When you "own" a copyright, what you actually own is not something like a title or a deed. What you "own" is an exclusive right (one of those enumerated in 17 USC 106).
Once you lose that right, you no longer "own" anything. An exclusive license is, by definition, a grant of that right to a third party; you yourself are excluded from exercising that right. You no longer "own" that right, so you don't own the copyright.
That's just not how it works. If you own a copyright, you can grant someone an exclusive license to it yet still hold title yourself, i.e., remain the owner. Caselaw, Nimmer, etc. makes this quite clear.
Since an exclusive license is also a "transfer of ownership," it seems to me that Righthaven does not "own" any of the rights in question. By licensing them, exclusively, to Stephens, they lost that "ownership."
Not exactly. After Righthaven, as owner, grants Stephens Media an exclusive license, Stephens Media then has an ownership interest and Righthaven still owns the title. The exclusive licensee (Stephens Media) is transferred an ownership interest, but it doesn't divest the transferor (Righthaven) of its title. That's what's important for Righthaven. Righthaven is still the owner.
On a side note, this is exactly why thinking of a copyright in therms of physical property is extremely problematic.
On the contrary, it's because this works just like physical property that makes the analogy so apropos.
I'm pretty sure the judge would not use those words today.
He used that word to describe the individual assignments. It remains to be seen what he rules as far as the SAA.
The "right to sue" is not a right that is granted in copyright law. The only rights are those in 106. You can sue if someone infringes upon those rights, but the ability to sue is not, in and of itself, a transferable right. That's exactly what Silvers says, it's what an earlier case (Eden v. Florelee) said, it's what Judge Hunt said, and it's what Nimmer said in the quote you provided.
That's right. And the part you're missing is that MORE than just the bare right to sue was transferred to Righthaven. Ownership transferred. Yes, then Righthaven transferred an exclusive license (i.e., an ownership interest) to Stephens Media. But Righthaven still is the title owner, and according to Section 501, the legal owner has standing to sue.
The right to sue cannot be granted. Only the rights in 106 can be granted.
That's incorrect. As Nimmer explains in Nimmer on Copyright @ 12.02:
Turning to an explicit grant of an accrued cause of action, the first thing to mention is that the Anti-Assignment Act disallows transfer of an accrued cause of action against the United States. As to all other potential defendants, the assignee of an accrued infringement cause of action that is included with the balance of copyright ownership has standing to sue without the need to join his assignor. The more difficult question remains whether the assignee of solely an accrued claim and no other copyright interest has standing to sue. In Silvers v. Sony Pictures Entertainment, Inc., a panel of the Ninth Circuit allowed the assignee to bring suit. The full court disagreed. It held that, inasmuch as the right to sue for an accrued claim for infringement is not enumerated as one of the copyright owner's exclusive rights, such an assignee fails to qualify as the "legal or beneficial owner of an exclusive right under a copyright ... ." The Ninth Circuit claimed to be aligning itself with the Second Circuit's decision in Eden Toys, given that "the creation of a circuit split would be particularly troublesome in the realm of copyright" in light of "Congress' paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright ownership."
In other words, the person you assign the right to sue to can only use it if you also give them title to the copyright. Righthaven is assigned the right to sue and the title, so they're fine.
...you expressly aren't allowed to under copyright law:
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.
But what that doesn't mention is that the owner who gains that right can then later transfer it to another.
I really don't see how you can believe this, honestly. Read the agreement: at no point did Righthaven have any of the rights granted in 106. The contract expressly forbade them from exercising any of them at any time.>
Not only do I believe, the judge in the Democratic Underground case even said it's "clear." You can own something yet not have the right to use it for the simple reason that you can transfer your right to another without relinquishing your ownership. When a copyright owner grants an exclusive license to somebody else, that owner still owns the copyright. The person they granted the license to is merely a licensee, and licensees do not hold title to the thing that they license.
Combine this with the obvious - that they were only granted the rights so that they could bring lawsuits - and you have a perfect case where Silvers should be controlling.
I agree that Silvers is controlling, but I think it only helps Righthaven's position. Righthaven was granted all of the copyright rights, including the right to sue, and under Silvers, that's perfectly fine.
To my knowledge, recording artists are never co-owners with the label. Those rare few that don't assign the copyrights hold onto them in total, and simply license the rights to the label.
It's funny you say that because I chose that co-owner example after reading a case last night where that was the case. Davis v. Blige (as in Mary J.).
This is interesting. We've been talking about the copyright assignments that Righthaven uses, and I said that the assignment is "clear" and that all of the rights are transferred, including the accrued right to sue.
