Nancey Silvers v. Sony Pictures Entertainment, Inc.

330 F.3d 1204, 66 U.S.P.Q. 2d (BNA) 1951, 2003 Cal. Daily Op. Serv. 4650, 2003 Daily Journal DAR 5894, 2003 U.S. App. LEXIS 10948, 2003 WL 21264318
CourtCourt of Appeals for the Ninth Circuit
DecidedJune 3, 2003
Docket01-56069
StatusPublished
Cited by6 cases

This text of 330 F.3d 1204 (Nancey Silvers v. Sony Pictures Entertainment, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Nancey Silvers v. Sony Pictures Entertainment, Inc., 330 F.3d 1204, 66 U.S.P.Q. 2d (BNA) 1951, 2003 Cal. Daily Op. Serv. 4650, 2003 Daily Journal DAR 5894, 2003 U.S. App. LEXIS 10948, 2003 WL 21264318 (9th Cir. 2003).

Opinion

BRUNETTI, Circuit Judge.

Appellant Sony Pictures Entertainment, Inc. (“Sony”) makes an interlocutory appeal challenging the district court’s ruling that an accrued cause of action for copyright infringement may be assigned to a third party, thereby granting the assignee the right to sue for the infringement violation. We affirm the district court’s ruling.

BACKGROUND

In 1991, Appellee Nancey Silvers, a writer and producer of television movies, began writing a script about the relationship between a mother, who discovers she *1206 has cancer, and her ex-husband’s new wife, who will raise the mother’s children when the mother dies. In 1995, the script was made into a CBS movie called “The Other Woman.” Silvers completed the script as a work-for-hire for Frank and Bob Films II, aka Von Zerneek/Sertner Films, who owns the copyright to the movie.

In 1998, Sony released the motion picture “Stepmom,” a film starring Julia Roberts, Susan Sarandon and Ed Harris. After the release of “Stepmom,” Von Zer-neck/Sertner Films and Frank and Bob Films II executed an “Assignment of Claims and Causes of Action” selling, transferring and assigning to Nancey Silvers “all right, title and interest in and to any claims and causes of action against Sony Pictures Entertainment, Inc., Columbia Tri-Star and any other appropriate persons or entities with respect to the screenplay ‘The Other Woman’ ... and the motion picture ‘Stepmom.’ ” The assignors retained ownership of all other rights under the copyright. Subsequently, on June 13, 2000, Nancey Silvers filed a complaint against Sony for copyright infringement and unfair competition alleging that “Stepmom” was similar to a script she had written for a 1995 television movie, “The Other Woman.” Silvers’ claims that the creation, production and release of “Stepmom” to the “general public in numerous venues and formats” infringed on the copyright of “The Other Woman.”

On July 10, 2000, Sony filed a Motion to Dismiss pursuant to Rule 12(b). Sony claimed that Silvers lacked standing to bring the copyright infringement suit. On January 25, 2001, the district court entered an order denying Sony’s motion to dismiss. On March 5, 2001, Sony filed a Notice of Motion and Motion for Certification of Order For Interlocutory Appeal. On March 29, 2001, the district court granted Sony’s motion. The issue is before us on interlocutory appeal.

STANDARD OF REVIEW

We review the district court’s conclusions of law de novo. United States v. Orr Water Ditch Co., 256 F.3d 935, 945 (9th Cir.2001), cert. denied, 535 U.S. 1096, 122 S.Ct. 2291, 152 L.Ed.2d 1050 (2002).

DISCUSSION

The question of law presented to us is whether an accrued cause of action for copyright infringement may be assigned to a third party, without any other copyright rights accompanying the assignment. While other circuits have addressed similar questions, no court has squarely resolved this issue. While we have previously held that the creator of a work for hire (Silvers) does not retain a beneficial interest under which the creator may sue for copyright infringement unless there is “an express contractual provision to the contrary” (Warren v. Fox Family Worldwide Inc., 328 F.3d 1136, 1144-45 (9th Cir.2003)), we have not previously resolved whether a legal or beneficial owner of a copyright may transfer the right to accrued causes of action for copyright infringement to the creator (Silvers) or any other third party. The authority closest on point is Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (5th Cir.1969). We agree with the rationale of Prather and find that an accrued cause of action for copyright infringement may be assigned to a third party. The language of 17 U.S.C. § 501(b) is consistent with Prather and its adoption after Prather is consistent with and does not change the holding of Prather regarding copyright assignments. See Moran v. London Records, Ltd., 827 F.2d 180, 183 (7th Cir.1987) (Congress codified pre-existing case law that had developed under the 1909 Copyright Act into the standing provisions of § 501(b)).

In Prather, the author’s publisher assigned both the copyright to the author’s *1207 works and the accrued causes of action related to the author’s works to the plaintiff-author. When the plaintiff-author sued the defendant-publisher for copyright infringement, the defendant-publisher claimed that the plaintiff-author did not have standing to sue. The Fifth Circuit decided differently, holding that the assignor clearly transferred the right to sue to the plaintiff-author. The court further found that the case involved a “simple assignment of a chose in action.” Prather, 410 F.2d at 699. The assignment was valid because the contract specified in clear, precise terms that the assignor transferred the past, prior accrued choses in action to the assignee. Id. at 700. The court found that such an assignment was not against public policy. Id.

Nimmer on Copyright supports this interpretation of Prather. Nimmer agrees that an “assignee of an accrued infringement cause of action has standing to sue without the need to join his assign- or, even if the latter retains ownership of all other rights under the copyright.” 3 Nimmer on Copyright § 12.02[B] at 12-54 and n. 27 (2000). Simply stated, the accrued causes of action may be assigned without transferring any other copyright right to the assignee.

In the “Assignment of Claims and Causes of Action” signed by representatives of Frank and Bob Films II, Silvers was given “all right, title, and interest in and to any claims and causes of action against Sony Pictures Entertainment Inc. ... with respect to the screenplay ‘The Other Woman’ ... and the motion picture ‘Stepmom’ ” (emphasis added). In no uncertain terms, the copyright owner Frank and Bob Films II, by an assignment executed after the release of the alleged infringing work “Stepmom,” transferred any accrued causes of action related to the two films to Silvers. The all-inclusive language of the assignment precisely and clearly specified what rights Silvers obtained. This was a “simple assignment of a chose in action.” Prather, 410 F.2d at 699.

Appellant Sony urges us to adopt the rationale of Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir.1982). This case, however, does not support Sony’s position.

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330 F.3d 1204, 66 U.S.P.Q. 2d (BNA) 1951, 2003 Cal. Daily Op. Serv. 4650, 2003 Daily Journal DAR 5894, 2003 U.S. App. LEXIS 10948, 2003 WL 21264318, Counsel Stack Legal Research, https://law.counselstack.com/opinion/nancey-silvers-v-sony-pictures-entertainment-inc-ca9-2003.