17.13 Copyright Interests—Exclusive Licensee (17 U.S.C. § 201(d)(2))

            [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 the copyright by virtue of an exclusive license from the work’s [author] [creator] [initial owner] and that the [plaintiff] [defendant] is now the exclusive licensee of the copyright.] 

            A copyright owner may [transfer] [sell] [convey] exclusively to another person any of the rights comprised in the copyright. [To be valid, the [transfer] [sale] [conveyance] must be in a writing signed by the copyright owner.] The person to whom this right is transferred is called a licensee. 

            [An exclusive licensee has the rights to exclude others from copying, adapting, distributing, performing, or displaying the work [to the extent of the rights granted in the license]].  An exclusive licensee is entitled to bring an action for copyright infringement of the right licensed.          

Comment 

            The bracketed language in the instruction’s first sentence of the third paragraph (“[to the extent of the rights granted in the license]”) is not necessary when the extent of the license and its applicability to the alleged infringing activity were established in pretrial proceedings.  See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1447-48 (9th Cir. 1994). 

            “A ‘transfer of copyright ownership’ is an … exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright … but not including a nonexclusive license.”  17 U.S.C. § 101. 

            An exclusive license, other than one granted by operation of law, must be in writing if it was granted after 1978.  See P. Goldstein, Goldstein on Copyright § 5.2.1.1 (2016); 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.03[A][1].  If it was granted prior to 1978, however, an exclusive license may be oral or implied by conduct.  See id. at § 10.03[B][1]; Goldstein on Copyright § 5.2.1.2; see also Micro Star v. Formgen, Inc., 154 F.3d 1107, 1113 (9th Cir. 1998); Effects Assocs. Inc. v. Cohen, 908 F.2d 555, 557-58 (9th Cir. 1990) (holding that exclusive licenses, because they transfer copyright ownership, must be in writing).  The writing must be signed by the owner of the rights conveyed and be the product of the parties’ negotiations.  17 U.S.C. § 204(a) (requiring that transfers of copyright be in writing); Radio Television Espanola v. New World Entm’t, Ltd., 183 F.3d 922, 926-27 (9th Cir. 1999) (holding that § 204(a) is satisfied by writing demonstrating transfer of copyright, indicating terms of license).  “No magic words must be included in a document to satisfy § 204(a).  Rather, the parties’ intent as evidenced by the writing must demonstrate a transfer of a copyright.”  Id.  

            “[T]he various rights included in a copyright are divisible and . . . ‘any of the exclusive rights comprised in a copyright . . . may be transferred . . . and owned separately.’” Bagdadi v. Nazar, 84 F.3d 1194, 1197 (9th Cir. 1996) (quoting 17 U.S.C.  § 201(d)(2)).  “An exclusive licensee owns separately only the ‘exclusive rights comprised in the copyright’ that are the subject of his license.”  Id. at 1197-98 (citation omitted).  The owner of any particular exclusive right “is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.”  17 U.S.C. § 201(d)(2).  “In other words, . . .  each separate owner of a subdivided exclusive right may sue to enforce that owned portion of an exclusive right.”  Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 887 (9th Cir. 2005). 

            Questions regarding the ownership of a copyright are governed by state law in some situations.  See Scholastic Entm’t, Inc. v. Fox Entm’t Group, Inc., 336 F.3d 982, 983, 988 (9th Cir. 2003); Rano v. Sipa Press, Inc. 987 F.2d 580(9th Cir. 1993). 

            Regarding nonexclusive licenses, see Nimmer §§ 10.03[A][7] and 10.03[B][1].  Nonexclusive licenses differ in many respects from exclusive licenses and raise several unique issues.  For example, a nonexclusive license need not be in writing, see Cohen, 908 F.2d at 558, and a nonexclusive licensee cannot bring suit to enforce a copyright, see Righthaven LLC v. Hoehn, 716 F.3d 1166, 1171-72 (9th Cir. 2013) (holding that nonexclusive licensee did not have standing to sue for copyright infringement); Supersound Recordings, Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th Cir. 2008) (same); see also Nimmer § 10.03[B][1].  Further, a “copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement and can only sue for breach of contract.”  Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999), implied overruling on other grounds recognized by Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 979 (9th Cir. 2011).  “If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement.”  Id.