From today's article in the Las Vegas Sun:
"The (copyright) assignment in question clearly assigns both the exclusive copyright ownership, together with accrued causes of action, i.e., infringements past, present and future," Hunt wrote in a September ruling denying a Righthaven defendant’s motion to dismiss.
Steve Gibson, Righthaven’s CEO, said in a telephone interview Tuesday that it owns the copyrights to the works it sues on behalf, and has licensed back the content to Stephen Media, which did not respond for comment.
“We gave them exclusive licenses,” he said of Stephens Media of Las Vegas. “But that does not give them title. We own the underlying copyright.”
I have to agree with Gibson on this point. I wonder how he'll explain away the misrepresentations to the court, though. For me, that's the real story.
In the end... I'm sorta left with the simple question: what kind of system do we have when there's now going to be legal fights over the "Charge!" jingle?
I'm not sure how one person's legal claims calls into question the whole legal system. People make all sorts of stupid claims in every branch of law, not just copyright.
Are you saying that the right to sue can be transferred *if* it's transferred along with some other 106 rights?"
To better answer your question...
The right to sue must be explicitly granted. So if you want to give someone the right to sue over a past infringement, you have to: (1) grant them the 106 right that was infringed (e.g., reproduction) by either transferring complete ownership of, or an exclusive license to, that right (in other words, an ownership interest), and (2) explicitly grant them the accrued right to sue.
So, yes, the right to sue can be transferred, so long as you are also transferring an ownership interest.
It will certainly come down to whether the court thinks that Righthaven gained an ownership interest in the 106 rights. I believe that they did, but reasonable minds may differ of course.
As far as artists being able to sue... My understanding is that if they transferred complete ownership of the rights to their label, then they have no standing to sue since they have no rights. If there is a case where an artist did sue, then that artist must have retained some ownership interest in the work, e.g., perhaps they are co-owners with the label.
In your view has the original assignee of the work granted an exlusive license to its assignor as to all or substantially all of the rights enumerated in 17 USC 106 (reproduce, prepare derivative works, distribute, and the two variants of public performances)?
Yes. My read is that ownership of all the 106 rights, plus the accrued right to sue, transferred to Righthaven. Righthaven then (in the same document) granted Stephens Media an exclusive license for the 106 rights. What's important for Righthaven's standing to sue is: (1) they have an ownership interest in the copyrighted work, and (2) they own the accrued right to sue. I believe what they have is sufficient for standing.
The assignment by itself is not problematic. It is the grant provisions of the exclusive license that is the problem. Note that the overarching agreement is the actual license agreement, which agreement then muddles the issue by using the terms "retains" and "hereby grants".
Agreed. Are they "retained" or are they "granted"? It can't be both. I think it's just a poor choice of wording, and the true meaning is that they were granted. The net effect is that the 106 rights were "retained," but technically ownership changed hands, and that's what's important for Righthaven.
It is a longstanding rule of law that the substance of an agreement is controlling, and not the titles of the respective documents. In this situation when the dust all settles the assignor (despite the use of poor language) appears to hold all all of the substantial rights enumerated in 17 USC 106, and the assignee holds "naked" title, upon which it then asserts that only it possesses the rights neecessary to secure standing to sue before the federal courts.
Right. And I believe that they have standing to sue, for the accrued rights anyway. As I mentioned above, I believe that only Stephens Media would only have standing for prospective infringements as the exclusive licensee. The case I read that made that point was out of a different circuit, and I'm not sure what the rule is in the Ninth.
This is fascinating stuff, and I wish I had more time today to research it more thoroughly. Unfortunately, duty calls...
Based in part upon the above characterization of the transaction, I have serious questions that the transaction is legally sufficient to confer the assignee with standing. I can conceive of some ways that the parties may have been able to achive their end objective, but this is one that I would almost certainly have avoided/rejected.
You would think that their agreement would be a bit clearer, especially considering the shit-storm they knew they were going to raise.
Personally, I think Righthaven's misrepresentations to the court, as pointed out in the EFF link I provided, are Righthaven's problem. I think they will get deservedly spanked for being less than honest with the court.
I suspect a new Agreement between Righthaven and Stephens Media is in the works that addresses these problems.
Congress has never expressly granted plaintiffs in copyright infringement cases the right to seize control over the defendant's website domain. Therefore, the Court finds that Righthaven's request for such relief fails as a matter of law and is dismissed.
My understanding is that while the remedy is not expressly granted in the Copyright Act, it could be an equitable remedy under Section 502. I don't think it's accurate to say that the remedy is per se not available.
