Davis v. Blige

• Court: Court of Appeals for the Second Circuit
• Decided: October 5, 2007
• Docket: 05-6844-cv
• Status: Published

Opinion

No. 05-6844-cv Davis v. Blige

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT August Term, 2006

(Argued: January 10, 2007 Decided: October 5, 2007)

Docket No. 05-6844-cv

SHARICE DAVIS ,

Plaintiff-Appellant,

v.

MARY J. BLIGE , BRUCE MILLER, RONALD LAWRENCE , KWAME HOLLAND , DANA STINSON, AUSAR MUSIC , MARY J. BLIGE PUBLISHING , BRUCE MILLER PUBLISHING , KWAME HOLLAND PUBLISHING , MARY J. BLIGE MUSIC , DAYNA S. DAY PUBLISHING , WARNER-TAMERLANE MUSIC PUBLISHING CORP ., UNIVERSAL MUSIC GROUP, INC ., UNIVERSAL STUDIOS, INC ., UNIVERSAL MUSIC PUBLISHING GROUP, UNIVERSAL-MCA MUSIC PUBLISHING , UNIVERSAL MUSIC & VIDEO DISTRIBUTION CORP ., and MCA RECORDS, INC .,

Defendants-Appellees.

Before: WINTER and CABRANES, Circuit Judges, and KORMAN , District Judge.1

Plaintiff appeals from an order of the United States District Court for the Southern District of

New York (Charles S. Haight, Jr., Judge) granting defendants’ motion for summary judgment on

plaintiff’s copyright-related claims. The District Court concluded that (1) plaintiff’s co-author

transferred his rights under copyright to one of the defendants through a written agreement; (2) the

transfer, which stated that it was “retroactive” to the date of the creation of the copyright, took effect

before the alleged infringement; and (3) the “retroactive” transfer barred plaintiff’s claim of

infringement against the defendant, who was the beneficiary of the transfer, and his licensees. Plaintiff

argues on appeal that the retroactive transfer was invalid and that plaintiff’s claims were not barred by

1 The Honorable Edward R. Korman, of the United States District Court for the Eastern District of New York, sitting by designation.

1 the transfer.

Vacated and remanded.

RICHARD J. J. SCAROLA (Alexander Zubatov, on the brief), Scarola Ellis LLP, New York, NY, for Plaintiff-Appellant.

JONATHAN D. DAVIS , New York, NY, for Defendants-Appellees Mary J. Blige and Mary J. Blige Music.

Cynthia S. Arato, Gibson Dunn & Crutcher LLP, New York, NY, for Defendants-Appellees Warner-Tamerlane Publishing Corp., Dana Stinson, and Dayna’s Day Publishing.

Andrew H. Bart, Jenner & Block LLP, New York, NY, for Defendants-Appellees Universal Music Group, Inc., Universal Studios, Inc., Universal Music Publishing, Inc., Universal-MCA Music Publishing, a division of Universal Studios, Inc., Universal Music & Video Distribution Corp., and MCA Records, a division of UMG Recordings, Inc.

Gregory J. Watford, New York, NY, for Defendants-Appellees Ronald Lawrence and Ausar Music Publishing, Ltd.

George T. Gilbert, New York, NY, for Defendant-Appellee Bruce Miller.

JOSÉ A. CABRANES, Circuit Judge:

The question presented, one of first impression in the courts of appeals, is whether an action

for infringement by one co-author of a song can be defeated by a “retroactive” transfer of copyright

ownership from another co-author to an alleged infringer. This action arises under the current statute

governing copyright law, the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. (“the Copyright Act”),

because “the complaint is [in part] for a remedy expressly granted by [the Copyright Act], e.g., a suit

for infringement . . . , [and] asserts a claim requiring construction of [the Copyright Act], . . . or, at the

very least . . . presents a case where a distinctive policy of [the Copyright Act] requires that federal

principles control the disposition of the claim.” T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir.

1964) (Friendly, J.).

2 Plaintiff Sharice Davis (“plaintiff” or “Davis”) appeals from an order of the United States

District Court for the Southern District of New York (Charles S. Haight, Jr., Judge) dismissing by

summary judgment her claims under the Copyright Act, her claim for a declaratory judgment under 28

U.S.C. § 2201, and her state-law claims alleging unfair competition, unjust enrichment, and violations of

New York’s consumer protection statutes. See Davis v. Blige, 419 F. Supp. 2d 493 (S.D.N.Y. 2005). The

District Court concluded that a “retroactive” written agreement between Bruce Chambliss, Davis’s

alleged co-author, and Bruce Miller, one of the defendants, purporting to assign Chambliss’s rights in

two disputed songs as of the time of their creation, was valid. Reasoning that “a co-owner has a legal

right to grant a license without another co-owner’s permission or transfer his rights in the copyright

freely,” id. at 500, the District Court held that the transfer of co-ownership rights by Chambliss to

Miller—who had licensed the copyright to third parties also named as defendants (collectively the

“third-party defendants”) before the written agreement was executed—defeated Davis’s claims not only

against Miller but also against the third-party defendants, who were in privity with Miller.

We disagree, and therefore vacate the judgment and remand for further proceedings consistent

with this opinion.

BACKGROUND

A. Facts

The facts of this case are laid out fully in Judge Haight’s opinion. We recount here only those

facts relevant to the issues on appeal. Unless otherwise noted, the facts are undisputed.

The dispute between the parties arises from the release in 2001 of an album entitled “No More

Drama” (“the Album”). Defendant Mary J. Blige, the “Queen of Hip-Hop Soul,” J.A. 325, was the

performer on the Album, which achieved “triple platinum” status.2 Davis alleges that two of the songs

2 “Platinum” status, a term of art of mu sical-recording sales certification created by the R ecording Ind ustry Association of America, refers to the sale of over one million copies of a musical recording. Thus, “triple platinum” status means ove r 3 m illion copies of the Album were sold. See Recording Industry Association of America, Gold and

3 contained on the Album—“LOVE” and “Keep It Moving” (collectively, the “Album

compositions”)—infringe her copyright in two compositions (collectively, the “disputed

compositions”). In particular, she claims that “LOVE” is virtually identical to her composition

“L.O.V.E.,” and that “Keep It Moving” bears substantial similarity to her composition “Don’t Trade in

My Love.” Davis does not receive any song-writing credit on the Album; instead, the labels and

packaging of the Album identify (1) Blige, Miller, and defendants Kwame Holland and Ronald

Lawrence as the authors of “LOVE” and (2) Blige, Miller, Holland, and defendant Dana Stinson as the

authors of “Keep It Moving.” See id. at 495 n.2.

Davis claims the disputed compositions were co-authored in 1998 by her and Chambliss,

Miller’s father; Chambliss is not a party to this action. According to one witness, Hunter College

Professor Barbara Ottaviani, the disputed composition “L.O.V.E.” was written in 1998 during jam

sessions in the home of Ottaviani attended by, among others, Davis, Chambliss, and Miller. A tape

recording of “L.O.V.E.” was made during one of these jam sessions, but the tape disappeared shortly

thereafter. At about this time Davis met Blige, who is Miller’s sister and the step-daughter of

Chambliss. Davis states that she had performed “L.O.V.E.” for Blige and that Miller subsequently

approached Davis on behalf of Blige, seeking to buy several of Davis’s songs, including “L.O.V.E.”

