b) § infringement. U.S.C. stating quite specific right Law is (1952); B. Nimmer & see also Melville only “owner of an exclusive Nimmer, Copyright David Nimmer copyright” may bring suit. right under (1976). not define § The 1909 Act did omitted). (citations Id. at 32 n. 3 rights,” nor did “proprietor” or “exclusive entirely clear whether the It is not “legal or beneficial owners” provide Toys granted had right holder in Eden rights were entitled sue of exclusive causes of right to sue on accrued Eden the 101(b) (1952). infringement. action, here, only case as is the Act, features, in the 1909 missing Those Whether prospectively. to sue Act, in the 1976 are central present but retrospec- prospective or assignment was question. present on the decision however, tive, plain made the court Second, in- in Prather we also have derived principle, which basic accrued causes of action and volved both history, and its context call exclusive some of what we now would of an exclusive the owner assign- The contract included rights. to sue for under the is entitled ... title and interest right, ment of “all infringement. copyright” of the book involved. later, Circuit Therefore, years A the Second Prather, few 410 F.2d at 699 n. Music, Harrisongs are, Inc. v. faced, ABKCO as we decided the Prather court was not (2d Music, Ltd., certainty copyright ownership.” Cmty. Cir. 1991), in copyright Reid, a case which ABKCO Creative Non-Violence v. copyright song to a bought had both 730, 749, U.S. 109 S.Ct. 104 L.Ed.2d “any and and all assertable under (1989). it, phrased “[c]on- As we have copyright against Infringing Composi- gressional intent to have national uniformi- may any part in of the world which tion ty Syntek in laws is clear.” may or which here- have heretofore arisen Microchip Semiconductor Co. v. Tech. (Internal quotation marks after arise.” Cir.2002). omitted.)' in Although infringement sense, given That admonition makes before question had occurred ABKCO property. nature of intellectual Inconsis- the court held that bought copyright, among tent the circuits would lead to rules infringer “not out of ABKCO could sue protection different levels different ownership copyright, its of the but from its country, areas of the if even the same ownership of the claims themselves which alleged infringement occurring is nation- purchased, along copyright, with the wide. Id. at The Second Circuit 1978.” 981. was made clear its decision limited CONCLUSION entity pur- the situation in which the same chased both the and accrued assignment The bare of an accrued claims;1 timing, issue was one of impermissible of action cause under 17 ownership whether and 501(b). Because that is all Frank occurrence of the had to co- Silvers, conveyed & Bob Films Silvers principle incide. The court reaffirmed the entitled to institute and Toys party of Eden that a that has no against Sony maintain this action for al- sue; ownership interest has no leged infringement Copyright permit copy- “the Act does not “The Other Woman.” parties to choose third holders REVERSED. bring suits on their behalf.” Id. at 980. important parallel We think it BERZON, Judge, Circuit with whom First, Second Circuit for two reasons. and REINHARDT, Judge, joins, Circuit more importantly, independent analy- our dissenting: sis leads to us the same conclusion. Sec- I respectfully Applying dissent. ond, split the creation of a circuit would be analysis usual mode of used this circuit particularly troublesome in the realm of for determining whether a statute copyright.2 Supreme allows Court has noted claims, “Congress’ I paramount goal revising the would conclude enhancing predictability Silvers, 1976 Act of Nancey original as the creator sense, holding perfect 1. payment This makes as it is mercial transaction the ultimate consistent with the Act with the constitu- would be calculated minus the costs of suit. purpose encouraging tional authors by creating monopoly inventors a limited Act, Copyright Prather arose under the 1909 their works and inventions. When one ac- Therefore, Copyright not under the 1976 Act. quires infringed, a that has been Circuit, split we create no with the Fifth acquiring one is whose value has yet anything which has to decide about impaired. Consequently, been to receive 501(b), meaning provision of 17 U.S.C. impaired copyright, maximum value for the analogue that had no direct in the earlier convey one must also recover statute. impairment by instituting value of the course, right action. Of in this sort of com- sense,” acquires one Woman,” “[w]hen allowed feet because should “The Other that is copyright infringed, causes of action a that has been one the accrued pursue to her. assigned Films II & Bob value has acquiring Frank a whose “[e]onsequently, to re- impaired,” been 501(b) Copyright the 1976 Section impaired maximum value for the ceive standing requirement the Act establishes convey right also the copyright, one must actions: infringement impairment to recover the value of the owner of an ex- or beneficial legal The at instituting a action.” Ante enti- a is clusive 890, fn. 1. tled, of sec- subject requirements an action for to institute tion analysis, fact practical However this the particular infringement of a squared that it cannot be with remains the owner he or she is committed while 501(b), on which reading literal of section of it. And, majority otherwise rests. as 501(b). majority The relies § 501(b) is not necessari- language section meaning pro- of that notion that “[t]he deciding viability ly determinative clear,” 884, to con- ante at appears vision rights to sue for assignments of accrued to Silvers is assignment clude 501(b) infringement, section can- not own an exclu- invalid because she does not, analysis, further dictate the absent Ante at copyright. right under sive that no majority’s conclusion 890. of action without trans- of accrued causes however, is inter- majority opinion, underlying copyright permissi- fer of the is inconsistent, inadequate nally provides ble. conclusion, our ignores support for its analogous precedents. not de- language If the majori- on the inconsistency 1. The turns terminative, I with agree then what is? 501(b)’s limita- durational ty’s citation of assumption that back- Judge Bea that the tion, i.e., that the owner is not entitled principles apply with ground common law alleged infringement oc- unless the sue assignment of accrued causes regard to the owner of “while he or she [was] curred Copyright Act as to applies to the action as evidence of Con- copyright right],” [the I at 901-03. federal statutes. Post other circumscription persons gress’s tight however, Bea, at company Judge part standing to sue. Ante at 885-86. who have that an suggests at which he point “Congress’ majority maintains that accrued causes entirely free market for listing may of who sue explicit antidote proper is the should be understood of effective majority’s preclusion suing others exclusion of action. accrued causes of of such transfer Ante at 885. infringement.” Instead, I hold that at 905. would Post acknowledges, majority As the later Silvers, original given her status as however, hardly limitation is durational “work-for-hire,” of the contested creator holder sells airtight. After assigned accrued claims may pursue the new part, copyright, whole Films, complete while by Frank & Bob a cause of action pursue owner not. process could stranger to the creative long as the purchase, as accrued before majority’s strict statuto- Contrary to the along with of action is transferred cause assign- of valid question ry approach, fn. 1. The copyright. Ante development for the appropriate “is per- ment that this “makes majority maintains purpose of interstitial federal common law en of the anti-assignment provision [to harmony with the overall of purposes general sure] nor the goal of the statute would [Copyright stream III As by Act].” be served prohibiting type of as- Gulf Aerospace Corp., socs. v. 995 signment involved case.” Id. at [the] Gulfstream (3d Cir.1993). added). Our circuit’s (emphases precedents support approach this Second, assignee, we decided that general question of whether claims created Misic, sue, standing though had even by assignable. par federal statute are statutory provision authorizing suit ticular, deciding this circuit’s cases wheth beneficiaries, only “participants, identified er to assignments Employee enforce of fiduciaries, Secretary and the of Labor” as Security Retirement Income Act parties standing bring suit.2 Id. (“ERISA”) claims, which focus on whether 1132(a)). § (citing 29 U.S.C. Un- general goal “the of the statute would be case, majority like the in this we did not served of prohibiting type assign statutory consider the language determi- case,” ments involved Misic v. th[e] question native on the assignability of Bldg. Employees Serv. Health & Welfare Instead, accrued causes of action. we (9th Trust, Cir.1986) 789 F.2d looked to the relevant statute to determine curiam), (per provide helpful analog assignors whether the had standing, not to consideration of Silvers’ case. decide whether to assignment. honor the Misic provid- decided that a health care assignment We concluded that er, assigned of action accrued causes for permissible because “Dr. Misic ‘st[ood] health patients, welfare benefits his [b]eneficiaries;’ the shoes of the and Dr. pursue could his lawsuit. ERISA Our assignors, Misic’s beneficiaries under the analysis First, proceeded in steps. two we Act expressly by[the [were] authorized statutory reviewed the text decide statute] sue to recover benefits due permitted whether assignment ERISA added, under a plan.” Id. (emphasis sec- the claims for reimbursement of welfare ond in original). alteration spe- benefits. Id. at 1376-77. The statute cifically precludes assignment or alienation We took the general approach, same benefits, pension result, is silent as to opposite but albeit with the in Simon v. assignment Health, welfare benefits.1 inter- We Value Behavioral preted Cir.2000). assignment ERISA’s silence on in 1073 Although we read context, plan welfare benefit in light of Misic to assignment allow to healthcare explicit anti-assignment provision providers, we refused Simon to honor pension claims, assignment assignment to allow of wel- of claims “health care claims, fare because specific providers “[n]either whom the origi- beneficiaries provides: 1056(d). 1. ERISA § 29 U.S.C. Assignment or alienation of benefits (1).Each pension plan provide provided, shall 2. The statute part: in relevant "A provided plan may benefits under the (1) brought by partici- civil action be assigned be or alienated. (B) pant beneficiary ... to recover benefits (2) purposes paragraph For the plan, due to him under the terms of his subsection, this there shall be taken rights plan, enforce his under the terms of the any voluntary into account and revocable clarify or to his to future benefits under assignment percent not to exceed 10 plan.” 1132(a) terms of the any payment, benefit or of irrevoca- added). (emphasis assignment ble or alienation of benefits September executed before therefore, turn, to whether Frank & I at 1081. 3. claims.” Id. nally assigned their of the accrued Bob Films’ Misic, explains Simon Silvers, original cre- cause of action to health derivative granted we Woman,” of “The should ator Other we believed not because providers care 501(b). under 17 U.S.C. permitted law on derivative that federal common clear, is majority As the makes Silvers language trumps plain copyright and there- not the owner of the granted because We statute]. [the ordinarily permitted fore would not to sue providers health care permitting infringement claim. pursue they had of the beneficiaries place in in the ERISA Following approach our Congres- with was consistent treated above, inquiry the relevant cases discussed enacting ERISA. intent in sional assignment recognition of the is whether assignment to disallow decision Id. Our Congress’ with is consistent Silvers relat- was providers health care claims Copy- enacting in the 1976 overall intent concerns, as underlying policy public toed Act. standing would[have] Simon “granting] “to purpose is The basic transforming health tantamount

