Volume 1 of 2

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

NANCEY SILVERS, 

Plaintiff-Appellee, No. 01-56069

v. D.C. No. 

SONY PICTURES ENTERTAINMENT,

CV-00-06386-SVW

INC., OPINION

Defendant-Appellant. 

Appeal from the United States District Court

for the Central District of California

Stephen V. Wilson, District Judge, Presiding

Argued and Submitted En Banc

October 12, 2004—San Francisco, California

Filed March 25, 2005

Before: Mary M. Schroeder, Chief Judge, and

Stephen Reinhardt, Pamela Ann Rymer, Andrew J. Kleinfeld,

Susan P. Graber, Kim McLane Wardlaw,

Raymond C. Fisher, Ronald M. Gould, Richard A. Paez,

Marsha S. Berzon, and Carlos T. Bea, Circuit Judges.

Opinion by Judge Graber;

Dissent by Judge Berzon;

Dissent by Judge Bea

3609
COUNSEL

Ronald L. Rauchberg, Proskauer Rose LLP, New York, New

York, and George P. Schiavelli, Reed Smith Crosby Heafey

LLP, for the defendant-appellant. 

Steven Glaser, Gelfand Rappaport & Glaser, LLP, Los Angeles, California, for the plaintiff-appellee. 

Robert H. Rotstein, McDermott, Will & Emery, Los Angeles,

California, for the amicus curiae. 

OPINION

GRABER, Circuit Judge: 

May an assignee who holds an accrued claim for copyright

infringement, but who has no legal or beneficial interest in the

3612 SILVERS v. SONY PICTURES ENTERTAINMENT
copyright itself, institute an action for infringement? After

analyzing the 1976 Copyright Act and its history, as well as

the scant, although persuasive, precedent that is available in

analogous situations, we answer that question “no.” Accordingly, we reverse the ruling of the district court, which

allowed this action by the assignee to proceed.

FACTUAL AND PROCEDURAL BACKGROUND

Nancey Silvers wrote the script of a made-for-television

movie called “The Other Woman.” Although Silvers wrote

“The Other Woman” script, she did not hold the copyright,

because “The Other Woman” was a work-for-hire that Silvers

completed for Frank & Bob Films II, aka Von Zerneck/

Sertner Films (“Frank & Bob Films”). Frank & Bob Films

was the original owner of the copyright to “The Other

Woman,” and remains so today. 

About three years after “The Other Woman” aired on a

broadcast network, Sony Pictures Entertainment, Inc.,

released the motion picture “Stepmom.” After the release of

“Stepmom,” Frank & Bob Films executed an “Assignment of

Claims and Causes of Action” in favor of Silvers. Frank &

Bob Films retained ownership of the underlying copyright to

“The Other Woman” script, but assigned to Silvers “all right,

title and interest in and to any claims and causes of action

against Sony Pictures Entertainment, Inc., Columbia TriStar,

and any other appropriate persons or entities, with respect to

the screenplay ‘The Other Woman’ . . . and the motion picture

‘Stepmom.’ ” 

Silvers then filed a complaint against Sony for copyright

infringement, alleging that the movie “Stepmom” was substantially similar to the script for “The Other Woman.” Sony

moved to dismiss on the ground that Silvers lacked standing

to bring an action for copyright infringement in the absence

of some legal or beneficial ownership in the underlying copyright. The district court denied the motion and certified the

SILVERS v. SONY PICTURES ENTERTAINMENT 3613
issue for interlocutory appeal. See 28 U.S.C. § 1292(a) (providing procedure). 

A panel of this court affirmed the district court’s decision.

Silvers v. Sony Pictures Entm’t, Inc., 330 F.3d 1204 (9th Cir.

2003). The court then voted to take this case en banc, 370

F.3d 1252 (9th Cir. 2004), withdrawing that opinion. 

STANDARD OF REVIEW

We review de novo the district court’s denial of Sony’s

motion to dismiss. Glen Holly Entm’t v. Tektronix Inc., 352

F.3d 367, 368 (9th Cir. 2003). Likewise, we review de novo

the district court’s resolution of legal issues. Cal. Satellite Sys.

v. Seimon, 767 F.2d 1364, 1366 (9th Cir. 1985). 

DISCUSSION

A. The Statute

Article I, section 8, clause 8, of the Constitution states:

“The Congress shall have Power . . . To promote the Progress

of Science and useful Arts by securing for limited Times to

Authors . . . the exclusive Right to their . . . Writings . . . .”

As is clear from its text, that clause of the Constitution grants

no substantive protections to authors. Rather, Congress is

empowered to provide copyright protection. 

[1] Copyright, therefore, is a creature of statute, and the

only rights that exist under copyright law are those granted by

statute. As the Supreme Court wrote 170 years ago: 

This right [in copyright] . . . does not exist at common law—it originated, if at all, under the acts of

congress. No one can deny that when the legislature

are about to vest an exclusive right in an author or

an inventor, they have the power to prescribe the

conditions on which such right shall be enjoyed . . . .

3614 SILVERS v. SONY PICTURES ENTERTAINMENT
Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663-64 (1834); see

also Stewart v. Abend, 495 U.S. 207, 251 (1990) (Stevens, J.,

dissenting) (stating that copyright is statutorily created); M.

Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 432 (4th Cir.

1986) (“The right of copyright is a creature of federal statute,

with its constitutional base in Article I, § 8, cl. 8.”); Russell

v. Price, 612 F.2d 1123, 1129 n.17 (9th Cir. 1979)

(“Common-law copyright is no longer recognized under the

[1976] Act . . . .”); Microsoft Corp. v. Grey Computer, 910

F. Supp. 1077, 1084 (D. Md. 1995) (“Unlike contracts, copyrights and the rights flowing therefrom are entirely creatures

of statute . . . .”). Accordingly, our starting point is the statute.

[2] Section 501(b) of the 1976 Copyright Act establishes

who is legally authorized to sue for infringement of a copyright: 

The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the requirements of section 411, to institute an action for any

infringement of that particular right committed while

he or she is the owner of it. 

17 U.S.C. § 501(b) (emphasis added). The meaning of that

provision appears clear. To be entitled to sue for copyright

infringement, the plaintiff must be the “legal or beneficial

owner of an exclusive right under a copyright.” See 4 Business and Commercial Litigation in Federal Courts, at 1062,

§ 65.3(a)(4) (Robert L. Haig ed.) (West Group & ABA 1998)

(“If a claimant is not a proper owner of copyright rights, then

it cannot invoke copyright protection stemming from the

exclusive rights belonging to the owner, including infringement of the copyright.”). 

[3] Section 106 of the 1976 Copyright Act, in turn, defines

“exclusive rights”: 

(1) to reproduce the copyrighted work in copies or

phonorecords; 

SILVERS v. SONY PICTURES ENTERTAINMENT 3615
(2) to prepare derivative works based upon the

copyrighted work; 

(3) to distribute copies or phonorecords of the

copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; 

(4) in the case of literary, musical, dramatic, and

choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the

copyrighted work publicly; 

(5) in the case of literary, musical, dramatic, and

choreographic works, pantomimes, and pictorial,

graphic, or sculptural works, including the individual

images of a motion picture or other audiovisual

work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the

copyrighted work publicly by means of a digital

audio transmission. 

17 U.S.C. § 106. The right to sue for an accrued claim for

infringement is not an exclusive right under § 106. Section

201(d) refers to exclusive rights and provides: 

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed

by will or pass as personal property by the applicable

laws of intestate succession. 

(2) Any of the exclusive rights comprised in a

copyright, including any subdivision of any of the

rights specified by section 106, may be transferred as

provided by clause (1) and owned separately. The

owner of any particular exclusive right is entitled, to

the extent of that right, to all of the protection and

3616 SILVERS v. SONY PICTURES ENTERTAINMENT
remedies accorded to the copyright owner by this

title. 

17 U.S.C. § 201(d). Exclusive rights in a copyright may be

transferred and owned separately, but § 201(d) creates no

exclusive rights other than those listed in § 106, nor does it

create an exception to § 501(b). 

Section 501(b) must also be read in conjunction with

§ 501(a), which provides that one who “violates any of the

exclusive rights of the copyright owner as provided by sections 106 through 122 . . . is an infringer.” The definition of

an infringer in subsection (a) is parallel to the definition of a

proper plaintiff in subsection (b). Common to both subsections is an exclusive copyright interest. 

In addition, when a copyright interest is transferred it must

be recorded to protect the copyright holder’s right to bring an

infringement suit. 17 U.S.C. § 205(d); see H.R. Rep. No. 94-

1476, at 129 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,

5744 (“The provisions of subsection (d)[ ] requir[e] recordation of transfers as a prerequisite to the institution of an

infringement suit . . . .”). This requirement ensures that prospective buyers or transferees have notice of the copyright

interests owned by others. See H.R. Rep. No. 94-1476, at 128,

reprinted in 1976 U.S.C.C.A.N. at 5744 (stating that a copyright recorded in compliance with subsection (c) provides

constructive notice of its contents). By contrast, the recording

statute does not contemplate a transfer of anything other than

an ownership interest in the copyright, along with the concomitant exclusive rights. 

Returning to the operative section, under § 501(b) the

plaintiff must have a legal or beneficial interest in at least one

of the exclusive rights described in § 106. Additionally, in

order for a plaintiff to be “entitled . . . to institute an action”

for infringement, the infringement must be “committed while

SILVERS v. SONY PICTURES ENTERTAINMENT 3617
he or she is the owner of” the particular exclusive right allegedly infringed. 17 U.S.C. § 501(b). 

[4] The statute does not say expressly that only a legal or

beneficial owner of an exclusive right is entitled to sue. But,

under traditional principles of statutory interpretation, Congress’ explicit listing of who may sue for copyright infringement should be understood as an exclusion of others from

suing for infringement. The doctrine of expressio unius est

exclusio alterius “as applied to statutory interpretation creates

a presumption that when a statute designates certain persons,

things, or manners of operation, all omissions should be

understood as exclusions.” Boudette v. Barnette, 923 F.2d

754, 756-57 (9th Cir. 1991). 

There are two particularly important reasons to apply such

a presumption here. First, we are mindful of the principle with

which we began our discussion: Copyright is a creature of

statute, so we will not lightly insert common law principles

that Congress has left out. Second, the durational limitation in

§ 501(b) shows that Congress restricted even the legal or beneficial owner of a copyright; the owner is not entitled to sue

unless the alleged infringement occurred “while he or she

[was] the owner of it.” In other words, Congress’ grant of the

right to sue was carefully circumscribed. 

We think the meaning of § 501(b) is clear, but we recognize that its omission explicitly to address the present question may create an ambiguity. Therefore, we consult

legislative history. See United States v. Daas, 198 F.3d 1167,

1174 (9th Cir. 1999) (“The first step in ascertaining congressional intent is to look to the plain language of the statute . . . .

If the statute is ambiguous . . . courts may look to its legislative history for evidence of congressional intent.”). 

B. Legislative History

[5] The 1976 Copyright Act was the result of 15 years of

drafting, deliberations, and compromise. See H.R. Rep. No.

3618 SILVERS v. SONY PICTURES ENTERTAINMENT
94-1476. The House Report suggests strongly that Congress

intended to limit the class of persons who may sue for

infringement: 

Subsection (b) of section 501 enables the owner of

a particular right to bring an infringement action in

that owner’s name alone, while at the same time

insuring to the extent possible that the other owners

whose rights may be affected are notified and given

a chance to join the action. 

The first sentence of subsection (b) empowers the

“legal or beneficial owner of an exclusive right” to

bring suit for “any infringement of that particular

right committed while he or she is the owner of it.”

A “beneficial owner” for this purpose would include,

for example, an author who had parted with legal

title to the copyright in exchange for percentage royalties based on sales or license fees. 