Davis alleges that she declined the offer. She also alleges that she wrote “Don’t Trade in My Love”

with Chambliss in or around November 1998 at Ruff Riders Studio.

In August 2001, defendants Ausar Music, Mary J. Blige Publishing, Bruce Miller Publishing, and

Kwame Holland Publishing registered “LOVE” and defendant Universal Music MCA Music

Publishing, and Blige, Miller, and Stinson registered “Keep It Moving” with the United States

Copyright Office (“Copyright Office”). On February 28, 2002, Miller contracted with Universal Tunes,

a division of defendant Universal, Inc., to provide an exclusive license to exploit his copyright interest

Platinum , http://www .riaa.com /go ldan dplatinum.php (last visite d Aug. 8, 2007).

4 in the Album compositions as well as his copyright interests in any other compositions not previously

assigned to other music publishing companies. On August 14, 2002, Davis registered the disputed

compositions with the Copyright Office, listing Chambliss as a co-author. In December 2003, Davis

filed suit, alleging infringement of her copyright in the two disputed compositions and a variety of

related state claims.

Defendants’ April 30, 2003 and August 11, 2003 answers to Davis’s complaint denied that

anyone other than the defendants listed as authors on the Album wrote the songs. But in depositions

given in December 2003 and January 2004 (Miller), and June and August 2004 (Chambliss), both Miller

and Chambliss testified that Chambliss had initially written the disputed compositions and that they

formed the basis for the Album compositions; 3 Chambliss denied ever collaborating on any songs with

Davis.4 Chambliss and Miller also stated that they had orally agreed Chambliss would grant Miller

certain rights in the compositions, although the existence and nature of the alleged oral agreement is in

dispute.5 See Davis, 419 F. Supp. 2d at 498 (noting that “a genuine issue exists as to whether Chambliss

3 Miller testified that he and Blige contribute d to th e “re vised ” version of “L OVE .”

4 Chambliss’s deposition testimony is somewhat confused on this point. Although during his deposition he categoric ally denied ev er having written so ngs w ith D avis, C ham bliss identified several instances in w hich Davis’s handwriting or name appeared in his papers documenting several songs. Chambliss explained this documentation as either identifying songs me ant for her as a perform er, or areas where she adde d unau thorized verses.

5 Miller’s and Chambliss’s deposition testimony contain inconsistent descriptions of the nature and timing of the alleged oral agreement. Miller stated during his deposition that he and Chambliss had a conversation “[p]robably like the end of ’98, ’99 . . . somewhere in there,” during which Chambliss told him, “basically, ‘Any song that I have written, if it needs to be used at any point in time, use it. It is yours.’” Miller said that this agreement was never written down, and that he never com pensated Cham bliss for any songs that C ham bliss ha d given to him.

According to Chambliss, he “sign[ed] all of [his] songs over to [Miller]” because he “knew [Chambliss] was going to be in prison, and [he] knew [Miller] could handle everything.” Chambliss also described the alleged oral agreement alternatively as an agreement that “[Miller] can use all of [the songs].” As the District Court noted, how ever, Chambliss was incarcerated sometime in 1997, and again from 2001 to 2003; thus, it appears that Chambliss could not have known “he was going to be in prison” during late 1998 or early 1999, when Miller says that the oral agreement was reached. See D avis, 419 F. Supp. 2d at 498. It is also worth noting that it is unclear whether the oral agreement (assuming arguendo that it existed) transferred all of Chambliss’s interests in his compositions to Miller, or whether Chambliss merely intended to grant Miller only the right to use Chambliss’s compositions. Finally, it is unclear whether the alleged agreement related only to the disputed compositions, or whether the agreement related to all of the 3000- 4000 compositio ns tha t Cham bliss cla ime d to h ave crea ted.

5 ever orally transferred his rights in the [disputed] compositions”). On June 23, 2004, one day before

Chambliss’s initial deposition, Chambliss and Miller allegedly reduced to a writing the transfer of

Chambliss’s interest in the disputed compositions.6 There were two written agreements (collectively,

the “transfer agreements”), one for each of the disputed compositions. Each written agreement stated

that Chambliss “does hereby sell, assign, transfer, and set over unto Bruce Miller . . . an undivided one

hundred percent (100%) share in and to all the undersigned’s right, title and interest” in the respective

disputed compositions “and any and all universe-wide copyrights and all renewals, extensions and

reversions thereof [and] any and all causes of action for infringement of the same past, present, and future;

any and all proprietary rights; and all the proceeds from the foregoing accrued and unpaid and hereafter

accruing.” (emphasis added). According to the transfer agreements, the “instrument of transfer is

effective as of the date [Chambliss] first create[d] the above-referenced Composition”—a date not

otherwise specified. Defendants claimed that these written agreements merely served to confirm or

6 When asked during his first deposition on June 24, 2004, if there was any written agreement memorializing the transfer of his interest to Miller, Chambliss first said “No, he’s my son, I don’t need a written agreement.” But when question ed furth er, he changed his answ er an d stated, “Yeah, there is a signed doc um ent.” When asked ab out th e de tails of that signed document, Chambliss responded:

Q. . . . Do you recall what songs w ere listed on that d ocument? A. L-O-V – I’m not sure. Q. Do you remember if there any other songs besides L-O-V-E that were listed? A. I’m not positive. Q. Do you know if there were more than five songs listed? A. I’m not positive. ... . Q. D o you know why [Miller] w as asking you to sign that document? A. Yes. Q. Why? A. Becau se he was trying to sell them [the son gs]. Q. Do you know who he was going to try to sell them to? A. Not right offhand . There was a lot of songs.

The alleged agreem ent w as not ma de available to D avis, however, until August 8, 2004— the d ay before C ham bliss’s second deposition—when two written agreements transferring Chambliss’s rights in the disputed compositions (but no others) to Miller were shown to Davis. The District Court took note that Chambliss’s vague testimony during his June 24, 2004 dep osition appeared to be inconsistent with the written agreements that he alleged ly signed the d ay before, see Davis, 419 F. Supp. 2d at 498 (“Chambliss was unable to recall the day, or even the month, in which he executed the written agreement[s], despite the fact that [they are] dated June 23, 2004, the day before the Chambliss deposition was taken”), but no netheless gave legal effect to the w ritten agreem ents, see id. at 499.

6 ratify the prior oral agreement.

B. Procedural History

Davis’s complaint alleges that defendants infringed her copyright to the disputed compositions

by (1) recording and registering copyrights on “LOVE” and “Keep It Moving,” which were

substantially similar to her compositions, and (2) falsely attributing authorship to (a) Blige, Miller,

Holland, and Lawrence on “LOVE” and (b) Blige, Miller, and Stinson on “Keep It Moving.” Davis

also alleges that defendants falsely designated the origin of their goods in violation of the Lanham Act §

43(a), 15 U.S.C. § 1125(a);7 engaged in unfair competition; and were unjustly enriched. Finally, she

claims that defendants’ acts were intentionally designed to mislead the public in violation of N.Y. Gen.