If Righthaven was not assigned any of the rights under 106, i.e., transferred legal ownership of those rights, then how is it that they could grant an exclusive license of those rights to Stephens Media? You cannot grant to another more than you yourself have.
Contractually agreeing that the assignments are predicated on the pursuit of infringement doesn't make the transfer any less valid.
The "past, present, and future" thing is interesting. I found some authority last night that stated that once the owner of the right grants an exclusive license, only that exclusive licensee can bring actions for future infringements. This means that Righthaven would not be able to sue for infringements of the works they own that happen down the road. Only Stephens Media, the exclusive licensee, would have standing.
You seem to think you can "own" an exclusive right to do X, without without actually having any legal right to do X or to exclude others from doing X. I don't buy that premise.
If I own an exclusive right under 106, and I then grant you an exclusive license to that right, both you and I have an ownership interest in the right sufficient to give standing. That's my understanding of how it works.
501(b) says the legal or beneificial owner of a 106 right can sue for an infringement of that right to institute an action for any infringement of that right "committed while he or she is the owner of it."
Correct. And that right to sue is transferrable. Stephens Media transferred their accrued right to sue to Righthaven.
Silvers says you can't transfer the right to sue alone. Are you saying that the right to sue can be transferred *if* it's transferred along with some other 106 rights?"
It has to be transferred with the very 106 right that has been violated. For example, if only the reproduction right was violated and you were transferred only the performance right, then you'd have no standing to sue since you don't have an ownership interest in the right that was violated.
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When you "own" a copyright, what you actually own is not something like a title or a deed. What you "own" is an exclusive right (one of those enumerated in 17 USC 106).
Once you lose that right, you no longer "own" anything. An exclusive license is, by definition, a grant of that right to a third party; you yourself are excluded from exercising that right. You no longer "own" that right, so you don't own the copyright.
That's just not how it works. If you own a copyright, you can grant someone an exclusive license to it yet still hold title yourself, i.e., remain the owner. Caselaw, Nimmer, etc. makes this quite clear.
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Not exactly. After Righthaven, as owner, grants Stephens Media an exclusive license, Stephens Media then has an ownership interest and Righthaven still owns the title. The exclusive licensee (Stephens Media) is transferred an ownership interest, but it doesn't divest the transferor (Righthaven) of its title. That's what's important for Righthaven. Righthaven is still the owner.
On a side note, this is exactly why thinking of a copyright in therms of physical property is extremely problematic.
On the contrary, it's because this works just like physical property that makes the analogy so apropos.
I'm pretty sure the judge would not use those words today.
He used that word to describe the individual assignments. It remains to be seen what he rules as far as the SAA.
The "right to sue" is not a right that is granted in copyright law. The only rights are those in 106. You can sue if someone infringes upon those rights, but the ability to sue is not, in and of itself, a transferable right. That's exactly what Silvers says, it's what an earlier case (Eden v. Florelee) said, it's what Judge Hunt said, and it's what Nimmer said in the quote you provided.
That's right. And the part you're missing is that MORE than just the bare right to sue was transferred to Righthaven. Ownership transferred. Yes, then Righthaven transferred an exclusive license (i.e., an ownership interest) to Stephens Media. But Righthaven still is the title owner, and according to Section 501, the legal owner has standing to sue.
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That's incorrect. As Nimmer explains in Nimmer on Copyright @ 12.02:In other words, the person you assign the right to sue to can only use it if you also give them title to the copyright. Righthaven is assigned the right to sue and the title, so they're fine.
...you expressly aren't allowed to under copyright law:
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.
But what that doesn't mention is that the owner who gains that right can then later transfer it to another.
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Not only do I believe, the judge in the Democratic Underground case even said it's "clear." You can own something yet not have the right to use it for the simple reason that you can transfer your right to another without relinquishing your ownership. When a copyright owner grants an exclusive license to somebody else, that owner still owns the copyright. The person they granted the license to is merely a licensee, and licensees do not hold title to the thing that they license.
Combine this with the obvious - that they were only granted the rights so that they could bring lawsuits - and you have a perfect case where Silvers should be controlling.
I agree that Silvers is controlling, but I think it only helps Righthaven's position. Righthaven was granted all of the copyright rights, including the right to sue, and under Silvers, that's perfectly fine.
To my knowledge, recording artists are never co-owners with the label. Those rare few that don't assign the copyrights hold onto them in total, and simply license the rights to the label.
It's funny you say that because I chose that co-owner example after reading a case last night where that was the case. Davis v. Blige (as in Mary J.).
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Sure. He'd not only be breaching his contract, he'd be violating a court order. Moving to California wouldn't change that.
