Metropolitan News-Enterprise


Monday, March 28, 2005


Page 1


Right to Sue for Copyright Infringement Not Assignable—Court


By KENNETH OFGANG, Staff Writer/Appellate Courts


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 Friday.

In a 7-4 en banc decision, the court, contrary to the ruling last year of a three-judge panel, ruled that writer/producer Nancey Silvers many not 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.

Statute Interpreted

Judge Susan Graber, writing for the Ninth Circuit, said language in the Copyright Act of 1976, which says that “[t]he 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.

“The statute does not say expressly that only a legal or beneficial owner of an exclusive right is entitled to sue,” the jurist wrote. “But, under traditional principles of statutory interpretation, Congress’ explicit listing of who may sue for copyright infringement should be understood as an exclusion of others from suing for infringement.”

Graber cited the familiar maxim “expressio unius est exclusio alterius,” and said that in this case, the legislative history, the presumption against expansive reading of rights that are purely statutory, and precedent from other circuits also support the defendant’s position.

Graber was joined by Chief Judge Mary M. Schroeder and Judges Pamela Ann Rymer, Kim M. Wardlaw, Raymond C. Fisher, Ronald Gould, and Richard A. Paez.

Two Dissents

There were two dissenting opinions. Judge Marsha Berzon was joined by Judge Stephen Reinhardt and Judge Carlos Bea was joined by Judge Andrew Kleinfeld.

“I would hold that Silvers, given her status as the original creator of the contested ‘work-for-hire,’ may pursue the accrued claims assigned by Frank & Bob Films, while a complete stranger to the creative process could not,” Berzon wrote.

Bea went further, arguing that the statutory language was intended only to express that the right to sue accrues to the owner, not to limit the right to assign, and that Congress intended to freely permit such assignments.

Sony was represented on appeal by George Schiavelli of Reed Smith, who briefed and argued the case prior to his appointment to the U.S. District Court for the Central District of California, and by New York attorney Ronald L. Rauchberg. Steven Glaser of Gelfand Rappaport & Glaser represented Silvers.

The case is Silvers v. Sony Pictures Entertainment, Inc., 01-56069.


Copyright 2005, Metropolitan News Company