H.R. Rep. No. 94-1476, at 159, reprinted in 1976

U.S.C.C.A.N. at 5775 (emphasis added). Non-owners claiming a bare right to sue, such as Silvers, are not entitled to

notice or joinder, which suggests that Congress did not envision their existence, or that the right to sue was a right severable from ownership of one of the authorized exclusive rights.

[6] In other words, Congress wanted to ensure that an

owner of any exclusive right in the copyright was entitled to

bring a suit for infringement. Congress foresaw a permissible

division of exclusive rights; the owner of any one of those

exclusive rights may sue, with other owners being entitled to

notice and joinder. In this sense, Congress intended to “unbundle” the exclusive rights. 

[7] Under the 1909 Copyright Act, which was the predecessor of the Copyright Act of 1976, a copyright “proprietor”

was the only individual who had standing to sue for an

SILVERS v. SONY PICTURES ENTERTAINMENT 3619
infringement. 17 U.S.C. § 101(b) (1952); Gardner v. Nike,

Inc., 279 F.3d 774, 777-78 (9th Cir. 2002). Courts interpreted

the 1909 statute as providing a proprietor with an indivisible

bundle of rights arising from a copyright—rights that could

not be assigned piecemeal. Id. at 778. This enforced unity of

rights created serious hardships for copyright holders who

were interested in assigning the various property rights arising

from a copyright separately, for instance selling the motion

picture rights in a novel separately from the right to print the

novel in book form. See Roger D. Blair & Thomas F. Cotter,

The Elusive Logic of Standing Doctrine in Intellectual Property Law, 74 Tul. L. Rev. 1323, 1366-67 (2000) (discussing

history). Congress, aware of these constraints on commercial

dealings, largely dispensed with the doctrine of indivisibility

in the Copyright Act of 1976. Id.; see also H.R. Rep. No. 94-

1476, at 123, reprinted in 1976 U.S.C.C.A.N. at 5738-39

(noting that the right to assign separate property interests in

a copyright had “long been sought by authors and their representatives” and had “attracted wide support from other

groups”). Although Congress allowed for divisibility of ownership interests under a copyright, it did not alter the requirement that only owners of an exclusive right in the copyright

could bring suit. 

[8] The legislative history makes clear, too, that the list of

exclusive rights found in § 106 is exhaustive. The House

Report states: 

The exclusive rights accorded to a copyright

owner under section 106 are “to do and to authorize”

any of the activities specified in the five numbered

clauses. 

H.R. Rep. No. 94-1476, at 61, reprinted in 1976

U.S.C.C.A.N. at 5674. If a right is not “specified,” then it is

not one of the exclusive rights granted by Congress. The

House Report that deals with the exclusive rights provided in

§ 106 also explains that “[e]ach of the five enumerated rights

3620 SILVERS v. SONY PICTURES ENTERTAINMENT
may be subdivided indefinitely and, . . . in connection with

section 201 [governing transfer of rights], each subdivision of

an exclusive right may be owned and enforced separately.” Id.

(emphasis added). In other words, exclusive rights may be

chopped up and owned separately, and each separate owner

of a subdivided exclusive right may sue to enforce that owned

portion of an exclusive right, no matter how small. For

instance, A may own the copyright in a book, while B may

own the right to develop the book into a screenplay. A may

sue an infringer of the book; B may sue an infringer of the

screenplay. But only owners of an exclusive right in a copyright may sue. For instance, neither A nor B in the example

above could assign an accrued claim for copyright infringement to C if C had no legal or beneficial interest in the copyright. 

C. Patent Law

[9] We have long noted the strong connection between

copyright and patent law: “Where precedent in copyright

cases is lacking, it is appropriate to look for guidance to

patent law ‘because of the historic kinship between patent law

and copyright law.’ ” Harris v. Emus Records Corp., 734 F.2d

1329, 1333 (9th Cir. 1984) (quoting Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 439 (1984)); see also Gardner, 279 F.3d at 780-81 (relying in part on patent law to hold

that rights under an exclusive copyright license could not be

assigned without the original licensor’s consent and holding

that assignee lacked standing to sue). Although the Supreme

Court has not addressed the issue at hand, it has addressed the

question whether a bare assignment can give rise to a cause

of action in the context of patent law. 

[10] The Patent Act of 1952 provides that “[a] patentee

shall have remedy by civil action for infringement of his

patent.” 35 U.S.C. § 281 (1988). Like the 1976 Copyright

Act, the Patent Act does not explicitly forbid an assignment

of causes of action separate from an assignment of substantive

SILVERS v. SONY PICTURES ENTERTAINMENT 3621
rights in the protected work. Nonetheless, the Supreme Court

has interpreted the Patent Act to provide that only a holder of

patent rights may sue. 

In Crown Die & Tool Co. v. Nye Tool & Machine Works,

261 U.S. 24, 26, 33-35 (1923), the Supreme Court considered

whether a patent holder could assign its claims for infringement to another party without also transferring rights in the

patent. Like the 1976 Copyright Act, the Patent Act that was

in force at the time the Supreme Court decided Crown Die did

not explicitly forbid the assignment of bare causes of action

for infringement: 

Every patent or any interest therein shall be

assignable in law by an instrument in writing, and

the patentee or his assigns or legal representatives

may in like manner grant and convey an exclusive

right under his patent to the whole or any specified

part of the United States. 

Pub. L. No. 147, § 6, 42 Stat. 389, 391 (1922) (amending R.S.

§ 4849). Nevertheless, the Supreme Court held that a bare

assignment cannot give rise to a cause of action for infringement. The Court expressed its holding in durational terms that

echo 17 U.S.C. § 501(b): “If the owner of the patent when the

infringements took place has assigned his patent to one, and

his claims for damages for infringement to another, then the

latter cannot sue at law at all but must compel his assignor of

the claims to sue for him.” Id. at 44. The Court reasoned: 

“The [patent] monopoly did not exist at common

law, and the rights, therefore, which may be exercised under it cannot be regulated by the rules of the

common law. It is created by the act of Congress;

and no rights can be acquired in it unless authorized

by statute, and in the manner the statute prescribes.”

Id. at 40 (quoting Gayler v. Wilder, 51 U.S. (10 How.) 477,

494 (1850)). That text is substantively identical to the Court’s

3622 SILVERS v. SONY PICTURES ENTERTAINMENT
expression of the nature of copyright in Wheaton, 33 U.S. at

663-64: 

This right [in copyright] . . . does not exist at common law—it originated, if at all, under the acts of

congress. No one can deny that when the legislature

are about to vest an exclusive right in an author or

an inventor, they have the power to prescribe the

conditions on which such right shall be enjoyed . . . .

Crown Die effectively creates a presumption that, when we

consider standing under a statutory scheme involving intellectual property, common law doctrine does not apply. 

[11] Courts continue to read the patent statute to mean that,

in general, only a patentee (or an exclusive licensee who possesses all substantial rights in the patent) may institute an

action for infringement. See Prima Tek II, L.L.C. v. A-Roo

Co., 222 F.3d 1372, 1381 (Fed. Cir. 2000) (“Standing to sue

for infringement depends entirely on the putative plaintiff’s

proprietary interest in the patent, not on any contractual

arrangements among the parties regarding who may sue and

who will be bound by judgments. . . . [A] ‘right to sue’ clause

cannot confer standing on a bare licensee . . . .”); Ortho

Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1030 (Fed.

Cir. 1995) (“Thus, the statute requires that the parties to an

infringement suit will have the patentee on one side and the

accused infringer on the other. Without the patentee as plaintiff, the remedies provided in the patent statute are unavailable

except in extraordinary circumstances as where the patentee

is the infringer, and cannot sue himself.” (internal quotation

marks omitted)). 

[12] We should interpret the Copyright Act consistently

with the requirement of the Patent Act. Despite the differences between patents and copyrights, and between the statutes governing them, the common question is whether a

substantive, exclusive right to intellectual property may be

SILVERS v. SONY PICTURES ENTERTAINMENT 3623
divorced from a cause of action for infringement of that substantive right. Under both copyright and patent law, substantive rights are assignable; the question whether those rights

are severable from the entitlement to sue someone for infringing those rights requires a similar analysis. Crown Die

rejected the centerpiece of the district court’s reasoning here,

viz.: that because Congress did not expressly proscribe the

right to assign a cause of action alone, such a right must exist.

Instead, the Court used the same logic that we have applied:

No rights exist with respect to patents unless they are created

affirmatively by Congress, and courts may recognize only

those rights that appear in the statute. 

D. Cases From Other Circuits

Last but not least, we turn for guidance to the case law of

other courts. Two other circuits have faced questions somewhat similar to the one we confront here. We find the Fifth

Circuit’s decision under the 1909 Copyright Act to be less

persuasive than the Second Circuit’s more recent opinion

under the 1976 Copyright Act. 

In Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 699

(5th Cir. 1969), an author’s publisher assigned to the author

both the copyright to the author’s work and the accrued

causes of action related to the work. When the author sued the

publisher for copyright infringement, the publisher claimed

that the author lacked standing to sue. Id. The Fifth Circuit

disagreed and held that the publisher clearly had transferred

the right to sue to the author; the author, therefore, could

maintain an action for infringement. Id. at 700. 

Prather is unhelpful authority for two reasons. First, it was

decided before the 1976 Copyright Act was enacted and thus

does not bear on how we should interpret § 501(b). The predecessor to the 1976 Act, the 1909 Act, simply afforded the

“proprietor” of a copyright the right to sue for infringement.

17 U.S.C. § 101(b) (1952); see also Melville B. Nimmer &

3624 SILVERS v. SONY PICTURES ENTERTAINMENT
David Nimmer, Nimmer on Copyright § 132 (1976). The

1909 Act did not define “proprietor” or “exclusive rights,” nor

did it provide that “legal or beneficial owners” of exclusive

rights were entitled to sue for infringement. 17 U.S.C.

§ 101(b) (1952). Those features, missing in the 1909 Act, but

present in the 1976 Act, are central to a decision on the present question. 

Second, the assignment in Prather involved both accrued

causes of action and some of what we now would call exclusive rights. The contract included an assignment of “all . . .

right, title and interest in and to the copyright” of the book

involved. Prather, 410 F.2d at 699 n.1. Therefore, the Prather

court was not faced, as we are, with a situation in which the

owner of all the exclusive rights and the owner of the accrued

causes of action are two different people. 

[13] The Second Circuit came to a different conclusion

under the 1976 Copyright Act. In Eden Toys, Inc. v. Florelee

Undergarment Co., 697 F.2d 27 (2d Cir. 1982), superseded by

rule and statute on other grounds, the court held that one who

owns no exclusive right in a copyright may not sue for

infringement. The court explained: 

Eden apparently believed that a third basis for

standing under the Copyright Act existed, namely

authorization by the copyright holder of suit by a

person other than an exclusive licensee. Clause 9 of

the 1975 Eden/Paddington agreement . . . contemplates such an arrangement. We do not believe that

the Copyright Act permits holders of rights under

copyrights to choose third parties to bring suits on

their behalf. While F. R. Civ. P. 17(a) ordinarily permits the real party in interest to ratify a suit brought

by another party, the Copyright Law is quite specific

in stating that only the “owner of an exclusive right

under a copyright” may bring suit. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3625
Id. at 32 n.3 (citations omitted). 

It is not entirely clear whether the copyright holder in Eden

Toys had granted to Eden the right to sue on accrued causes

of action, as is the case here, or only the right to sue prospectively. Whether the assignment was prospective or retrospective, however, the court made plain the basic principle, which

we also have derived from § 501(b) and its context and history, that only the owner of an exclusive right under the copyright is entitled to sue for infringement. 

A few years later, the Second Circuit decided ABKCO

Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d

Cir. 1991), a copyright case in which ABKCO had bought

both the copyright to a song and “any and all rights assertable

under copyright against the Infringing Composition in any

part of the world which may have heretofore arisen or which

may hereafter arise.” (Internal quotation marks omitted.)

