Cross-posted on the Law Theories blog.

They say that bad facts make bad law, and that was proven yet again earlier this year with Righthaven’s resounding defeat on the standing issue in the Ninth Circuit.1 I have uploaded a copy of the Ninth Circuit’s opinion to Scribd. I wrote about the Righthaven standing issue this past March, and I explained why it is I think that Righthaven does indeed have standing to sue for past infringements. While the result reached by the Ninth Circuit is probably a surprise to no one, myself included, I am troubled at the court’s dubious reasoning in arriving at its conclusion. To me, the opinion reflects results-oriented jurisprudence rather than an accurate application of existing law.

Lest the point get lost (and I receive more “fan mail”), I should point out that my concern is only with the question of law that the Righthaven standing issue presents. I do not personally care for Righthaven or its methods, and I find the practice of instituting copyright actions for sport to be distasteful. But at the same time, I think it must be conceded that the vast majority of the defendants had likely committed a tort. Righting a wrong is not itself evil, of course, but turning it into a profit-making scheme crosses the line with many people—and rightfully so. My focus solely is on whether the court’s reasoning was a proper application the relevant doctrine. Whether the opinion reaches a result that corresponds to one’s particular normative views does not concern me.

This opinion should be worrisome to copyright owners because it tramples over well-established law in holding: (1) that unless a party has the present ability to exploit a copyright, it has no ownership interest therein, and (2) that an assignment and an exclusive license are the exact same thing such that a licensor has no ownership interest in that which he exclusively licenses. Neither of these holdings has ever been the law, whether copyright, patent, or trademark. There are in fact intellectual property owners who cannot exploit the very exclusive rights that they own, and assignments and exclusive licenses are and have always been two distinct types of ownership interests in all branches of intellectual property law. In this post, I’ll explain why I think the Ninth Circuit got it wrong with these particular two holdings.

Not All Copyright Owners Can Exploit The Copyright

By way of context, the Ninth Circuit’s en banc majority opinion in Silvers v. Sony2 controls the standing analysis. In that case, the question arose whether the plaintiff, who had been granted by the copyright owner only the right to sue for past infringements, had standing to sue for past infringements despite not having any other ownership interest in the copyright. The majority held that “an assignee who holds an accrued claim for copyright infringement, but who has no legal or beneficial interest in the copyright itself,” has no standing to “institute an action for infringement.”3 This “legal or beneficial” language, in turn, derives from Section 501(b) of the Copyright Act, which provides that the “legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement . . . .”4

Thus, the rule from Silvers is that the assignee of only the accrued causes of action does not have standing to institute an action for copyright infringement for past infringements unless that assignee is also a legal or beneficial owner of the underlying exclusive right that is alleged to have been infringed. That rule is directly on point here where Righthaven and Stephens Media entered into two complementary agreements, the Copyright Assignment and the Strategic Alliance Agreement (“SAA”). The Copyright Assignment assigned to Righthaven ownership of the copyrights plus the accrued causes of action, and the SAA then granted back to Stephens Media an exclusive license to exploit the copyrights. The issue, then, is whether the combined effect of the Copyright Assignment and the SAA left Righthaven with any legal or beneficial ownership interest in the copyright, in addition to the accrued causes of action, such that it would have standing to sue under Silvers.

The Ninth Circuit held that Righthaven had no other such ownership interest, “for all it was really assigned was a bare right to sue for infringement.”5 The court reasoned that since Righthaven could not exploit the copyrights, it was not a legal or beneficial owner under the Copyright Act:

The SAA provided that Stephens Media automatically received an exclusive license in any copyrighted work it assigned to Righthaven, so that Stephens Media retained “the unfettered and exclusive ability” to exploit the copyrights. . . . The contracts left Righthaven without any ability to reproduce the works, distribute them, or exploit any other exclusive right under the Copyright Act. See 17 U.S.C. § 106. Without any of those rights, Righthaven was left only with the bare right to sue, which is insufficient for standing under the Copyright Act and Silvers.6

Note the sleight of hand. The rule from Silvers is that the assignee of an accrued cause of action must also be a legal or beneficial owner of the copyright—this in turn was based on the language in Section 501(b). The Ninth Circuit here mistakenly transforms that into a rule that the assignee of an accrued cause of action must also be able to exploit the copyright. This is based on the erroneous assumption that legal or beneficial ownership under Section 501(b) necessarily implies the ability to exploit the copyright. But that is not the law, and the doctrine is clear that not all legal or beneficial owners who have standing to sue can actually exploit the copyright. Noticeably, the court did not cite any case law to back up its claim that legal or beneficial owners must necessarily have the ability to exploit the copyright that they hold an ownership interest in.

Ironically, the majority opinion in Silvers, which the court here relies on heavily, cites to the House Report on the 1976 Copyright Act that demonstrates the existence of a party with an ownership interest in a copyright that has standing to sue for its infringement despite not being able to exploit the copyright:

The first sentence of subsection (b) [of Section 501] 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.7

Thus, an author who parts with legal title to his copyright while retaining the right to receive royalties from its exploitation by another is a “beneficial owner” under Section 501(b) who has standing to sue for its infringement—even though this royalty recipient cannot himself exploit the copyright and would be an infringer if he did.8 This shows that the test for standing to sue is not, as the Righthaven court seems to think, whether the plaintiff has the present ability to exploit the copyright. To make sense of what the test for standing really is—as well as to make sense of why it is that Righthaven has standing to sue for past infringements despite not having a present ability to exploit the copyright—we have to take a step back to discuss how copyright ownership works generally.

A Primer on Copyright Ownership

Over seventeen decades ago, Justice Joseph Story, riding circuit, famously quipped:

[C]opyrights approach, nearer than any other class of cases belonging to forensic discussions, to what may be called the metaphysics of the law, where the distinctions are, or at least may be, very subtile and refined, and, sometimes, almost evanescent.9

Those words are as true today as they were then, and like many, I find copyright fun and interesting precisely because of its metaphysical nature. Perhaps one of the more metaphysical aspects of copyright law can be found in the various doctrinal crevices of copyright ownership. I’ve been diving into these chasms as part of my dissertation work, and I can tell you honestly that they are, at times, arid and conceptual. But as one of my current professors, the brilliant Stephen Griffin, has been teaching me, the real question is whether it has “cash value.” Theories are fine and dandy, but what makes one useful is whether I can “cash it out.” I think that taking the time to understand copyright ownership at an abstract and theoretical level does indeed have real cash value. In fact, I think the reason we get doctrine-jumbling opinions like Silvers and Righthaven is precisely because many lawyers and judges fail to approach copyright ownership at a more abstract level.

What follows is the way to think about copyright ownership that I find most helpful. My account is in part descriptive, in that it reflects the way the concept of copyright ownership has developed in the case law, especially early on, and it’s in part normative, in that I argue that jurists should be thinking of copyright ownership in this way. The starting point is Professor W.N. Hohfeld, whose fundamental jural relations I discussed in my previous post on why copyright is a right.10 Hohfeld identified eight jural relations that can be used to describe precisely various legal relations: right, privilege, power, immunity, duty, no-right, liability, and disability. As I mentioned in that previous post, these can be paired off into jural correlatives. For example, the correlative of a right is a duty, and if X holds a right against Y, it necessarily follows that Y then owes X a duty. Likewise, the correlative of a privilege is a no-right, and if X holds a privilege against Y, it necessarily follows that Y then has no legally enforceable claim against X should he exercise his privilege.

What I didn’t discuss in that previous post, and what’s important here, is that these jural relations such as rights and duties can operate in two different spheres: contract law and property law. One can have a contractual interest that involves a copyright, and one can have a proprietary interest in the copyright, but these are not the same thing. Contractual interests are different in kind than proprietary interests. Recall from my previous post that a right is a legally enforceable claim against another that he shall do or not do a given act, and the person against whom the right exists has the correlative duty to do or not do the given act. The primary difference between a contractual right and a proprietary right lies in the identity of this correlative dutyholder. With a contractual right, the dutyholder is the other party or parties to the contract, but with a proprietary right, the dutyholders are everyone else. The lawyerly way of saying this is that contractual rights operate in personam, only binding those who are in privity, while proprietary rights operate in rem, thus good against the world.11

As the name suggests, an in rem proprietary right is a right against a thing, i.e., the res, but the reality is that all of Hohfeld’s jural relations apply to persons, whether in personam or in rem. Saying that an in rem proprietary right operates against a given thing is just a shorthand way of saying that it operates against a person with respect to the given thing—the res. In other words, an in rem proprietary right creates a duty in the dutyholder, not because of his relationship with the rightholder, but because of his relationship to the thing. As Hohfeld pointed out, with respect to that res, the rightholder has an in rem proprietary right that is good against the world, i.e., that creates the correlative in rem proprietary duty in everyone else. The concept of a res is easy to grasp when it’s a tangible object, like a screwdriver. If I own a screwdriver, I then have an in rem proprietary right to exclude you and everyone else from possessing it. You and everyone else, in turn, owe me the correlative in rem proprietary duty not to possess my screwdriver.

When nonlawyers think about property, they tend to focus on the thing itself, but lawyers think more abstractly, focusing instead on the various legal relations that exist between persons with respect to that thing. Whether the thing itself is tangible or intangible doesn’t matter; what matters is the intangible bundle of in rem proprietary interests that go with it, consisting of some combination of Hohfeld’s eight fundamental jural relations. Some of these bundles we call “ownership,” and I submit that the sine qua non of ownership is an in rem proprietary right. To “own” property is to have a right in it, and to have a right in it is to have a legally enforceable claim against others vis-à-vis the thing. But owners can and do have other proprietary interests as well. If I own a screwdriver, I have the right to exclude you from using it, the privilege to use it myself, the power to grant you the privilege of using it, and an immunity from you changing my jural relations with respect to it.12 To say that I have all of these proprietary interests in my bundle is to say that I own and hold title to the res. I can divest myself in various ways of these interests, exercising my in rem proprietary power to alter the jural relations with respect to the thing, but so long as this bundle contains an in rem proprietary right, I am an owner.

Contrasted with this, an in personam contractual right, as the name suggests, is a right against a person, i.e., the persona. It is not a right that one person has against another person because of his relationship to a given thing, but rather it’s a right that one person has against another person because of their direct relationship to each other. Contractual rights have to be bargained for between the rightholder and the dutyholder, and this allows the parties to create elaborate schemes of rights and duties between them since only those parties are bound by them. For example, we can enter into a contract where we agree that I’ll scratch your back and you’ll scratch mine. If I scratch your back but you then refuse to scratch mine, you are liable to me for the breach since I have an in personam contractual right against you, that is, a legally enforceable claim against you should you violate your in personam contractual duty to me. My claim is only good against you, and not the world, because you were the only one with the in personam contractual duty to scratch my back.