be[en] publication of the creation and promote com- freely tradable claims into benefit Ashcroft, v. expression.” free Eldred opposite Predicting that modity.” Id. 769, 186, 219, 154 L.Ed.2d U.S. 123 S.Ct. no parties third allow result “would (2003). “a diffi- Congress has struck beneficiary acquire relationship to of au- between the interests cult balance litigating solely purpose for the claims and in the control thors and inventors them,” recognize assign- declined to we writings and discover- exploitation of their a result “how such ment as it was unclear hand, society’s compet- and ies on the one Id. purpose.” further ERISA’s would ideas, in flow of infor- ing interest the free mation, the other hand.” and commerce used others have Both this circuit and Studios, City v. Sony Corp. Universal analyses deciding policy-based similar 429, 774, 417, 104 S.Ct. 464 U.S. stat of other federal assignments whether (1984). To achieve that bal- L.Ed.2d 574 Simon, See, e.g., utory claims were valid. ance, con- in “the traditional embedded (antitrust claim under at 1082-83 Eldred, protection,” tours of act); Pharm. Lake Clayton Klamath major are two 123 S.Ct. U.S. Bureau, 701 Med. Serv. v. Klamath Ass’n (1) as “be- protections: Amendment First Cir.1983) (9th (considering the only ... expression tween ideas and party a real rule that background protection,” eligible latter [is] in federal claims prosecute interest 769; “the ‘fair id. at 123 S.Ct. val assignment to hold that court public to use defense allows the use’ id); Ass’n v. Agric. Export Pac. Coast copy- in a contained only facts and ideas Growers, Inc., 526 F.2d 1196 Sunkist work, expression itself but righted also Accident, Cir.1975); Life, also Tex. see (citing 17 Id. certain circumstances.” Ass’n Hosp. Serv. Ins. Guar. Health & 107). 210, 215 Group, 105 F.3d Entm’t Gaylord of ac- (5th Cir.1997) nothing I see (using approach Misic’s Films for & Bob crued claims of Frank standing to consider whether “derivative created Silvers of a duty infringement work fiduciary of breach of assignees background these that violates pur to Silvers ERISA’s claims ... frustrate [would] inter- significant has principles. Silvers I do so here as well. pose”). would majority of “The places significant weight est Other Woman,” original as she was the creator. on Crown Die & Tool Nye Co. v. Tool & Works, have held might She well herself Machine 261 U.S. 43 S.Ct. right had she not contracted with Frank & (1923), dealing 67 L.Ed. 516 awith some Bob to create a work-for-hire. Al- Films question what similar patent law. relinquished though she to the The differences between copyright through her contract with Frank law, and patent between the nature of the Films, & Bob she maintained an interest in assignment case, in Crown Die and this important- how her work was used. More significant enough to warrant a differ creator, Silvers, ly, person is the ent result. system designed whom the In general, “patents copyrights do provide incentives for more creations. Eldred, exchange.” entail the same addition, allowing this assignment is 216, at U.S. 123 S.Ct. 769. “The dis consistent with “the need for free alienabil required by closure the Patent Act is ‘the ity divisibility” of copyright. and Gardner ” quid pro quo of right to exclude.’ Nike, Inc., 774, Cir. Ag Supply, J.E.M. Inc. v. Pioneer Hi- 2002). It also conforms with “the necessi Int’l, Inc., 124, 142, Bred 534 U.S. ty preserving] [of] and control 593, S.Ct. (quoting L.Ed.2d 508 of ... owners creators.” Id. Corp., Kewanee Oil Co. v. Bicron 416 U.S. Supporting this result is the consider- 470, 484, 1879, 94 S.Ct. 40 L.Ed.2d 315 501(b)’s ation, above, discussed that section (1974)). “For the author seeking copy have not limitations been and should not right contrast, in protection, disclosure is narrowly possible. noted, be read as as As objective, the desired not something exact majority allowing makes clear that a ed from the author in exchange for the copyright pursue owner to claims that ac- Eldred, copyright.” 216-17, 537 U.S. at copyright, crued he held the once before 123 S.Ct. 769. assigned along with the copyright, is emi- nently 890, sensible. Ante at fn. I1. see These distinctions are reflected in the why no reason allowing assignment governing rules suits for infringements of original creators of copyrighted works copyrights Patentees, patents. for ex without any would more un- ample, joined, “should be either voluntarily dermine the delicate balance that Con- involuntarily, infringement suit gress Moreover, has struck. Judge Bea brought by an exclusive licensee.” Prima notes, 900-01, post Congress at perfectly is II, Co., 1372, Tek L.L.C. v. A-Roo capable including anti-assignment provi- (Fed.Cir.2000) added). (emphasis schemes, statutory sions federal but de- markedly This scheme differs from that of clined to so in the 1976Act. infringement suits, as a copy “ hold, I therefore, would that Frank may & holder transfer the ‘exclusive’ Films, Bob for whom completed rights Silvers to use and to authorize the use of work-for-hire, her may assign its accrued qualified ways.”3 his work five Sony causes of action related to that Corp., 433, 104 work-for- 464 U.S. at (citing S.Ct. 774 106). hire to Silvers. so, 17 U.S.C. Once he does “[t]he notes, 886-87, majority 3. As the ante at sion of an exclusive be owned and legislative history 94-1476, 1976 Act’s separately." H.R.Rep. indicates that No. enforced "[ejach rights may of the five enumerated reprinted at in 1976 U.S.C.C.A.N. and, indefinitely added). subdivided (emphases ... each subdivi- holds, have made an but would patentee any particular owner commodity a right, to all accrued cause of action entitled, of that to the extent market, permitting assignees accorded to without open and remedies protection invention to patented owner.” connection 201(d)(2). claims, sole “with the pursue at harassing [infringers].” Id motive of mind, I do not differences these With Nye and Crown Die 43 S.Ct. 254. That Die, on Crown majority’s find the reliance only have rein- competitors were could (1923), persuasive 43 S.Ct. 261 U.S. forced this concern. majori- in the current circumstances. effectively cre- that “Crown Die ty states in a era of 1976 Act new ushered that, consider when we presumption ates law, leaving place while involv- statutory scheme standing under “to goal copyright: general principal law doc- common property, intellectual ing publication promote the creation I at Ante 889-90. apply.” trine does not Eldred, 537 U.S. expression.” free state- for such broad support no find why Frank 769. I find no reason 123 S.Ct. changes to ment, significant given accrued Films’ & Bob’s decid- Die was law since Crown Nancey Sony to Silvers against claims longer no of a ed. Issuance I goal. re- comport does author,” in an right an exclusive “vest[s] spectfully dissent. (8 Pet.) 591, Peters, 33 U.S. Wheaton added), (emphasis L.Ed. 1055 BEA, Judge, with whom Circuit copy- that the but several KLEINFELD, joins, Judge, Circuit infinitely. divide right holder then dissenting: Furthermore, who holds unlike an inventor in this case is question presented The copyright holder original patent, a of an accrued cause assignee whether every infringe- involved not remain need infringement, who has action for copyright. brought under ment copy- interest legal beneficial no addition, critically, Die Crown copy- for itself, standing to sue has right very factual scenario with a different dealt Enter- Sony Pictures infringement. right here. Reed Manu- the one we than have the district (“Sony”) appeals Inc. tainment aof screw-thread facturing, patentee its motion to dismiss denying court’s order by Wright invented cutting device (“Silvers”) copy- claim for Nancey Silvers’s Hubbard, infringement claims assigned its 17 U.S.C. right Company to Tool Die & against Crown 501(b) standing under Fed. lack of § for Works, competitor Nye Tool & Machine 12(b)(1). en rehearing After R.Civ.P. Die, 261 at 25- U.S. Die. Crown of Crown assign- holds such banc, Majority now assignment would 26, 43 S.Ct. 254. The standing sue do not have ees ifus analogous to the one before been have the dis- reverses infringement and right Wright claims to assigned its Reed had Sony’s motion denying court’s order trict Hubbard, competitor than to rather to dismiss. not, there- Die did Die. Crown of Crown we have fore, precise question decide the text, his- purpose and that the I believe us. before (“1976 Act Copyright tory of the Act”) accrued assignees of an such allow Die would in Crown A different result infringement. claim to sue significant tension only have created dissent. respectfully I Accordingly, that a monopoly the nature of I. key to understanding the legislative Act, history then, of the 1976 anis under- I quite agree Majority with the that the standing history sue point in starting necessarily this case is under copyright law as it existed prior brought statute under Silvers the 1976 Act. When read context with op. suit. See at 884. Section copyright law that existed before the 1976 provides, in pertinent Act part: Act, portions and the of the law that were changed by Act, a conclusion legal or beneficial of an owner ex- different from the Majority’s reading clusive under a copyright is enti- emerges. tled, subject requirements of sec- 411,1