Although the infringement in question had occurred before

ABKCO bought the copyright, the court held that ABKCO

could sue the infringer “not out of its ownership of the copyright, but from its ownership of the claims themselves which

it purchased, along with the copyright, in 1978.” Id. at 981.

The Second Circuit made clear that its decision was limited

to the situation in which the same entity purchased both the

copyright and accrued claims;1 the only issue was one of timing, whether ownership of the copyright and occurrence of the

infringement had to coincide. The court reaffirmed the principle of Eden Toys that a party that has no ownership interest

1This holding makes perfect sense, as it is consistent with the Act and

with the constitutional purpose of encouraging authors and inventors by

creating a limited monopoly on their works and inventions. When one

acquires a copyright that has been infringed, one is acquiring a copyright

whose value has been impaired. Consequently, to 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. Of course, in this

sort of commercial transaction the ultimate payment would be calculated

minus the costs of suit. 

3626 SILVERS v. SONY PICTURES ENTERTAINMENT
has no standing to sue; “the Copyright Act does not permit

copyright holders to choose third parties to bring suits on their

behalf.” Id. at 980. 

[14] We think it important to parallel the Second Circuit for

two reasons. First, and more importantly, our independent

analysis leads us to the same conclusion. Second, the creation

of a circuit split would be particularly troublesome in the

realm of copyright.2 The Supreme Court has noted “Congress’

paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright ownership.” Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 749 (1989). As we

have phrased it, “[c]ongressional intent to have national uniformity in copyright laws is clear.” Syntek Semiconductor Co.

v. Microchip Tech. Inc., 307 F.3d 775, 781 (9th Cir. 2002).

That admonition makes sense, given the nature of intellectual

property. Inconsistent rules among the circuits would lead to

different levels of protection in different areas of the country,

even if the same alleged infringement is occurring nationwide.

CONCLUSION

[15] The bare assignment of an accrued cause of action is

impermissible under 17 U.S.C. § 501(b). Because that is all

Frank & Bob Films conveyed to Silvers, Silvers was not entitled to institute and may not maintain this action against Sony

for alleged infringement of the copyright in “The Other

Woman.” 

REVERSED. 

2Prather arose under the 1909 Copyright Act, not under the 1976 Copyright Act. Therefore, we create no split with the Fifth Circuit, which has

yet to decide anything about the meaning of 17 U.S.C. § 501(b), a provision that had no direct analogue in the earlier statute. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3627
BERZON, Circuit Judge, with whom REINHARDT, Circuit

Judge, joins, dissenting: 

I respectfully dissent. Applying the usual mode of analysis

used in this circuit for determining whether a statute allows

assignment of claims, I would conclude that Nancey Silvers,

as the original creator of “The Other Woman,” should be

allowed to pursue the accrued causes of action that Frank &

Bob Films II assigned to her. 

Section 501(b) of the 1976 Copyright Act establishes the

standing requirement for infringement actions:

The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the requirements of section 411, to institute an action for any

infringement of that particular right committed while

he or she is the owner of it. 

17 U.S.C. § 501(b). The majority relies on the notion that

“[t]he meaning of that provision appears clear,” ante at 3615,

to conclude that the assignment to Silvers is invalid because

she does not own an exclusive right under the copyright. Ante

at 3627. 

The majority opinion, however, is internally inconsistent,

provides inadequate support for its conclusion, and ignores

our analogous precedents. 

1. The inconsistency turns on the majority’s citation of

§ 501(b)’s durational limitation, i.e., that the owner is not

entitled to sue unless the alleged infringement occurred

“while he or she [was] the owner of [the copyright right],” as

evidence of Congress’s tight circumscription of persons who

have standing to sue. Ante at 3617-18. The majority maintains

that “Congress’ explicit listing of who may sue for copyright

infringement should be understood as an exclusion of others

from suing for infringement.” Ante at 3618. 

3628 SILVERS v. SONY PICTURES ENTERTAINMENT
As the majority later acknowledges, however, the durational limitation is hardly airtight. After a copyright holder

sells a copyright, in whole or in part, the new owner may pursue a cause of action that accrued before purchase, as long as

the cause of action is transferred along with the copyright.

Ante at 3626, fn.1. The majority maintains that this “makes

perfect sense,” because “[w]hen one acquires a copyright that

has been infringed, one is acquiring a copyright whose value

has been impaired,” and “[c]onsequently, to 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.” Ante at 3626, fn.1. 

However practical this analysis, the fact remains that it cannot be squared with a literal reading of section 501(b), on

which the majority otherwise rests. And, as the language of

section 501(b) is not necessarily determinative in deciding the

viability of assignments of accrued rights to sue for copyright

infringement, section 501(b) cannot, absent further analysis,

dictate the majority’s conclusion that no assignment of

accrued causes of action without transfer of the underlying

copyright is permissible. 

2. If the language of § 501(b) is not determinative, then

what is? I agree with Judge Bea that the assumption that background common law principles apply with regard to assignment of accrued causes of action applies to the Copyright Act

as to other federal statutes. Post at 3649-51. I part company

with Judge Bea, however, at the point at which he suggests

that an entirely free market for accrued causes of action in

copyright is the proper antidote to the majority’s preclusion of

effective transfer of such accrued causes of action. Post at

3656. Instead, I would hold that Silvers, given her status as

the original creator of the contested “work-for-hire,” may pursue the accrued claims assigned by Frank & Bob Films, while

a complete stranger to the creative process could not. 

Contrary to the majority’s strict statutory approach, the

question of valid assignment “is appropriate for the developSILVERS v. SONY PICTURES ENTERTAINMENT 3629
ment of interstitial federal common law [to ensure] harmony

with the overall purposes of the [Copyright Act].” Gulfstream

III Assocs. v. Gulfstream Aerospace Corp., 995 F.2d 425, 438

(3d Cir. 1993). Our circuit’s precedents support approach to

the general question of whether claims created by federal statute are assignable. In particular, this circuit’s cases deciding

whether to enforce assignments of Employee Retirement

Income Security Act (“ERISA”) claims, which focus on

whether “the general goal of the statute would be served by

prohibiting the type of assignments involved in th[e] case,”

Misic v. Bldg. Serv. Employees Health & Welfare Trust, 789

F.2d 1374, 1377 (9th Cir. 1986) (per curiam), provide a helpful analog for consideration of Silvers’ case. 

Misic decided that a health care provider, assigned accrued

causes of action for health welfare benefits by his patients,

could pursue his ERISA lawsuit. Our analysis proceeded in

two steps. First, we reviewed the statutory text to decide

whether ERISA permitted assignment of the claims for reimbursement of welfare benefits. Id. at 1376-77. The statute specifically precludes assignment or alienation of pension

benefits, but is silent as to assignment of welfare benefits.1

We interpreted ERISA’s silence on assignment in the welfare

benefit plan context, in light of the explicit anti-assignment

provision for pension claims, to allow assignment of welfare

claims, because “[n]either the specific purpose of the anti1ERISA provides: 

Assignment or alienation of benefits 

(1) Each pension plan shall provide that benefits provided

under the plan may not be assigned or alienated. 

(2) For the purposes of paragraph (1) of this subsection,

there shall not be taken into account any voluntary and

revocable assignment of not to exceed 10 percent of

any benefit payment, or of any irrevocable assignment

or alienation of benefits executed before September 2,

1974. 

29 U.S.C. § 1056(d). 

3630 SILVERS v. SONY PICTURES ENTERTAINMENT
assignment provision nor the general goal of the statute

would be served by prohibiting the type of assignment

involved in [the] case.” Id. at 1377 (emphases added). 

Second, we decided that the assignee, Misic, had standing

to sue, even though the statutory provision authorizing suit

identified only “participants, beneficiaries, fiduciaries, and the

Secretary of Labor” as the parties with standing bring suit.2Id.

at 1378 (citing 29 U.S.C. § 1132(a)). Unlike the majority in

this case, we did not consider the statutory language determinative on the question of assignability of accrued causes of

action. Instead, we looked to the relevant statute to determine

whether the assignors had standing, not to decide whether to

honor the assignment. We concluded that the assignment was

permissible because “Dr. Misic ‘st[ood] in the shoes of the

[b]eneficiaries;’ and Dr. Misic’s assignors, beneficiaries

under the Act [were] expressly authorized by [the statute] to

sue to recover benefits due under a plan.” Id. (emphasis

added, second alteration in original). 

We took the same general approach, albeit with the opposite result, in Simon v. Value Behavioral Health, Inc., 208

F.3d 1073 (9th Cir. 2000). Although we read Misic to allow

assignment to healthcare providers, we refused in Simon to

honor the assignment of claims from “health care providers to

whom the beneficiaries originally assigned their claims.” Id.

at 1081. Simon explains that in Misic,

we granted derivative standing to health care providers not because we believed that federal common

law on derivative standing trumps the plain language

of [the statute]. We granted it because permitting

2The statute provided, in relevant part: “A civil action may be brought

(1) by a participant or beneficiary . . . (B) to recover benefits due to him

under the terms of his plan, to enforce his rights under the terms of the

plan, or to clarify his rights to future benefits under the terms of the plan.”

29 U.S.C. § 1132(a) (emphasis added). 

SILVERS v. SONY PICTURES ENTERTAINMENT 3631
health care providers to sue in place of the beneficiaries they had treated was consistent with Congressional intent in enacting ERISA. 

Id. Our decision to disallow assignment of claims by health

care providers was related to underlying public policy concerns, as “grant[ing] Simon standing would [have] be[en] tantamount to transforming health benefit claims into a freely

tradable commodity.” Id. Predicting that the opposite result

“would allow third parties with no relationship to the beneficiary to acquire claims solely for the purpose of litigating

them,” we declined to recognize the assignment as it was

unclear “how such a result would further ERISA’s purpose.”

Id. 

Both this circuit and others have used similar policy-based

analyses in deciding whether assignments of other federal

statutory claims were valid. See, e.g., Simon, 208 F.3d at

1082-83 (antitrust claim under the Clayton act); Klamath Lake

Pharm. Ass’n v. Klamath Med. Serv. Bureau, 701 F.2d 1276

(9th Cir. 1983) (considering the background rule that only a

real party in interest may prosecute claims in federal court to

hold that an assignment was valid); Pac. Coast Agric. Export

Ass’n v. Sunkist Growers, Inc., 526 F.2d 1196 (9th Cir. 1975);

see also Tex. Life, Accident, Health & Hosp. Serv. Ins. Guar.

Ass’n v. Gaylord Entm’t Group, 105 F.3d 210, 215 (5th Cir.

1997) (using Misic’s approach to consider whether “derivative standing to assignees of breach of fiduciary duty claims

. . . [would] frustrate ERISA’s purpose”). I would do so here

as well. 

3. I turn, therefore, to whether Frank & Bob Films’ assignment of the accrued cause of action to Silvers, the original

creator of “The Other Woman,” should be permitted under 17

U.S.C. § 501(b). 

As the majority makes clear, Silvers is not the owner of the

copyright and therefore would not ordinarily be permitted to

3632 SILVERS v. SONY PICTURES ENTERTAINMENT
pursue a copyright infringement claim. Following our

approach in the ERISA cases discussed above, the relevant

inquiry is whether recognition of the assignment to Silvers is

consistent with Congress’ overall intent in enacting the 1976

Copyright Act. 

The basic purpose of copyright is “to promote the creation

and publication of free expression.” Eldred v. Ashcroft, 537

U.S. 186, 219 (2003). Congress has struck “a difficult balance

between the interests of authors and inventors in the control

and exploitation of their writings and discoveries on the one

hand, and society’s competing interest in the free flow of

ideas, information, and commerce on the other hand.” Sony

Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429

(1984). To achieve that balance, embedded in “the traditional

contours of copyright protection,” Eldred, 537 U.S. at 221,

are two major First Amendment protections: (1) as “between

ideas and expression . . . only the latter [is] eligible for copyright protection,” id. at 219; and (2) “the ‘fair use’ defense

allows the public to use not only facts and ideas contained in

a copyrighted work, but also expression itself in certain circumstances.” Id. (citing 17 U.S.C. § 107). 