Contract law can only create in personam contractual interests, and in rem proprietary interests can only be created through property law. An in rem proprietary interest can be the consideration that makes a contract binding, but a contract is not needed to transfer an in rem proprietary interest. Property law allows for such interests to be transferred unilaterally, without the need of a contract or consideration. This distinction isn’t just theoretical. It has real cash value—especially in the context of nonexclusive licenses such as with Creative Commons and the like. In Hohfeldian terms, a nonexclusive licensee holds an in rem proprietary privilege that negates the in rem proprietary duty he would otherwise have not to do the licensed act. This necessarily implies the correlative in rem proprietary no-right on the part of the licensor to hold the nonexclusive licensee liable for doing the licensed act. No contract is needed for the licensor to alter the in rem proprietary interests that others have with respect to the thing. Property law gives him the in rem proprietary power to do so unilaterally.13

Copyright owners have innumerable possible ways they can divvy up their in rem proprietary interests in their copyrights, but only certain combinations are recognized by law. Before the 1976 Copyright Act, copyright ownership was subject to the doctrine of indivisibility, which provided:

With respect to a particular work embodied in concrete form, or separable part of such work, there is, at any one time, in any particular jurisdiction, only a single incorporeal legal title or property known as the copyright, which encompasses all of the authorial rights recognized by the law of the particular jurisdiction with respect thereto.14

Under the indivisibility doctrine, the various in rem proprietary rights held by the copyright owner could not be separated.15 For example, he couldn’t assign his in rem proprietary right to vend to one party while assigning his in rem proprietary right to publish to another. He could assign his ownership of the various in rem proprietary rights to another, but such an assignment had to include his entire bundle of in rem proprietary rights. But the doctrine of indivisibility did not stop copyright owners from granting others exclusive rights, i.e., in rem proprietary rights good against the world.16 This is because copyright rights, like intellectual property rights generally, are capable of being divided into legal interests and equitable interests. The doctrine of indivisibility only prevented the legal in rem proprietary rights from being owned by more than one person; equitable in rem proprietary rights could still be divided up separately.

This notion of dividing up property into legal and equitable interests comes from trust law. A trust is “a fiduciary relationship with respect to property, subjecting the person by whom the title to the property is held to equitable duties to deal with the property for the benefit of another person, which arises as a result of a manifestation of an intention to create it.”17 A trust permits one party, called the trustee, to hold the trust property, called the res, in trust for the benefit of another, called the beneficiary. In a trust relationship, the trust property is divided such that the trustee holds the legal title while the beneficiary holds the equitable title18 This notion of equitable title, as the name suggests, was developed in the courts of equity where the rules were much more flexible than those of the courts of common law. The courts of equity, unshackled to the rigidity of the doctrine of indivisibility, innovated ways to permit those without legal in rem proprietary interests in a copyright to seek judicial relief.

The 1976 Copyright Act explicitly does away with the doctrine of indivisibility. Section 201(d)(2) now permits the various legal in rem proprietary rights in a copyright to be owned separately.19 But, more importantly for our purposes, the Act does not eradicate the availability to copyright owners of the option to divide their in rem proprietary rights into legal and equitable interests using the mechanism of a trust. In fact, Section 501(b) makes clear that either a “legal or beneficial owner of an exclusive right under a copyright is entitled . . . . to institute an action” for its infringement.20 In other words, when in rem proprietary rights are held in trust, both trustees and beneficiaries have standing to sue, regardless of the legal or equitable nature of their particular proprietary interest. Moreover, Section 201(d)(2) provides that a legal or beneficial owner “is entitled . . . to all of the protection and remedies accorded to the copyright owner by this title.” This means that whether the ownership interest is legal or equitable in nature, the owner is permitted to seek both legal and equitable remedies—equitable owners are no longer restricted to seeking only equitable remedies.

The Trust Theory Applied

I call this notion that in rem copyright rights can be held in trust the “trust theory” of copyright ownership, and I submit that many of the most important relationships created by copyright owners with respect to their copyrights are in fact ones of trust. I do not refer to the trust law of any one state, but rather to the body of federal law that has been developed by the courts as to, not only copyrights, but intellectual property law in general. And, despite the long-running application of the trust theory of ownership in all branches of intellectual property law, for some reason modern jurists don’t seem to recognize it or to appreciate it.

Trust law is not foreign to copyright law: “[T]he courts recognize that legal title to a copyright may be in one person and equitable title in another. Thus, one may be a ‘proprietor’ of a copyright if he holds legal title, though equitable title may be in another wither expressly or as trustee ex malificio.”21 For example, under the 1909 Copyright Act, if a coauthor obtained the copyright in his own name only, “the copyright [was] deemed to have been taken out in the name of one as a trustee for all the true owners.”22 In other words, the coauthor who obtained the copyright, thus holding the legal title to the entire copyright, held it in trust for the “true owners,” that is, the other coauthors, who were beneficiaries holding the equitable title. This “owner of the equitable title is not a mere licensee, and he may sue in equity, particularly where the owner of the legal title is an infringer, or one of the infringers, thus occupying a position hostile to the plaintiff.”23 Despite not holding the legal title, courts of equity recognized the in rem proprietary rights of these equitable owners and permitted them to seek equitable remedies.

Another common example of a trust relationship in copyright law is the situation mentioned above where an author parts with legal title while retaining the right to receive royalties. It’s simple to analyze this situation when we have the right conceptual tools. By operation of law, an author is vested with legal title to the entire copyright.24 This title includes the in rem proprietary rights listed in Section 106, as well as various in rem proprietary privileges, powers, and immunities. In addition, the author has other incidental in rem proprietary rights, such as the right to receive royalties from the copyright’s exploitation. Ownership of this in rem proprietary right to receive royalties can be divided such that one party holds legal title to it for the benefit of one holding its equitable title. An author who assigns the legal title to the in rem proprietary right to receive royalties while retaining the equitable title to that right establishes a trust where the author is the beneficiary and the assignee is the trustee.25

It doesn’t matter whether the assignment expressly declares a trust: “It is not necessary to use the magic words of ‘fiduciary relationship’, or to hold that a ‘relationship of trust and confidence’ was created by the contract, or to find that defendant became a ‘trustee’ of the copyright for the benefit of the plaintiffs . . . .”26 Indeed, “[t]he law has outgrown its primitive stage of formalism when the precise word was the sovereign talisman, and every slip was fatal.”27 When there is a special relationship between the author and his assignee, as when the assignee is a publisher, the law treats that relationship as that of a trustee-beneficiary, imposing fiduciary duties on the publisher-assignee.28 And, because there is this trust relationship between the author and the publisher, the author, who holds only the equitable in rem proprietary right to receive royalties, is permitted to bring suit in equity:

It is well settled that a fiduciary who refuses to bring suit against a third party for the benefit of his cestui [i.e., the beneficiary] abuses his trust. In such event the cestui may maintain a bill in equity against the trustee in which the third party may be joined as a defendant. The trustee thus is not permitted by inaction or dereliction to bar his cestui from enforcing his rights in that capacity. . . . The principle is not foreign to copyright law. It has long been held that an exclusive licensee can maintain an action against an infringer if he joins the copyright owner as a party.29

The point being urged here is that the 1976 Copyright Act incorporated the application of trust law to in rem proprietary rights in a copyright when it provided, as mentioned above, that the “legal or beneficial owner” has standing to sue for infringement.30 Congress also accounts for the possibility of others with in rem proprietary interests in the copyright in the notice and joinder provisions of Section 501(b).31 Moreover, one of the quintessential examples of a trust relationship in copyright law is that of an author who assigns his legal title to his publisher while retaining the equitable title to the in rem proprietary right to receive royalties. This author has standing to sue for infringement despite not having the present ability to exploit the copyright. But as the last sentence quoted in the block just above mentions, there’s another common example of a trust relationship recognized in copyright law, that of the licensor-exclusive licensee—and that relationship is important here with Righthaven.

Exclusive Licenses Are Not Assignments

The second way in which the Ninth Circuit reasoned that Righthaven does not have standing to sue for past infringements was to look at the sequence of events with the Copyright Assignment and the SAA. Under the Copyright Assignment, Stephens Media first assigned to Righthaven ownership of the copyright. Then with the SAA, Righthaven granted back to Stephens Media an exclusive license to exploit the copyright. This arrangement, argued Righthaven, demonstrates that it owns the copyright, for only a copyright owner could grant an exclusive license. The Ninth Circuit disagreed:

This argument again emphasizes form over substance. But even analyzing it on its own formalistic terms, the argument still fails because once Righthaven granted Stephens Media an exclusive license, Righthaven was no longer the owner of exclusive rights under the Copyright Act. The Copyright Act does not distinguish between transferring a copyright via an assignment or an exclusive license. Both, unlike an assignment of a non-exclusive license, constitute a “transfer of copyright ownership.” 17 U.S.C. § 101; see also Campbell, 817 F.2d at 504 (relying on this section of the Copyright Act to construe a contract as transferring the ownership of a copyright, even though the contract used the term “exclusive license”).32

Thus, the court is saying that even if Stephens Media assigned its ownership interests in the copyright to Righthaven via the Copyright Assignment, Righthaven subsequently assigned back those very same ownership interests when it granted to Stephens Media an exclusive license. In other words, the court is saying that an assignment and an exclusive license are exactly the same thing. The court bases this conclusion on the text of Section 101 of the Copyright Act, which provides that a “transfer of copyright ownership” includes an “assignment” or an “exclusive license.”33

I submit that this is an overly facile understanding of Section 101, and that it miscomprehends that while an assignment and an exclusive license are indeed transfers of copyright ownership, the type of ownership interest transferred with each conveyance is significantly different. Properly viewed, the relationship of a licensor-exclusive licensee is that of a trustee-beneficiary, with the licensor holding the legal title to the in rem proprietary rights in trust for the benefit of the exclusive licensee, who holds merely the equitable title. This is a relationship of trust. The difference between an assignment and an exclusive license is that an assignment is the transfer of the legal title to an in rem proprietary right to the assignee, while an exclusive license divides title to the in rem proprietary right between the licensor and the exclusive licensee. Both are a “transfer of copyright ownership,” as Section 101, in codifying the preexisting doctrine, so notes, but whether the ownership interest transferred is legal or equitable in nature depends on the nature of the conveyance used to transfer it. Of course, whether legal or equitable in nature, it’s treated the same under Section 501(b) as having standing to sue for both legal and equitable remedies.

