Metropolitan News-Enterprise


Thursday, June 10, 2004


Page 3


En Banc Panel Will Consider Copyright Infringement Standing Issue


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals will review en banc a June 2003 decision holding that the right to sue for copyright infringement is assignable, the court said yesterday.

In a brief order, Chief Judge Mary M. Schroeder said a majority of the court’s unrecused active judges had voted to reconsider the decision of a three-judge panel in Silvers v. Sony Pictures Entertainment, Inc., 01-56069. The unanimous panel ruled that the owner of a copyright may assign the right to sue for infringement while retaining other rights to the work in question.

The court’s ruling that writer/producer Nancey Silvers could sue for what she claims is the infringement of the copyright on a 1995 CBS movie that she wrote would “open a Pandora’s box of potential actions,” an attorney for Sony predicted at the time.

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 was one of first impression, Senior Judge Melvin Brunetti wrote for the panel, the better reasoning is that since the Copyright Act permits the “bundle of 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 issued at the time the case was decided, 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 then that “the potential for mischief” as a result of the decision was “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 was unlikely there would 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.

Schiavelli said yesterday he was “pleased that the court has decided to take another look at the issue,” adding, “I believe court will agree with us.”

He said Sony is “still concerned that Ninth Circuit opinion and the ruling of the district court have the potential to inject a level of uncertainty with respect to who has standing to bring such actions and how such actions will be brought.”

Glaser declined to conclude from the court’s decision to rehear the case that a ruling his client lacked standing was likely. The Ninth Circuit judges, he said, may merely be recognizing that the case poses a “novel issue.”

“We’re confident that the en banc judges will see simple logic of the original panel decision,” Glaser said.

Under existing precedent, the attorney asserted, the copyright holders could have assigned all rights under the copyright—including the accrued cause of action—to Silvers, and Silvers could then have retained ownership of the cause of action and assigned the copyright back to them. The panel ruling merely recognized that requiring a “two-step paper trail” would elevate form over substance, he said.


Copyright 2004, Metropolitan News Company