On the post: Unsealed Document Reveals 'Sham' Copyright Assignments To Righthaven
From today's article in the Las Vegas Sun: From: http://www.lasvegassun.com/blogs/business-notebook/2011/apr/19/righthaven-about-get-some-payback/
I'm not the only one who thinks the assignments are "clear." Judge Hunt also agrees. And his opinion matters more than any of ours.
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I'm not sure how one person's legal claims calls into question the whole legal system. People make all sorts of stupid claims in every branch of law, not just copyright.
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To better answer your question...
The right to sue must be explicitly granted. So if you want to give someone the right to sue over a past infringement, you have to: (1) grant them the 106 right that was infringed (e.g., reproduction) by either transferring complete ownership of, or an exclusive license to, that right (in other words, an ownership interest), and (2) explicitly grant them the accrued right to sue.
So, yes, the right to sue can be transferred, so long as you are also transferring an ownership interest.
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As far as artists being able to sue... My understanding is that if they transferred complete ownership of the rights to their label, then they have no standing to sue since they have no rights. If there is a case where an artist did sue, then that artist must have retained some ownership interest in the work, e.g., perhaps they are co-owners with the label.
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Yes. My read is that ownership of all the 106 rights, plus the accrued right to sue, transferred to Righthaven. Righthaven then (in the same document) granted Stephens Media an exclusive license for the 106 rights. What's important for Righthaven's standing to sue is: (1) they have an ownership interest in the copyrighted work, and (2) they own the accrued right to sue. I believe what they have is sufficient for standing.
The assignment by itself is not problematic. It is the grant provisions of the exclusive license that is the problem. Note that the overarching agreement is the actual license agreement, which agreement then muddles the issue by using the terms "retains" and "hereby grants".
Agreed. Are they "retained" or are they "granted"? It can't be both. I think it's just a poor choice of wording, and the true meaning is that they were granted. The net effect is that the 106 rights were "retained," but technically ownership changed hands, and that's what's important for Righthaven.
It is a longstanding rule of law that the substance of an agreement is controlling, and not the titles of the respective documents. In this situation when the dust all settles the assignor (despite the use of poor language) appears to hold all all of the substantial rights enumerated in 17 USC 106, and the assignee holds "naked" title, upon which it then asserts that only it possesses the rights neecessary to secure standing to sue before the federal courts.
Right. And I believe that they have standing to sue, for the accrued rights anyway. As I mentioned above, I believe that only Stephens Media would only have standing for prospective infringements as the exclusive licensee. The case I read that made that point was out of a different circuit, and I'm not sure what the rule is in the Ninth.
This is fascinating stuff, and I wish I had more time today to research it more thoroughly. Unfortunately, duty calls...
Based in part upon the above characterization of the transaction, I have serious questions that the transaction is legally sufficient to confer the assignee with standing. I can conceive of some ways that the parties may have been able to achive their end objective, but this is one that I would almost certainly have avoided/rejected.
You would think that their agreement would be a bit clearer, especially considering the shit-storm they knew they were going to raise.
Personally, I think Righthaven's misrepresentations to the court, as pointed out in the EFF link I provided, are Righthaven's problem. I think they will get deservedly spanked for being less than honest with the court.
I suspect a new Agreement between Righthaven and Stephens Media is in the works that addresses these problems.
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My understanding is that while the remedy is not expressly granted in the Copyright Act, it could be an equitable remedy under Section 502. I don't think it's accurate to say that the remedy is per se not available.
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Contractually agreeing that the assignments are predicated on the pursuit of infringement doesn't make the transfer any less valid.
The "past, present, and future" thing is interesting. I found some authority last night that stated that once the owner of the right grants an exclusive license, only that exclusive licensee can bring actions for future infringements. This means that Righthaven would not be able to sue for infringements of the works they own that happen down the road. Only Stephens Media, the exclusive licensee, would have standing.
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If I own an exclusive right under 106, and I then grant you an exclusive license to that right, both you and I have an ownership interest in the right sufficient to give standing. That's my understanding of how it works.
501(b) says the legal or beneificial owner of a 106 right can sue for an infringement of that right to institute an action for any infringement of that right "committed while he or she is the owner of it."
Correct. And that right to sue is transferrable. Stephens Media transferred their accrued right to sue to Righthaven.
Silvers says you can't transfer the right to sue alone. Are you saying that the right to sue can be transferred *if* it's transferred along with some other 106 rights?"
It has to be transferred with the very 106 right that has been violated. For example, if only the reproduction right was violated and you were transferred only the performance right, then you'd have no standing to sue since you don't have an ownership interest in the right that was violated.
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