The Ninth Circuit’s citation in Righthaven to its earlier opinion in Campbell34 is confused and misplaced. In that case, Campbell had a contract with Stanford wherein the latter promised not transfer its ownership interests in the copyright at issue without the former’s written consent. We can say this in more refined terms as Stanford had an in personam contractual duty not to transfer its in rem proprietary rights to a third party without Campbell’s consent. Without Campbell’s permission, Stanford had granted an exclusive license to CPP, a third-party publisher, and the issue was whether that was a transfer of an ownership interest in the copyright in violation of their contract. The Ninth Circuit held that it was:

Stanford transferred important rights to CPP. Stanford gave CPP an “exclusive license to market, administer, and sell” the [copyrighted work] “throughout the world.” The essence of the property interest created by the Campbell-Stanford contract is a monopoly on the use of the [copyrighted work]. Stanford clearly transferred part of this property interest monopoly to CPP in the form of an exclusive license. *** Section 101 of the Act defines a “transfer of copyright ownership” to include a grant of an exclusive license to any of these enumerated rights, even if the license is limited in time or place of effect.35

Unsure whether the 1976 Copyright Act actually governed the issue, the court then hedged its reasoning in a footnote:

Even if the Copyright Act of 1976 does not apply, the parties to the Campbell-Stanford contract must have contemplated that the exclusive license conveyed some “interest” in the copyright to CPP. Under the prior copyright acts, as well as the current Act, an exclusive licensee has standing to sue for infringement, provided he joins the legal owner as a party.36

Thus, the court in Campbell held that it matters not whether the issue is analyzed under the 1909 Copyright Act or the 1976 Copyright Act, since under either Act, the grant of an exclusive license is a transfer of an ownership interest in a copyright. The Ninth Circuit in Righthaven misses the nuance that the Campbell court explicitly recognized that an exclusive license is a transfer of only a “part of th[e] property interest” held by the licensor. Moreover, in the footnote, the court in Campbell explicitly stated that under both Copyright Acts, the exclusive licensee is not the legal owner of the right that he holds, for how else could he be required to “join[] the legal owner as a party”?

The court in Righthaven cites Campbell for the proposition that an exclusive license is the transfer of the legal title to the exclusive licensee of the in rem proprietary rights so licensed, but a closer reading of Campbell shows that the court there actually treated an exclusive licensee as holding only the equitable title. Since an exclusive license is a transfer of copyright ownership, albeit an equitable one, the Campbell court held, Stanford’s exclusive license to CPP without Campbell’s consent violated the in personam contractual duty Stanford owed Campbell not to transfer any of its in rem proprietary rights without Campbell’s consent. Campbell stands for exactly the opposite proposition than the Righthaven court cites it for. For whatever reason, the Ninth Circuit in Righthaven fails to recognize a principle that is well-established in the various branches of intellectual property law, namely, that an exclusive license is not the same thing as an assignment. This is true now as it was under prior Copyright Acts, and it’s also true in the realms of patent and trademark law.

Patents, Trademarks, and Beyond

In patent law, an assignment and an exclusive license have always been distinct, with the difference being that an assignment transfers legal title while an exclusive license does not.37 The licensor holds the legal title to the in rem proprietary rights so licensed in trust for his exclusive licensee, who has only an equitable ownership interest in the patent.38 The general rule is that damages for patent infringement are only recoverable in an action at law by the party who “held the legal title to the patent during the time of the infringement.”39 This follows from the text of the Patent Act, which provides that the “patentee,” or his “successors in title,” may sue for patent infringement.40 Thus, on its face, the Patent Act would appear to say that only the holder of legal title, i.e., the patentee or one who can trace his legal title back to the patentee, has standing to sue for patent infringement, but the judiciary does not interpret it this way.

Generally, the rule is that the “patentee should be joined, either voluntarily or involuntarily, in any infringement suit brought by an exclusive licensee.”41 Thus, the presence of the patentee, or his successors-in-title who stand in his shoes, is usually needed for the court to have jurisdiction.42 The exclusive licensee can gain the benefit of his licensor’s legal title for standing purposes by either suing in the name of his licensor, or if necessary, by joining his licensor to the action.43 In order to have standing as a coplaintiff, along with the patentee or his successors-in-title, in an action for patent infringement, the “licensee must hold some of the proprietary sticks from the bundle of patent rights, albeit a lesser share of rights in the patent than for an assignment and standing to sue alone.”44 Both parties have in rem proprietary rights in the patent that are enforceable, though the presence of the legal titleholder in the action is needed to obtain legal remedies.45 An exclusive license “makes the licensee a beneficial owner of some identifiable part of the patentee’s bundle of rights to exclude others,” and this exclusive licensee “has a right to bring suit on the patent, albeit in the name of the licensor, whether or not the license so provides and regardless of the patentee’s cooperation.”46 And when the exclusive licensee has all substantial rights in the patent, he is treated as the de facto patentee, despite not being the de jure patentee, who still holds the legal title.47

Trademark law similarly treats exclusive licensees as equitable titleholders. Like copyright and patent law, trademark law distinguishes between assignments and exclusive licenses.48 The Lanham Act provides that the “registrant” or his “successors and assigns” has standing to sue for infringement of a registered mark.49 Thus, like the Patent Act, the Lanham Act appears to provide that only the original registrant who holds legal title, or one who can trace his legal title back to the original registrant, has standing to sue for trademark infringement. An exclusive licensee typically does not have standing to sue in his own name since he is not the registrant or his successor-in-title, and he thus lacks the legal title to the mark.50 However, just as with patents, an exclusive licensee who holds all substantial rights in the mark is treated as the registrant for purposes of standing.51 And as in patent law, such an exclusive licensee is merely a de facto assignee, not a de jure assignee who actually holds legal title, and the exception merely serves to prove the general rule.52

An assignment and license-back of a mark, as Stephens Media and Righthaven have done here with a copyright, has been described by the Federal Circuit as a “well-settled commercial practice.”53 The Ninth Circuit has noted “that a simultaneous assignment and license-back of a mark is valid, where, as in this case, it does not disrupt continuity of the products or services associated with a given mark”54 An opinion earlier this year out of the Northern District of California, penned by District Judge William Alsup of the “Google Shill List” fame, discusses this common practice of assignment and license-back.55 After noting that “the validity of this type of assignment and license-back transaction is well-settled,”56 Judge Alsup explained that an “assignment passes legal and equitable title to the property,” and it “is the transfer of the whole of the interest in the right.”57 A “truly exclusive license,” on the other hand, “that grants all substantial trademark rights, including the ability to exclude the licensor from using the marks, is tantamount to an assignment for standing purposes.”58 In other words, such an exclusive license is “functionally equivalent” to an assignment, but it’s not the same thing.59 Despite the exclusive licensee having significant interests in the mark such that it “controls the exploitation of the intellectual property,” Judge Alsup nevertheless recognized that this did not affect “the legal title retained by the licensor.”60

Turning back to copyright law, the modern confusion about the difference between an assignment and an exclusive license stems in part from Section 101, the definitional section of the 1976 Copyright Act, which provides:

A “transfer of copyright ownership” is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.61

The phrase “transfer of copyright ownership” appears only in three other sections of Title 17, and these are illuminating as to why Congress defined the phrase in Section 101. The first appearance is in Section 204(a), which provides: “A transfer of copyright ownership . . . is not valid unless an instrument of conveyance . . . is in writing and signed by the owner of the rights conveyed . . . .”62 The phrase occurs twice in Section 205. Section 205(a) provides: “Any transfer of copyright ownership . . . may be recorded in the Copyright Office . . . .”63 And Section 205(e) provides: “A nonexclusive license . . . prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed . . . .”64 The final occurrence is found in Section 708(a)(4), which merely provides that the fees for recordation under Section 205 shall be paid to the Register of Copyrights.65

Thus, the purpose of lumping together “an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright” in Section 101 was not to suddenly equate these types of conveyances that historically had been disparate things. The purpose of the definition in Section 101 was to list the types of conveyances that: (1) require a signed writing to be effective, (2) may be recorded in the Copyright Office, (3) a nonexclusive license may take priority over, and (4) require recordation fees to be paid to the Register of Copyrights. Just because all of these conveyances are equated for execution, recordation, and prioritization purposes, it does not follow that Congress intended to erase in such a roundabout way almost two centuries of doctrine distinguishing them without any explanation in the congressional record.

Perhaps the best way to see that “transfer of copyright ownership” under Section 101 does not refer to only transfers of legal title is to look at the rest of the text. Section 101 tells us that a “mortgage” is also a transfer of copyright ownership. A mortgage can be a lien against a copyright whereby a creditor secures an obligation owed by the debtor that is extinguished once the obligation is fulfilled.66 In a mortgage, the debtor is called the mortgagor and the creditor is called the mortgagee. In lien-theory states, a mortgage is merely a lien held by the creditor-mortgagee with the debtor-mortgagor retaining legal title to the mortgaged property during the existence of the mortgage. In title-theory states, the creditor-mortgagee holds legal title to the mortgaged property while the mortgage is in force.67 But if the assignment = exclusive license = mortgage theory is correct, and all transactions mentioned as constituting a “transfer of copyright ownership” in Section 101 are transfers of legal title, then the mortgage laws of the states that follow the lien-theory would be preempted by the Copyright Act. There would be no such thing as a lien on a copyright since liens are equitable interests in the mortgaged property. The only way to mortgage a copyright would be to transfer legal title to the mortgagee.

If Congress had intended so drastic a result, it stands to reason that it would have implemented the change in a clearer way than sticking it in the definitional section of the Copyright Act to be implied by jurists. In fact, the House Report reflects instead that Congress did not intend to preempt state law as it applies to mortgages, at least in the context of foreclosures:

Representatives of motion picture producers have argued that foreclosures of copyright mortgages should not be left to varying State laws, and that the statute should establish a Federal foreclosure system. However, the benefits of such a system would be of very limited application, and would not justify the complicated statutory and procedural requirements that would have to be established.68

The way that foreclosures operate in a given state turns on whether it’s a title-theory or a lien-theory state. If Congress did not intend to preempt the various ways in which states deal with foreclosures of copyright mortgages, then it makes little sense to say that it intended to change the way that mortgages are created under state law in the first place—but that’s exactly what is implied by those who think that assignment = exclusive license = mortgage.

The better view of Section 101’s provision that a “mortgage” is a “transfer of copyright ownership” is the one taken by the Ninth Circuit in an opinion discussing whether the Copyright Act preempts state law when it comes to recordation of unregistered copyrights.69 The court noted that the “Copyright Act’s use of the word ‘mortgage’ as one definition of a ‘transfer’ is properly read to include security interests under Article 9 of the Uniform Commercial Code.”70 Those security interests, in turn, include liens—such as the one at issue in the very case the Ninth Circuit was deciding. Moreover, the court stated that a creditor cannot protect his interest by registering the copyright himself “because the secured party isn’t the owner of the copyright.”71 Thus, the Ninth Circuit simply read the inclusion of “mortgage” in Section 101 as indicating that security interests can be created in it, not that it means that all such security interests must involve the transfer of legal title to the creditor.

To underscore the point, Section 101 provides that a “transfer of copyright ownership” includes “any . . . hypothecation of a copyright.” In general, a hypothecation is “a pledge, i.e., an encumbrance rather than a deed translative of title or ownership.”72 In other words, hypothecation refers to a method of creating a security interest in a given piece of property. For example, in my state of Louisiana, a hypothecation can connote either a mortgage, a pledge, or an encumbrance, depending on the context.73 Those who believe that assignment = exclusive license = mortgage = hypothecation must believe that Congress intended to preempt Louisiana law such that only legal interests, as opposed to equitable interests, can be hypothecated—despite no such indication in the congressional record. This view makes little sense. While the Ninth Circuit has held that the Copyright Act preempts state law as far as recordation of security interests in a registered copyright is concerned,74 it did not hold that state law as to the creation of those security interests was preempted. States are free to permit the hypothecation of a copyright even if that hypothecation doesn’t transfer legal title to the copyright.


