## Facts

- Nancey Silvers wrote the screenplay for the made-for-TV movie “The Other Woman” as a work made for hire for Frank & Bob Films II, which owned the copyright.
- Sony released the motion picture “Stepmom,” which Silvers alleged was substantially similar to “The Other Woman.”
- After “Stepmom” was released, Frank & Bob Films executed an “Assignment of Claims and Causes of Action” transferring to Silvers all claims and causes of action against Sony related to alleged infringement, while retaining ownership of the copyright.
- Silvers sued Sony for copyright infringement.
- Sony moved to dismiss, arguing Silvers lacked standing because she was neither a legal nor beneficial owner of any exclusive right under the copyright.
- The district court denied the motion and certified the standing question for interlocutory appeal; a panel affirmed, but the Ninth Circuit reheard the case en banc and withdrew the panel decision.

## Issues

1. Whether an assignee of an accrued copyright infringement claim, who holds no legal or beneficial interest in any exclusive right under the copyright, has standing to sue under 17 U.S.C. § 501(b).
2. Whether § 501(b) permits a “bare” assignment of an infringement cause of action divorced from transfer of an exclusive copyright right.

## Decision

- The en banc Ninth Circuit reversed the district court.
- The court held that an assignee who holds only an accrued infringement claim, without any legal or beneficial ownership of an exclusive right under the copyright, may not institute an infringement action under § 501(b).
- Because Silvers received only an assignment of claims (not any exclusive right), she lacked statutory standing to sue for infringement.

## Legal Principles

- Standing to sue for copyright infringement under 17 U.S.C. § 501(b) is limited to the “legal or beneficial owner of an exclusive right under a copyright.”
- A transfer of only an accrued infringement claim, without transfer of an exclusive copyright right (or beneficial ownership thereof), does not confer standing.
- The statutory requirement that infringement be “committed while he or she is the owner” ties infringement standing to ownership of the relevant exclusive right, not to later-acquired, stand-alone causes of action.
- Courts may treat patent standing doctrine as a relevant analogy: a bare right to sue for past infringement is generally not assignable apart from the underlying intellectual property interest.
- Restricting standing to owners of exclusive rights avoids creating a market for infringement claims brought by parties with no substantive ownership stake.

## Conclusion

The Ninth Circuit held that § 501(b) authorizes infringement suits only by a legal or beneficial owner of an exclusive copyright right, and that an assignment of an accrued infringement claim alone is insufficient to create standing in federal court.


Silvers v. Sony Pictures Ent., Inc., 402 F.3d 881 (9th Cir. 2005) (en banc)