Bus. Law §§ 349 and 350.8

Following the completion of discovery, defendants moved for summary judgment on the

ground that Chambliss had transferred his rights in the disputed compositions to Miller through an oral

agreement before the compositions were used by Miller, or, alternatively, on the ground that the written

transfer agreements conveyed the copyrights retroactively. See Davis, 419 F. Supp at 489-99.

Defendants argue that, as a result of the transfer agreements, Miller became a co-owner of the disputed

compositions as of the date of the creation of the compositions. Accordingly, they contend that,

because Davis cannot sue a co-owner of her copyright for infringement, Davis’s suit is barred against

Miller and those to whom Miller had licensed the disputed compositions (including Blige and the other

defendants).

The District Court agreed. In a memorandum and order filed November 22, 2005, it declined

7 Davis did not respond to defendants’ motion for summary judgment on this claim, and does not appeal the resulting dismissal of her Lanham Act § 43(a) claim.

8 N.Y. Gen. Bus. Law § 349 reads in relevant part as follows: “(a) Deceptive acts or practices in the conduct of any business, trade or comme rce or in the furnishing of any service in this state are hereby declared unlawful.”

N.Y. G en. Bus. Law § 350 reads in relevant part as follows: “False advertising in the cond uct of any bu siness, trade or com merce or in the furnishing of any service in this state is hereby de clare d unlaw ful.”

7 to determine whether the written ratification of a prior oral transfer could satisfy the Copyright Act’s

requirement that transfers of copyright ownership be in writing, 17 U.S.C. § 204(a), or whether the

transfer agreements indeed ratified a prior oral agreement between Chambliss and Miller. Instead, it

held that Chambliss could “cure past infringement” through the grant of a retroactive assignment of

the copyright. Davis, 419 F. Supp. 2d at 500 (quoting Silberstein v. Fox Entm’t Group, Inc., 424 F. Supp.

2d 616, 629 (S.D.N.Y. 2004)). Because there is no appellate case law on the issue of retroactive

assignment of copyright, the District Court relied on other district court opinions, among them

Silberstein, 424 F. Supp. 2d at 629 (holding that a retroactive license, obtained after alleged infringement

occurred and after institution of legal action, immunized defendant from infringement); Country Road

Music, Inc. v. MP3.com, Inc., 279 F. Supp. 2d 325, 329 (S.D.N.Y. 2003) (concluding that a settlement

agreement between defendants and co-owner granting retroactive reproduction rights barred any

infringement claim by remaining co-owners and cured past infringement); and Lone Wolf McQuade

Assocs. v. CBS Inc., 961 F. Supp. 587, 597 (S.D.N.Y. 1997) (stating that a retroactive license cures past

infringement). See Davis, 419 F. Supp. 2d at 499-500. Ultimately, the District Court concluded that, as

a result of the written retroactive assignment of rights by Chambliss to Miller, “Davis has no claim for

copyright infringement against defendants.” Davis, 419 F. Supp. 2d at 501. Noting that “one joint

owner may always transfer his interest in the work to a third party, including the grant of non-exclusive

licenses,” id. at 500 (citing 1 Melvin B. and David Nimmer, Nimmer on Copyright § 6.11 (2005)

(“Nimmer”)), the District Court reasoned that “Davis’ [alleged] status as joint owner with Chambliss,

who in turn transferred his interests to Miller, bars her from stating a claim for copyright infringement

against Miller, or any of the other defendants, [who are] his licensees.” Id. Davis’s timely appeal

followed.

DISCUSSION

In reviewing a grant of summary judgment, we draw all factual inferences in favor of the non-

8 moving party and review the matter de novo. See, e.g., Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292,

300 (2d Cir. 2003). Summary judgment is only appropriate where there are no genuine issues of

material fact and the moving party is entitled to judgment as a matter of law. See, e.g., Kapps v. Wing, 404

F.3d 105, 112 (2d Cir. 2005). Because the District Court’s grant of summary judgment was based on its

conclusions about the legal effect of the transfer agreements—a matter that our Court has not yet

addressed—resolution of the matter before us will depend on our own analysis of the relevant

copyright law. See Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 775 (2d Cir. 1992).

The question of whether one joint owner of a copyright can retroactively transfer his ownership

by a written instrument, and thereby cut off the accrued rights of the other owner to sue for

infringement, is an issue of first impression in the courts of appeals. Although the Copyright Act itself

is silent on the issue of retroactive transfer or license, we conclude that such retroactive transfers violate

basic principles of tort and contract law, and undermine the policies embodied by the Copyright Act.

A. General Principles of Copyright Law

We revisit some general principles of copyright law in order to place the instant case in its legal

context.

Copyright, of course, is a federal grant of a property interest in the production, replication,

publication, and distribution of certain classes of “original works of authorship fixed in any tangible

medium of expression,” 17 U.S.C. § 102(a), including musical compositions, Id. § 102(a)(2).9 “Copyright

in a work protected under [the Copyright Act] thus initially vests in the author or authors of the work.”

17 U.S.C. § 201(a). “The authors of a joint work are co[-]owners of copyright in the work,” id., and, as

described in the House Report accompanying passage of the Copyright Act, are to “be treated generally

9 The United States Constitution confers on Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const. art 1, § 8, cl. 8. In the exercise of that power, Congress regulates copyright of creative works through the C opyright A ct.

9 as tenants in common, with each co[-]owner having an independent right to use or license the use of a

work, subject to a duty of accounting to the other co[-]owners for any profits.” H.R. Rep. No. 94-1476,

at 121 (1976); see Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998) (“Joint authorship entitles the co-

authors to equal undivided interests in the whole work—in other words, each joint author has the right

to use or to license the work as he or she wishes, subject only to the obligation to account to the other

joint owner for any profits that are made.”). We long ago observed that

[t]he rights of property which the [co-owner] had were transferable by sale and delivery, and there is no distinction, independent of statute, between [copyrighted property] and property of any other description. The right to sell and transfer personal property is an inseparable incident of the property. An author or proprietor of a literary work or manuscript [or other work protected by the Copyright Act] possesses such a right of sale as fully and to the same extent as does the owner of any other piece of personal property. It is an incident of ownership.

Maurel v. Smith, 271 F. 211, 214 (2d Cir. 1921).