The Righthaven standing issue is simple to analyze. It’s just an assignment and license-back. Stephens Media, the author and legal titleholder of the copyright, assigned to Righthaven the legal title to the copyright plus the accrued causes of action. Righthaven, in turn, granted back to Stephens Media an exclusive license to exploit the copyright. This grant-back of an exclusive license did not divest Righthaven of the legal title to the copyright that it had been granted because an assignment and an exclusive license are not the same thing. A licensor retains the legal title to the in rem proprietary rights that he exclusively licenses to another. He holds that legal title in trust for his exclusive licensee. And, though many don’t seem to recognize this, the existence of trust relationships in copyright law is and has been commonplace. The question of who has standing to sue, I submit, is simply to ask whether the plaintiff, either personally or through assignment from his predecessors-in-title, whether legal or equitable, held an in rem proprietary right in the copyright at the time the cause of action accrued. Since Righthaven has such an interest, it has standing to sue under the existing doctrine.

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  1. See Righthaven LLC v. Hoehn, 716 F.3d 1166 (9th Cir. 2013). []
  2. See Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881 (9th Cir. 2005) (en banc). []
  3. Id. at 883. []
  4. 17 U.S.C.A. § 501(b) (West 2013) (“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. The court may require such owner to serve written notice of the action with a copy of the complaint upon any person shown, by the records of the Copyright Office or otherwise, to have or claim an interest in the copyright, and shall require that such notice be served upon any person whose interest is likely to be affected by a decision in the case. The court may require the joinder, and shall permit the intervention, of any person having or claiming an interest in the copyright.”). []
  5. Righthaven, 716 F.3d at 1169. []
  6. Id. at 1170. []
  7. Silvers, 402 F.3d at 886 (quoting H.R.Rep. No. 94-1476, at 159). []
  8. See, e.g., Fantasy, Inc. v. Fogerty, 654 F.Supp. 1129, 1131 (N.D. Cal. 1987) (“Since a beneficial owner has no independent right to use or license the copyright, the beneficial owner can infringe upon the legal owner’s exclusive rights.”). []
  9. Folsom v. Marsh, 9 F.Cas. 342 (C.C.D. Mass. 1841). []
  10. See generally Wesley Newcomb Hohfeld, Some Fundamental Legal Conceptions As Applied in Judicial Reasoning, 23 Yale L.J. 16 (1913); Wesley Newcomb Hohfeld, Fundamental Legal Conceptions as Applied in Judicial Reasoning, 26 Yale L.J. 710 (1917). []
  11. See, e.g., P.S. Atiyah, An Introduction to the Law of Contract 265 (3d ed. 1981) (“It is an elementary principle of English law — known as the doctrine of ‘Privity of Contract’ — that contractual rights and duties only affect the parties to a contract, and this principle is the distinguishing feature between the law of contract and the law of property. True proprietary rights are ‘binding on the world’ in the lawyer’s traditional phrase. Contractual rights, on the other hand, are only binding on, and enforceable by, the immediate parties to the contract. But this distinction, fundamental though it be, wears a little thin at times. On the one hand, there has been a constant tendency for contractual rights to be extended in their scope so as to affect more and more persons who cannot be regarded as parties to the transaction. On the other hand, few proprietary rights are literally ‘binding on the world.’”). []
  12. See, e.g., A. L. C., The Collection of Royalties from the Sub-Assignee of A Copyright, 28 Yale L.J. 259, 262-63 (1919) (“Patents and copyrights are often spoken of as ‘grants’ or ‘franchises’ and are also described as ‘property.’ Analysis shows that they are merely bundles of legal relations between the holder and all other persons; they are innumerable legal relations of right, privilege, power, and immunity. For example, there is a privilege of making and selling, a right that another shall not make or sell, a power to assign or to license others, and immunity from the destruction of these relations by any voluntary act of another. This bundle of relations may properly be described as property, for they are . . . rights in rem. However, they do not necessarily or usually accompany any physical res, and their assignment is not effected, as in the case of chattels or land, by a change in physical possession.”) (footnotes omitted). []
  13. See, e.g., Christopher M. Newman, A License Is Not A “Contract Not to Sue”: Disentangling Property and Contract in the Law of Copyright Licenses, 98 Iowa L. Rev. 1101, 1109 (2013) (“The concept of license . . . belongs fundamentally to property, not contract. Property rights allocate control of resource use to titleholders, while placing all others under in rem duties of noninterference. License is the means by which titleholders relieve selected others of those duties and permit them to participate in (or even delegate to them the power to direct) the use of—and this is the crucial point—resources to which the licensor continues to retain title.”); Niva Elkin-Koren, What Contracts Cannot Do: The Limits of Private Ordering in Facilitating A Creative Commons, 74 Fordham L. Rev. 375, 404-05 (2005) (“A property license is not a contract. It is a unilateral legal action, through which a property owner can exercise her rights, and it defines the boundaries of legitimate use. Its binding force does not derive from exercising autonomous will. The restrictions imposed by the license are enforceable because of property rules, and they do not require voluntary consent.”) (footnote omitted). []
  14. Newman, 98 Iowa L. Rev. at 1144-45 (internal quotations and citations omitted). []
  15. See, e.g., Gardner v. Nike, Inc., 279 F.3d 774, 778 (9th Cir. 2002) (“Under the doctrine of indivisibility, a copyright owner possessed an indivisible bundle of rights, which were incapable of assignment in parts. Thus, an assignment included the totality of rights commanded by copyright. Anything less than an assignment was considered a license.”) (internal quotations and citations omitted); Siegel v. Warner Bros. Entm’t, Inc., 658 F.Supp.2d 1036, 1101 n.14 (C.D. Cal. 2009) (“Absent the complete assignment of rights commanded by the copyright, the transfer was considered to be a license, with the transferor maintaining ownership in all the rights to the copyright in the material.”); M. Witmark & Sons v. Pastime Amusement Co., 298 F. 470, 474 (D.S.C. 1924) (“In relation to the right to sue for an infringement, a copyright is an indivisible thing, and cannot be split up and partially assigned either as to time, place, or particular rights or privileges, less than the sum of all the rights comprehended in the copyright.”); Hirshon v. United Artists Corp., 243 F.2d 640, 643 (D.C. Cir. 1957) (“[T]he copyright proprietor may transfer the legal title to his copyright only in totality; the copyright may not be split up and partially assigned as to the various rights encompassed therein.”) (internal quotations omitted). []
  16. See, e.g., M. Witmark & Sons v. Pastime Amusement Co., 298 F. 470, 475 (D.S.C. 1924) (gathering cases) (“[E]xclusive rights may be granted, limited as to time, place, or extent of privileges which the grantee may enjoy; but the better view is that such limited grants operate merely as licenses, and not as technical assignments, although often spoken of as assignments.”); Black v. Henry G. Allen Co., 42 F. 618, 621 (C.C.S.D.N.Y. 1890) (“[A] license in writing, by instrument duly witnessed, may be given by the proprietor to any other person to the extent described in such license; and there is no restriction upon the power of the proprietor to assign or transfer, in equity, an exclusive right to use the copyrighted book in a particular manner or for particular purposes upon such terms and conditions as may be agreed upon. In such case the legal title remains in the proprietor; and a beneficial interest, to the extent which is agreed upon, vests in the other party, who has acquired an equitable right in the copyright, and who will be properly styled an assignee of an equitable interest.”) (internal quotations omitted); First Financial Marketing Services Group, Inc. v. Field Promotions, Inc., 286 F.Supp. 295, 298 (S.D.N.Y. 1968) (“[L]egal title to copyright may be transferred only in totality. When the rights are split up and partially assigned either as to time, place or particular rights or privileges, the limited grant of exclusive rights operates merely as a license, not an assignment of ownership of a copyright.”). []
  17. Restatement (Second) of Trusts § 2 (1959); see also Restatement (Third) of Trusts § 2 (2003) (“A trust . . . is a fiduciary relationship with respect to property, arising from a manifestation of intention to create that relationship and subjecting the person who holds title to the property to duties to deal with it for the benefit of charity or for one or more persons, at least one of whom is not the sole trustee.”); George Tucker Bispham, The Principles of Equity 37 (11th ed. 1931). (“A trust, in its technical sense, is the right, enforceable solely in equity, to the beneficial enjoyment of property of which the legal title is in another.”). []
  18. See, e.g., Bogert’s Trusts And Trustees § 17 (2013) (“One of the . . . characteristics of a trust is divided ownership of property, the trustee usually having legal title and the beneficiary having equitable title.”). []
  19. See 17 U.S.C.A. § 201(d)(2) (West 2013) (“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 remedies accorded to the copyright owner by this title.”). []
  20. 17 U.S.C.A. § 501(b) (West 2013). []
  21. Manning v. Miller Music Corp., 174 F.Supp. 192, 195 (S.D.N.Y. 1959) (internal citations omitted). []
  22. Maurel v. Smith, 271 F. 211, 215 (2d Cir. 1921); see also Bisel v. Ladner, 1 F.2d 436 (3d Cir. 1924) (“The legal title to a copyright vests in the person in whose name the copyright is taken out. It may, however, be held by him in trust for the true owner, and the question of true ownership is one of fact, dependent upon the circumstances of the case.”). []
  23. Ted Browne Music Co. v. Fowler, 290 F. 751, 753 (2d Cir. 1923). []
  24. See 17 U.S.C.A. § 201(a) (West 2013) (“Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowners of copyright in the work.”). []
  25. See, e.g., Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984) (“When a composer assigns copyright title to a publisher in exchange for the payment of royalties, an equitable trust relationship is established between the two parties which gives the composer standing to sue for infringement of that copyright. Otherwise the beneficial owner’s interest in the copyright could be diluted or lessened by a wrongdoer’s infringement.”) (internal citations omitted). []
  26. Schisgall v. Fairchild Publications, 137 N.Y.S.2d 312, 318 (Sup.Ct. 1955). []
  27. Id. []
  28. See, e.g., Manning v. Miller Music Corp., 174 F.Supp. 192, 196 (S.D.N.Y. 1959) (“The law implies a promise on the publisher’s part to endeavor to make the work productive, since that is the very purpose of the assignment of literary rights and the correlative obligation to pay royalties. . . . It is this fiduciary relationship, imposing equitable obligations upon the publisher beyond those ordinarily imposed by law upon those dealing fully at arms’ length which gives the plaintiffs standing to sue here.”) (internal quotations omitted). []
  29. Id. (bracketed text added). []
  30. 17 U.S.C.A. § 501(b) (West 2013). []
  31. See id. (“The court may require such owner to serve written notice of the action with a copy of the complaint upon any person shown, by the records of the Copyright Office or otherwise, to have or claim an interest in the copyright, and shall require that such notice be served upon any person whose interest is likely to be affected by a decision in the case. The court may require the joinder, and shall permit the intervention, of any person having or claiming an interest in the copyright.”). []
  32. Righthaven, 716 F.3d at 1170. []
  33. 17 U.S.C.A. § 101 (West 2013) (“A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.”). []
  34. See Campbell v. Bd. of Trustees of Leland Stanford Junior Univ., 817 F.2d 499 (9th Cir. 1987). []
  35. Id. at 504. []
  36. Id. at 504 n.2. []
  37. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255 (1891) (“In equity, as at law, when the transfer amounts to a license only, the title remains in the owner of the patent . . . .”); Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991) (“[T]he term ‘assignment’ has a particular meaning in patent law, implying formal transfer of title.”); Sicom Sys. v. Agilent Techs., Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) (“An exclusive licensee receives more rights than a nonexclusive licensee, but fewer than an assignee. An example of an exclusive licensee is a licensee who receives the exclusive right to practice an invention but only within a given limited territory.”). []
