Federal Appellate Panel Upholds Judge’s Ruling That Right to Sue for Copyright Infringement Is Assignable

Wednesday, June 4, 2003

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Federal Appellate Panel Upholds Judge’s Ruling That Right to Sue for Copyright Infringement Is Assignable

By a MetNews Staff Writer

The owner of a copyright may assign the right to sue for infringement while retaining other rights to the work in question, the Ninth U.S. Circuit Court of Appeals ruled yesterday.

In a ruling that an attorney for defendant Sony Pictures Entertainment, Inc. predicted would “open a Pandora’s box of potential actions,” the three-judge panel said writer/producer Nancey Silvers could sue for what she claims is the infringement of the copyright on a 1995 CBS movie that she wrote.

The movie, “The Other Woman,” was about the relationship between a mother dying of cancer and her ex-husband’s new wife. The alleged infringing work is the similarly premised 1998 Sony film “Stepmom,” featuring Julia Roberts, Susan Sarandon and Ed Harris.

After the Sony film was released, the independent film company for which Silvers wrote The Other Woman assigned to her “all right, title and interest in and to any claims and causes of action against Sony Pictures Entertainment, Inc., Columbia Tri-Star and any other appropriate persons or entities with respect to the screenplay ‘The Other Woman’ ... and the motion picture ‘Stepmom.’” while retaining ownership of all other rights under the copyright.

Sony took an interlocutory appeal after U.S. District Judge Steven V. Wilson of the Central District of California denied its motion to dismiss, based on Silvers’ lack of ownership.

While the case is one of first impression, Senior Judge Melvin Brunetti wrote for the panel, the better reasoning is that since the Copyright Act permits the “bundle or rights” to be divided so that some rights may be transferred and owned separately, the right to sue for infringement may be explicitly assigned.

Brunetti rejected the contention that certain language in the Copyright Act—“The legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it”—precludes anyone but the copyright owner from suing.

That language was only intended to express “that the right accrues” not to limit the right to assign, the judge said.

In a statement, Sony Pictures emphasized the ruling “addresses only the procedural question of whether the plaintiff has standing to sue for infringement of a copyright she does not own.” The company said it “strongly denies the allegations of this meritless action ... and is confident ... it will prevail on the merits.”

The company’s lead attorney, George Schiavelli of Crosby, Heafey, Roach & May, said “the potential for mischief” as a result of the decision “is tremendous.” He said his client was weighing all of its options with regard to seeking further review.

Silvers’ attorney, Steven Glaser of Gelfand Rappaport & Glaser, said that the case was significant but that the situation was “unusual” and that it is unlikely there will be a large number of cases in which copyright holders will assign their rights to sue for infringement rather than preserving that right for themselves.