Like other forms of property ownership, copyright ownership is a “bundle of discrete rights”

regarding the owner’s ability to use his property. See Faulkner v. Nat’l Geographic Enters., Inc., 409 F.3d

26, 35 (2d Cir. 2005) (“The Supreme Court stressed that in enacting the 1976 revision [of the Copyright

Act], Congress rejected the doctrine of indivisibility, recasting the copyright as a bundle of discrete

exclusive rights, 17 U.S.C. § 106 (1994 ed. and Supp. V), each of which may be transferred . . . and

owned separately, § 201(d)(2).” (quoting New York Times v. Tasini, 533 U.S. 483, 495-96 (2001)) (internal

quotation marks omitted)). These rights include “reproduc[ing,]” “prepar[ing] derivative works,”

“distribut[ing,]” “perform[ing,]” or “display[ing]” a creative work. 17 U.S.C. § 106. Owners may

license others to exercise these rights or assign the rights to others. T.B. Harms, 339 F.2d at 825. In

addition, an owner may sue for infringement those who exploit the creative work without permission

or assignment. See 17 U.S.C. § 501(b) (“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.”); Knickerbocker Toy Co., Inc. v. Azrak-Hamway Int’l., Inc., 668 F.2d 699,

10 702 (2d Cir. 1982) (stating that “[t]o prevail on a claim of copyright infringement, a plaintiff must show

both ownership of a valid copyright and copying”).

The right to prosecute an accrued cause of action for infringement is also an incident of

copyright ownership. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991).

Moreover, it is a right that may be exercised independently of co-owners; a joint owner is not required

to join his other co-owners in an action for infringement. See 17 U.S.C. § 501(b) (noting that a court

“may require” an owner of a copyright to serve notice on a person who is shown “to have or claim an

interest in the copyright” and “may require the joinder . . . of any person having or claiming an interest

in the copyright”) (emphasis added); Edward Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 268, 269

(2d Cir. 1944) (“It was early decided that the holder of the legal title to a copyright might sue without

joining others who had an equitable interest in the copyright.”); Copyright.net Music Publ’g LLC v.

MP3.com, 256 F. Supp. 2d 214, 218 (S.D.N.Y. 2003) (holding that copyright infringement plaintiffs were

not obligated to join alleged co-owners of compositions at issue).

Early in the twentieth century, we stated in the copyright context the venerable principle of the

law of property that, while an owner may convey any of his rights to others permanently or temporarily,

he may not convey more than he owns. Maurel, 271 F. at 215 (“[W]hen the [co-owners] granted rights

to [a music publisher], they could but transmit what they had to part with, and they could not transfer

what interest the [other co-owner] had.”); see also Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91, 93 (2d

Cir. 1981) (“[T]he proprietor of a derivative copyright cannot convey away that which he does not own

. . . .”). Accordingly, an owner may give a license to someone to exploit the work in some way,

provided he owns that particular copyright interest. 17 U.S.C. § 106. An owner may also convey his

interest in prosecuting accrued causes of action for infringement. ABKCO Music, 944 F.2d at 980; see

also Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 700 (5th Cir. 1969) (noting the effectiveness of an

assignment of accrued causes of action for copyright infringement).

11 An owner may not, however, convey the interests of his fellow co-owners without their express

written consent, even if the transferee has no notice of the non-consenting owners’ interest. See Crosney

v. Edward Small Productions, 52 F. Supp. 559, 561 (S.D.N.Y. 1942) (“One [co-owner of a copyright]

cannot bind the interest of another, although he purports to do so, in the absence of assent or

ratification upon her part.” (internal quotation marks omitted)). A co-owner’s ability to grant licenses

to third parties unilaterally will therefore depend on the type of licenses granted. There are two general

categories of licenses: non-exclusive licenses, which permit licensees to use the copyrighted material

and may be granted to multiple licensees; and exclusive licenses, which grant to the licensee the

exclusive right—superior even to copyright owners’ rights—to use the copyrighted material in a

manner as specified by the license agreement.10 A valid license of either sort immunizes the licensee

from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with

the licensor. See Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998) (“A copyright owner who grants a

nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright

infringement.”); United States Naval Institute v. Charter Commc’ns, Inc., 936 F.2d 692, 695 (2d Cir. 1991)

(“[A]n exclusive licensee of any of the rights comprised in the copyright, though it is capable of

10 Under current copyright law, exclusive licenses are recognized as a type of an ownership interest, conveying a particular exclusive right of c opyright. See 17 U.S.C. § 101 (“‘Copyright owner’, with respect to any one of the exclusive rights comprised in a copyright, refers to the owner of that particular right.”). Exclusive licensees may sue without joining the copyright o wners, 17 U.S.C. § 501 , and exclusive license agree ments mu st be in writing, 17 U.S.C. § 204(a); see also Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 36 (2d Cir. 19 82). The differences between an “exclusive” license and an assignment or transfer of copyright ownership interest have diminished to the point that the term s are nearly synonym ous. See 17 U.S.C. § 101 (“A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conve yance . . . of a copyright or an y of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effe ct, but not includ ing a nonexclusive license.”). However, although it is possible to share ownership of a copyright interest as co-owners, an exclusive licensee of an interest is the only one who may exercise that right. “Each author’s rights in a joint work are non-exclusive, whereas a sole author retains exclusive rights in his or her own work.” Thomas, 147 F.3d at 205 (internal citations omitted). Therefore, in order to convey exclusive rights, all co-owners m ust agree to con vey their shares of the sam e right.

Under the earlier v ersion of the copyright statute, the Copyright Act of 1909, copyright ownership was generally considered indivisible; thus, the individual rights comprising the bundle of copyright property rights could not be se parately assign ed, and exclusive licenses granted mo re lim ited rights— for exam ple, exclusive license es had to join copyright owners in suits for infringement. Apparently, because exclusive licenses were not transfers of ownership, oral agre em ents granting exclusive license s were perm issible. See 3 Nim mer §10.01[C ].

12 breaching the contractual obligations imposed on it by the license, cannot be liable for infringing the

copyright rights conveyed to it.”); see also McKay v. Columbia Broad. Sys. Inc., 324 F.2d 762, 763 (2d Cir.

1963) (“[A] license from a co-holder of a copyright immunizes the licensee from liability to the other

co-holder for copyright infringement.”).

A co-owner may grant a non-exclusive license to use the work unilaterally, because his co-owners

may also use the work or grant similar licenses to other users and because the non-exclusive license

presumptively does not diminish the value of the copyright to the co-owners. See Meredith v. Smith, 145

F.2d 620, 621 (9th Cir. 1944) (noting that a “co-owner had the right to give permission” for non-

exclusive use of a copyrighted work); 1 Nimmer § 6.10[A], 6-34. In any event, a co-owner who grants a

non-exclusive license is accountable to his co-owner for income gained by the grant of the license.

Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 223 F.2d 252, 254 (2d Cir. 1955). However, a licensee is

not liable to a non-licensing co-owner for use authorized by the license, because the licensee’s rights

rest on the license conveyed by the licensing co-owner. See McKay 324 F.2d at 763. Likewise, a licensee

need not pay any royalties or other consideration to the co-owners who are not parties to the license

agreement. See Piantadosi v. Loew’s, Inc., 137 F.2d 534, 537 (9th Cir. 1943) (holding that a third party

granted a non-exclusive copyright license by one co-owner had no duty to the other co-owner); 1

Nimmer § 6.12(c)(3). A non-exclusive license conveys no ownership interest, and the holder of a

nonexclusive license may not sue others for infringement. See Eden Toys, 697 F.2d at 32 (“The

Copyright Act authorizes only two types of claimants to sue for copyright infringement: (1) owners of

copyrights, and (2) persons who have been granted exclusive licenses by owners of copyrights.”). An

exclusive license, on the other hand, conveys an ownership interest. See Campbell v. Trustees of Stanford

University, 817 F.2d 499, 504 (9th Cir. 1987). Accordingly an exclusive licensee may sue others for

infringement, including the licensor if the licensor infringes on the exclusive right he granted the

licensee. See U.S. Naval Institute, 936 F.2d at 695 (citing 3 Nimmer § 12.02). Because no one other than

13 the exclusive licensee may exercise the right specified by the exclusive license agreement, the interests

of the other co-owners to use or grant non-exclusive licenses to the work are necessarily impaired. An

exclusive license thus destroys the value of a copyright to the copyright owners, to the extent that the

licensed rights cannot be used or exploited by the copyright owners. Unlike a transfer of one co-

owner’s copyright interest to another person, which conveys only the co-owner’s share of that interest,

an exclusive license grants all co-owners’ shares of a particular copyright interest to the exclusive

licensee. Accordingly, a co-owner cannot unilaterally grant an exclusive license. See Maurel, 271 F. at

216 (“Where two or more persons have a common interest in a property, equity will not allow one to

appropriate it exclusively to himself, or to impair its worth as to others.”); 1 Nimmer § 6.11 (noting

prohibition on one co-owner granting an exclusive license without consent of other co-owners).

B. Retroactive Licenses and Transfers Are Invalid

In this case, we deal with the question of whether a copyright co-owner—who, according to the

legislative history of the Copyright Act, we are to treat as a tenant in common, see ante page 10—can

convey his copyright interest to a third party retroactively, thereby defeating a claim of infringement

asserted against that third party by another co-owner. In Eden Toys, we held that a later writing could

memorialize or confirm an earlier oral agreement. Eden Toys, 697 F.2d at 36. The District Court in the

instant case concluded that “a reasonable jury could find an oral agreement never existed between

Chambliss and Miller.” Davis, 419 F. Supp. 2d at 498. Still, the District Court agreed with defendants

that “the written agreements would nonetheless be valid to defeat Davis’ claims.” Id. at 499. Relying

on several district court decisions holding that retroactive licenses are permissible and enforceable, see

ante pages 8-9, it concluded that the written agreements between Chambliss and Miller were sufficient

to defeat Davis’s claims.

We conclude that the district court decisions relied upon by the District Court are

distinguishable from the instant case insofar as they involved retroactive licenses granted pursuant to

14 negotiated settlements of accrued infringement claims. See, e.g., Country Road Music, 279 F. Supp. 2d at

328 (agreeing with defendant that “a settlement agreement between [defendant and co-owner] granted

defendant retroactive reproduction rights that bar any infringement claim by plaintiffs [co-owners]”);

SBK Catalogue P’ship v. Orion Pictures Corp., 723 F. Supp. 1053, 1059 (D.N.J. 1989) (“The [settlement]

agreement contemplated a retroactive written license for the use of the musical composition . . . .”);

Lone Wolf McQuade, 961 F. Supp. at 590 (“In a settlement agreement dated December 9, 1996, [co-

owner] granted [defendant] a retroactive license from January 1, 1990.”). Indeed, to the extent that the

district courts deciding these cases state the rationale of their legal conclusions, they uphold the

agreements as private contracts between two parties without examining the implications for other

holders of the copyright, other than to say in a conclusory fashion that these agreements will have the

effect of barring infringement claims by third-parties, including co-owners. See, e.g., Country Road Music,

279 F. Supp. 2d at 329 (“[A] license from a co-holder of a copyright immunizes the licencee from

liability to the other co-holder for copyright infringement.”) (quoting McKay, 324 F.2d at 763 ).

We believe that reliance on cases involving settlements is misplaced. Licenses and assignments

function differently from settlements and releases, and the use of the term “retroactive license” for

“settlement” or “release” by the parties causes unnecessary confusion and potentially creates legal

mischief. Settlements are generally retrospective and exclusively between the parties to the

settlement—the unauthorized user and the owner; and, absent clear language to the contrary, they are

not licenses for future use. The Seventh Circuit has aptly observed that “[a] settlement agreement [is]

nothing more than a promise by [one party] to pay liquidated damages for past infringements in return

for a dismissal of the infringement suit. [The party] erroneously equates a settlement for past

infringement with a license for prospective use . . . .” Ransburg Electro-coating Corp. v. Spiller & Spiller, Inc.,

489 F.2d 974, 977 (7th Cir. 1973); see also Birdsell v. Shaliol, 112 U.S. 485, 487 (1884) (“[A]n infringer

does not, by paying damages for making and using a machine in infringement of a patent, acquire any

right himself to the future use of the machine. On the contrary, he may, in addition to the payment of 15 damages for past infringement, be restrained . . . from further use . . . .”); United States v. Youngstown Sheet

& Tube Co., 171 F.2d 103, 111 (6th Cir. 1948) (“A release for wrongs done in the past is not the

equivalent of a license to do rightfully the same thing in the future.”) (quoting Raytheon Mfg. Co. v. Radio

Corp. of America, 190 N.E. 1, 5 (Mass. 1934)). A settlement agreement between an injured owner and an

injuring non-owner recognizes the unauthorized use while providing a remedy to the injured owner that

is acceptable to all parties to the agreement.

A settlement agreement can only waive or extinguish claims held by a settling owner; it can

have no effect on co-owners who are not parties to the settlement agreement. It is a venerable

principle of New York co-tenancy law, for example, that “[o]ne tenant in common can settle for or

release his interest in . . . personal property, but he cannot settle for or release the interest of his co-

tenants. If one tenant in common should settle for his portion of the damages before action, the other

may sue without joining him.” Jackson v. Moore, 87 N.Y.S. 1101, 1103 (App. Div. 3d Dep’t 1904); see also

Wagman v. Carmel, 601 F. Supp. 1012, 1015 (E.D. Pa. 1985) (“Ordinarily, although a tenant in common

may freely sell or otherwise dispose of his own interest in jointly held property, he may not act so as to

prejudice the rights of his co-tenants. For example, a tenant in common may not unilaterally bind his

co-tenants to an agreement concerning the use, control, or title to the joint property.”). “[S]ettlement

agreements are ‘not to be used as a device by which A and B, the parties to the decree, can (just

because a judge is willing to give the parties’ deal a judicial imprimatur) take away the legal rights of C, a

nonparty.’” Bacon v. City of Richmond, 475 F.3d 633, 643 (4th Cir. 2007) (quoting United States v. Bd. of

Educ. of Chicago, 11 F.3d 668, 673 (7th Cir. 1993)).