  38. See, e.g., Independent Wireless Tel. Co. v. Radio Corp. of America, 269 U.S. 459, 469 (1926) ([T]he owner of a patent who grants to another the exclusive right to make, use or vend the invention, which does not constitute a statutory assignment, holds the title to the patent in trust for such a licensee . . . .”). []
  39. Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991) (emphasis in original); see also Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 40-41 (1923) (“These owners are the patentee, his assignee, his grantee, or his personal representatives; and none but these are able to maintain an action for infringement in a court of law.”). []
  40. See 35 U.S.C.A. § 281 (West 2013) (“A patentee shall have remedy by civil action for infringement of his patent.”); 35 U.S.C.A. § 100(d) (West 2013) (“The word ‘patentee’ includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.”). []
  41. Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000); see also Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1131 (Fed. Cir. 1995) (“The right to sue for infringement is ordinarily an incident of legal title to the patent. A licensee may obtain sufficient rights in the patent to be entitled to seek relief from infringement, but to do so, it ordinarily must join the patent owner.”). []
  42. See, e.g., Independent Wireless Tel. Co. v. Radio Corp. of America, 269 U.S. 459, 468 (1926) (“The presence of the owner of the patent as a party is indispensable not only to give jurisdiction under the patent laws but also, in most cases, to enable the alleged infringer to respond in one action to all claims of infringement for his act, and thus either to defeat all claims in the one action, or by satisfying one adverse decree to bar all subsequent actions.”). []
  43. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255 (1891) (“Any rights of the licensee must be enforced through or in the name of the owner of the patent, and perhaps, if necessary to protect the rights of all parties, joining the licensee with him as a plaintiff.”); Ortho Pharmaceutical Corp. v. Genetics Inst., 52 F.3d 1026, 1030 (Fed. Cir. 1995) (“Any other party [than one holding all substantial rights] seeking enforcement of the patent can sue, if at all, only with the patentee or in the name of the patentee.”). []
  44. Ortho Pharmaceutical Corp. v. Genetics Inst., 52 F.3d 1026, 1031 (Fed. Cir. 1995). []
  45. See, e.g., Weinar v. Rollform, Inc., 744 F.2d 797, 807 (Fed. Cir. 1984) (“[T]wo parties sharing the property rights represented by a patent may have their respective rights protected by injunction and each, when properly joined in a suit, may be entitled to damages.”). []
  46. Ortho Pharmaceutical Corp. v. Genetics Inst., 52 F.3d 1026, 1032 (Fed. Cir. 1995); see also id. at 1034 (“[A] licensee with sufficient proprietary interest in a patent has standing regardless of whether the licensing agreement so provides.”); Independent Wireless Tel. Co. v. Radio Corp. of America, 269 U.S. 459, 469 (1926) (“[T]he implied obligation of the licensor to allow the use of his name is indispensable to the enjoyment by the licensee of the monopoly which by personal contract the licensor has given.”); Sicom Sys. v. Agilent Techs., Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) (“[I]f the patentee transfers all substantial rights under the patent, it amounts to an assignment and the assignee may be deemed the effective patentee under 35 U.S.C. § 281 for purposes of holding constitutional standing to sue another for patent infringement in its own name. *** While a licensee normally does not have standing to sue without the joinder of the patentee (to prevent multiplicity of litigation), an exclusive license may be treated like an assignment for purposes of creating standing if it conveys to the licensee all substantial rights.”); Textile Prods. v. Mead Corp., 134 F.3d 1481, 1484 (Fed. Cir. 1998) (“A licensee is not entitled to bring suit in its own name as a patentee, unless the licensee holds all substantial rights under the patent.”) (internal quotations omitted); McNeilab, Inc. v. Scandipharm, Inc., 1996 U.S. App. LEXIS 19073, at *3 (Fed. Cir. July 31, 1996) (“Although title to the patent remains in the patentee, the patentee is not a necessary party to suit brought by the exclusive licensee, when the patentee has retained no substantial rights in the licensed subject matter.”) (unpublished opinion). []
  47. See, e.g., McNeilab, Inc. v. Scandipharm, Inc., 95 F.3d 1164, at *5 (Fed. Cir. 1996) (“The courts have recognized that there is no substantive difference between the property interests of the exclusive licensee and the assignee of the patent, and thus have sometimes used the terms interchangeably, subordinating the purity of the distinction to the reality of the legal rights. . . . We agree that there is no substantive difference between the property interests of an assignee and of an exclusive licensee who has been granted all substantial patent rights including the right to exclude the patentee. Although it would be more accurate to preserve the distinction whereby the term “assignment” is reserved for transfers that include nominal title, we agree with precedent that when the transfer includes all substantial patent rights including the right to exclude the transferor, there is no significant difference between the rights transferred by assignment and those transferred by exclusive license.”) (unpublished opinion). []
  48. See, e.g., Prince of Peace Enterprises, Inc. v. Top Quality Food Mkt., LLC, 760 F.Supp.2d 384, 391 (S.D.N.Y. 2011) (“[A]ssignment of a trademark under the Lanham Act requires (1) sale or transfer of all rights in the mark, and (2) assignment as well of the business’s goodwill connected with the mark’s use.”) (internal citations omitted) (emphasis in original); Silverstar Enterprises, Inc. v. Aday, 537 F.Supp. 236, 239 (S.D.N.Y. 1982) (“[A]n assignment of a trademark is a transfer of the entire interest while a license . . . confers only the right to use the trademark.”). []
  49. See 15 U.S.C.A. § 1114(1) (West 2013) (“Any person who shall, without the consent of the registrant . . . use in commerce . . . a registered mark . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.”); 15 U.S.C.A. § 1127 (West 2013) (“The terms ‘applicant’ and ‘registrant’ embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.”). []
  50. See, e.g., ICEE Distributors, Inc. v. J&J Snack Foods Corp., 325 F.3d 586, 598-99 (5th Cir. 2003) (holding that exclusive licensee who does not hold all substantial rights in the mark has not standing to sue for trademark infringement). []
  51. See, e.g., Quabaug Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154, 159 (1st Cir. 1977) (dictum) (gathering cases) (“[C]ourts have followed the approach used in patent infringement cases and permitted trademark infringement suits to be maintained by exclusive distributors and sellers of trademarked goods, i.e., ‘exclusive licensees’ who had a right by agreement with the owner of the trademark to exclude even him from selling in their territory.”); Fin. Inv. Co. (Bermuda) Ltd. v. Geberit AG, 165 F.3d 526, 531-32 (7th Cir. 1998) (“[A] truly exclusive licensee, one who has the right even to exclude his licensor from using the mark is equated with an assignee since no right to use the mark is reserved to the licensor, and the licensee’s standing derives from his presumed status as an assignee.”) (internal citations, brackets, ellipses, and quotations omitted); Calvin Klein Jeanswear Co. v. Tunnel Trading, Case No. 98-cv-05408, 2001 WL 1456577, at *4 (S.D.N.Y. Nov. 16, 2001) (unreported) (gathering cases) (“[S]tanding may exist where the ‘licensing’ agreement grants to an exclusive licensee a property interest in the trademark, or rights that amount to those of an assignee.”); Nestle Prepared Foods Co. v. Pocket Foods Corp., Case No. 04-CV-02533, 2006 WL 2990208, at *6 (D. Colo. Oct. 19, 2006) (“Although this statute does not specifically address the status of a trademark’s exclusive licensee, courts have uniformly concluded that the exclusive licensee of a trademark has the right to enforce the trademark. Courts reach this conclusion when an exclusive licensee is assigned all rights which accompany the trademark.”) (internal citations omitted). []
  52. See, e.g., Nat’l Licensing Ass’n, LLC. v. Inland Joseph Fruit Co., 361 F.Supp.2d 1244, 1254 (E.D. Wash. 2004) (“[T]hose cases finding standing for de facto assignees are the exceptions that prove the rule—namely, that only the registrant of a trademark or its legal representatives, predecessors, successors, and assigns have standing to sue for trademark infringement under § 1114.”); Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F.Supp.2d 965, 974 (N.D. Cal. 2006) (“[A]n exclusive license that amounts to a de facto assignment creates standing in the exclusive licensee.”). []
  53. Visa, U.S.A., Inc. v. Birmingham Trust Nat. Bank, 696 F.2d 1371, 1377 (Fed. Cir. 1982); see also 3 McCarthy on Trademarks and Unfair Competition § 18:9 (4th ed.) (“An assignment and license-back to the assignor is a useful structure to meet certain commercial needs.”). []
  54. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). []
  55. See Innovation Ventures, LLC v. Pittsburg Wholesale Grocers, Inc., Case No. 12-cv-05523, 2013 WL 1007666 (N.D. Cal. Mar. 13, 2013). []
  56. Id. at *2. []
  57. Id. at *2-3 (internal citations and quotations omitted). []
  58. Id. at *5 (emphasis in original). []
  59. Id. at *4-5. []
  60. Id. at *6. []
  61. 17 U.S.C.A. § 101 (West 2013). []
  62. 17 U.S.C.A. § 204(a) (West 2013) (“A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”). []
  63. 17 U.S.C.A. § 205(a) (West 2013) (“Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document filed for recordation bears the actual signature of the person who executed it, or if it is accompanied by a sworn or official certification that it is a true copy of the original, signed document. A sworn or official certification may be submitted to the Copyright Office electronically, pursuant to regulations established by the Register of Copyrights.”). []
  64. 17 U.S.C.A. § 205(e) (West 2013) (“A nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed or such owner’s duly authorized agent, and if– (1) the license was taken before execution of the transfer; or (2) the license was taken in good faith before recordation of the transfer and without notice of it.”). []
  65. See 17 U.S.C.A. § 708(a)(4) (West 2013) (“Fees shall be paid to the Register of Copyrights– for the recordation, as provided by section 205, of a transfer of copyright ownership or other document.”). []
  66. See generally 5-19A Nimmer on Copyright § 19A.04. []
  67. See, e.g., 59 C.J.S. Mortgages § 239 (“A mortgage of real property is personal property, and in jurisdictions in which a mortgage is regarded as a mere lien, the interest of the mortgagee is a mere chattel interest; where legal title passes to the mortgagee, the mortgagee has legal title only as between the mortgagor and itself and only for the purpose of securing the indebtedness. . . . Thus, in title-theory states a mortgagee holds title to the land from the outset of the loan until the debt has been satisfied, while in lien-theory states, the borrower holds title to the land and the mortgagee has a lien on the property.”); In re SeSide Co., Ltd., 152 B.R. 878, 883 (E.D. Pa. 1993) (“In Pennsylvania, a mortgage does not constitute a transference of title from a mortgagor to a mortgagee. A mortgagee only obtains a lien securing the mortgagor’s indebtedness.”); In re Poe, 477 F.3d 1317, 1323 (11th Cir. 2007) (“Alabama is a title theory state, meaning that mortgaging property actually works a conveyance of legal title to the lender.”); Maglione v. BancBoston Mortgage Corp., 29 Mass.App.Ct. 88, 90 (1990). (“Literally, in Massachusetts, the granting of a mortgage vests title in the mortgagee to the land placed as security for the underlying debt. The mortgage splits the title in two parts: the legal title, which becomes the mortgagee’s, and the equitable title, which the mortgagor retains.”). []
  68. H.R. Rep. 94-1476, 123. []
  69. See Aerocon Eng’g, Inc. v. Silicon Valley Bank, 303 F.3d 1120 (9th Cir. 2002). []
  70. Id. at 1126 (footnotes omitted). []
  71. Id. []
  72. U.S. ex rel. Small Bus. Admin. v. Commercial Tech., Inc., 354 F.3d 378, 384 (5th Cir. 2003). []
  73. See Matter of Hill, 981 F.2d 1474, 1475 (5th Cir. 1993); see also Black’s Law Dictionary (9th ed. 2009) (A “pledge” is “[t[he act of providing something as security for a debt or obligation. A bailment or other deposit of personal property to a creditor as security for a debt or obligation.”). []
  74. See Aerocon Eng’g, Inc. v. Silicon Valley Bank, 303 F.3d 1120, 1125 (9th Cir. 2002). []

