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Last week, the Ninth Circuit Court of Appeals announced its en banc decision in Silvers v. Sony Pictures Entertainment. They held that only copyright holders may sue for infringement, and that infringement claims cannot be assigned to others.

In this case, Silvers wrote The Other Woman, a TV movie screenplay, as a work-for-hire while employed by Frank & Bob Films. As with all works-for-hire, copyright vested in the employer, not the employee; Silvers never owned the copyright or any of the bundle of exclusive rights that comprise it. About three years after the TV movie aired, Sony released Stepmom, which Silvers claims infringes the copyright in her screenplay. (You can compare a plot summary of The Other Woman with a plot summary of Stepmom for a sense of the merits of the infringement claim, which, though interesting, are irrelevant here.)

Frank & Bob Films assigned its infringement claim against Sony to Silvers. Put plainly, this means that Frank & Bob had a right to sue Sony (known as “standing”) and tried to transfer that standing to Silvers. The question was whether copyright holders can assign their claims without assigning any part of the copyright itself.

The court held that copyright holders may not assign their claims to third parties. Judge Graber, writing for the majority, held that section 501(b) of the Copyright Act barred Silvers’ claim. It reads, in pertinent part:

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 held that only the rights enumerated in section 106 (the exclusive rights to copy the work, perform the work publicly, and so on) can be “an exclusive right under a copyright” under section 501(b). Because Silvers owned none of these exclusive rights and no other part of the Copyright Act granted her standing to sue, the court said, Silvers’ claim was rightly dismissed by the district court for lack of standing.

I think section 501(b) is pretty clear. Only those who own the copyright at the time the infringement takes place should be able to sue; Silvers did not own the copyright at the time the infringement took place; therefore, Silvers may not sue. Congress could have included language permitting the assignment of claims and chose not to do so. (Expressio unius est exclusio alterius — a canon referenced recently on this blog.)

There’s a good reason for this, too. Intellectual property, unlike other kinds of property, is merely a right to exclude — a right to sue for infringement. It includes no positive right to do anything. Look, for example, at blocking patents or at derivative copyrighted works; in both cases, the right to practice the patent or publish the work is not necessarily secured by the patent or copyright itself. All that is granted is the right to sue for infringement. Because the right to sue is the essence of the property, the right to sue cannot be separated from the property. It’s analogous to the reason we don’t allow transfers of trademark rights without transferring the accompanying goodwill — one just doesn’t exist without the other, so they shouldn’t be able to be owned separately.