Authors, Standing and Berne

The blogosphere has been abuzz with discussion of the antics of Righthaven, a company that contracted with a Las Vegas newspaper to sue bloggers and others over allegedly infringed copyrights and split the payments 50-50.  The most recent turn of events involves the unsealing of Righthaven’s contract with Stephens Media, the parent company of the Las Vegas Review-Journal, describing the above agreement.  Stephens has not actually assigned the copyrights, they have merely assigned accrued causes of action.  Under Silvers v. Sony Pictures Entertainment, Inc., 402 F. 3d 881 (9th Cir. 2005), this is clearly impermissible.  Thus, much-anticipated fair use considerations in the case may never be reached since it will (likely) get booted first.

After reading Silvers, a few things struck me.  Nancy Silvers wrote a script as a work-for-hire for Frank & Bob Films.  Later, when Sony allegedly infringed the copyright, the company executed an “Assignment of Claims and Causes of Action” in favor of Silvers, who then sued Sony, which moved to dismiss on the basis that Silvers had no standing.

Section 501(b) of the Copyright Act states:
The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it. (emphasis added)
Relying on the doctrine of expressio unius est exclusio alterius, the majority found that “Congress' explicit listing of who may sue for copyright infringement should be understood as an exclusion of others from suing for infringement.”  Thus, one cannot assign merely the right to sue, although an assignment of copyright plus an assignment of accrued causes of action appears to be valid.

The majority continues, “In other words, Congress wanted to ensure that an owner of any exclusive right in the copyright was entitled to bring a suit for infringement.  Congress foresaw a permissible division of exclusive rights; the owner of any one of those exclusive rights may sue, with other owners being entitled to notice and joinder.  In this sense, Congress intended to "unbundle" the exclusive rights.” (emphasis in original)

Interestingly, the case doesn’t discuss who might qualify as a “beneficial owner,” beyond citing oft-repeated legislative history: "A 'beneficial owner' for this purpose would include, for example, an author who had parted with legal title to the copyright in exchange for percentage royalties based on sales or license fees."  H.R.Rep. No. 94-1476, at 159, reprinted in 1976 U.S.C.C.A.N. at 5775.   A quick Google Scholar hunt didn’t reveal much more on this point, except a handful of examples in line with this definition.  Cortner v. Israel quotes this language and provides some further explanation about how the 1976 Act codified the 1909 Act’s case law with respect to standing.

Getting back to Silvers, Judge Berzon’s dissent, one of two in this 7-4 case, makes a strong argument that the plaintiff, as original author, should be able to pursue the claims assigned to her by the copyright owner and that a “stranger to the creative process” could not bring such a claim.  I am tempted to agree with this conclusion, but not entirely for the reasons Judge Berzon articulates.  For example, Berzon points out the majority’s inconsistent approach in recognizing that an assignee who purchases a copyright (right) may pursue claims that accrued before their purchase provided that those accrued claims are also transferred.  However, the majority’s response to this point makes sense too.  If one is acquiring ownership, one presumably wants all that comes with ownership, including the ability to sue for past claims.  I'm not sure that either interpretation squares with the text of Section 501(b), which states that the owner may sue for infringement that occurred "while he or she is the owner of it."

Part Three of Berzon’s dissent seems to get the issue close to right.  There, she discusses the “traditional contours of copyright” and concludes that Silvers, as author, maintained an interest in how her work is used despite initially creating it as a work-for-hire because this outcome comports with Congress’ intent in enacting the 1976 Act.  Berzon continues, “More importantly, Silvers, as the creator, is the person for whom the copyright system is designed to provide incentives for more creations.”  Sounds about right.   However, Berzon does not mention is the B-word: the Berne Convention.

While looking into this issue, I found a Pace Law Review article by Wenjie Lie that draws a number of conclusions in favor of granting standing to assignees of bare rights to sue.  Part IV of the article begins with an exposition of the general goals of copyright before stating that an author’s moral rights should suffice to confer standing, irrespective of copyright ownership.  Article 6bis of the Berne Convention codifies the moral rights of integrity and attribution, which barely squeaks into U.S. law by way of the Visual Artists Rights Act.  Some courts, however, extend common law rights to create moral rights-ish protections.   In any event, I agree that we would get back to the real purposes of copyright and fall in better line with the Berne Convention by allowing an assignee of an accrued copyright infringement claim who is also the author to sue for infringement.

For more coverage of the Righthaven circus, see view the Citizen Media Law Project entry and Righthavenlawsuits.com (not to be confused with Righthaven.com).

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