Fred von Lohmann, former staff attorney of the EFF and currently Legal Director of Copyright at Google, has been presenting a talk recently on “Revising the Copyright Act for the 21st Century.” While the views Lohmann expresses in the talk may not necessarily reflect the views of Google, it is reasonable to assume that there is close alignment.

The talk is motivated by review efforts that have begun in earnest by various government entities in recent months: the House Judiciary IP Subcommittee, the Copyright Office, and the Internet Policy Task Force in the Department of Commerce. In it, Lohmann makes a range of points about the current state of copyright and its future; while I haven’t been able to find a video or transcript of the talk, the Yale Information Society Project (among others) livetweeted an October 15th presentation, which seems to be fairly comprehensive.

Lohmann calls for an aggressive reshaping of copyright law, not only domestically but internationally as well. Many of the fundamental changes would clearly benefit large online service providers like Lohmann’s employer; very little is said about ensuring that individual creators have meaningful rights that enable them to build sustainable creative careers.

One of Lohmann’s major points is that “Copyright is badly ‘fit for purpose.’” The law “assumes that full rights apply to all works, even given the sheer quantity of creativity enabled by digital tools.” According to Lohmann, “Ninety-nine percent of copyrighted works today are not incentivized by copyright.Lohmann suggests that YouTube and Instagram users, for example, aren’t incentivized by the law’s specific features, such as its duration or reversion rights. He asks, “Is [the] classic copyright incentive story necessary or appropriate for all these categories of works?

Lohmann’s question is premised on the flawed claim that the sole reason for securing copyright is to incentivize creation. That is only part of the reason for copyright. Just as important – if not more so – is the role copyright plays in providing incentives to publish and disseminate the works that authors create.

The Supreme Court made this crystal clear less than two years ago in Golan v. Holder. “Nothing in the text of the Copyright Clause confines the ‘Progress of Science’ exclusively to ‘incentives for creation.’ Evidence from the founding, moreover, suggests that inducing dissemination—as opposed to creation—was viewed as an appropriate means to promote science.” The Southern District of New York echoed this idea last summer. “There is a strong public interest in the copyright system’s function of motivating individuals to make available their creative works and increase the store of public knowledge.”1

It may seem odd to suggest to anyone who has spent more than five minutes on social networking sites to suggest that incentives are needed for users to share things publicly. But much more is needed beyond the design of a particular social networking service to make it widely used or widely ignored – and some services, such as Myspace and Digg, have seen just how quickly a service can go from the former to the latter.

There are many factors that individuals and internet uses consider when making the choice of what and when to share something online. Most often, these are noneconomic considerations.

Barely a week goes by without a new privacy or term change that draws outrage. Earlier this month, Google announced that it would be “placing the photos, profiles and comments of some users in advertising endorsements across the Web.” In September, Facebook released a new “Statement of Rights and Responsibilities” policy that caused the FTC to begin an inquiry (Facebook is governed by a 2011 agreement with the FTC that requires it to get explicit consent of its users before making material changes to its privacy policy). As Mashable reported, “Most alarming to users was the understanding that their profile data, including their profile picture, name, and personal information, could show up as part of a Facebook ad their friends may see on the site.” And nearly a year ago, Instagram faced consumer ire over terms that would let it commercialize photos uploaded by users.

Sometimes it’s not even an actual change but the perception of change that will cause users to think twice about disseminating their creative work. This past spring, there were reports that users were fleeing Tumblr once it was announced that the service would be purchased by Yahoo. Some have suggested that the motivation over leaving (or threatening to leave) the free service were concerns that Yahoo would change the characteristic of the community, tighten content standards, or overrun the site with advertisting.

The outcry that accompanies such announcements demonstrates quite clearly that many users factor into their decision to share photos, comments, and other content what will happen once its uploaded. Maintaining some control serves as an incentive to sharing in the first place. And if we want to encourage such dissemination, we need to continue to recognize that individuals have rights to their expression.

A large amount of those who share personal photos, writing, thoughts and other creative expression on social networking sites don’t typically look to commercialize such expression. Likewise, they rarely need incentives to create such expression. But they do have some expectation when disseminating their expression that their work won’t appear in advertising, as stock imagery for political causes they might not agree with, as endorsing some brand or cause. In other words, maintaining some level of choice and control over our stuff gives us an incentive to share our stuff.

Of course, much of these issues are governed by a particular site’s terms of service or privacy policy. But these agreements are not enough. They can mediate the relationship between user and service, and users are able to make their own decisions about where to upload based on what terms are acceptable – though much more could be done to make such terms more transparent and understandable as well as address the issue of how easily services can change terms subsequently.

But contracts only go so far – terms of service and contracts don’t extend to non-contracting third parties. Copyright serves as a backstop to what non-contracting parties can do. It’s not the only mechanism, of course; various torts and statutes may govern what third parties can do with users’ expression. But it certainly plays an important role. Again, copyright doesn’t force anyone into sharing or not sharing their expression. It just prevents corporations and other parties from making that choice for them.

What’s more, copyright reinforces First Amendment values that may come into play. Not only does it “motivat[e] individuals to make available their creative works and increase the store of public knowledge,” but it also protects the freedom not to speak—a necessary complement to the freedom to speak.2

Copyright aligns with internet users’ free speech rights and their expectations about what should happen with their photos, writing, and other expression once it is made available to the public online. We shouldn’t be in such a rush to declare it a “bad fit” and start thinking of ways to toss it aside or turn it into something that only benefits large internet companies at the expense of the public. That’s not to say that there are specific areas of the law that could be made better, but the basic principles of copyright law are just as applicable and vital today to the 99% of creators today.


  1. ABC v Aereo, No. 12-Civ-1540(AJN), order denying preliminary injunction (SDNY, July 11, 2012). []
  2. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 US 539, 560 (1985). []

Challenge to streaming TV — Lyle Denniston of SCOTUSBlog reports on the cert petition filed by TV broadcasters asking the Supreme Court to review the Second Circuit’s decision in WNET v. Aereo. A good background of the issues is provided, as well as some thoughts on how likely the Court is to agree to hear the case.

Real Censorship — This week in the U.S. was National Free Speech Week. Author Chris Ruen had these thoughts to share: “Giant tech companies are happy to avoid the pains of regulation and reduced profits that would come with rules-of-the-road that treat creators with more decency. It’s much easier and more effective to say they believe in ‘free expression’ or are ‘against censorship’ than to admit that artists, once again in history, have little negotiating power and can therefore be rolled over by the powers that be.”

How the Creative Industries Defend Free Speech — Also marking the week, the Copyright Alliance has a white paper, written by Evan Sheres and myself, looking at some of the many cases over past decades where members of the creative community have done the actual legwork of defending free speech and fair use in courts.

Randolph May & Seth Cooper: The Constitution’s Approach to Copyright — The Originalism Blog features May and Cooper’s article exploring the property rights approach to copyright and patent enshrined in the U.S. Constitution. “Copyright and patent are rooted in an individual’s basic right to the fruits of his or her own labor. Intellectual property (IP) protections are extensions of that basic right. Such protections secure to authors and inventors the financial rewards of their creative works and innovations for limited times, thereby promoting the public good.”

Making Money from Movie Streaming Sites, an Insider’s Story — Torrentfreak interviews “John”, a successful uploader. “John was soon adding more than a thousand links a day to several streaming websites. He now has 30,000 different movies and TV shows stored online, across 12 different file-hosting sites, each carrying between 10,000 and 30,000 items from John’s collection. ‘Amongst the different streaming websites I have added over 200,000 links. And yes, I am making a nice living at it,’ John concludes.”

Google’s iron grip on Android: Controlling open source by any means necessary — Google’s adoption of an open source mobile OS wasn’t an embrace of a new paradigm, or a endorsement of “open” as morally and fiscally superior to “closed.” It was, as Ars Technica reports, a shrewd business move to quickly gain marketshare against Apple in the mobile space, followed by a slow enclosure that would lock in users to Google properties.

Mercatus’s Unhelpful Business Advice to the Creative Industries — The Center for the Protection of Intellectual Property’s Mark Schultz thoroughly debunks the results of the project released last week. Very much worth reading in full. Schultz concludes with these parting thoughts: “If you love the free market, then perhaps it’s time to respect the people with the best information about their property and the greatest motivation to engage in mutually beneficial voluntary exchanges. Or you can just contribute to the mountain of lame excuses for piracy that have piled up over the last decade.”

Dubious news hook lets me confirm and blog my pre-existing views — How bad is anti-copyright research getting? So bad that even copyright skeptics are quick to point out the flaws. Here, the Volokh Conspiracy’s Stewart Baker notes some questionable methodology in a study that purports that Girl Talk’s 2010 album All Day — created primarily using hundreds of samples of existing sound recordings without permission — led to a massive increase in sales of the songs that were sampled. Says Baker, “Schuster says he’s just correcting for noise in the data, and it isn’t appropriate to charge Girl Talk with the natural rhythm of pop music sales. Maybe so, but once you start making big after-the-fact adjustments to a sample of 200, you can prove pretty much anything.”