I see nothing in the assignment of accrued claims of Frank

& Bob Films for infringement of a work created by Silvers

to Silvers that violates these background principles. Silvers

has a significant interest in the infringement of “The Other

Woman,” as she was the original creator. She might well herself have held the copyright had she not contracted with Frank

& Bob Films to create a work-for-hire. Although she relinquished the right to the copyright through her contract with

Frank & Bob Films, she maintained an interest in how her

work was used. More importantly, Silvers, as the creator, is

the person for whom the copyright system is designed to provide incentives for more creations. 

In addition, allowing this assignment is consistent with “the

need for free alienability and divisibility” of copyright. GardSILVERS v. SONY PICTURES ENTERTAINMENT 3633
ner v. Nike, Inc., 279 F.3d 774, 781 (9th Cir. 2002). It also

conforms with “the necessity [of] preserv[ing] the rights and

control of . . . owners and creators.” Id. 

Supporting this result is the consideration, discussed above,

that section 501(b)’s limitations have not been and should not

be read as narrowly as possible. As noted, the majority makes

clear that allowing a copyright owner to pursue claims that

accrued before he held the copyright, once assigned along

with the copyright, is eminently sensible. Ante at 3626, fn.1.

I see no reason why allowing assignment to original creators

of copyrighted works without the copyright would any more

undermine the delicate balance that Congress has struck.

Moreover, as Judge Bea notes, post at 3646-47, Congress is

perfectly capable of including anti-assignment provisions in

federal statutory schemes, but declined to so in the 1976 Act.

I would hold, therefore, that Frank & Bob Films, for whom

Silvers completed her work-for-hire, may assign its accrued

causes of action related to that work-for-hire to Silvers. 

4. The majority places significant weight on Crown Die &

Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (1923),

dealing with a somewhat similar question under patent law.

The differences between copyright and patent law, and

between the nature of the assignment in Crown Die and this

case, are significant enough to warrant a different result. 

In general, “patents and copyrights do not entail the same

exchange.” Eldred, 537 U.S. at 216. “The disclosure required

by the Patent Act is ‘the quid pro quo of the right to

exclude.’ ” J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l,

Inc., 534 U.S. 124, 142 (2001) (quoting Kewanee Oil Co. v.

Bicron Corp., 416 U.S. 470, 484 (1974)). “For the author

seeking copyright protection, in contrast, disclosure is the

desired objective, not something exacted from the author in

exchange for the copyright.” Eldred, 537 U.S. at 216-17. 

3634 SILVERS v. SONY PICTURES ENTERTAINMENT
These distinctions are reflected in the rules governing suits

for infringements of copyrights and patents. Patentees, for

example, “should be joined, either voluntarily or involuntarily, in any infringement suit brought by an exclusive licensee.” Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377

(Fed. Cir. 2000) (emphasis added). This scheme differs markedly from that of copyright infringement suits, as a copyright

holder may transfer the “ ‘exclusive’ rights to use and to

authorize the use of his work in five qualified ways.”

3

Sony

Corp., 464 U.S. at 433 (citing 17 U.S.C. § 106). Once he does

so, “[t]he 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.” 17 U.S.C. § 201(d)(2). 

With these differences in mind, I do not find the majority’s

reliance on Crown Die, 261 U.S. 24 (1923), persuasive in the

current circumstances. The majority states that “Crown Die

effectively creates a presumption that, when we consider

standing under a statutory scheme involving intellectual property, common law doctrine does not apply.” Ante at 3623. I

find no support for such a broad statement, given the significant changes to copyright law since Crown Die was decided.

Issuance of a copyright no longer “vest[s] an exclusive right

in an author,” Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663

(1834) (emphasis added), but several exclusive rights that the

copyright holder may then divide infinitely. Furthermore,

unlike an inventor who holds a patent, the original copyright

holder need not remain involved in every infringement action

brought under a copyright. 

In addition, and critically, Crown Die dealt with a very different factual scenario than the one we have here. Reed Man3As the majority notes, ante at 3620-21, the 1976 Act’s legislative history indicates that “[e]ach of the five enumerated rights may be subdivided

indefinitely and, . . . each subdivision of an exclusive right may be owned

and enforced separately.” H.R. Rep. No. 94-1476, at 61, reprinted in 1976

U.S.C.C.A.N. 5659, 5674 (emphases added). 

SILVERS v. SONY PICTURES ENTERTAINMENT 3635
ufacturing, the patentee of a screw-thread cutting device

invented by Wright and Hubbard, assigned its infringement

claims against Crown Die & Tool Company to Nye Tool &

Machine Works, a competitor of Crown Die. Crown Die, 261

U.S. at 25-26. The assignment would have been analogous to

the one before us if Reed had assigned its claims to Wright

and Hubbard, rather than to a competitor of Crown Die.

Crown Die did not, therefore, decide the precise question we

have before us. 

A different result in Crown Die would not only have created significant tension with the nature of the monopoly that

a patentee holds, but it would have made an accrued cause of

action a commodity on an open market, permitting assignees

without connection to the patented invention to pursue

infringement claims, “with the sole motive of harassing

[infringers].” Id at 39. That Nye and Crown Die were competitors could only have reinforced this concern. 

The 1976 Act ushered in a new era of copyright law, while

leaving in place the general principal goal of copyright: “to

promote the creation and publication of free expression.”

Eldred, 537 U.S. at 219. I find no reason why Frank & Bob’s

Films’ assignment of accrued claims against Sony to Nancey

Silvers does not comport with that goal. I respectfully dissent.

3636 SILVERS v. SONY PICTURES ENTERTAINMENT
Volume 2 of 2

SILVERS v. SONY PICTURES ENTERTAINMENT 3637
BEA, Circuit Judge, with whom KLEINFELD, Circuit Judge,

joins, dissenting: 

The question presented in this case is whether an assignee

of an accrued cause of action for copyright infringement, who

has no legal or beneficial interest in the copyright itself, has

standing to sue for copyright infringement. Sony Pictures

Entertainment Inc. (“Sony”) appeals the district court’s order

denying its motion to dismiss Nancey Silvers’s (“Silvers”)

claim for copyright infringement under 17 U.S.C. § 501(b) for

lack of standing under Fed. R. Civ. P. 12(b)(1). After rehearing en banc, the Majority now holds such assignees do not

have standing to sue for copyright infringement and reverses

the district court’s order denying Sony’s motion to dismiss. 

I believe that the text, purpose and history of the 1976

Copyright Act (“1976 Act”) allow such assignees of an

accrued copyright claim to sue for infringement. Accordingly,

I respectfully dissent. 

I.

I quite agree with the Majority that the starting point in this

case is necessarily the statute under which Silvers brought

suit. See slip op. at 3615. Section 501(b) of the 1976 Act provides, in pertinent part: 

The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the requirements of section 411,1

 to institute an action for any

infringement of that particular right committed while

he or she is the owner of it. 

17 U.S.C. § 501(b) (1976). 

1Section 411 provides that no action shall be commenced unless the

copyright has been registered. 17 U.S.C. § 411. 

3638 SILVERS v. SONY PICTURES ENTERTAINMENT
Turning to first principles, then, it is well-established that

courts should interpret a statute according to its plain meaning. See United States v. Robinson, 94 F.3d 1325, 1328 (9th

Cir. 1996) (“If the language of a statute is unambiguous, the

plain meaning controls.”). However, where a statute is ambiguous, courts should consult a statute’s legislative history to

discern Congressional intent. See United States v. Daas, 198

F.3d 1167, 1174 (9th Cir. 1999). Here, as the Majority

acknowledges, the statute does not address the present question and is therefore ambiguous.2

See slip op. at 3618 (“[w]e

recognize that [Section 501(b)’s] omission explicitly to

address the present question may create an ambiguity.”). 

The key to understanding the legislative history of the 1976

Act, then, is an understanding of the history of standing to sue

under copyright law as it existed prior to the 1976 Act. When

read in context with copyright law that existed before the

1976 Act, and the portions of the law that were not changed

by such Act, a conclusion different from the Majority’s reading emerges. 

A. History of the 1909 Copyright Act

Under the Copyright Act of 1909 (“1909 Act”) (codifying

copyright law before the enactment of the 1976 Act), the

“proprietor” of a copyright was afforded the right to sue for

copyright infringement.3 17 U.S.C. § 101(b) (1909). While the

2

Indeed, the language of the statute cannot be all that clear, even to the

Majority, since even it eschews “plain meaning” rules of interpretation

and recurs to legislative sources. Slip op. at 3618-21. 

3The 1909 Copyright Act, 17 U.S.C. § 101(b) (1909), provided, in pertinent part: 

§ 101. Infringement

If any person shall infringe the copyright in any work protected

under the copyright laws of the United States such person shall

be liable: 

SILVERS v. SONY PICTURES ENTERTAINMENT 3639
1909 Act did not define the term “proprietor,” courts interpreted that term to mean the “sole owner” of the copyright.

See, e.g., Gardner v. Nike, Inc., 279 F.3d 774, 777-778 (9th

Cir. 2002) (discussing the general history of the 1909 Act and

holding that a sublicensee of a copyright lacked standing to

sue under the 1976 Act). 

The 1909 Act was predicated on the “doctrine of indivisibility.” Id. at 778. That is, under the Act, a copyright owner

possessed an indivisible “bundle of rights” which were “incapable of assignment in part.” Id. Accordingly, assignment

under the 1909 Act included “the totality of rights commanded by copyright.” Id. Transfer of “[a]nything less than

an assignment was considered a license.” Id. Regardless the

particular use of the copyright, “only the copyright proprietor

(which would include an assignee but not a licensee) had

standing to bring an infringement action.” Id. (emphasis

added). 

Even though the statute granted standing solely to the “proprietor” of the entire copyright, courts nevertheless allowed

assignees of an accrued cause of action for copyright infringement to sue for infringement of their property rights.4

See

Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 700 (5th Cir.

1969) (assignee of accrued cause of action had standing to sue

for copyright infringement); see also Moran v. London

***

(b) Damages and profits; amount; other remedies.

To pay to the copyright proprietor such damages as the copyright

proprietor may have suffered due to the infringement, as well as

all the profits which the infringer shall have made from such

infringement . . . . 

17 U.S.C. § 101(b) (1909) (emphasis added).

4

In addition, courts denied standing to mere licensees of partial rights

or uses of the copyright. See Prather, 410 F.2d at 700. 

3640 SILVERS v. SONY PICTURES ENTERTAINMENT
Records, Ltd., 827 F.2d 180, 183 (7th Cir. 1987) (noting that

courts applying the 1909 Act held that assignees had standing

to sue for copyright infringement). The infringement claim,

like any other contingent asset,5 could be sold, much like the

copyright holder’s claim against a trade debtor or a coupon

clipped from the copyright holder’s bond portfolio. 

Moreover, all defenses against the assignor were valid

against the assignee, who “stood in the shoes” of the assignor.

See T. B. Harms & Francis, Day & Hunter v. Stern, 231 F.

645, 647 (2d Cir. 1916) (holding that plaintiffs, as assignees

of composer’s rights under the contract, “stand in [the] shoes”

of the assignor and could assert the defense of lack of mutuality of contract). See also 17 U.S.C. § 201(d)(2) (1976) (“[t]he

owner of any particular exclusive right is entitled, to the

extent of that right, to all the protection and remedies

accorded to the copyright owner.”). 

B. History of the 1976 Copyright Act

The 1976 Act was the result of 15 years of debate on proposed legislation and was precipitated by Congress’s recognition that the nature of copyrighted works had changed.