Licenses and assignments, however, are prospective; they permit use by a non-owner who

would not otherwise have a right to use the property. “In its simplest form, a license means only leave

to do a thing which the licensor would otherwise have a right to prevent.” Western Elec. Co. v. Pacent

Reproducer Corp., 42 F.2d 116, 118 (2d Cir. 1930). A retroactive license or assignment purports to

16 authorize a past use that was originally unauthorized. Unlike a settlement, which recognizes an

unauthorized use but waives a settling owner’s accrued claims of liability, a retroactive license or

assignment would—if given legal effect—erase the unauthorized use from history with the result that

the nonparty co-owner’s right to sue for infringement, which accrues when the infringement first

occurs, is extinguished. This is the effect of the District Court’s decision in this case.

The co-owner’s right that would be extinguished by a rule permitting retroactive licenses or

assignments—the right to sue for infringement—is a valuable one; indeed, it is one of the most

valuable “sticks” of the “bundle of rights” of copyright. See Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d

881, 890 n.1 (9th Cir. 2005) (“[T]o receive maximum value for the impaired copyright, one must also

convey the right to recover the value of the impairment by instituting a copyright action.”).

Accordingly, we must examine carefully whether retroactive licenses and assignments that extinguish a

co-owner’s accrued right to sue are consistent with the general principles of tort11 and contract law that

underlie the accrual and settlement of infringement claims.

As we have observed, “[u]nder general principles of [tort] law, a cause of action accrues when

conduct that invades the rights of another has caused injury. When the injury occurs, the injured party

has the right to bring suit for all of the damages, past, present and future, caused by the defendant's

acts.” Leonhard v. United States, 633 F.2d 599, 613 (2d Cir. 1980) (citing Restatement (Second) of Torts

§§ 899, 910 (1977)). A “retroactive” assignment or license that extinguishes the accrued infringement

claims of a non-consenting co-owner by traveling back in time to “undo” an unlawful infringement

destroys the co-owner’s valuable and vested right to enforce her claim.

A retroactive license or assignment that purports to eliminate the accrued causes of action for

infringement held by a co-owner who is not party to the license or agreement also violates the

11 Infringem ent has long been recognize d as a tort. See Ted B rowne M usic Co. v. Fowler, 290 F. 751, 754 (2d Cir. 1923) (“C ourts hav e long rec ognized that infringem ent of a copyright is a tort.”); see also Screen Gems-Columbia Music, Inc. v. Metlis & Lebow Corp., 453 F.2d 552, 554 (2d Cir. 1972) (“Copyright infringem ent is in the nature of a tort, for which all who participate in the infringem ent are join tly and severally liab le.”). 17 fundamental principle of contract law prohibiting the parties to a contract from binding nonparties.

See, e.g., EEOC v. Waffle House, Inc., 534 U.S. 279, 294 (2002) (“It goes without saying that a contract

cannot bind a nonparty.”). Moreover, a co-owner who purports to convey not only his right to

prosecute past infringements but also his co-owners’ right to prosecute past infringements violates the

basic rule that an owner cannot convey more than he owns. See Roy Export Co. Establishment v. Columbia

Broad. Sys., Inc., 503 F. Supp. 1137, 1153 (S.D.N.Y. 1980) (“[I]t is axiomatic that no one can convey

more than his own interest in a work.”). We have no doubt that Chambliss can release his own accrued

claims of copyright infringement against Miller and his fellow defendants, either orally or in writing.

But we know of no authority to sanction his attempt to release any rights Davis has against Miller, for

they are not Chambliss’s to release.

None of what we say above should be read as preventing an owner and an infringer from

settling infringement claims among themselves. See ABKCO Music, Inc. v. Harrissongs Music, Ltd., 722

F.2d 988, 997 (2d Cir. 1983) (noting in a copyright infringement case, that “courts favor the policy of

encouraging voluntary settlement of disputes”); see also In re Tamoxifen Citrate Antitrust Litig., 466 F.3d

187, 203 (2d Cir. 2006) (“The general policy of the law is to favor the settlement of litigation, and the

policy extends to the settlement of patent infringement suits.” (quoting Asahi Glass Co. v. Pentech

Pharms., Inc., 289 F. Supp. 2d 986, 991 (N.D. Ill. 2003) (Posner, J., sitting by designation))). An owner

who wishes to release unilaterally his own accrued claims may do so using whatever language he

chooses—including by calling the negotiated settlement the proverbial “banana”—but such an

agreement cannot have the effect of eviscerating a co-owner’s claims based on past copyright

infringement, nor can it settle accrued claims held by co-owners who are not themselves parties to the

agreement. Accordingly, we hold that a license or assignment in copyright can only act prospectively.

We find support for this holding in the law of patents. Although patent and copyright law

function somewhat differently, courts considering one have historically looked to the other for

guidance where precedent is lacking. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439 18 (1984) (referring to the “historic kinship between patent law and copyright law” when looking at patent

law to understand vicarious liability in copyright). Our holding in this case is consistent with the law of

patents. See Schering Corp. v. Roussel-UCLAF SA, 104 F.3d 341, 345 (Fed. Cir. 1997) (“[T]he grant of a

license by one co-owner cannot deprive the other co-owner of the right to sue for accrued damages for

past infringement. That would require a release, not a license, and the rights of a patent co-owner,

absent agreement to the contrary, do not extend to granting a release that would defeat an action by

other co-owners to recover damages for past infringement.”). The prospective nature of licenses has

long been recognized in the law of patents. See, e.g., Waterloo Furniture Components, Ltd. v. Haworth,

Inc., 467 F.3d 641, 647 (7th Cir. 2006) (“Courts have recognized the prospective quality of a patent

license, which allows another party to use the patentee’s property in the future without fear of suit.”);

see also Wang Labs., Inc. v. Oki Elec. Indus. Co., 15 F. Supp. 2d 166, 172 (D. Mass. 1998) (noting that

“there is authority to the effect that the concepts of both royalty and license are necessarily prospective,

rendering a ‘retroactive royalty agreement’ a legal nullity”). Licenses in patent and copyright function

similarly, see Harris v. Emus Records Corp., 734 F.2d 1329, 1333 (9th Cir. 1984), and thus it is appropriate

to consider copyright licensing, like patent licensing, prospective in nature. We see no reason why this

principle should not also apply to the assignments of the type at issue here.