tion to institute an action for A. History the 1909 Copyright Act infringement of that particular (“1909 Copyright Under the Act of 1909 committed while he or she is the owner Act”) (codifying copyright law before the of it. Act), enactment of the 1976 “propri- 501(b) (1976). etor” of a was afforded to sue infringement.3 17 Turning principles, then, to first it is 101(b) (1909). While the 1909 well-established that courts should inter- Act did not define the “proprietor,” term pret a according to statute its mean- plain interpreted courts that term to mean the ing. Robinson, See United States v. See, “sole copyright. owner” e.g., Cir.1996) (“If Nike, Inc., Gardner v. 777- of a language statute is unambiguous, the (9th Cir.2002) (discussing general controls.”). plain meaning However, history of Act and holding that a where a statute ambiguous, courts sublicensee of a copyright lacked standing should consult a legislative statute’s histo- Act). to sue the 1976 ry to Congressional discern intent. See Daas, United v. States 198 F.3d 1174 The 1909 Act predicated was on the (9th Cir.1999). Here, as the Majority ac- “doctrine indivisibility.” Id. at 778. knowledges, the is, statute does not Act, address That under the a copyright owner present question and is am- possessed therefore an indivisible “bundle of rights” biguous.2 (“[w]e op. See at recog- 885-86 “incapable were of assignment 501(b)’s] nize [Section that explic- part.” omission Accordingly, Id. assignment under itly to present question address the may the 1909 Act included totality “the ambiguity.”). create an commanded copyright.” Id. provides 1. 411 Section that any person no action shall be If infringe shall copyright copyright commenced unless the any protected has been copyright work under the registered. § 17 U.S.C. 411. laws of person the United States such shall be liable: Indeed, 2. language of the statute cannot (b) clear, amount; Damages profits; and be all that even to the Majority, since other remedies. "plain even it eschews meaning” rules of in- pay copyright To to the proprietor terpretation legislative and recurs to sources. damages copyright proprietor as the Op. at 885-87. infringement, have due suffered profits well infringer as all the which the Act, Copyright 3. The § shall made infringe- have from such (1909), provided, pertinent part: ment. ... 101(b) (1909) added). Infringement (emphasis copyright accorded to the and remedies than an as- less “[ajnything Transfer owner.”). Id. a license.” considered signment use of particular Regardless proprietor copyright “only Copyright Act

right, History B. the 1976 a but not (which assignee include would years of 15 Act was the result The 1976 in- licensee) bring an standing to had and was legislation proposed debate on added). (emphasis Id. action.” fringement that Congress’s recognition precipitated had copyrighted stand- works granted the statute nature of though Even that, during the of the entire noted “proprietor” changed. Congress solely to the ing as- of the 1909 half-century passage allowed nevertheless since courts copyright, techniques for Act, range of action of new accrued cause “a wide of an signees mat- infringe- communicating printed capturing to sue infringement ter, Prath- and recorded sounds rights.4 images, See visual property their ment of H.R.Rep. No. 94- into use.” Paperbacks, have come v. Neva er Cir.1969) (5th accrued (assignee reprinted example, standing to sue 5775. For had 5659 at U.S.C.C.A.N. cause only in performed Moran longer opera see also was an infringement); no Ltd., Records, theater, per- could be such work but London v. television, videos, Cir.1987) movies, rec- applying courts formed (noting ad- assignees ords, had Such technical and other forms. Act held the 1909 new infringe- new industries and “generated standing to sue for vances claim, ment). like and dissemina- production for the methods sold, works, asset,5 busi- copyrighted could contingent tion other claim and users holder’s authors ness relations between much like the clipped Id. coupon patterns.” new have evolved against a trade debtor portfolio. bond holder’s from the end, Congress recognized Toward “infi- need to divide the commercial the as Moreover, against all defenses recogni- uses in nitely subdivide” assignee, against valid signor were technologically driven increasing tion of assignor. in the shoes” who “stood and dis- reproduction means of Francis, varieties of Hunter Day & T.B. Harms & Cir.1916) Thus, purpose main (2d one tribution. Stern, 231 F. time, recog- to was, for the first 1976 Act assignees of plaintiffs, (holding of “divisibility” of uses of contract, principle nize rights under composer’s convey ability to copyright, and the assignor of in shoes” [the] “stand repro- various separately to to uses rights mutuali lack of defense of assert the could ducers, did exist rights which divisible contract). also ty of See 94- H.R.Rep. No. Act. See (“[tjhe the 1909 201(d)(2) (1976) any par of owner in reprinted entitled, at to the ticular exclusive 5659 at protection U.S.C.C.A.N. right, to all the of that extent infra. enterprise that will gain to an addition, [] or loss [] to mere denied courts 4. fu- or more copy- ultimately when one rights of the be resolved partial or uses of licensees Prather, 700. Statement F.2d at of to occur.” right. events occur fail See ture Accounting No. Ac- Standards of Financial exist- liability as "an Contingent is defined 5. ¶ (FASB March counting Contingencies situation, condition, of circum- or set ing 1975). possible involving uncertainty as to stances Congress recognized further that allow- given join fied and a chance to the ac- ing “divisibility” of the copyright re- tion. quired whereby a mechanism heretofore H.R.Rep. No. 94-1476 at reprinted in owners of barred exclusive licenses could 1976 U.S.C.C.A.N. 5659 at (emphasis sue for infringement. now Ac- added).6 cordingly, Congress enacted Section 501 of Far from “suggesting] strongly that the 1976 Act provide to access to the Congress intended to limit of class courts the owner of one or rights more persons infringement,” sue for use,

to exclusive but did not mention the op. added), at 886 (emphasis the statement right of the owner of the overall above italics—and omitted from the Ma- 501(b). sue. See U.S.C. jority Opinion that Con- —demonstrates Indeed, providing for the gress of intended to enlarge ability sue, exclusive licensees to the drafters of bring suit to the owners of exclusive the 1976 Act stated: rights.7 principle the divisibility Read in provisions context with of (to ownership, by established section 1909 Act the extent the acts are not