Congress noted that, during the half-century since the passage

of the 1909 Act, “a wide range of new techniques for capturing and communicating printed matter, visual images, and

recorded sounds have come into use.” H.R. Rep. No. 94-1476

at 159, reprinted in 1976 U.S.C.C.A.N. 5659 at 5775. For

example, no longer was an opera performed only in a theater,

but such a work could be performed in movies, television,

videos, records, and other forms. Such technical advances

“generated new industries and new methods for the produc5Contingent liability is defined as “an existing condition, situation, or

set of circumstances involving uncertainty as to possible gain [ ] or loss

[ ] to an enterprise that will ultimately be resolved when one or more

future events occur of fail to occur.” Statement of Financial Accounting

Standards No. 5, Accounting for Contingencies ¶1 (FASB March 1975).

SILVERS v. SONY PICTURES ENTERTAINMENT 3641
tion and dissemination of copyrighted works, and the business

relations between authors and users have evolved new patterns.” Id.

Toward that end, Congress recognized the commercial need

to divide and “infinitely subdivide” copyright uses in recognition of increasing technologically driven varieties of means of

reproduction and distribution. Thus, one main purpose of the

1976 Act was, for the first time, to recognize the principle of

“divisibility” of uses of a copyright, and the ability to convey

the rights to uses separately to various reproducers, which

divisible rights did not exist under the 1909 Act. See H.R.

Rep. No. 94-1476 at 159, reprinted in 1976 U.S.C.C.A.N.

5659 at 5775, infra. 

Congress further recognized that allowing for “divisibility”

of the copyright required a mechanism whereby heretofore

barred owners of exclusive licenses could now sue for copyright infringement. Accordingly, Congress enacted Section

501 of the 1976 Act to provide access to the courts for the

owner of one or more rights to exclusive use, but did not mention the right of the owner of the overall copyright to sue. See

17 U.S.C. § 501(b). 

Indeed, in providing for the right of exclusive licensees to

sue, the drafters of the 1976 Act stated: 

The principle of the divisibility of copyright ownership, established by section 201(d), carries with it

the need in infringement actions to safeguard the

rights of all copyright owners and to avoid a multiplicity of suits. Subsection (b) of section 501 enables

the owner of a particular right to bring an infringement action in that owner’s name alone, while at the

same time insuring to the extent possible that the

other owners whose rights may be affected are notified and given a chance to join the action. 

3642 SILVERS v. SONY PICTURES ENTERTAINMENT
H.R. Rep. No. 94-1476 at 159, reprinted in 1976

U.S.C.C.A.N. 5659 at 5775 (emphasis added).6

Far from “suggest[ing] strongly that Congress intended to

limit the class of persons who may sue for infringement,” slip

op. at 3619 (emphasis added), the statement above in italics

— and omitted from the Majority Opinion — demonstrates

that Congress intended to enlarge the ability to bring suit to

the owners of exclusive rights.7

Read in context with provisions of the 1909 Act (to the

extent the acts are not inconsistent), and contrary to the

Majority’s conclusion, the 1976 Act’s Section 501(b) was an

enlargement of infringement action rights. Henceforth, standing was not limited only to the “proprietor”

8

 of the original

6

See also Testimony of George D. Cary, Copyright Office, Copyright

Law Revision Part 4: reprinted in George S. Grossman, Omnibus Copyright Revision Legislative History, Vol. 3 (2001) (“Committee Report”) at

116 (stating that “[s]ubsection (b) provides for the institution of an action

by “any owner of an exclusive right. This section was so worded in an

effort to take care of the problem of divisibility.”) (emphasis added). This

statement was in reference to Section 35(b) of an earlier draft of the 1976

Act. Like the enacted Section 501(b), Section 35(b) provided that the

“legal or beneficial owner” could bring suit. See Committee Report at 116-

117. 

7To the extent the statute purports to limit those persons able to bring

suit, it limits the rights of non-exclusive licensees from bringing suit. This

is consistent with the purpose of the 1976 Act. See Staff of Senate Comm.

on the Judiciary, 86th Cong., Study No. 11: Divisibility of Copyrights, 71,

Statement of Ralph S. Brown (Comm. Print 1960) (“[a]lleged infringers

should probably be protected against multiple suits by nonexclusive

licensees.”); See Staff of Senate Comm. On the Judiciary, 86th Cong.,

Study No. 11: Divisibility of Copyrights, 71, Statement of Ernest S. Meyers (Comm. Print 1960) (“[t]he law should include a provision permitting

an exclusive licensee to sue without joining his grantor; Provided, That

such a provision is restricted to an exclusive license of enumerated

rights.”) (emphasis in original). 

8Note that the 1909 Act did not create a private right of action or give

standing to the “proprietor” by any such language as did Section 501(b)

of the 1976 Act. See 17 U.S.C. §101(b) (1909). Rather, it enumerated the

“remedies” which the “proprietor” had under the 1909 Act. As any other

“proprietor” — a person owning property — it was implied he had a right

to sue for damages to his property. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3643
copyright; a legal or beneficial owner of exclusive rights severed by assignment from the original copyright also had

standing to sue for infringement. However, nothing in the

1976 Act eliminated the rights of copyright owners under

Section 101 of the 1909 Act to their remedies, nor the right

of property owners to enjoy the property rights granted by the

statute, including the assignment and enforcement of accrued

causes of action. 

That, I believe, is the way — and the only way — to read

Section 501(b). 

II.

The Majority concludes that because the statute does not

expressly grant standing to assignees of an accrued cause of

action, such persons do not have standing. See slip op. at

3618. Rather, the Majority reasons that, applying the maxim

of statutory construction expressio unius exclusio alterius est,

“Congress’ explicit listing of who may sue for copyright

infringement should be understood as an exclusion of others

from suing for infringement.” Slip op. at 3618 (emphasis in

original). In my view, the Majority misapplies this maxim of

statutory construction. 

First, such maxims of statutory construction are to be used

only when Congressional intent cannot be discerned. Indeed,

we have noted: 

Most strongly put, the expressio unius, or inclusio

unius, principle is that ‘[w]hen a statute limits a

thing to be done in a particular mode, it includes a

negative of any other mode.’ This is a rule of interpretation, not a rule of law. The maxim is ‘a product

of logic and common sense,’ properly applied only

when it makes sense as a matter of legislative purpose. . . . [T]he expressio unius principle describes

what we usually mean by a particular manner of

3644 SILVERS v. SONY PICTURES ENTERTAINMENT
expression, but does not prescribe how we must

interpret a phrase once written. Understood as a

descriptive generalization about language rather than

a prescriptive rule of construction, the maxim usefully describes a common syntactical implication.

‘My children are Jonathan, Rebecca and Seth’ means

‘none of my children are Samuel.’ Sometimes there

is no negative pregnant: ‘get milk, bread, peanut butter and eggs at the grocery’ probably does not mean

‘do not get ice cream.’ ” 

Longview Fibre Co. v. Rasmussen, 980 F.2d 1307, 1313 (9th

Cir. 1992) (internal citations omitted). See also Nat’l R.R.

Passenger Corp. v. Nat’l Ass’n of R.R. Passengers, 414 U.S.

453, 458 (1974) (“This principle of statutory construction

reflects an ancient maxim — expressio unius est exclusion

alterius . . . But even the most basic general principles of statutory construction must yield to clear contrary evidence of

legislative intent.”). Here, Congressional intent is readily discernible, and, as demonstrated above, contrary to the Majority’s application of the maxim. 

Second, commentators have noted that the use of maxims

of statutory construction such as “expressio unius” are problematic insofar as there is no hierarchy of maxims of statutory

interpretation. Why choose expressio unius rather than

another maxim, indeed, the exact opposite: that listing some

cases may include others? (see fn. 9, infra). In his recent

book, A Matter of Interpretation, Justice Scalia wrote, “[t]he

hard truth of the matter is that American courts have no intelligible, generally accepted, and consistently applied theory of

statutory interpretation.”

9

 Antonin Scalia, A Matter of Inter9

See Stephen J. Safranek, Scalia’s Lament, 8 TEX. REV. L. & POL. 315,

316 (Spring 2004) (noting the lack of hierarchy among maxims of statutory interpretation; “in the cases where judges apply interpretive aids, the

aids are often used in isolation and are not necessarily the controlling

method by which the statute is interpreted.”); see also Karl N. Llewellyn,

SILVERS v. SONY PICTURES ENTERTAINMENT 3645
pretation, 14 (1997) (quoting Henry M. Hart, Jr. & Albert M.

Sacks, The Legal Process 1169 (William N. Eskridge, Jr. &

Philip P. Frickey eds., 1994)). 

Third, while maxims of statutory construction may, indeed,

be helpful in interpreting statutes, they are not binding. The

Founders, including Alexander Hamilton, recognized as

much. See Alexander Hamilton, The Federalist Papers, No.

83 at 464 (Clinton Rossiter ed., 1961) (“The rules of legal

interpretation are rules of common sense, adopted by the

courts in the construction of laws. The true test of a just application of them is its conformity with the source from which

they are derived.”). 

Hence, rather than be guided by a Latin maxim nowhere

mentioned by the 1976 Act or our jurisprudence as hierarchically preferable to other means of statutory interpretation, we

should be guided by plain legislative intent, which, as our

Supreme Court reminds us, trumps the ancient Latin maxim

underpinning the Majority Opinion’s conclusion. See Nat’l

R.R. Passenger Corp., 414 U.S. at 459. 

Indeed, it should be noted that where Congress chooses to

expressly prohibit assignment, it knows how to do so explicitly. See, e.g., Federal Anti-Assignment Act of 1862, 41

U.S.C. § 15 (expressly prohibiting public contract claims

against the U.S. government from being assigned); Federal

Assignment of Claims Act of 1940, 31 U.S.C. § 3727

(expressly prohibiting assignment of federal claims against

the U.S. government from being assigned); Employee Retirement Income Security Act of 1974 (“ERISA”), 29 U.S.C.

Remarks on the Theory of Appellate Decision and The Rules or Canons

About How Statutes Are to Be Construed, 3 VAND. L. REV. 395, 405

(1949-1950) (noting that “there are two opposing canons on almost every

point”; and noting that the opposing canon for the expressio unius exclusio

alterius est is “[t]he language may fairly comprehend many different cases

where some only are expressly mentioned by way of example”). 

3646 SILVERS v. SONY PICTURES ENTERTAINMENT
§ 1056 (expressly prohibiting the assignment of pension benefits). Here, that Congress did not prohibit assignment of

infringement claims may well carry a negative pregnant that

it intended not to prohibit assignment. 

A second consideration in statutory interpretation is practicality, or put another way, the avoidance of an absurd result.

See Royal Foods Co., Inc. v. RJR Holdings Inc., 252 F.3d

1102 (9th Cir. 2001) (courts will not interpret a statute in a

way that results in an absurd or unreasonable result). Here,

were the statute to be read literally, it would result in absurd

or unreasonable results. 

It has long been recognized that assignment of the copyright does not automatically include assignment of accrued

causes of action for earlier infringements of the copyright. See

Prather, 410 F.2d at 700 (“ ‘a mere assignment of a copyright

does not itself transfer to the assignee any cause of action for

infringements that occurred prior to the assignment. Unless

the assignment of copyright contains language explicitly

transferring causes of action for prior infringements, the

assignee cannot maintain a suit for infringements which happened before the effective date of the assignment.’ ”) (internal

citations omitted). See also DeSilva Construction Corp. v.

Herrald, 213 F. Supp. 184, 192 (M.D. Fla. 1962) (holding

that the assignment of copyright under 1909 Act does not

include the right to sue for “infringements antedating the

assignment” and since the assignment as written failed to contain such a grant, “no such right is conferred by the assignment”).

The recognition that the right to an accrued cause of action

did not (in the absence of an express contractual assignment

of such rights) automatically follow the assignment of the

copyright is necessarily a recognition that the two rights

should be capable of being separate assets. As separate assets,

like any other property right, the two rights can be separately

alienated. That much was squarely decided in Prather, supra.