There is little from a policy perspective to recommend a rule that allows retroactive licenses or

assignments, and there are two strong reasons disfavoring them—(1) the need for predictability and

certainty and (2) discouragement of infringement. A rule permitting retroactive assignments and

transfers would inject uncertainty and unpredictability into copyright ownership, contrary to the intent

of Congress in enacting the Copyright Act of 1976. See, e.g., Cmty. for Creative Non-Violence v. Reid, 490

U.S. 730, 749 (1989) (declaring that “Congress’ paramount goal in revising the 1976 Act [was]

enhancing predictability and certainty of copyright ownership”); In re Cybernetics Servs. Inc., 252 F.3d

1039, 1056 (9th Cir. 2001) (“[F]ederal copyright laws ensure predictability and certainty of copyright

ownership . . . .” (quoting In re Peregrine Entm’t, Ltd., 116 B.R. 194, 199 (C.D. Cal. 1990)). It would also 19 damage, if not extinguish, the “principal purpose” of the Copyright Act, which is “to encourage the

origination of creative works by attaching enforceable property rights to them.” Diamond v. Am-Law

Publ’g Corp., 745 F.2d 142, 147 (2d Cir. 1984); see also Veeck v. S. Bldg. Code Congress Int’l Inc., 241 F.3d

398, 402 (5th Cir. 2001) (“The core purpose of copyright law is ‘to secure a fair return for an author’s

creative labor’ and thereby ‘to stimulate artistic creativity for the general public good.’” (quoting

Twentieth Century Music Group v. Aiken, 422 U.S. 151, 156 (1975)). If retroactive transfers and licenses

were permissible, one could never reliably and definitively determine if and when an infringement

occurred, because an infringement could be “undone” by the very sort of maneuver attempted by

defendants in this case. See Venegas-Hernandez v. Asociación de Compositores y Editores de Música

Latinoamericana, 424 F.3d 50, 60 (1st Cir. 2005) (“Fitting agency concepts like ‘retroactive authorization’

into copyright law provides plenty of room for debate; obviously a license in 1998 did not ‘cause’ a

1993 infringement.”).12 Similarly, one could never know who the pool of authorized users or licensors

of a copyright would be at any given time, because a retroactive transfer could always turn an infringer

into a potential user or licensor, who would then have the ability to grant his own retroactive licenses or

retransfer his new (retroactive) interest retroactively.

This case demonstrates why permitting such an indeterminate legal regime could create

substantial mischief. Construing the facts in a light most favorable to Davis, as we are required to do in

the case of a summary judgment, Miller had no right to use or license the disputed compositions at the

time they were used on the Album or at the time he licensed them to the third-party defendants. The

third-party defendants are, in turn, potentially liable for infringement to Davis because they never

obtained a legitimate right to use the disputed compositions. 13 If Chambliss were permitted to assign

12 Venegas-Hernandez had no occasion to address the retroactivity issue—w hat it described as a “recherché area of copyright law,” id.— because the party seek ing to benefit fro m a retroactive license in that case did not adequately pursu e it.

13 Miller could be exposed to liability under a theory of contributory infringement or for unauthorized licensing of the d isputed com positio ns ev en if he him self had n ot used the d isputed com positio ns withou t auth orization. While an ow ner of a copyright m ay assign an expectancy of a renew al interest in that copyright v alidly, see Fred Fisher 20 his interest in the disputed compositions retroactively, Davis’s infringement claims would fail not only

against Miller (because Miller would be “retroactively authorized” to use the compositions as a co-

owner), but also against the third-party defendants, whose illegitimate licenses would retroactively

become legitimate because Miller (by operation of the legal fiction of retroactivity) would now have

been authorized as a co-owner to grant third parties the right to use the disputed compositions. Thus,

Chambliss’s alleged retroactive assignment to Miller of the disputed compositions, for consideration of

one dollar each, would have the effect of unraveling valuable accrued infringement claims against not

only the retroactive assignee (Miller) but also his licensees. 14

The second policy reason disfavoring retroactive copyright transfers and licenses that extinguish

the right of other co-owners is that such retroactive activity lowers the cost of infringement to

infringers, thus making infringement more attractive. An infringer could “buy” his way out of an

infringement suit, in which an injured owner may seek enhanced statutory damages and costs, see 17

U.S.C. § 504, by paying a single co-owner for a license or assigned copyright interest. A retroactive

license or assignment that can be obtained from a co-owner not bringing suit, or one willing to settle

Music Co. v. M. Witmark & Sons, 318 U.S. 643, 656-57 (1943) (holding that an assignment of renewal rights in advance of the owner securing the right to renew was valid), one who grants a license without holding any interest in the copyright at the time the license is granted is differently situated because he purports to exercise a right he does not—and cannot—possess without the consent of the copyright owner. Thus, the unauthorized licensor may be liable for infringem ent comm itted by his unauthorized licencees und er a theory of contribu tory infring ement as “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d C ir. 197 1) (footnote om itted); see also Sony Corp., 464 U.S. at 435 (recognizing theory of con tributory infringem ent); CoStar G roup, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir. 2004) (discussing theory of contributory infringement). The unauthorized licensor also arguably “violates . . . the exclusive rights of the copyright ow ner,” 17 U.S.C . § 501(a), “to authorize” wh o may use the cop yright, 17 U .S.C. § 106 . But cf. Venegas-Hernandez, 424 F.3d at 57-59 (holding that an unauthorized licensor is not liable for copyrigh t infringem ent absen t evid ence that the unau thorized licensees actually infringed the copyright).

In any event, Miller would have exceeded his authority as a co-owner to the extent he granted a third-party an exclusive license to the d isputed com positio ns, becau se he did not join Davis to the licensin g agreem ent. See 17 U .S.C. § 201(d)(2); 1 Nim mer § 6.11 (noting prohibition on one co-owner granting an exclusive license without consent of co- owners).

14 We n ote that were w e to perm it retroactive transfers of copyright interests in these circumstance s, infringers who obtained a retroactive transfer of a copyright interest could not only grant retroactive licenses but also sue other past infringers of the copyright. These retroactive co-owners could then issue retroactive licenses to these other past infringers, thwa rting y et other potential infringement su its by a non-licencing co-o wner. 21 for a lower price than the co-owner bringing the action, is likely to cost much less than the value of the

copyright interest including the cost of litigation. The result is that infringement is encouraged and

rewarded. This economic incentive to infringe runs directly counter to the intent of Congress in

passing 17 U.S.C. § 504—namely to “compensate the copyright owner for losses from the

infringement, and . . . to prevent the infringer from unfairly benefitting from a wrongful act.” Abeshouse

v. Ultragraphics, Inc., 754 F.2d 467, 470 (2d Cir. 1985) (quoting H.R. Rep. No. 94-1476, at 161). 15

For the reasons stated above, we conclude that the written transfer agreements, through which

Chambliss allegedly transferred his interests in the disputed compositions to Miller, cannot extinguish

Davis’s accrued infringement claims against any of the defendants. On remand, the District Court shall

adjudicate Davis’s infringement claims without giving effect to the purported retroactive assignment of

Chambliss’s interest in the disputed compositions.16

We now turn to address defendants’ alternative argument regarding ratification. Miller argued

before the District Court that Chambliss transferred his interests in the disputed compositions (and

potentially other compositions) to Miller in 1998 or early 1999, in an alleged oral agreement, before the

alleged infringement occurred. Miller and his co-defendants acknowledged that the Copyright Act