201(d), inconsistent), carnes it the need in in- and contrary Majori- fringement to safeguard actions ty’s conclusion, the 1976 Act’s Section 501(b) all owners and to was an enlargement of infringement multiplicity avoid suits. Subsec- action rights. Henceforth, standing was (b) tion of section 501 enables the owner not limited “proprietor”8 particular right of a bring an infringe- original copyright; legal or beneficial alone, ment action in that owner’s name owner of exclusive rights severed as- at while the same insuring time signment original from the copyright also extent possible that the other owners had standing to infringement. sue for rights may whose be However, affected are noti- nothing in the 1976 Act eliminat- Testimony George (Comm. also Cary, 1960) D. S. Brown ("[ajlleged Print in- Office, Copyright Copyright fringers Law probably Revision protected should against Grossman, reprinted 4: George Part S. multiple licensees.”); suits nonexclusive Copyright Legislative Omnibus Revision Histo- See Staff of Senate Judiciary, Comm. On the (2001) ("Committee ry, Vol. 3 Report”) Cong., Study 86th No. Divisibility 11: (stating (b) provides "[s]ubsection Copyrights, for the Meyers Statement of Ernest S. by "any (Comm. institution of an action 1960) ("[t]he owner of an Print law should in- right. This section was so worded provision clude a permitting an exclusive li- problem take care divisi- joining censee to sue grantor; without his effort bility.") added). (emphasis Provided, This statement provision That such a is restricted to was in reference to Section of an earlier an exclusive rights.”) license enumerated of the 1976 Act. draft Like enacted Sec- (emphasis original). 501(b), 35(b) provided tion Section that the "legal or beneficial bring owner” could suit. 8.Note that the 1909 Act did not create a Report See Committee at 116-117. private right give standing of or to the "proprietor” by any language such as did 7. To purports the extent the 501(b) statute to limit Section of the 1976 Act. See 17 suit, persons Rather, those able to (1909). it limits the it enumerated the rights of non-exclusive bringing licensees from "proprietor” "remedies” which the had under suit. This is consistent with purpose the of the 1909 Act. As "proprietor” other —a Comm, See Act. Staff person of Senate owning property implied he —it Judiciary, Cong., Study 86th No. 11: Divi- had a damages to sue proper- to his sibility Copyrights, of Ralph ty- Statement of once written. interpret phrase a must copyright owners of

ed descriptive generaliza- aas reme- Understood Act to their of the 1909 Section a pres- rather than language tion about property owners dies, right of nor the construction, the maxim rule of by criptive rights granted property enjoy syntactical usefully a common en- describes statute, including Jonathan, ‘My children are implication. action. causes of accrued of forcement my ‘none of means and Seth’ Rebecca only believe, way That, is the I —and there Sometimes children are Samuel.’ 501(b). read Section way—to milk, ‘get pregnant: negative no is bread, eggs at the butter and peanut II. ‘do not does not mean grocery’ probably concludes that because Majority ” get ice cream.’ expressly grant statute does Rasmussen, action, Co. v. Longview of Fibre an accrued cause of assignees (9th Cir.1992) (internal standing. See F.2d have do not persons such omitted). R.R. also Nat’l Rather, Majority rea- citations op. 885-86. R.R. statutory Corp. v. Nat’l Ass’n Passenger of that, the maxim applying sons of 453, 458, 94 S.Ct. Passengers, al- 414 U.S. exclusio expressio unius construction (“This principle listing of L.Ed.2d 646 est, explicit “Congress’ teñus an- reflects an statutory of construction may sue est exclu- expressio unius an exclusion cient as be understood should of maxim — even the most basic Op. ... But infringement.” sion alterius suing for others view, statutory construction my original). general principles (emphasis at 885 contrary evidence yield to clear this maxim of stat- must Majority misapplies intent.”). Here, Congressional legislative utory construction. and, discernible, as dem- readily intent is statutory con- First, maxims such above, contrary Majority’s onstrated only when Con- are to be used struction maxim. application of the In- discerned. cannot be gressional intent deed, Second, noted that noted: we have commentators have statutory construc- unius, the use of maxims expressio strongly put,

Most ” proble- unius “expressio tion as indusiounius, is principle hierarchy no there is matic insofar as to be thing limits statute ‘[w]hen Why interpretation. statutory mode, maxims of includes a particular in a done than anoth- rather expressio unius is a choose This any other negative mode.’ maxim, indeed, opposite: the exact of law. er a rule interpretation, not rule of (see others? include listing some cases logic product ‘a maxim is book, A Matter In his recent infra). fn. sense,’ applied properly common wrote, Justice Scalia Interpretation, a matter of it makes sense when of the matter hard truth expressio “[t]he legislative purpose.... [T]he intelligible, gen- have no courts American what we usual- describes principle unius consistently applied erally accepted, of ex- manner particular ly mean An- interpretation.”9 statutory theory of how we prescribe but does pression, Lament, not neces- and are Safranek, in isolation are often used Stephen J. Scalia’s 9. See 2004) controlling sarily method (Spring & Pol. Rev. L. Tex. Karl N. interpreted.”); see also statute is among maxims hierarchy (noting the lack of Theory Appellate Llewellyn, on the Remarles interpretation; the cases statutory “in of How aids, About Rules or Canons Decision and The aids apply interpretive judges where 900 Scalia, benefits).

tonin A Interpretation, Here, Matter 14 sion that Congress did Hart, Henry (quoting M. Jr. & Al- prohibit assignment not Sacks, Legal bert M. The Process 1169 carry claims well negative pregnant (William Eskridge, Philip N. Jr. & P. that it prohibit intended not to assignment. 1994)). eds., Frickey A second consideration in in- statutory Third, statutory while maxims of con- terpretation practicality, put another indeed, may, helpful struction in inter- way, the avoidance of an absurd result. statutes, preting they binding. are not Co., Royal Foods Inc. v. RJR Hold- Founders, including The Alexander Hamil- (9th Cir.2001) ings 252 F.3d 1102 ton, recognized much. as See Alexander (courts will not interpret way a statute ain Hamilton, Papers, Federalist No. 83 that results an absurd or unreasonable (Clinton 1961) (“The ed., at 464 Rossiter result). Here, were the statute to be read rules legal interpretation are rules of literally, would result or un- absurd sense, adopted by common courts in reasonable results. the construction of laws. The true test of long It has recognized been assign- just application conformity of them is its ment of does not automati- with the source from they are de- cally assignment include causes rived.”). accrued of action infringements for earlier Hence, guided by rather than be a Latin Prather, copyright. See 410 at 700 maxim nowhere mentioned the 1976Act (“ ‘a mere assignment of a copyright does or our jurisprudence hierarchically pref- itself transfer assignee any erable other statutory means of inter- cause of action infringements that oc- pretation, guided we should be by plain prior curred to the assignment. Unless intent, legislative which, Supreme as our assignment lan- contains us, Court trumps reminds the ancient Lat- guage explicitly transferring of ac- causes underpinning maxim Majority Opin- tion for prior infringements, the assignee ion’s conclusion. See Nat’l R.R. Passenger cannot maintain a suit for infringements Corp., 414 U.S. at 94 S.Ct. 690. which happened before the effective date Indeed, it should be noted that where ”) (internal assignment.’ citations Congress chooses to expressly prohibit as- omitted). See also DeSilva Construction signment, it knows how to do explicitly. so Herrald, Corp. F.Supp. See, e.g., Federal Anti-Assignment Act of (M.D.Fla.1962) (holding that assign- 1862, 41 § (expressly U.S.C. prohibiting ment of copyright under 1909 Act does public against contract claims the U.S. include the to sue for “infringements government being assigned); Federal antedating assignment” and since the Assignment of Claims Act of assignment as written failed to contain U.S.C. (expressly prohibiting as- grant, such a “no such right is conferred signment of federal against claims the U.S. by the assignment”). government from being assigned); Em- ployee Retirement Security Income Act of recognition to an (ex- 1974 (“ERISA”), (in accrued cause of action did not pressly prohibiting pen- absence of an express assign- contractual Construed., Vand Are to Be