SILVERS v. SONY PICTURES ENTERTAINMENT 3647
Similar to the 1909 Act, courts have interpreted the 1976

Act to mean that an assignment of a copyright does not automatically carry with it accrued claims unless such claims are

specifically named in the contract of assignment. For example, in Infodek, Inc. v. Meredith-Webb Printing Co., Inc., 830

F. Supp. 614 (N.D. Georgia 1993), in interpreting the 1976

Act, the court held “the case law clearly states that a transfer

of interest for accrued damages must be stated in no uncertain

terms. It follows that the transfer of interest to past infringements did not pass from [assignor] to [plaintiff assignee] in

the first assignment despite the alleged intent to transfer any

and all accrued damages.” Infodek, 830 F. Supp. at 620 (citing

Prather, 410 F.2d at 700). 

The recognition under both the 1909 and 1976 Acts that an

accrued cause of action for copyright infringement is an asset

separate from the copyright or the exclusive uses of the copyright saves 501(b) from some absurd results. 

Read as the Majority does, Section 501 of the 1976 Act

converts a claim for relief for infringement into a life estate,

by providing a cause of action for copyright infringement but

only for the person who owned the exclusive right at the time

of the infringement. The statute would preclude an assignee of

the copyright and accrued causes of action from suing on an

accrued cause of action — which infringement, by definition

was not “committed while he or she was the owner of it.” 

The following result would obtain: if a copyright owner

instituted suit for copyright infringement (“while he was the

owner”), and then assigned the copyright after instituting such

suit, the assignee of the copyright and the accrued cause of

action could not maintain such suit, for the assignee was not

the owner when the infringement occurred. In addition, the

text would have to be read such that when the “he” or “she”

who owned the exclusive right at the time of the infringement

of the copyright dies, “his” or “her” heirs cannot institute the

infringement action, for the same reason. 

3648 SILVERS v. SONY PICTURES ENTERTAINMENT
Luckily, Section 501(b) has not been so interpreted. See 17

U.S.C. § 501(b). Rather, the section has been interpreted to

allow the post-1976 assignee of the accrued cause of action to

maintain the suit for accrued causes of action. Indeed, courts

have recognized that assignees of a copyright may maintain

an action instituted by the previous owner during which such

previous ownership the infringement claim arose. See, e.g.,

ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971

(2d Cir. 1991) (allowing plaintiff to bring suit for copyright

infringement that had occurred prior to plaintiff’s owning any

copyright interest where plaintiff was assigned the right to

accrued causes of action); see also 17 U.S.C. § 201(d)(2)

(1976) (“[t]he owner of any particular exclusive right is entitled, to the extent of that right, to all the protection and remedies accorded to the copyright owner.”). 

Accordingly, if individuals can bring suit on an accrued

infringement claim that did not accrue while he or she was the

owner, there is no reason the accrued cause of action cannot

be assigned here. 

Other fundamental principles lead to the conclusion that

Congress did not intend to preclude owners of a bare assignment of accrued causes of action from having standing to

bring suit. 

First, it is well-established that contract rights are assignable at common law. See Restatement (Second) Contracts

§ 317(2)(b) (1979) (contract rights assignable unless the

assignment is “forbidden by statute”). See also TransWorld

Airlines, Inc. v. American Coupon Exchange, 913 F.2d 676,

685 (9th Cir. 1990) (noting that “the presumption is in favor

of assignment [of contract]”). Here, the assignment of an

accrued cause of action for copyright infringement to an

assignee is nothing more than “simple assignment of a chose

in action.” See Prather, 410 F.2d at 699-700. 

As a general matter, common law rights existing prior to

the enactment of a statute remain in vigor unless expressly

SILVERS v. SONY PICTURES ENTERTAINMENT 3649
abrogated by statute. “[S]tatutes which invade the common

law . . . are to be read with a presumption favoring the retention of long-established and familiar principles, except when

a statutory purpose to the contrary is evident.” United States

v. Texas, 507 U.S. 529, 534 (1993) (holding that states remain

subject to common-law prejudgment interest liability where

the federal debt collection legislation did not directly speak to

the common law right of the federal government to collect

prejudgment interest on debts owed to it by the states) (internal quotation marks and citation omitted). Indeed, the

Supreme Court recognized that “in such cases, Congress does

not write upon a clean slate.” Id. Rather, “to abrogate a

common-law principle, the statute must ‘speak directly’ to the

question addressed by the common law.” Id. (internal quotation marks and citation omitted). 

That is, courts will not construe a statute “in derogation of

common law” unless there is express Congressional intent: 

The courts have consistently held legislation derogative of the common law accountable to an exactness

of expression, and have not allowed the effects of

such legislation to be extended beyond the necessary

and unavoidable meaning of its terms. The presumption runs against such innovation. 

Scharfeld v. Richardson, 133 F.2d 340, 341 (D.C. Cir. 1942).

See also In re Chateaugay Corp., 94 F.3d 772, 779 (2d Cir.

1996) (“there is nothing, either in the language of the statute

or in its legislative history, that would lead us to believe that

Congress meant the statute to abrogate common law rights of

setoff against refunds . . . .”); Attorney General of Canada v.

R.J. Reynolds Tobacco Holdings, Inc., 268 F.3d 103, 128 (2d

Cir. 2001) (construing civil RICO statute to preserve the

common-law doctrine known as the “revenue rule,” which

prohibits one sovereign from enforcing tax judgments or

claims of another sovereign, “absent clear evidence of congressional intent to abrogate it.”). 

3650 SILVERS v. SONY PICTURES ENTERTAINMENT
In the case at bar, there is nothing in the 1976 Act which

expressly forbids the assignment of the basic contract right at

issue here. 

Accordingly, the Majority errs in reasoning that copyright

“is a creature of statute, and the only rights that exist under

copyright law are those granted by statute.” Slip op. at 3614.

See also slip op. at 3618. (“Copyright is a creature of statute,

so we will not lightly insert common law principles that Congress has left out.”). This conclusion is in tension with the

principle that common law rights will be deemed to be

retained except where there is statutory language and purpose

to the contrary. This principle militates in favor of the court’s

retention of the common law right to assignment of contract.

Accordingly, the Majority’s reluctance to “insert common law

principles” is unfounded here and it errs in abrogating the

right to assign contract rights.10

Second, courts have interpreted other federal statutes which

expressly confer standing on certain persons also to grant

standing to assignees of the rights. For example, courts have

held that assignees of antitrust claims that accrue under the

Clayton Antitrust Act, 15 U.S.C. § 15, have standing to sue

for antitrust violations. The act provides that “any person who

shall be injured” can sue and yet courts have interpreted the

statute to confer standing on assignees of antitrust claims. See,

e.g., Gulfstream III Associates, Inc. v. Gulfstream Aerospace

Corp., 995 F.2d 425, 438-40 (3d Cir. 1993) (Though the

Clayton Antitrust Act, 15 U.S.C. § 15, provides that “any person who shall be injured” can sue, antitrust claims are assignable). 

10Although the court in Crown Die does not apply the baseline principle

that common law rights survive unless expressly abrogated by statute, it

does so on the ground that there was express legislative intent that there

be no assignment. Here, the legislative history cuts the other way. See discussion of Crown Die, infra. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3651
Other federal statutes have been similarly interpreted. See,

e.g., Lerman v. Joyce Int’l, Inc., 10 F.3d 106, 112-113 (3d

Cir. 1993) (RICO statute provides that “any person injured in

his business or property” may sue; court held that RICO

claims are assignable); see also Misic v. The Building Service

Employees Health and Welfare Trust, 789 F.2d 1374, 1377-78

(9th Cir. 1986) (per curiam) (ERISA statute, 29 U.S.C.

§ 1056(d), prohibited the assignment of pension benefits, but

did not expressly prohibit the assignment of health and welfare benefits; though the statute, 29 U.S.C. § 1132(a), provides that: “A civil action may be brought by a participant or

beneficiary . . . to recover benefits due to him under the terms

of his plan,” (emphasis added), health and welfare claims are

assignable).

III.

Next, the Majority argues that the case law that has developed in the area of patent law is analogous here. With respect,

it is not. In particular, the Majority asserts that the U.S.

Supreme Court’s 1923 decision in Crown Die & Tool Co. v.

Nye Tool & Machine Works, 261 U.S. 24 (1923) (per Taft,

C.J.), dealing with the question of whether an accrued cause

of action for patent infringement, is analogous and, indeed,

controls here. I respectfully disagree. 

In Crown Die, inventors Wright & Hubbard invented a

machine for forming a screw-thread cutting device. Id. at 25.

Wright & Hubbard assigned the patent to the Reed Manufacturing Company (“Reed”). Id. Thereafter, Nye Tool &

Machine Works (“Nye Tool”), first obtained from Reed “all

claims recoverable in law or in equity, whether for damages,

profits, savings, or any other kind or description which the

Reed Manufacturing Company has against the Crown Die &

Tool Company arising out of the infringement by the Crown

Die & Tool Company.” Id. at 26. Nye Tool then brought suit

to prevent Crown Die & Tool Company (“Crown Die”), a tool

company and competitor, from using the screw-thread cutting

3652 SILVERS v. SONY PICTURES ENTERTAINMENT
device. Id. at 24. While not stated in the opinion, it stands to

reason that plaintiff Nye Tool brought suit under the Patent

Act of 1874, which provided that a “patentee, assignee, or

grantee” could bring suit for patent infringement.11

Crown Die moved to dismiss the complaint on the grounds

that Nye Tool did not have standing to bring suit, for Reed

owned the patent and had only granted Nye Tool a portion of

its rights thereunder. Id. at 27. The court of appeals reversed

the district court’s order granting defendant’s motion to dismiss and the U.S. Supreme Court reversed the court of

appeals. Id. at 36. In reversing the court of appeals and affirming the district court’s dismissal of the complaint, Chief Justice Taft reasoned that the common law doctrine of

assignment of a cause of action does not apply to patent law

because patent law is a creation of statute. Id. More specifically, Chief Justice Taft reasoned that the patent right was

“created by the act of Congress; and no rights can be acquired

in it unless authorized by statute, and in the manner the statute

prescribes.” Id. at 40 (quoting Gayler v. Wilder, 51 U.S. 477,

494 (1850)). 

In so holding, the court reasoned that there was no legislative intent to permit splitting of the claim from the underlying

right because to do so would result in an aftermarket in patent

claims.12 The court reasoned that: 

11The first Patent Act was passed in 1793. See Diamond v. Chakrabarty,

447 U.S. 303, 308-09 (1980). Later patent acts were passed in 1836 (5

Stat. 117), 1870 (16 Stat. 198), 1874 (18 Stat. 78) and 1952. Id. Presumably, therefore, litigation commenced in or around 1923 would have been

brought under the Patent Act of 1874. That Act provided, in pertinent part:

“[d]amages for the infringement of any patent may be recovered by action

on the case, in the name of the party interested, either as patentee,

assignee, or grantee.” Patent Act of 1874, 18 Stat. 78, Section 4919.

Accord, Patent Act of 1952, 35 U.S.C. 281 (“A patentee shall have remedy

by civil action for infringement of his patent.”). 

12Indeed, Amicus Curiae in this case, Motion Picture Association of

America, Inc., argues this precise point. In its brief, it argues: 

SILVERS v. SONY PICTURES ENTERTAINMENT 3653
[I]t was obviously not the intention of the Legislature to permit several monopolies to be made out of

one, and divided among different persons within the

same limits. Such a division would inevitably lead to

fraudulent impositions upon persons who desired to

purchase the use of the improvement, and would

subject a party who, under a mistake as to his rights,

used the invention without authority, to be harassed

by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons

in the same place. 

Id. at 38 (quoting Gayler v. Wilder, 51 U.S. 477, 494 (1870))

(internal quotation marks omitted) (emphasis added). 

First, in contrast to the Chief Justice’s 1923 reading of an

1874 Patent Law, it clearly was the intent of the 1976 Legislature to “permit several monopolies to be made of one,” insoShould an assignee of nothing more than a naked infringement

cause of action have standing to sue, the number of copyright

infringement lawsuits could increase markedly . . . one can envision a market developing in which speculators with no relationship to the copyrighted work pay a small sum to the copyright

owner — who might have no belief in the merits of an infringement claim and no incentive to sue — in exchange for the ability

to pursue a high volume of nuisance settlements or unwarranted

jury verdicts. 