15 If the retroactive agreement were given effect, the possibility that Davis could seek an accounting from Miller, see Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 571 (2d Cir. 1955) (“Shapiro I”), modified, 223 F.2d 252, 25 4 (2d C ir. 1955) (“Shapiro II”) (“[E]ach holder of the . . . copyright should account to the other for his exploitation thereof[]—not as an infringer but as a trustee.”), would be an inadequate substitute for Davis’s accrued infringement claims. If Davis retained her accrued infringement claims, in order to obtain damages and profits from defendants she wou ld only n eed to prove defendants’ gross re venu es from the disputed com positions; the burd en would then shift to defendan ts to prove that their profits w ere less tha n their gross rev enu es. See 17 U.S.C. § 504(b) (“[T]he copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expense s and the elem ents of profit attributable to facto rs other than the copyrighted work.”). Davis w ould also be able to elect statutory damages “at any time before final judgment is rendered.” Id. § 504(c)(1 ). We re D avis to only have an accounting remedy against Miller, however, she would be unable to elect statutory damages; she would bear the fu ll burden of p roof in dem onstrating M iller’s profits from the licensin g of the dispute d co mpositio ns; and she would only be entitled to an “equitable share” o f Miller’s profits, Shapiro I, 221 F.2d at 571, rather than all of the profits. Mo reover, if Davis were limited to an accounting rem edy against M iller, she would be unab le to reco up eithe r profits obtained by the third-party defendants as a result of their unauthorized use of the disputed compositions, or her own dam ages as a result of that unautho rized use.

16 We express no opinion on whether the transfer agreements should be given prospective effect, or—if they are give n prosp ective effect— whether the transfer agreements would lim it Davis’s remedies against the third -party defendan ts. 22 requires all transfer agreements—including assignments—to be in writing, see 17 U.S.C. § 204(a), but

argued that the transfer agreements ratified the earlier oral agreement. See Davis, 419 F. Supp. 2d at

497-98. Because the District Court found that “a genuine issue exists as to whether Chambliss ever

orally transferred his rights in the [disputed c]ompositions to Miller,” the District Court did not

“consider whether the [transfer a]greements [were] sufficient to satisfy the writing requirement [of the

Copyright Act] as a written ratification of a prior oral transfer.” Id. at 498.

We conclude that, even if an oral agreement assigning Chambliss’s copyright in the disputed

compositions to Miller was reached in 1998 or 1999, the oral agreement cannot be “ratified”

retroactively by the 2004 transfer agreements to defeat Davis’s accrued infringement claims. This is so

for the same reasons we cannot give the transfer agreements themselves retroactive effect. If there was

no written agreement between Miller and Chambliss documenting the alleged assignment at the time

the disputed compositions were used by defendants, defendants had no legal right to use the disputed

compositions,17 and Davis’s right to sue for infringement accrued. Chambliss and Miller could not

extinguish Davis’s accrued infringement claims by “ratifying” an earlier oral agreement that had no legal

effect at the time it was made, because doing so would require us to employ a legal fiction—treating the

transfer agreements as if they were written in 1998 or 1999, rather than 2004—to obtain a

counterintuitive and inequitable result.

Our opinion in Eden Toys is readily distinguishable from the facts of the instant case. In Eden

Toys, we held that a third-party infringer could not assert the invalidity of an alleged 1975 oral

agreement for an exclusive license, which was allegedly memorialized in a 1980 writing, to defeat an

infringement claim brought by the exclusive licensee. See Eden Toys, 697 F.2d at 36-37. We first noted

that the alleged oral agreement was valid at the time it was made, see id. at 36 (noting that “[u]nder the

pre-1978 copyright law, exclusive licenses could be granted orally or by conduct”). We then held that,

17 The following discussion assumes that Davis proves at trial that she holds copyright in the disputed com positions, and that the Album compositions infringed her copyright in the dispu ted com positions. 23 because the purpose of the writing requirement in the Copyright Act of 1976 was “to protect copyright

holders from persons mistakenly or fraudulently claiming oral licenses . . . [where] the copyright holder

appears to have no dispute with its licensee on this matter, it would be anomalous to permit a third

party infringer to invoke this provision against the licensee.” Id.

In this case, however, the “third party” is a copyright holder who does have a dispute with the

alleged licensee or transferee and who would stand to lose her accrued rights to sue for infringement if

an allegedly fraudulent oral agreement were given legal effect. Thus it would be anomalous not to let

Davis invoke § 204(a) in support of her infringement claims. Even if a third-party infringer cannot,

under Eden Toys, contest the validity of an oral transfer agreement under pre-1978 copyright law that is

later confirmed in writing, see Magnuson v. Video Yesteryear, 85 F.3d 1424, 1429 (9th Cir. 1996) (stating

that “[t]he logic of Eden Toys is particularly compelling in this case” and holding that a third-party

infringer could not assert as a defense to an infringement claim the alleged invalidity of an oral transfer

agreement that was later confirmed in writing); Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 592 (7th

Cir. 2003) (holding that a third-party infringer lacked “standing” to contest the validity of an oral

assignment that was later confirmed in writing), we do not read Eden Toys to foreclose a presumed

copyright holder (Davis) from using the invalidity of an alleged oral transfer agreement to defeat an

infringer’s effort to avoid liability for accrued infringement claims.18

18 Because we hold that a written confirmation of an earlier oral transfer agreement cannot extinguish a copyright owner’s accrued infringement claims, we need not decide whether there ought to be, as a general rule, any other limitations on permitting oral transfer agreements to be validated at a later date by a writing that complies with the requirements of § 204(a). Cf. Konigsberg Int'l Inc. v. Rice, 16 F .3d 355, 357 (9th Cir. 199 4) (holding that copyright o wner’s letter, written “three and a half years after the alleged oral agreement, a year and a half after its alleged term would have expired and 6 months into a contentious lawsuit,” was “not the type of writing contemplated by section 204 as sufficient to effect a transfer of the co pyright,” becau se it was not “a pro duct of the parties' negotiations” and “came far too late to provide any reference point fo r the partie s’ license disputes”); Magnuson, 85 F.3d at 1429 n.1 (stating that “the problem with the writing in [Konigsberg] was not so much that it was not contemporaneous with the agreement but that it was ‘not the type of writing contemplated by section 204’” (quoting Konigsberg, 16 F.3d at 357)).

We also need not decide whether Chambliss’s alleged oral agreement with Miller might be interpreted to have gran ted Miller a valid nonexclusive license to use the disputed com positio ns. See Graham, 144 F.3d at 235 (“nonexclusive licences . . . may be granted orally” (quoting 3 Nim mer § 10.03[A][7])). We note that while a nonexclusive license from Chambliss to Miller might imm unize Miller from Davis’s claims of infringement against him for use of the disputed com positio ns, M iller would not, as a nonexclusive license e, have been be able to grant licenses of any kind to his 24 CONCLUSION

Inasmuch as the alleged retroactive written agreements purporting to transfer Chambliss’s

copyright interests to Miller could not also transfer Davis’s copyright interests, Davis’s accrued causes

of action for infringement were not affected by the agreement between Chambliss and Miller.

Accordingly, the District Court erred in granting summary judgment to defendants. The District

Court’s order of November 22, 2005 is hereby vacated and the cause is remanded for proceedings

consistent with this opinion.

codefendants. Accordingly, even if Davis in such circumstances had no claim against Miller, she would continue to have claims against the other de fendants. 25 26