Statutes expressio L. Rev. unius exclusio alterius est is "[t]he (1949-1950) (noting language may "there are fairly comprehend many differ- two opposing every point”; canons on almost ent cases where expressly some men- noting opposing that the way example”). canon for tioned n if obtain: following result would automatically follow rights) of such ment for instituted suit copyright owner neces- copyright is of the assignment the (“while was the own- infringement he the two that recognition sarily a after er”), assigned copyright the then assets. being separate capable be should suit, assignee the of the instituting such assets, any other property like separate As cause of action and the accrued copyright separately rights can be the two right, suit, the as- such for could maintain decid- squarely was That much alienated. in- when the not the owner signee was Prather, supra. ined addition, the text occurred. fringement Act, have courts the 1909 to Similar that when the read such would have to be an to mean that 1976 Act interpreted the exclusive “he” or “she” who owned not auto copyright does of a infringement right at the time un it accrued claims matically carry with dies, cannot or “her” heirs “his” copyright specifically named claims are less such action, infringement institute example, For assignment. the contract same reason. Print v. Meredith-Webb Infodek, Inc. not been so (N.D.Ga. Luckily, has Section Co., Inc., F.Supp. ing 501(b). Act, 17 U.S.C. interpreted. 1993), interpreting Rather, interpreted to has been that the section clearly case law states held “the court !of the ac assignee post-1976 allow the damages for accrued of interest a transfer the suit action to crued maintain It cause in no uncertain terms. must be stated Indeed, action. causes of past for accrued of interest transfer follows that the assignees of a recognized courts have [assignor] pass infringements did action institut may maintain an copyright assign in the first assignee] [plaintiff during which previous owner transfer ed alleged intent to despite the ment infringement ownership the previous Infodek, damages.” all accrued any and Music, See, Inc. Prather, e.g.,ABKCO claim arose. (citing F.Supp. at 620 Ltd., Music, 944 F.2d 971 Harrisongs 700). F.2d at Cir.1991) (2d (allowing plaintiff the 1909 under both recognition had infringement suit for cause of Acts that an accrued owning plaintiffs prior occurred sep- is an infringement asset was as plaintiff interest where or the exclusive arate from of ac accrued causes right to signed the 501(b) from copyright saves uses 201(d)(2) tion); also see absurd results. some (“[t]he any particular owner right, entitled, of that to the extent does, Majority Section as the Read accord protection all remedies a claim for relief converts the 1976 Act owner.”). toed estate, by pro- into a life infringement in- action for a cause of viding bring suit can if individuals Accordingly, person for the fringement but that did claim an accrued right at the time owned the exclusive owner, he or she was while not accrue preclude The statute would infringement. cause of reason the accrued no there is accrued copyright and assignee of the assigned here. action cannot accrued suing on an action from causes of lead principles fundamental Other infringement, action—which cause of not intend Congress did he or conclusion while “committed was not definition assignment of owners of bare preclude it.” owner she having accrued causes of action from The courts consistently have legis- held suit. lation derogative of the common law ac- an countable to exactness of expression, First, it is well-established that contract and have not allowed the effects of such rights assignable are at law. common See legislation to be beyond extended (Second) Restatement Contracts necessary and meaning unavoidable 317(2)(b) (1979) (contract rights assigna- its terms. The presumption runs assignment ble unless the is by- “forbidden against such innovation. statute”). Airlines, See also TransWorld Coupon Exchange, Inc. v. American Richardson, v. 133 F.2d Scharfeld (9th Cir.1990) (noting (D.C.Cir.1942). Chateaugay also In re “the is in favor of presumption assignment (2d Cir.1996) Corp., 94 F.3d contract]”). Here, (“there assignment [of is nothing, either in the language accrued cause action for or in legislative statute its history, an assignee is nothing that would lead us to Congress believe that “simple assignment more than of a chose meant the to abrogate statute common law Prather, in action.” See 410 F.2d at 699- rights against refunds....”); of setoff At- torney General Reyn- Canada v. R.J. olds Tobacco Holdings, matter, general As a common law (2d Cir.2001) (construing civil RICO existing prior to the of a enactment statute statute to preserve the doc- common-law remain in vigor expressly unless abrogated rule,” trine known the “revenue which by statute. “[Statutes which invade the prohibits sovereign one from enforcing tax ... common law are to be read with a judgments or claims of sovereign, another presumption favoring the retention of “absent congressional clear evidence of in- long-established familiar principles, it.”). tent to abrogate except statutory when a to the purpose contrary is evident.” bar, United States case at nothing there is Texas, 529, 534, 507 U.S. 113 S.Ct. 1976 Act which expressly forbids 123 L.Ed.2d 245 that states (holding the basic contract at right subject remain prejudg- common-law issue here. ment liability interest where the federal Accordingly, Majority errs in rea- debt legislation collection directly did not soning “is a creature of speak to the common law statute, the only rights that exist un- government federal prejudgment to collect der law granted are those states) interest debts to it by owed Op. statute.” at 883-84. See op. also (internal quotation marks and citation 885. (“Copyright statute, is a creature of omitted). Indeed, Supreme Court rec- so we will lightly insert common law ognized cases, that “in Congress does out.”). principles Congress has left upon Rather, write a clean slate.” Id. This conclusion is tension prin- with the “to abrogate a principle, common-law ciple that common law rights will be statute must ‘speak directly’ ques- deemed to retained except where there

tion addressed the common law.” Id. is statutory language and purpose (internal quotation marks and citation contrary. principle This militates favor omitted). of the court’s retention of the common law is,