Brief of Amicus Curiae Motion Picture Ass’n of America, Inc. at 4

(emphasis added). 

Amicus leaves a faint whiff of nostalgia for the restrictions of the Age

of Guilds. Imagine what mischief would ensue if cafes across the street

from the Burbank studios were to be trolled by risk-seeking men clutching

cash. Why, the next thing that would happen would be to allow something

similar to what did happen in London: non-ship owners being paid to take

the risks of shipwreck, and, by subrogation, gaining the right to sue negligent captains and owners, all of this mendacious money-grubbing taking

place at Lloyd’s Coffee House! 

3654 SILVERS v. SONY PICTURES ENTERTAINMENT
far as the six individual and separate uses of a single

copyright (Section 201(d)) could not only be “divided among

different persons,” but subdivided infinitely. See 17 U.S.C.

§ 201(d). 

Second, avoidance of fraud upon purchasers of “several”

copyright uses was to be avoided by regulation: copyright

registration. See 1909 Act, Section 12 (1909) (“no action or

proceeding shall be maintained for infringement of copyright

in any work until the provisions of this Act with respect to the

deposit of copies and registration of such work shall have

been complied with”).13 Accord, 17 U.S.C. § 411(a) (1976)

(“[n]o action for infringement of the copyright in any work

shall be instituted until registration of the copyright claim has

been made in accordance with this title.”). 

Third, the concern of multiplicity of suits14 because of several owners of copyright uses seems expressly overcome by

allowing suit by the owner of “an” (not “all”) exclusive right

(§ 501(b)) to bring suit. 

Moreover, while the notion of severability of the incidents

of ownership of property was in its infancy in 1923 at the time

Crown Die was decided, such is not the case today. Indeed,

the underlying premise upon which the Majority relies is that

there should not be an aftermarket in causes of action for

copyright infringement. Given the growth of an aftermarket in

derivative rights such as puts, calls and credit insurance

against bankruptcy risks on corporate debt, the notion that an

aftermarket in accrued causes of action for copyright infringe13See also 17 U.S.C. § 30 (1952) ([e]very assignment of copyright shall

be recorded in the copyright office”); 17 U.S.C. § 205 (1976) (“any transfer of copyright ownership or other document pertaining to a copyright

may be recorded in the Copyright Office.”). 

14This has never been made very clear. Why should an alleged patent

infringer not be protected against all five partners who owned a patent, if

he had a defense judgment of no infringement in an action brought by one

of them? 

SILVERS v. SONY PICTURES ENTERTAINMENT 3655
ment is to be prohibited is at best passe and at worst an

unwarranted restraint on alienation. See Bank of America,

N.A. v. Moglia, 330 F.3d 942, 947 (7th Cir. 2003) (Posner, J.)

(“restraint[s] on alienation are traditionally disfavored.”).

Indeed, such limitations, on those able to bring suit, harken

back to the Tudor Kings of England who limited inheritance

to primogeniture and descent by fee tail. 

Here, the market will account for the fact that a copyright

holder is selling accrued causes of action and not the underlying copyright. To be sure, prices will fluctuate depending on

whether the copyright itself is included. 

Finally, while courts have recognized that “[w]here precedent in copyright cases is lacking, it is appropriate to look for

guidance to patent law ‘because of the historic kinship

between patent law and copyright law,’ ” (see slip op. at

3621) (internal citation omitted), courts have also recognized

that “[these] two areas of the law, naturally, are not identical

twins, and we exercise the caution which we have expressed

in the past in applying doctrine formulated in one area to the

other.” Sony Corp. of America v. Universal City Studios, Inc.,

464 U.S. 417, 439 n. 19 (1984). See also Mazer v. Stein, 347

U.S. 201, 217-218 (1954) (declining to apply patent law to

copyright law due to differences in bodies of law). For these

reasons, Crown Die does not compel a contrary result here.15

IV.

Unlike circumstances in which the proliferation of lawsuits

has been restrained on the basis of public policy, such as the

15Similarly, the Majority’s reliance on Prima Tek II, L.L.C. v. A-Roo

Co., 222 F.3d 1372, 1381 (Fed. Cir. 2000) is misplaced. See slip op. at

3623. That case does not involve the standing of an assignee of an accrued

cause of action under patent law. Rather, the Federal Circuit held that nonexclusive licensees of patent right did not have standing to sue. The case

is therefore inapposite. 

3656 SILVERS v. SONY PICTURES ENTERTAINMENT
prohibition on assignment of personal injury claims in tort,

here there is no reason to prevent the assignment of a copyright claim. Indeed, the court in Prather expressly held there

was no such public policy. See Prather, 410 F.2d at 700

(“[t]here is no public policy against such assignments.”). 

Courts have upheld restrictions on the assignment of claims

where such assignment has been deemed to be in violation of

public policy. This anti-assignment policy was rooted in the

common law prohibition on champerty.16 See, e.g., United

Food & Commercial Workers & Employers Arizona Health &

Welfare Trust v. Pacyga, 801 F.2d 1157, 1159 (9th Cir. 1986)

(noting that assignment of personal injury claims is prohibited

by common law in Arizona); See also Desenne v. Jamestown

Boat Yard, Inc., 968 F.2d 1388, 1390 (1st Cir. 1992) (noting

that anti-assignment of personal injury claims rooted in prohibition on champerty). 

Similarly, courts have held that legal malpractice claims are

not assignable for public policy reasons. See, e.g., Forgione

v. Dennis Pirtle Agency, Inc., 93 F.3d 758, 760 (11th Cir.

1996) (“[a] majority of jurisdictions prohibit the assignment

of [legal malpractice] actions because the personal nature of

legal services which involve highly confidential relationships”) (internal quotation and citation omitted). Moreover,

courts have upheld restrictions on in-person attorney solicitation, enacted to prevent the public’s perception of attorneys

from falling in further disrepute, as rooted in the common law

doctrine of barratry.17 See Florida Bar v. Went For It, Inc.,

16Champerty is defined as “[a]n agreement between an officious intermeddler in a lawsuit and a litigant by which the intermeddler helps pursue

the litigant’s claim as consideration for receiving part of any judgment.”

Black’s Law Dictionary (8th Ed. 2004) at 246. 

17The common law prohibited barratry, which was defined as “the

offence of frequently exciting and stirring up quarrels and suits” because

such litigation was for the benefit of the promoter rather than for the benefit of the real party in interest. Vitaphone Corp. v. Hutchinson Amusement

Co., 28 F. Supp. 526, 530 (D. Mass. 1939). 

SILVERS v. SONY PICTURES ENTERTAINMENT 3657
515 U.S. 618, 626 (1995). See also Bailey v. Morales, 190

F.3d 320, 323 (5th Cir. 1999) (legal profession barred from

soliciting under ancient doctrine prohibiting barratry). 

In addition, courts have upheld restrictions on assignment

of certain federal claims where assignment of such claims

would result in nuisance suits. For example, in Smith v. Ayres,

977 F.2d 946, 950 (5th Cir. 1992), the plaintiff shareholder

brought suit under section 10(b) of the Securities Exchange

Act of 1934, which provides that “purchasers or sellers” of

securities may bring suit. The plaintiff had been granted an

express assignment of the claim. The defendant moved to dismiss on the ground that plaintiff lacked standing and the district court granted the motion. The Fifth Circuit affirmed,

concluding that such a result was warranted by (1) the fact

that “Congress was concerned with blackmail, nuisance, and

strike suits, and drafted the act to circumscribe the class of

plaintiffs who may sue under the Act for the very purpose of

eliminating such suits” and (2) “the evidentiary problems

inherent in allowing a non-purchaser or non-seller to bring a

Rule 10b-5 action.” Id. at 950 (internal citations omitted). 

None of such policy concerns underlie the Majority’s opinion. Nor indeed is there a reasoned policy consideration given

for prohibiting suit upon an accrued cause of action for infringement.18

V.

In reaching its conclusion, the Majority argues that this circuit should follow the Second Circuit’s decision in Eden Toys,

Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir.

1982) to avoid the creation of a circuit split. See slip op. at

3625-26. In my view, Eden Toys is inapposite. To avoid the

18As noted above, (see fn. 7), there is a public policy rationale for limiting standing to holders of exclusive licensees and prohibiting nonexclusive licensees from suing. That rationale, however, is absent here. 

3658 SILVERS v. SONY PICTURES ENTERTAINMENT
creation of a circuit split, this circuit should rather follow the

rationale of Prather. 

A. Prather v. Neva Paperbacks, Inc.

In Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (1969),

the Fifth Circuit squarely held that an assignee of an accrued

cause of action is a proper party to bring suit for copyright

infringement. In my view, this case provides persuasive

authority that this circuit should follow. 

Plaintiff Prather (“Prather”) was the author of several

books. Prather held the copyright on one of the books and the

copyright to the remaining books was held by Prather’s publisher, Fawcett Publications. Prather discovered that the copyright on one of the books (the rights to which were owned by

Fawcett) had been infringed by book publisher Neva Paperbacks, Inc. (“Neva”). After discovering the infringement, Prather obtained some of the copyright rights and an assignment

of all present, past and future causes of action.19 Significantly,

however, Fawcett “simultaneously” with assigning the copyright to Prather, retained an exclusive license to the English

language rights for books throughout the world. Id. at 699 n.1.

Prather brought suit against Neva for copyright infringement. Neva moved to dismiss, arguing that plaintiff Prather

did not have standing to bring suit because Prather was not

the “proprietor” of the copyright as required under the 1909

Act. See 17 U.S.C. § 101(a) (1952). Rather, Neva argued that

because the copyright rights had been “split,” Prather was a

mere “licensee” and not the sole “proprietor” under Section

101. 

19Prather was assigned “all . . . right, title and interest in and to the

copyright” and was further assigned “any and all causes of action that may

have heretofore accrued in [the holder’s] favor for infringement of said

copyright.” Id. at 699 n.1. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3659
The Fifth Circuit affirmed the trial court’s denial of the

defendant’s motion to dismiss and held that Prather did, in

fact, have standing to sue. In so holding, the Fifth Circuit reasoned that the assignment was simply a “simple assignment

of a chose in action” — a contract — that contained express

language of assignment. See Prather, 410 F.2d at 699-700.

The court concluded: 

As an assignee of the causes of action for infringement damages past, present and future, Prather has

the right to maintain the action under 17 U.S.C.A.

[§]§101 et seq. For infringement. There is no public

policy against such assignments and under

F[ED].R.CIV.P. 17 such assignee of all choses in

action for infringement, whether a ‘proprietor’ or

not, has standing to sue and the court has effective

power to avoid altogether the risk of double suit or

double recovery. 

Id. at 700 (emphasis added). 

Under Prather, then, courts will not require plaintiff to hold

ownership of one or more of the exclusive rights of a copyright owner to have standing. 

The Majority states that Prather is “unhelpful” authority

for two reasons: (1) it was decided under the 1909 Act, and

not the 1976 Act; and (2) “the assignment in Prather involved

both accrued causes of action and some of what we now call

exclusive rights.” Slip op. at 3625 (emphasis in original). The

Majority argues “the Prather court was not faced, as we are,

with a situation in which the owner of all the exclusive rights

and the owner of the accrued causes of action are two different people.” Slip op. at 3625. Neither distinction is persuasive. 

First, the Majority’s attempt to distinguish Prather as predicated on the 1909 Act is unpersuasive, given that courts have

3660 SILVERS v. SONY PICTURES ENTERTAINMENT
recognized that “[i]n enacting § 501(b)’s standing provision,

Congress ‘merely codified the case law that had developed

[under the 1909 Act] with respect to the beneficial owner’s

standing to sue.’ ”

20 Moran v. London Records, Ltd., 827 F.2d

180, 183 (7th Cir. 1987) (internal citation omitted). See also

Gardner, 279 F.3d at 778 (9th Cir. 2002) (holding that a sublicensee of a copyright lacked standing to sue under the 1976

Act on the ground that the pre-1976 law so prohibited).21

Accord, H.R. 94-1476 at 47, reprinted in 1976 U.S.C.C.A.N.

