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17.10 Copyright Interests—Assignee (17 U.S.C. § 201(d)(1))

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17.10 COPYRIGHT INTERESTS—ASSIGNEE (17 U.S.C. § 201(d)(1))

[In this case, the [plaintiff] [defendant] does not claim to be the [author] [creator] [initial owner] of the copyright at issue. Instead, the [plaintiff] [defendant] claims that it received the copyright by virtue of assignment from the work’s [author] [creator] [initial owner] so that the [plaintiff] [defendant] is now the assignee of the copyright.]

A copyright owner may [transfer] [sell] [convey] to another person all or part of the owner’s property interest in the copyright; that is, the right to exclude others from copying the work. The person to whom the copyright is [transferred] [sold] [conveyed] becomes the owner of the copyright in the work.

To be valid, the [transfer] [sale] [conveyance] must be in writing. The person to whom this right is transferred is called an assignee. [The assignee may enforce this right to exclude others in an action for copyright infringement.]

Comment

When the owner of the copyright is not the author, the first bracketed paragraph may be appropriate.

"A ‘transfer of copyright ownership’ is an assignment…." 17 U.S.C. § 101. Ownership of a copyright may also be transferred in whole or in part by any means of conveyance. See 17 U.S.C. § 201(d)(1). Generally, transfer of a copyright is reflected by a written instrument. See 17 U.S.C. § 204(a). See also Konigsberg Intern. Inc. v. Rice, 16 F.3d 355, 356–57 (9th Cir.1994) (§ 204(a) provides that "a transfer of copyright is simply ‘not valid’ without a writing," and this writing must be executed "more or less" contemporaneously with the agreement to transfer ownership, reflecting the parties’ negotiations). The case law reflects exceptions to this general rule. See Magnuson v. Video Yesteryear, 85 F.3d 1424, 1428 (9th Cir.1996) ("Like the 1976 Copyright Act, the Copyright Act of 1909 provided that assignment of a copyright had to be made in writing. However, case law holds that under some circumstances a prior oral grant that is confirmed by a later writing becomes valid as of the time of the oral grant....") (citations omitted). In such instances, the third paragraph of this instruction should be modified accordingly.

The 1976 Copyright Act provides only the "legal or beneficial owner of an exclusive right under a copyright [may]… institute an action for any infringement…." 17 U.S.C. § 510(b). The Ninth Circuit interprets this statute as requiring that the plaintiff must have a "legal or beneficial interest in at least one of the exclusive rights described in § 106." Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 885 (9th Cir.) (en banc), cert. denied, 126 S. Ct. 367 (2005) Additionally, in order for a plaintiff to be "‘entitled ... to institute an action’ for infringement, the infringement must be ‘committed while he or she is the owner of’ the particular exclusive right allegedly infringed." Silvers, 402 F.3d at 885 (an assignee with an accrued claim for copyright infringement may not initiate an infringement action if assignee holds no legal or beneficial interest in the underlying copyright). As to exclusive rights, see Instruction 17.1 (CopyrightDefined).

Regarding an assignment of royalties, see Broadcast Music, Inc. v. Hirsch, 104 F.3d 1163, 1166 (9th Cir.1997) (copyright owner’s assignment of right to receive royalties is not a transfer of ownership under 17 U.S.C. § 205 and did not affect existence, scope, duration or identification of the rights under the copyright). However, the beneficial owner of the copyright, such as the royalty assignee, may protect his or her interests if the legal owner of the copyright fails to do so. See 17 U.S.C. § 501(b). See also Young v. Acuff Rose-Opryland, 103 F.3d 830, 833–34 (9th Cir.1996) (assignment of royalties).

Regarding a renewal interest in a copyright, see Marascalco v. Fantasy, Inc., 953 F.3d 469, 476 (9th Cir.1991) (renewal interest in copyright vests in author’s assignees only if author survives to start of renewal term under 17 U.S.C. § 304(a)). A work created on or after January 1, 1978, is protected from its creation for a term consisting of the life of the author and 70 years after the author’s death. 17 U.S.C. § 302(a). In works created prior to January 1, 1978, a copyright "shall endure for twenty-eight years from the date of first publication." See Stewart v. Abend, 495 U.S. 207, 217–20 (1990). It can then be renewed "for a further term of twenty-eight years" if application is made to the Copyright Office "within one year prior to the expiration of the original term of copyright." Id. However, if the author dies before that time, the "next of kin obtain the renewal copyright free of any claim founded upon an assignment made by the author in his lifetime. These results follow not because the author’s assignment is invalid but because he had only an expectancy to assign; and his death, prior to the renewal period, terminates his interest in the renewal." Id.