That courts will not a stat- construe to assignment of contract. Accord- ute derogation “in of common law” ingly, unless Majority’s reluctance to “insert there express Congressional intent: common principles” law is unfounded here claims added), and welfare health sis to as- abrogating it errs assignable). rights.10 contract sign III. other interpreted Second, courts have confer expressly statutes federal the case Next, Majority argues that grant to persons also certain pat standing the area of developed in that law has For rights. the it assignees respect, With standing analogous here. ent law is assignees that Majority held asserts have particular, courts In the example, is not. the 1923 deci under Court’s Supreme accrue claims that the that U.S. of antitrust 15, Nye Tool § Tool Co. v. Die & Act, 15 U.S.C. sion Crown Antitrust Clayton 24, Works, 43 S.Ct. 261 U.S. viola- & Machine antitrust for standing to sue have C.J.), Taft, 254, (per L.Ed. 516 67 “any person that provides act tions. an of whether question dealing with the yet can sue injured” be shall infringe patent of action for accrued cause to con- the statute interpreted courts have indeed, and, controls ment, analogous of antitrust assignees standing on fer disagree. I respectfully here. Associ- See, III e.g., claims. Gulfstream Die, Hub- Wright inventors & Corp., Aerospace Crown ates, v. Inc. Gulfstream forming a Cir.1993) (3d a machine bard invented 425, 438-40 25, at 43 Id. cutting device. screw-thread Act, 15 Antitrust Clayton the (Though assigned Wright & Hubbard 254. S.Ct. “any person 15, that provides § U.S.C. Manufacturing the Reed patent the sue, antitrust can injured” be who shall Thereafter, Nye (“Reed”). Id. Company assignable). claims Tool”), first (“Nye Works & Machine Tool simi- have been federal statutes Other claims recoverable “all from Reed obtained See, v. Lerman e.g., larly interpreted. damages, equity, whether in law or in (3d 106, Int’l, Inc., 112-113 F.3d 10 Joyce kind or de- any other or savings, profits, “any Cir.1993) (RICO that provides statute Manufacturing the Reed scription which property” or injured in business his person &Die Crown against Company has claims are RICO sue; that court held may infringe- arising out Company Tool Build- v. The Misic see also assignable); Company.” Tool Die & Crown ment and Wel- Health Employees then ing Nye Service Tool 26, 254. at S.Ct. Id. 1374, Trust, 1377-78 Tool Die Crown & prevent brought suit fare statute, curiam) (ERISA Cir.1986) Die”), company (“Crown tool (per Company assign- screw- 1056(d), using prohibited competitor, 24, benefits, ex- S.Ct. not but did Id. cutting device. pension thread ment of opinion, health in the stated not 254. While prohibit pressly Tool statute, Nye plaintiff benefits; though the to reason stands and welfare Act of the Patent “A civil 1132(a), brought suit provides that: assignee, “patentee, or provided by participant brought patent bring suit could grantee” benefits due ... to recover beneficiary infringement.11 (empha- plan,” his the terms him under Die, of Crown way. discussion the other does Although in Crown Die the court 10. law common principle that apply baseline infra. abrogated expressly rights survive unless 1793. passed in Act was Patent statute, there ground that first it does so on 11. Chakrabarty, 447 U.S. no See Diamond there be intent that express legislative 308-09, L.Ed.2d S.Ct. Here, history cuts legislative assignment. Crown Die moved to dismiss the com right because to do so would result plaint on grounds Nye Tool did aftermarket patent claims.12 The court suit, have to bring for Reed reasoned that: patent owned and had granted was obviously [I]t not the intention of Nye a portion Tool of its thereunder. the Legislature permit several mo- I d. at S.Ct. The court of nopolies to one, be 'made out appeals reversed the district court’s order among divided persons different within granting defendant’s motion to dismiss and the same limits. Such a division would Supreme U.S: Court reversed inevitably lead fraudulent impositions court of Id. at appeals. 43 S.Ct. 254. upon persons who purchase desired to In reversing the court of appeals and af the use' of improvement, and would firming the district court’s dismissal of the subject who, party a under a mistake as complaint, Chief Justice Taft reasoned that rights, to his used the invention without law common doctrine of of authority, be by harassed a multiplici- a cause of action apply does not to patent ty one, of suits instead of and to succes- law patent because law ais creation of sive recoveries of damages by different statute. specifically, Id. More Chief Jus persons in place. the same tice Taft reasoned patent 38, Id. at 43 S.Ct. 254 (quoting Gayler by v. “created the act of Congress; and Wilder, 477, 51 494, 477, no U.S. 10 rights can 'be How. acquired in it 13 unless (1850)) (internal L.Ed. 504 by statute, quotation authorized and the manner omitted) added). marks (emphasis prescribes.” 40, statute at Id. 43 S.Ct. (quoting Wilder, 254 Gayler 477, 51 U.S. First, in contrast to the Chief Justice’s 494, (1850)). 10 How. 13 L.Ed. 504 1923 reading of an Law, 1874 Patent it In so holding, the clearly court reasoned that was the intent of the Legisla- 1976 there was no legislative permit intent “permit ture to several monopolies to be splitting of the claim from the underlying one,” made of insofar as the six individual (1980). patent Later passed acts were ship copyrighted to the pay work a small (5 117), (16 198), 1836 Stat. Stat. copyright sum to the might owner—who (18 78) Stat. Presumably, 1952. Id. have no in the infringe- belief merits of an therefore, litigation in or commenced around ment claim and no incentive to sue—in brought have would been under the exchange ability pursue for the high a Patent of provided, Act 1874. That Act volume of nuisance or unwar- settlements pertinent part: "[d]amages infringe- for the jury ranted verdicts. any patent may ment of by be recovered ac- Brief of Amicus Curiae Motion Picture Ass’n case, tion on the in the party name of the America, of (emphasis added). at 4 Inc. interested, patentee, assignee, either as or Amicus leaves faint nostalgia whiff of for grantee." Patent Act of 18 Stat. Age the restrictions of the Imagine of Guilds. Accord, Section 4919. Act of Patent what mischief would ensue if cafes across the ("A patentee U.S.C. 281 remedy by have shall street from the Burbank studios were to be infringement civil patent.”). action of his by trolled risk-seeking clutching men cash. Indeed, case, Amicus Why, Curiae in this Motion thing next happen that would would America, Inc., Picture argues Association of be something to allow similar to what did precise brief, point. this argues: In its happen in non-ship London: being owners assignee Should nothing of paid more than a and, to take shipwreck, by risks of infringement naked cause action have subrogation, gaining negligent to sue sue, standing to copyright number of owners, captains and all of this mendacious infringement lawsuits could increase mark- money-grubbing taking place Lloyd’s at Cof- edly ... one can develop- envision a market fee House! ing speculators in which with no relation- prohibited is to be infringement copyright single copyright uses separate unwar- at worst an passe and 201(d)) “divided is best only be (Section could not Bank See on alienation. restraint ranted but subdivided persons,” among different America, 201(d). Moglia, N.A. v. 17 U.S.C. infinitely. See (“re- J.) Cir.2003) (Posner, upon pur- Second, of fraud avoidance traditionally on alienation straint[s] uses was of “several” chasers limitations, disfavored.”). Indeed, regis- regulation: be avoided suit, harken back those able (1909) Act, Section tration. in- limited England Kings Tudor (“no shall main- proceeding action primogeniture descent heritance copyright in infringement tained for fee tail. this Act with provisions until the work regis- copies and deposit Here, will account respect to the market com- have been ac- selling work shall of such holder is tration fact that 411(a) Accord, with”).13 underly- and not plied of action crued causes (“[n]o sure, will fluc- prices To be ing copyright. be instituted any work shall on whether depending tuate claim registration until is included. itself this in accordance made been has recognized courts have Finally, while title.”). cases “[wjhere in precedent of multiplicity Third, of concern to look appropriate it is lacking, is of owners of several because suits14 of the law ‘because patent guidance overcome expressly uses seems law patent kinship between historic ” (not “an” of by the owner suit allowing 887) (internal (see law,’ op. at 501(b)) (§ “all”) recog omitted), have also courts citation law, suit. two areas that “[these] nized twins, we naturally, are not identical of severabili- Moreover, the notion while have ex we which the caution proper- exercise ownership of of ty of the incidents doctrine applying in past in the pressed at the time in 1928 infancy in its ty was other.” area to the in one formulated decided, such is not Die was Crovm City v. America Universal Corp. Sony Indeed, prem- underlying today. case of 19, 417, 104 Inc., 439 n. Studios, 464 U.S. relies is Majority upon ise which (1984). also See 774, 574 L.Ed.2d 78 in S.Ct. aftermarket not be an should there 217-218, 201, 74 Stein, 347 U.S. v. infringe- Mazer of action causes (1954) (declining to 460, L.Ed. 630 S.Ct. anof aftermarket growth ment. Given due copyright law law to patent apply puts, calls rights such in derivative law). these For in bodies risks differences bankruptcy against insurance credit compel reasons, does Die Crown debt, that an notion after- corporate on here.15 contrary result accrued causes market owned partners who ( against all five (1952) "[ejvery tected § 30 13. See also no judgment of defense he had a patent, if copyright shall be recorded assignment of brought one an action office”); U.S.C. 205 them? ownership or oth- (“any transfer may be pertaining to er document on Prima Majority's reliance 15.Similarly, Office.”). Copyright recorded 1372, Co., II, 222 F.3d v. A-Roo L.L.C. Tek op. at (Fed.Cir.2000) misplaced. See Why very clear. been made never 14. This has involve the That case does infringer pro- not be alleged patent should an IV. nature legal high services which involve (internal ly confidential relationships”) Unlike circumstances which pro- omitted). quotation and citation More liferation of has been lawsuits restrained over, upheld courts have restrictions on in- on the public basis of policy, such as the person attorney solicitation, enacted to prohibition assignment on personal inju- prevent public’s perception of attor tort, ry claims in here no there is reason to neys falling in further disrepute, as prevent assignment of a copyright rooted in the common law of barr doctrine Indeed, claim. the court in Prather ex- atry.17 It, See Florida Bar v. Went For pressly held there public was no such poli- 618, 626, U.S. 115 S.Ct. Prather, cy. (“[tjhere 410 F.2d at 700 (1995). L.Ed.2d 541 See also Bailey v. public is no policy against assign- Morales, (5th Cir.1999) 190 F.3d ments.”). (legal profession barred from soliciting un der ancient doctrine prohibiting barratry). upheld Courts have restrictions on the assignment of claims where such assign addition, courts have upheld restric- ment has been deemed to in violation tions assignment of certain federal public policy. This anti-assignment policy claims where of such claims was rooted in the common prohibition law would result in nuisance For suits. exam- See, on champerty.16 e.g., United Food & ple, in Ayres, Smith 977 F.2d Commercial Workers & Employers Ari (5th Cir.1992), plaintiff shareholder zona & Health Trust v. Pacyga, Welfare brought suit under section Cir.1986) (noting Securities Exchange Act of that assignment personal injury claims provides “purchasers or sellers” of is prohibited by common Arizona); law in securities may bring suit. plaintiff The had See also DeSenne v. Jamestown Boat granted been an express assignment of the Yard, Inc., (1st 968 F.2d 1390 Cir. claim. The defendant moved to on dismiss 1992) (noting that anti-assignment per of ground the plaintiff standing lacked sonal injury claims prohibition rooted in and the granted district court the motion. champerty). affirmed, The Fifth Circuit concluding that