5659, 5660 (“[t]he present copyright law, title 17 of the

United States Code, is basically the same as the act of

1909.”). 

Second, that Prather owned rights to the books (other than

the English language rights), Neva argued, made Prather a

licensee of book rights — not the owner of what we would

now call “exclusive rights.” An assignee could not be the

owner of book rights because the “exclusive right” to republish could not be split away from the copyright under the 1909

Act; that is precisely what the 1976 Act changed. Licensees

did not have standing to bring suit under the 1909 Act. Therefore, Prather, as a (mere) licensee, could not have had stand20Indeed, Congress relied upon this principle in drafting another section,

Section 201(a). See 17 U.S.C. § 201(a) (“[c]opyright in a work protected

under this title vests initially in the author or authors of the work.”).

Regarding the provision, Congress stated: “There is [ ] no need for a specific statutory provision concerning the rights and duties of the co-owners

of a work; court made law on this point is left undisturbed.” H.R. Rep. No.

94-1476 at 121, reprinted in 1976 U.S.C.C.A.N. 5659 at 5737. 

21In Gardner, the court concluded: 

Although neither party’s plain language arguments is dispositive,

the fact that Congress chose not to explicitly address this issue in

the 1976 Act and the limiting ‘protection and remedies’ language

of § 201(d)(2) indicates that the state of the law remains

unchanged. Thus, we hold that the 1976 Act does not allow a

copyright licensee to transfer its rights under an exclusive license,

without the consent of the original licensor. 

Id. at 780. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3661
ing to sue but for his standing as the assignee of an “accrued

cause of action for infringement.” See, e.g., Gardner, 279

F.3d at 778 (“only the copyright proprietor (which would

include an assignee but not a licensee) had standing to bring

an infringement action.”). 

Moreover, the assignment to Prather of “some rights” did

not help Prather establish his right to sue; just the opposite.

The fact that he got “some” but not “all” rights of copyright

was used by the defendants to undermine his standing and

was in no sense a grounds used by the Prather court to validate the assignment. Indeed, the court rejected this argument

and refused to get into the “metaphysical dialectic” of the

“button game” of determining who had the copyright. Prather, 410 F.2d at 699. 

In my view, to interpret Prather as holding that an assignee

of an accrued cause of action was required to be an assignee

of some rights under the copyright would be a profound misreading of the case. Rather than essential to establish standing, having (only) some rights made out what defendant Neva

urged as an affirmative defense. 

B. Eden Toys, Inc. v. Florelee Undergarment Co., Inc. 

By contrast, the Second Circuit’s decision in Eden Toys,

Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir.

1982) involves a different factual situation and thus is entitled

to little weight here. 

In Eden Toys, Paddington Bear & Company, Ltd.

(“Paddington Bear”) held the copyright to children’s books

which featured the fictional character Paddington Bear. Id. at

29. In 1975, Paddington Bear entered into an agreement with

Eden Toys, Inc. (“Eden Toys”), an American corporation,

whereby Eden Toys was granted an exclusive license to use

licensor Paddington Bear’s copyright and characters in North

America. Id. In 1980, that agreement was amended to grant

3662 SILVERS v. SONY PICTURES ENTERTAINMENT
Eden Toys exclusive North American rights to all Paddington

products except books, tapes, records, stage plays, motion pictures, radio and television productions. Id. at 30. Under the

agreement, Paddington Bear retained the right to sue for copyright infringement on Eden Toys’ license. Id. In particular, the

agreement allowed Paddington Bear to sue, or choose not to,

but let Eden Toys bring suits on Paddington’s behalf.22 Id. at

30 n. 2. 

Eden Toys brought suit against Florelee Undergarment Co.

(“Florelee”), alleging copyright infringement, and seeking to

enjoin Florelee’s use of the Paddington Bear image. Id. at 31.

Florelee moved to dismiss the complaint on the ground that

Eden Toys lacked standing to sue under 17 U.S.C. § 501(b)

(1976). Id. The Second Circuit affirmed the district court’s

dismissal of the claim, holding that “[the court] do[es] not

believe that the [1976] Copyright Act permits holders of

rights under copyrights to choose third parties to bring suits

on their behalf.” Id. at 32 n. 3. 

The Majority contends that the court in Eden Toys “made

plain the basic principle, which we also have derived from

§ 501(b) and its context and history, that only the owner of an

exclusive right under the copyright is entitled to sue for

infringement.” Slip op. at 3626. 

22The EdenToys-Paddington Agreement provided, in pertinent part: 

(a) In the event that Eden or its licensees shall be exposed to

competition, direct or indirect, from infringers of the copyright or trademark rights which are licensed hereunder . . .

Paddington shall, at its option, take all necessary legal

action to enjoin such infringement and protect Eden and its

licensees. 

(b) In the event such infringement and Paddington’s election to

take no legal action . . . Eden shall have the right, at its

option: (i) to institute appropriate legal action against the

infringer . . . . 

Eden Toys, 697 F.2d at 30 n. 2. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3663
I respectfully disagree. In my view, the holding of Eden

Toys is far more narrow. The court in Eden Toys held that a

copyright holder who maintains ownership of the exclusive

right to reproduce cannot assign to a third party the bare right

to sue should the copyright holder choose not to do so. It does

not hold that a copyright holder may not assign the accrued

cause of action, on which a new owner can sue. 

Indeed, the specific contractual agreement between Eden

Toys and Paddington Bear did not (as it does here) assign all

rights to any claims, but merely assigned the right to sue

where Eden Toys or its licensees was “exposed to competition, direct or indirect, from infringers of the copyright or

trademark rights which are licensed hereunder.” Id. at 30 n.2.

There was no assignment to Eden Toys of pre-existing

accrued causes of action. Accordingly, there was no real “assignment” of any accrued cause of action. Rather, the EdenPaddington Bear agreement was interpreted as an agreement

merely designating Eden as the agent for purposes of suit.

Thus, Eden Toys merely holds that the proper party plaintiff,

the “real party in interest,” is the owner of the cause of action

for infringement, not some hand-picked stand-in. 

C. ABKCO Music, Inc. v. Harrisongs Music, Ltd. 

Finally, I respectfully disagree with the Majority’s reading

of the Second Circuit’s decision in ABKCO Music, Inc. v.

Harrisongs Music, Ltd., 944 F.2d 971 (2d Cir. 1990). Far

from “reaffirm[ing] the principle of Eden Toys that a party

that has no ownership interest has no standing to sue,” as the

Majority asserts (slip op. at 3626-27), in my view, the decision clearly holds that copyright ownership is not the sine qua

non of standing, but that assignees of accrued causes of action

may sue for copyright infringement. 

In 1971, Bright Tunes Music Corporation, which owned the

copyright to a song entitled “He’s So Fine,” sued musician

(and Beatles band member) George Harrison and Harrisongs

3664 SILVERS v. SONY PICTURES ENTERTAINMENT
Music claiming that Harrison’s tune “My Sweet Lord”

infringed Bright Tunes’ copyright. The trial court agreed and

ruled in favor of Bright Tunes, but reserved judgment on the

issue of damages. Id. at 975. 

In 1971, at the time Bright Tunes sued Harrison, ABKCO

Music, Inc. and its president served as business manager for

the Beatles. Id. at 975. In 1978, ABKCO purchased all of

Bright Tunes’ interest in “He’s So Fine” including the copyright and “any and all rights assertable under copyright

against the infringing composition (“My Sweet Lord”) in any

part of the world which may have heretofore arisen or which

may arise hereafter.” Id. at 980. Accordingly, ABKCO was

substituted as the sole party plaintiff in the action against Harrisongs Music. Id. at 975. However, Harrison had claims

against ABKCO and its principal Klein which required

ABKCO to convey the old Bright Tunes copyright to “He’s

So Fine” to Harrison on the payment of a sum. 

On appeal, ABKCO claimed that if it conveyed the old

Bright Tunes “He’s So Fine” copyright to Harrison, it could

not participate in the 1980 foreign settlements and it would

lose its pre-1970 infringement claims. 

As concerns us, the dispositive question was a determination of what rights were at issue in the 1980 foreign settlements: ABKCO’s possession of the copyright to “He’s So

Fine” or merely its ownership of the infringement claims. The

Second Circuit held it was merely the ownership of the

infringement claims, and held that ABKCO’s right to bring

the claims derived from its ownership of the accrued infringement claims. 

In so holding, the Second Circuit noted that although

ABKCO now owned the copyright and the accrued infringement claims, it need not continue to own the copyright to

enforce its accrued-in-1970 causes of action for copyright

SILVERS v. SONY PICTURES ENTERTAINMENT 3665
infringement arising from the 1980 settlement. The court reasoned: 

Hence, the claims had already accrued when

ABKCO purchased all of Bright Tunes’ rights in

“He’s So Fine.” As a consequence, ABKCO’s right

to bring the claims arises not out of its ownership of

the copyright, but from its ownership of the claims

themselves which it purchased, along with the copyright, in 1978. We therefore conclude that ABKCO’s

ownership of the “He’s So Fine” copyrights was not

a necessary predicate to its participation in the 1980

settlements. ABKCO could participate in the 1980

settlements because it owned the infringement

claims accrued in 1970, not because it owned the

copyright. Thus, ABKCO’s ownership of the copyright was not affected by the 1980 settlements, and

ABKCO must surrender the copyright to the Harrison Interests upon proper payment. 

Id. at 980-981 (emphasis added). 

Thus, under the holding in ABKCO, ownership of the copyright is not a requirement for the enforcement of accrued

claims assigned to the assignee (ABKCO) so long as the

claims arose during the period when the assignor (Bright

Tunes) was the owner of the copyright. Moreover, ABKCO

could continue to assert such accrued copyright infringement

claims even though it would be forced to give up the copyright. 

According to the Majority, “[t]he Second Circuit [in

ABKCO] made clear that its decision was limited to the situation in which the same entity purchased both the copyright

and accrued claims; the only issue was one of timing, whether

ownership of the copyright and occurrence of the infringement had to coincide.” Slip op. at 3626. I respectfully disagree. In ABKCO, ownership of both the copyright and the

3666 SILVERS v. SONY PICTURES ENTERTAINMENT
accrued causes of action was merely coincident — not

required — for ABKCO to have standing to sue. 

Indeed, ABKCO, like Silvers, did not own the copyright to

“He’s So Fine” when George Harrison and the Beatles plagiarized it into “My Sweet Lord.” The copyright to “He’s So

Fine” was owned by Bright Tunes; the infringements took

place before 1970. 

In the case at bar, there is no dispute that Frank & Bob

Films II owned the copyright when the alleged Sony infringement took place and that they, like Bright Tunes, assigned

those accrued infringement claims to Silvers. Thus, like

ABKCO, Silvers has standing to pursue those accrued

infringement claims. 

Accordingly, I respectfully disagree with the Majority: to

avoid the creation of a circuit-split, slip op. at 3626-27, this

court should follow the Fifth Circuit’s decision in Prather,

rather than the Second Circuit’s decision in Eden Toys, as the

facts in Eden Toys are clearly distinguishable. In addition, in

ABKCO, a more recent decision, the Second Circuit expressly

held that ownership of both the copyright and the accrued

causes of action is not necessary for the owner of those claims

to bring suit. 

VI.

For the foregoing reasons, I would affirm the district

court’s denial of Sony’s motion to dismiss Silvers’ complaint

against Sony for the alleged infringement of the copyright of

her script, “The Other Woman.” I respectfully dissent. 

SILVERS v. SONY PICTURES ENTERTAINMENT 3667