Here’s why isoHunt deserved to die — “Critics warned that the vagueness of [the Grokster] rule would open the floodgates to frivolous lawsuits against technology innovators. But that hasn’t happened for a simple reason: It’s easy to avoid running afoul of the inducement standard. If an entrepreneur is sincerely not trying to profit from infringement, then she won’t encourage her customers to infringe, and so plaintiffs won’t be able to find evidence of her doing so. In contrast, the court found clear evidence that isoHunt was trying to profit from infringement. For example, the 9th Circuit Court of Appeals wrote that for a time, ‘isoHunt prominently featured a list of ‘Box Office Movies,’ containing the 20 highest-grossing movies then playing in U.S. theaters. When a user clicked on a listed title, she would be invited to ‘upload [a] torrent’ file for that movie.’ Since the top-grossing movies are almost always copyrighted, this feature shows clear evidence of infringing intent.”

My Art Was Stolen for Profit (and How You Can Help) — Independent artist Lisa Congdon writes of her discovery that wholesaler Cody Foster appears to have “blatant[ly]” copied her artwork. Says Congdon, “In the world of art & illustration, you can use the artwork of artists on your products as long as you ask permission, sign a licensing agreement with the artist, and agree to compensate them. I sell my images to companies all the time, companies who ask my permission and compensate me for my intellectual property. In this case, I was never contacted, asked permission or paid. That is called copying. It’s also called stealing.”

Is unauthorized online copying theft and does it hurt creators? — Canadian attorney Barry Sookman points to an interesting case that addresses a subject that is vigorously debated online. It’s an interesting case: essentially, Party A engages in copying a database compiled by Party B without permission. Party B posts angry messages about Party A online, accusing Party A of being a “thief” and of stealing the database. A sues B for defamation. Truth is a defense to defamation. So the court had to consider whether the characterization of unauthorized copying as theft is true or false. it concluded that it was true. “To a lay person such as Henry, ‘theft’ can also mean the wrongful act of taking the property of another person without permission. The data Henry had collected could be reasonably understood as her property—she had collected it, and it was her work in compiling it that gave it value. She did not give Tamburo permission to copy it and sell access to it. Although Henry might not be able to successfully sue Tamburo for using her data in this way, the gist of her statements was true: he took the data without her permission.”

Musicians: Don’t Let Google Hijack Your Brand With “Shared Endorsements” — The announcement this week that Google will start using user photos and likenesses in advertising raised a stir. Fortunately, at the moment, it appears that Google users can opt out of becoming unpaid shills (though how long Google will allow that is unclear). Probably a good idea for not just musicians, but any creators and small businesses who use Google to promote their work.

You are a soldier in Google’s Cold War with Facebook for social dominance — Web.Tech.Law takes a closer look at why Google has made the above-mentioned move.

The Walking Dead: Season 4 Begins — If, like me, you were excited to see the return of AMC’s zombie drama last Sunday, you might enjoy this look at the creation of the music for the season premiere from Bear McCreary, who regularly blogs, in depth, about his creative process. Fascinating stuff.

Tollbooths and Newsstands on the Information Superhighway — Brad Greenberg has posted a draft of an interesting forthcoming essay. “The Internet has made it easier than ever before to stay informed on current events — and without ever needing to pick up, let alone pay for, a newspaper. But recent litigation and legislation in the United States and Europe have challenged the cost-free flow of such information. The opposition to these recent legal developments is rooted in a belief that stronger intellectual property protections result in higher tolls, which, in turn, price many consumers out of accessing and using the information. But overlooked has been an existential consideration: information-gathering is expensive, and absent efficient tolls there will be far less information to access at all, regardless of cost. The United States Supreme Court recognized this principle in Harper & Row Publishers, Inc. v. Nation Enterprises as it applies more narrowly to whether copyright law inhibits free expression. Identifying the particular importance of incentives for newsgatherers, this Essay extends the Harper & Row rationale beyond its copyright mooring. In light of the continued withering corps of professional newsgatherers, these legal developments actually could enhance the exchange of information and ideas to the extent they preserve incentives for news publishers. This Essay proffers that copyright expansions actually can increase access and thereby serve important copyright and First Amendment values.”


This past summer, the Ninth Circuit released its decision in Fox Broadcasting Company v. Dish Network, holding that the lower court had not abused its discretion when it denied a preliminary injunction against Dish.

Fox had sued Dish after the satellite television provider released a set-top DVR called the “Hopper” along with two features: the first, PrimeTime Anytime (PTAT), automatically records all four broadcast networks’ programming during prime time hours, giving viewers a video on-demand type experience, and the second, AutoHop, allows viewers to automatically skip over commercial breaks while watching shows recorded by PTAT. Fox alleged that these features breached its contract with Dish, which prohibits the recording of Fox programs and requires that any video on demand services disable fast-forward functionality during commercial breaks. Fox also alleged copyright infringement because Dish exceeded the scope of its license.

The district court denied the injunction, unconvinced that Fox had demonstrated a likelihood to succeed on the merits at this stage of the litigation.

After the Ninth Circuit affirmed the district court’s decision, writers at the Fenwick & West blog made the following observation:

the Ninth Circuit left open what causation standard governs copyright actions. Following Cablevision, the district court purported to apply ordinary tort principles to determine whether Dish was directly liable. Despite the role that Dish played in operating PTAT, the district court held, and the Ninth Circuit repeated: “The user, then, and not Dish is the ‘most significant and important cause’ of the copy.” 905 F. Supp. 2d at 1102 (quoting Prosser & Keeton on Torts § 42); Opinion at 12. Oddly, this statement misquotes Prosser & Keeton’s commentary on proximate, or legal, causation. The treatise provides that: “[Legal Causation] is sometimes said to depend on whether the conduct has been so significant and important a cause that the defendant should be legally responsible.” Prosser & Keeton § 42. By substituting “most” for “so,” the opinions suggest that only one actor may be liable for direct infringement. This approach threatens to eliminate the ordinary rule of joint and several liability in favor of a new “primary causation” standard.

Oops. It’s not every day that a Circuit Court reaches a legal conclusion through such a glaringly obvious mistake. Broadcasters have rightfully jumped on this error in their petition for rehearing. Unfortunately, courts outside the Ninth Circuit have gone down the same road without being misled by a misreading of legal authority. The result has been a strand of copyright cases that seemingly stand for the proposition that only one actor can be found directly liable. With multiple actors, it becomes a binary, either/or question of causation, and any other liability can only be found indirectly.

This is a sharp departure from well-established legal rules concerning causation. What’s all the more striking about this departure is how little explanation has accompanied it in court decisions responsible for it. Such a dramatic change at the very least deserves far closer examination then what courts — especially the Ninth Circuit through Dish — have given it.

Joint Causation and Netcom

William Prosser, whose name graces the torts treatise that the Ninth Circuit misquoted, wrote in 1937 on Joint Torts and Several Liability, a guide of sorts to understanding joint tortfeasors. In it, he provides a taxonomy of situations where the law has historically recognized that multiple people can be held directly liable for a single harm. This includes, most relevantly, “Concurrent causation of a single, indivisible result, which neither would have caused alone.”

Where the acts of two defendants combine to produce a single result, which is incapable of being divided or apportioned—such as the death of the plaintiff—each may be the proximate cause of the loss, and each may be held liable for the entire damage. A common case is that of two vehicles which collide and injure a third person. The duties which are owed to the plaintiff by the defendants are separate, and may not be similar in character or scope, but by far the greater number of courts now permit joinder in one action.

Entire liability in these cases rests upon the obvious fact that each defendant is responsible for the loss, and the absence of any logical basis for apportionment. It is not necessary that the misconduct of the defendants be simultaneous, or that it operate simultaneously to produce the result; one defendant may create a situation, harmless in itself, upon which the other may act to cause injury. One may leave combustible material, and the other set it afire; one may leave a hole in the street and the other drive into it. The first defendant remains the proximate cause of the injury, so long as the intervention of the second is a foreseeable, or normal, “not extraordinary” consequence, which fairly may be said to lie within the scope of the risk created.

Relatively straightforward. But when copyright law entered the internet age, the idea that multiple actors could be liable for direct infringement began to erode.1

One of the earliest cases involving copyright and online services, Religious Tech. Center v. Netcom On-line Comm. (Netcom), involved the unauthorized posting of copyrighted materials on a Usenet group. The copyright owner sued the alleged uploader, as well as the BBS service that connected the uploader to the internet and the internet service provider that connected the BBS service to the internet. When the court reached the issue of direct liability for the latter, it paused, noting that strict liability in this circumstance would “create many separate acts of infringement and, carried to its natural extreme, would lead to unreasonable liability.” The court likened Netcom to a machine that makes copies, and concluded that because the copies are made at the initiation of the user and without any further human intervention, Netcom, as owner of the machine, was not directly liable for the copies. It buttressed this conclusion with a nod toward policy, saying, “Where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet.”

CoStar: Putting the Stamp of Approval on Netcom

Netcom would be directly challenged several years later in CoStar Group v. LoopNet. In that case, which reached the Fourth Circuit, real estate photographer CoStar Group sued ISP LoopNet for directly infringing its photographs, which were posted by LoopNet users on LoopNet’s website. CoStar argued that Netcom’s holding was based on the expedience of preventing the internet from being crippled in its infancy. Now that the internet was more mature, and in light of the DMCA safe harbors that had been established by Congress, the “special exemption” was no longer necessary.

The Fourth Circuit disagreed and said that

While the Copyright Act does not require that the infringer know that he is infringing or that his conduct amount to a willful violation of the copyright owner’s rights, it nonetheless requires conduct by a person who causes in some meaningful way an infringement. … This, of course, does not mean that a manufacturer or owner of machines used for copyright violations could not have some indirect liability, such as contributory or vicarious liability. But such extensions of liability would require a showing of additional elements such as knowledge coupled with inducement or supervision coupled with a financial interest in the illegal copying…

But to establish direct liability … something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner. The Netcom court described this nexus as requiring some aspect of volition or causation. CoStar Group 545-50.

You’ll note right off the bat that the Fourth Circuit did not embrace a “primary causation” theory like Dish would. It anticipates that multiple actors may be liable for infringement. But rather than looking for the “most significant and important cause” of a copy, it is looking only for a “nexus sufficiently close and causal” to the copying.

Even so, CoStar determined that an ISP that does not engage in intervening conduct when a subscriber uses its facilities to infringe on copyright is not directly liable for such infringement. Like Netcom, CoStar analogized the ISP to the owner of a copying machine, who at the most could be found indirectly liable for infringement if it, for example, had knowledge of unauthorized copying. CoStar also found that the requirement that there be “some aspect of volition and meaningful causation” was supported by the Copyright Act’s fixation requirement for copies. Said the Fourth Circuit, “When an electronic infrastructure is designed and managed as a conduit of information and data that connects users over the Internet, the owner and manager of the conduit hardly ‘copies’ the information and data in the sense that it fixes a copy in its system of more than transitory duration.