Similarly, (1) such a courts have result was held that warranted legal the fact malpractice “Congress claims was assignable for concerned with black- public policy See, mail, nuisance, reasons. e.g., Forgione suits, and strike and draft- Inc., Dennis Agency, Pirtle 758, ed the act to circumscribe the class of (11th Cir.1996) (“[a] majority juris- plaintiffs of sue under the Act for prohibit dictions the assignment [legal very the purpose eliminating such suits” malpractice] actions the personal because “the evidentiary problems inherent of an assignee of an cause accrued of action receiving ation part any judgment.” Rather, patent under Dictionary Black’s Law (8th Ed.2004) law. the Federal Cir- at 246. cuit held that non-exclusive licensees of patent 17. prohibited barratry, common law right did standing not have sue. to The case which was defined as "the offence fre- is inapposite. therefore quently exciting stirring up quarrels litigation suits” because such was for the ben- 16. Champerty is agreement defined "[a]n as promoter efit of the rather for the than benefit between an officious inlermeddler a law party of the real Vitaphone Corp. in interest. litigant suit and a by which the intermeddle Co., v. Hutchinson Amusement F.Supp. r helps pursue litigant's (D.Mass.1939). claim consider some Prather obtained infringement, or non-seller non-purchaser allowing a assignment and an at 950 of Id. action.” Rule 10b-5 bring a causes of and future omitted). present, past all (internal citations however, Fawcett Significantly, action.19 underlie concerns policy of such None “simultaneously” assigning is indeed Nor Majority’s opinion. li- Prather, an retained given consideration policy a reasoned there rights for English language cense cause upon an accrued suit prohibiting at 699 n. the world. Id. throughout books infringement.18 action for 1. against Neva brought suit Prather V. moved infringement. Neva conclusion, Majority reaching its In Prather did dismiss, plaintiff arguing follow should that this circuit argues bring suit because standing not have Toys, in Eden decision Circuit’s Second “proprietor” Prather was not Co., Inc., Undergarment Inc. v. Florelee Act. required copyright as Cir.1982) (2d to avoid 101(a) (1952). Rather, See at 889- op. See split. a circuit creation that because the argued Neva view, inapposite. Toys Eden my In 90. Prather was “split,” rights had been split, this of a circuit the creation avoid To “propri- and not the sole “licensee” mere rationale of rather follow should circuit under Section etor” Prather. trial affirmed The Fifth Circuit motion to of the defendant’s court’s denial Inc. Paperbacks, v. Neva

A. Prather did, fact, that Prather and held dismiss Paperbacks, v. Neva In Prather holding, In so sue. have (1969), the Fifth Circuit F.2d 698 that the reasoned Fifth Circuit an ac- assignee of held that squarely aof “simple assignment simply proper party action is cause of crued con- contract —that in action”—a chose infringement. suit for assignment. language express tained au- view, persuasive provides this case my Prather, F.2d at 699-700. follow. circuit should thority that this court concluded: action assignee causes (“Prather”) As an the au- was Plaintiff Prather past, present damages for held the Prather books. thor of several to future, Prather has and of the books one 17 U.S.C.A. the action maintain held remaining was books infringement. seq. For § 101 et [§ ] Publica- Fawcett publisher, Prather’s by such against public policy There is no copy- that discovered tions. Prather F[ed].R.Civ.P. and under (the assignments to rights books one right on action all choses in Fawcett) assignee had been by which were owned ‘proprietor’ a infringement, whether Paper- by publisher Neva infringed book the court not, to sue and standing has (“Neva”). discovering backs, After Inc. right, title assigned "all ... above, 7), Prather was (see public 19. is a fn. there 18. As noted copyright” and was and to the and interest standing limiting to hold- policy rationale action "any assigned and all causes further prohibiting non- licensees of exclusive ers [the heretofore accrued have suing. That ratio- from exclusive licensees said infringement of favor for holder's] however, nale, here. is absent n. 1. right.” Id. at 699 has power effective altogether avoid copyright lacked standing to sue under the the risk of double suit or double recov- 1976 ground Act on the pre-1976 ery. Accord, law so prohibited).21 H.R. 94-1476 at reprinted in 1976 U.S.C.C.A.N. added). at (emphasis Id. (“[t]he present law, Prather, then, Under courts will not re- Code, title 17 of the United States is basi- quire plaintiff to hold ownership of one or 1909.”). cally the same as the act of more of the exclusive rights of a copyright Second, that Prather rights owned owner to standing. have (other the books than the English lan- Majority states that Prather is “un- guage rights), Neva argued, made Prather helpful” (1) authority for two reasons: a licensee rights of book the owner —not Act, was decided under the 1909 and not what we would now call rights.” “exclusive Act; the 1976 “the in An assignee could not be the owner of Prather involved both accrued causes of book because the right” “exclusive action and some of what we now call exclu- republish could not split away rights.” sive Op. at 889 (emphasis in origi- the copyright Act; under the 1909 that is nal). Majority argues “the Prather precisely what the 1976 Act changed. Li- court faced, are, as with we censees did standing not have bring suit situation in which the owner all the under the Therefore, Prather, Act. exclusive rights and the owner the ac- (mere) licensee, could not have had crued causes two different standing to sue but his standing as the people.” atOp. 889. Neither distinction assignee of an “accrued cause of action for persuasive. See, infringement.” Gardner, e.g., F.3d at (“only the copyright proprietor First, Majority’s attempt to distin- (which would include an assignee but not a guish predicated Prather as on the 1909 licensee) standing had an in- Act is unpersuasive, given that courts have action.”). fringement recognized 501(b)’s that “[i]n enacting standing provision, Congress ‘merely Moreover, codi- the assignment to Prather of fied the case law that had developed rights” [un- “some did not help Prather estab- der the 1909 respect Act] to the bene- lish sue; his just the opposite. ”20 ficial standing owner’s to sue.’ Moran The got fact he “some” but not “all” Records, Ltd., v. London 183 rights of copyright was used the defen- (7th Cir.1987) (internal omitted). citation dants to undermine his and was Gardner, See also in no grounds sense used the Prather Cir.2002) (holding that a sublicensee of a court to assignment. Indeed, validate the Indeed, Congress upon principle relied this Although party's plain language neither ar- drafting section, 201(a). another Section guments dispositive, the fact that Con- 201(a) § See 17 U.S.C. ("[c]opyright in a work gress explicitly not to chose address this protected initially under this title vests in the issue in 1976 Act limiting ‘pro- the and the work.”). author or Regarding authors the tection and language remedies’ provision, Congress "There stated: is [] 201(d)(2) § indicates that the state of the specific no need statutoiy for a provision con- Thus, law unchanged. remains we hold cerning rights and duties of the co-owners that the Act copyright does not allow a work; of a court point made law this is left rights licensee to transfer its under an ex- H.R.Rep. undisturbed.” No. 94-1476 at license, clusive without the consent of the reprinted in 1976 5659 at U.S.C.C.A.N. 5737. original licensor. Gardner, In the court concluded: Id. at 780. 21. right to sue ton Bear retained and re- argument this rejected the court li- Toys’ on Eden infringement dialec- copyright “metaphysical into the get to fused agreement determining In particular, Id. cense. game” “button tic” of the Prather, sue, Bear to or choose Paddington allowed copyright. had suits on to, Toys bring let Eden not but at 699. at 30 n. 2. Paddington’s behalf.22 Id. as Prather view, interpret to my In accrued of an assignee that holding Florelee brought against Toys suit Eden to be an required action was cause (“Florelee”), alleging Undergarment Co. copy- rights under of some assignee en- seeking to infringement, and copyright misreading of profound abe right would Paddington Bear use join Florelee’s to estab- than essential Rather the case. moved dis- Florelee to image. Id. at 31. rights (only) some having standing, lish that ground on the complaint miss the urged Neva out what defendant made to sue under Toys lacked Eden defense. an affirmative (1976). 501(b) Id. The Second dis- court’s affirmed the district Circuit Under- Inc. v. Florelee Toys, B. Eden claim, “[the that holding missal Co.,Inc. garment the [1976] not believe court] do[es] deci contrast, Circuit’s the Second By holders permits Copyright Act Under v. Florelee Toys, Inc. Eden sion to parties choose third to copyrights under (2d Cir. Co., F.2d 27 garment n. Id. at 32 behalf.” on their bring suits 1982) situation factual a different involves weight here. little is entitled and thus that the court Majority contends Com- Bear & Toys, Paddington In Eden principle, basic plain the Toys “made Eden Bear”) held (“Paddington pany, Ltd. from have derived which we also fea- books which children’s history, and context and its Paddington character fictional tured owner of an Bear Paddington In at 29. Bear. Id. infringe- to sue for is entitled Eden agreement into an entered Op. at 889. ment.” (“Eden American Toys”), an Toys, Inc. view, the my In disagree. respectfully I Toys whereby Eden corporation, more is far narrow. Toys holding of Eden licensor license use an exclusive granted that a Toys held Eden court in and charac- Bear’s Paddington ownership of who maintains right holder 1980, that In Id. America. in North ters cannot reproduce the exclusive Eden grant was amended agreement the bare party a third assign to rights to American North Toys exclusive holder choose books, sue should except Paddington products all that a not hold It does to do so. pic- records, motion plays, stage tapes, accrued cause assign the holder productions. tures, radio television sue. can action, owner new on which Padding- agreement, Under the at 30. Id. protect infringement enjoin such pro- Agreement EdenToys-Paddington 22. The its licensees. vided, Eden and part: pertinent Pad- (b) event In the licensees (a) event Eden its legal action take no dington's election to direct or competition, exposed to shall op- right, at its shall have ... Eden indirect, infringers of the ac- (i) legal appropriate institute tion: licensed rights which are trademark infringer.... shall, against tion at its Paddington ... hereunder Toys, at 30 n. 2. Eden necessary legal action to all take option, Indeed, specific Tunes, agree- contractual but judgment reserved on the issue Toys ment between Paddington Eden of damages. Id. at 975. (as here) Bear did not it assign does all In Bright the time Tunes sued claims, rights any merely assigned but Harrison, Music, ABKCO Inc. and its the right to where Toys sue Eden or its president served manager as business “exposed licensees was to competition, di- the Beatles. Id. at 975. In ABKCO indirect, rect or infringers of the purchased all Bright Tunes’ interest rights or trademark which “He’s So including Fine” licensed Id. at n. hereunder.” 2. There “any and all rights assertable under

was no Toys to Eden pre- right against the infringing composition existing accrued causes of action. Accord- Lord”) (“My Sweet any part of ingly, there no real “assignment” of world may which have heretofore arisen or Rather, accrued cause of action. may which arise hereafter.” Id. at 980. Eden-Paddington agreement Bear was in- Accordingly, ABKCO was substituted as terpreted agreement as an merely desig- party the sole plaintiff against in the action nating Eden as the agent for purposes of Harrisongs Music. However, Id. at 975. Thus, suit. Toys merely Eden holds that Harrison had claims against ABKCO and proper plaintiff, party the “real party its principal Klein required ABKCO interest,” is the owner of the cause of to convey the old Bright Tunes infringement, not some hand- to “He’s So Fine” to Harrison on the pay- picked stand-in. ment of a sum. appeal,

On ABKCO claimed that if it Music, conveyed the old Bright C. ABKCO Inc. Tunes “He’s v. Harrisongs So Fine” Music, Harrison, Ltd. could not participate in the foreign settlements Finally, I respectfully disagree with the and it would lose pre-1970 its infringement Majority’s reading of the Second Circuit’s claims. Music, decision in ABKCO Inc. v. Harri us, As concerns dispositive question Music, Ltd., songs (2d 944 F.2d 971 Cir. was a determination of what were at 1990). Far from “reaffirming] princi issue in the 1980 foreign settlements: AB- ple of Toys Eden party that a has no possession KCO’s to “He’s ownership sue,” interest has no So Fine” or merely ownership its Majority as the 889-90), asserts (op. at infringement claims. The Second Circuit view, my clearly decision holds that merely held it was ownership copyright ownership is not the qua sine claims, infringement and held that AB- non of standing, but that assignees of ac KCO’s to bring the claims derived crued causes of action sue copy from its ownership of the accrued infringe- right infringement. ment claims. In Bright Tunes Music Corpora- holding, so the Second Circuit noted tion, which the copyright owned song to a that although now ABKCO owned the Fine,” entitled “He’s So sued musician copyright and the accrued (and member) Beatles band Harri- George claims, it need not continue to own the son and Harrisongs Music claiming that to enforce its accrued-in-1970 “My Harrison’s tune Sweet infring- Lord” of action causes for copyright infringement Bright ed copyright. Tunes’ The trial arising from the 1980 settlement. The court agreed and ruled in favor Bright court reasoned: Silvers, Indeed, ABKCO, did not like already accrued had Hence, claims the “He’s So Fine” when Bright copyright own the of all purchased ABKCO when plagiar- and the Beatles George As a Fine.” Harrison in “He’s So Tunes’ copy- “My Lord.” ized it into Sweet ABKCO’s consequence, was owned ownership “He’s Fine” So not out of its arises the claims Tunes; took infringements the ownership Bright its but copyright, the pur- before 1970. place themselves claims the in copyright, chased, with the along bar, dispute there is no case at In the AB- conclude therefore 1978. We owned the Bob Films II that Frank & Fine” the “He’s So ownership of KCO’s Sony infringe- alleged the copyright when necessary predi- was copyrights Bright they, like place took ment set- in the 1980 participation to its cate Tunes, infringe- accrued assigned those in participate could ABKCO tlements. Thus, AB- like claims to Silvers. ment it owned because settlements the 1980 KCO, pursue those has Silvers in claims accrued infringement the claims. infringement accrued copyright. it owned the not because of the Thus, ownership ABKCO’s disagree I Accordingly, respectfully settle- affected the right was not creation of Majority: to avoid the ments, must surrender and ABKCO 889-90, this court circuit-split, op. Interests Harrison copyright decision Fifth Circuit’s should follow the payment. upon proper Prather, Circuit’s than the Second rather added). (emphasis Eden Toys, at 980-981 as facts Id. Eden decision In addi- distinguishable. clearly Toys are ABKCO, holding in Thus, decision, ABKCO, tion, recent a more a re- copyright ownership of the held that expressly Circuit the Second of accrued for the enforcement quirement and the ownership both (ABKCO) assignee to the assigned claims necessary action is not accrued causes during the claims arose long so bring suit. claims to those for the owner of Tunes) assignor (Bright period when More- copyright. of the the owner to assert over, continue could ABKCO VI. infringement accrued forced to it would be though reasons, claims even af- I would foregoing For the copyright. give up Sony’s denial court’s firm the district complaint Silvers’ to dismiss motion Majority, Second According “[t]he alleged Sony against its made clear ABKCO] [in Circuit Other script, “The of her to the situation was limited decision respectfully I dissent. Woman.” both the entity purchased which the same claims; accrued owner- timing, whether was one issue and occurrence

ship Op. at 890. to coincide.”

infringement had ABKCO, own- disagree. respectfully

I the ac-

ership of both merely coinci- action was

crued causes to have ABKCO required

dent —not —for

standing to sue.

Case Details

Case Name: Nancey Silvers v. Sony Pictures Entertainment, Inc.

Court Name: Court of Appeals for the Ninth Circuit

Date Published: Mar 25, 2005

Citation: 402 F.3d 881

Docket Number: 01-56069

Court Abbreviation: 9th Cir.