Finally, CoStar notes that its endorsement of Netcom’s volition requirement serves an important public policy.

There are thousands of owners, contractors, servers, and users involved in the Internet whose role involves the storage and transmission of data in the establishment and maintenance of an Internet facility. Yet their conduct is not truly “copying” as understood by the Act; rather, they are conduits from or to would-be copiers and have no interest in the copy itself. To conclude that these persons are copyright infringers simply because they are involved in the ownership, operation, or maintenance of a transmission facility that automatically records material — copyrighted or not — would miss the thrust of the protections afforded by the Copyright Act.

The CoStar decision has not escaped criticism; indeed, it attracted a dissent. Circuit Judge Gregory agreed with the legal reasoning of the majority but disagreed with its characterization of LoopNet, believing instead that the ISP engaged in “non-passive, volitional conduct with respect to the photographs on its website such that the Netcom defense does not apply.”

Gregory notes that once a photograph has been uploaded to LoopNet’s servers, it does not become automatically and immediately accessible to other users. Instead, “one of the company’s employees can review the photo to ensure (1) it is an image of commercial real estate, and (2) it is not an obviously copyrighted image.” To Judge Gregory, this distinguishes LoopNet from a truly passive service provider, one that exercises no control over what is being communicated through its hardware.

LoopNet remains the pivotal volitional actor, “but for” whose action, the images would never appear on the website. Indeed, “volition” is defined as “the act of willing or choosing[;] the act of deciding (as on a course of action or an end to be striven for)[;] the exercise of the will … [or] the termination of an act or exercise of choosing or willing[;] a state of decision or choice.” Under any analytical framework, LoopNet has engaged in active, volitional conduct; its employees make a conscious choice as to whether a given image will appear in its electronic publication, or whether the image will be deleted from the company’s system. Nothing in the brief nature of LoopNet’s review makes the company akin to a copy machine owner or a security guard by the owner’s door. LoopNet is the publisher of LoopNet Magazine in cyberform; a volitional copier of images to whom direct infringement liability applies. Because I believe that the Netcom volitional defense should focus on passivity and the automated nature of the act — not the fact that a user’s initial volition somehow exterminates liability for later volitional acts — I would reverse the district court.

I believe Judge Gregory was correct on this last point. CoStar represents a slight shift from Netcom’s volition or causation requirement for direct liability to more of an “initiation” requirement. However, CoStar‘s conclusions regarding volition were at least still motivated by the same concerns as Netcom over cabining liability in a wide open communications network.

Cablevision and Dish: Extending the Volition Requirement Beyond its Origins

Cablevision represents the next shift away from traditional tort principles. Cable provider Cablevision was found by a district court to be directly liable for copying that occurred through its “Remote Storage DVR” (“RS-DVR”) service that allowed customers to save television programs for later viewing without needing a set-top DVR device.2 The court marshaled a number of reasons why Cablevision was actively involved in the copying of television programs: Cablevision designs, houses, and maintains the necessary equipment used for copying; it is involved in an ongoing relationship with customers, unlike the manufacturer of a copying device; the copying is instrumental rather than incidental to the RS-DVR service; Cablevision selects the programming that is available for recording; and it provides that content to its RS-DVR service [rather than a user providing the content to be copied]. In short, Cablevision’s RS-DVR service was “a far cry from the ISP’s role as a passive conduit in Netcom” and played a sufficiently active role in causing the copies to be made.

The Second Circuit completely rejected the district court’s conclusions on appeal.3 It paid no heed to Netcom‘s original desire to draw a line to keep the number of direct infringers at a limited and reasonable number and seemingly couldn’t get past the superficial similarities between the operation of the RS-DVR system and a set-top VCR. Devlin Hartline has criticized the decision, saying

Cablevision’s actions were far more proximate to the copying of particular materials than Netcom’s or the CoStar defendant’s ever were, and the rule from Netcom has been extended significantly past relieving mere passive conduits of liability for direct infringement. This leads to the potentially nefarious situation where no matter how instrumental a service provider’s actions may be in causing the unauthorized copying of particular materials—such as by Cablevision (1) supplying its customers with the source materials and the tools for the job, (2) making the copying as simple as pressing a virtual button, and (3) maintaining complete control over every aspect of its dedicated copy machine that existed for no purpose other than to make particular copies—that service provider would not be a direct infringer.

The Second Circuit gives little reason why it adamantly refused to recognize joint causation here. Both Cablevision and its customers are necessary, “but for” causes of the copying. There are no concerns that such a holding would render the entire internet liable. Nevertheless, the Circuit narrowed the element of volition even further than Netcom and CoStar to one of “initiation” or, perhaps, a “last deliberate intervention” requirement that results in a less likelihood there can be multiple actors directly liable.

And so we arrive at Dish. On a motion for a preliminary injunction, the district court adopted the novel “causation” requirement developed through Netcom, CoStar, and Cablevision to determine that Dish was not a sufficient cause of the copying on its service.4 This despite the fact that Dish has designed, houses, and maintains the equipment necessary for the copying. It determines what to copy, when to copy it, and how long copies are available for subscribers to watch. Users cannot stop the copying once it starts after the service is enabled. For the court, the only sufficient cause of the copying for purposes of direct liability was the user, when she enables the PTAT service.

The Ninth Circuit affirmed the district court’s holding with little discussion, save for the previously mentioned misquote of Prosser and Keeton.

What Next for Volition

The shift in copyright’s liability standard that has occurred from Netcom to Dish calls out for more attention, as it has been as dramatic as it has been ignored.

One brief observation: much of the doctrinal confusion in these cases seems to come from a conflation between factual, or “but for”, causation and legal, or “proximate”, causation. The courts mentioned above appear on the face to be talking about factual causation when they are really talking about legal causation. By doing this, the courts obscure or ignore the policy considerations inherent in defining proximate causation behind a facade of what seems to be factual observations.

But any first year law student halfway through a torts class can see that Netcom, LoopNet, Cablevision, and Dish Networks are factual causes of the copying that has occurred. But for the design and maintenance of their systems and services, the copying could not have occurred. The appropriate inquiry is whether such acts should be considered the legal cause of the copying.

By recognizing that when courts have talked about volition they really mean proximate causation, we can have a more thorough discussion about how to apportion responsibility in copyright law.5 Much preferable to misquoting Prosser.


  1. Indirect liability—contributory infringement, vicarious infringement, or inducement—is a form of joint liability, one long recognized in copyright law. See Arista Records v. Lime Group, 784 F.Supp.2d 313, 315 (SDNY 2011) (Service provider that induced infringement is jointly and severally liable with individual, direct infringers). []
  2. Twentieth Century Fox Film v. Cablevision, 478 F.Supp.2d 607 (SDNY 2007). []
  3. Cartoon Network v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008). []
  4. Fox Broadcasting Co. v. Dish Network, 905 F.Supp. 2d 1088 (CD Cali 2012). []
  5. For more on causation in tort law, see Honoré, Antony, “Causation in the Law“, The Stanford Encyclopedia of Philosophy (Winter 2010 Edition), Edward N. Zalta (ed.). []

Hood hits Google on guarding intellectual property — Mississippi State Attorney General Jim Hood continues to work on behalf of creators. His latest efforts concern gaining support from other state attorneys general to solicit greater cooperation from internet giant Google in helping curb infringement.

Samsung Exposed as Top Advertiser on Pirate Sites — Similar to some efforts in the U.S., a group of media companies in Ukraine have started a “Clear Sky” initiative that aims to find solutions to online infringement. One of their first campaigns has been to measure major brand advertising on several popular filesharing sites, and the resulting list has consumer electronics manufacturer Samsung firmly at the top.

The Supreme Court’s New Copyright Case Is Not a Copyright Case — Though arising out of a copyright infringement action, the issue in front of the Supreme Court in Petrella v. Metro-Goldwyn-Mayer (granted cert last week) actually concerns the equitable doctrine of laches, sort of a common law version of a statute of limitations.

Internet Exploitation, Not Just a Problem For Artists — This post from UK mastering engineer Nick Lewis looks at some of the fallout that an non-sustainable creative ecosystem has beyond the “front-line” creators. “The free market theory is that competition will drive price down, which is good for the consumer. Adam Smith couldn’t possibly have predicted what would happen in the face of intangible, easily copyable assets and hyper-globalisation. The trend towards zero is not good for the consumer in the long-term as the quality of product degrades or disappears altogether along with the skills and supportive infrastructure that go into it.”

The soul of a new machine: Gawker struggles with the slippery slope between viral and true — “If you tell the truth, people might not share it.” If freedom of speech is valued so highly because of it’s truth-seeking function, then should stories like this raise concern?

Copyright’s Role in a Free Press — Speaking of free expression, last week I discussed at the Copyright Alliance Idea/Expression blog a recent story that looked at how resource intensive high-quality investigative journalism continues to be. I argue that it’s important to keep copyright functioning as a mechanism for funding such efforts.

Photofocus Podcast Interview with Terry Hart — I’d also be remiss if I didn’t link to this Photofocus Podcast where I was invited as a guest last month. The topic was recent changes to Facebook’s terms of service that raised concerns among photographers and other creators regarding what Facebook could do with their images once uploaded.

These Journalists Spent Two Years and $750,000 Covering One Story — Writes Peter Osnos of the Atlantic, “It costs a lot, but investigative reporting can save lives. And non-profits lead the way in producing high-quality, in-depth stories. So who’s going to pay for them?” Maybe they can sell t-shirts?

Breaking Up With ‘Breaking Bad’ Is Hard for Albuquerque — A highlight of the contributions that film and television production have on local economies. “During the show’s run, the production directly employed an average of 200 people, said Wayne Rauschenberger, chief operating officer at Albuquerque Studios, the 28-acre facility where much of the show was filmed. Beyond that, there were lumber yards, antique stores, limousine companies, hotels, caterers and others performing ancillary functions. Residents were hired as extras, and homeowners and businesses were paid for filming privileges.”

A Conversation with Dr. David Price Part 1 — David Newhoff chats with Price, author of the recent NetNames report Sizing the Piracy Universe. The result is an in-depth and engaging discussion. Continued in Part 2.

New York Times: “David Lowery Represents the Anger of Musicians In the Internet Age…” — “Because the tech industry still hasn’t innovated a way to shut up David Lowery.” Digital Music New’s intro to this New York Times article.

An interesting duo from the Trichordist, whose titles speak for themselves: Record Labels Invest $4.5 Billion Annually in Artists… Pirates, $0… Any Questions? and Grand Theft Auto V: How Profits Soar when Piracy is Managed.

Why Ad Blocking can Hurt Ad Blockers — Jonathan Bailey writes, “The end result though is that ad blocking doesn’t push the Internet toward a future free of advertising, rather, it pushes us toward a future of ads tougher to separate from the content and harder to remove. We’re likely nudging toward this future regardless of ad blocking, but ad blocking is certainly a factor and could become a much bigger one. The only way to ensure better business models and a better future for content is to support the content creators that you feel are finding the right chords.”