Possible reasons for class action suit against Getty in the USA

[scraggy]

Hi Oscar,

Regarding your quote above:

Getty can have different arrangements for certain collections which while non-exclusive still allow Getty to sue or make a claim on behalf of the copyright holder.

As hard as I have tried, I simply cannot find any laws or precedents in the USA to support the view that the owner of a non exclusive license has the right to sue for copyright infringement. Could you please show me where this appears? I have found plenty to the contrary.

Take a look....

http://caselaw.findlaw.com/us-11th-circuit/1561309.html
 

(“[T]he holder of a nonexclusive license may not sue others for infringement.”); I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir.1996) (“[A] person holding a nonexclusive license has no standing to sue for copyright infringement.”).

http://mashburnpatentlaw.com/?page_id=7
 

A written license agreement, however, is not required for a non-exclusive copyright license, and a non-exclusive licensee cannot sue others for infringement nor can they register their interest in the copyright.

http://www.legalcorner.net/articletemplate1.asp?name=copyright_license_art_002
 

Since a non-exclusive license is not a transfer of copyright, the holder of a non-exclusive license cannot sue for infringement, only the owner of the copyright has that privilege.

and even IN THE UK
 
http://www.inbrief.co.uk/intellectual-property/who-can-claim-copyright-infringement.htm
 

Who can bring a claim for copyright infringement?
 
A claim for copyright infringement can be brought by the owner of original work which is protected by copyright or by a person who has been granted an exclusive licence to the work by the copyright owner.
 
A non-exclusive licensee cannot bring a claim for copyright infringement.

The verdict from Silvers vs Sony discussed why ONLY the copyright holder and owner of the exclusive license had the right to sue

http://caselaw.findlaw.com/us-9th-circuit/1195551.html

Section 501(b) of the 1976 Copyright Act establishes who is legally authorized to sue for infringement of a copyright:

The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.

17 U.S.C. § 501(b) (emphasis added).   The meaning of that provision appears clear.   To be entitled to sue for copyright infringement, the plaintiff must be the “legal or beneficial owner of an exclusive right under a copyright.”   See 4 Business and Commercial Litigation in Federal Courts, at 1062, § 65.3(a)(4) (Robert L. Haig ed.)  (West Group & ABA 1998) (“If a claimant is not a proper owner of copyright rights, then it cannot invoke copyright protection stemming from the exclusive rights belonging to the owner, including infringement of the copyright.”).

Section 106 of the 1976 Copyright Act, in turn, defines “exclusive rights”:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3)  to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5)  in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly;  and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106.   The right to sue for an accrued claim for infringement is not an exclusive right under § 106.   Section 201(d) refers to exclusive rights and provides:

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately.   The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

17 U.S.C. § 201(d).  Exclusive rights in a copyright may be transferred and owned separately, but § 201(d) creates no exclusive rights other than those listed in § 106, nor does it create an exception to § 501(b).

Section 501(b) must also be read in conjunction with § 501(a), which provides that one who “violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 ․ is an infringer.”   The definition of an infringer in subsection (a) is parallel to the definition of a proper plaintiff in subsection (b).  Common to both subsections is an exclusive copyright interest.

In addition, when a copyright interest is transferred it must be recorded to protect the copyright holder's right to bring an infringement suit.  17 U.S.C. § 205(d);  see H.R.Rep. No. 94-1476, at 129 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5744 (“The provisions of subsection (d)[ ] requir[e] recordation of transfers as a prerequisite to the institution of an infringement suit․”).  This requirement ensures that prospective buyers or transferees have notice of the copyright interests owned by others.   See H.R.Rep. No. 94-1476, at 128, reprinted in 1976 U.S.C.C.A.N. at 5744 (stating that a copyright recorded in compliance with subsection (c) provides constructive notice of its contents).   By contrast, the recording statute does not contemplate a transfer of anything other than an ownership interest in the copyright, along with the concomitant exclusive rights.

Returning to the operative section, under § 501(b) the plaintiff must have a legal or beneficial interest in at least one of the exclusive rights described in § 106.   Additionally, in order for a plaintiff to be “entitled ․ to institute an action” for infringement, the infringement must be “committed while he or she is the owner of” the particular exclusive right allegedly infringed. 17 U.S.C. § 501(b).

 The statute does not say expressly that only a legal or beneficial owner of an exclusive right is entitled to sue.   But, under traditional principles of statutory interpretation, Congress' explicit listing of who may sue for copyright infringement should be understood as an exclusion of others from suing for infringement.   The doctrine of expressio unius est exclusio alterius “as applied to statutory interpretation creates a presumption that when a statute designates certain persons, things, or manners of operation, all omissions should be understood as exclusions.”  Boudette v. Barnette, 923 F.2d 754, 756-57 (9th Cir.1991).

What do you think?
Thanks
Ian

[SoylentGreen]

Scraggy,

I already posted a precedent showing how one can sue while only having a non-exclusive agreement.
Silvers vs Sony is a precedent as you say, however later precent Eden Toys, Inc. v. Florelee Undergarment Co. showed that the non-exclusive license holder could sue if certain conditions were met.
Oscar has stated what he thinks; I doubt that it would be productive for him to repeat himself, and then be told that he's "wrong".



S.G.

[scraggy]

Posted by: SoylentGreen

Silvers vs Sony is a precedent as you say, however later precent Eden Toys, Inc. v. Florelee Undergarment Co. showed that the non-exclusive license holder could sue if certain conditions were met.

The Eden Toys case was 20 years before Silvers vs Sony. There was no discussion at all concerning non-exclusive licenses. The case discussed the need for Eden Toys to own an exclusive license in order to sue, and concluded that "one who owns no exclusive right in a copyright may not sue for infringement". Silvers vs Sony then discussed the case 20 years later, and supported the view that only the owner of an exclusive license has legal standing to sue. If you still think otherwise, please send me the specific quote you are referring to that shows the opposite.

Here is a summary of the case:

http://www.coolcopyright.com/cases/fulltext/edenfloreleetext.htm

if Eden had an exclusive license at the relevant time to
exploit Paddington's copyrights in the market in which Florelee was selling,
Eden would be entitled by its exclusive license to sue Florelee for infringement
of those copyrights.  See the discussion infra of Eden's exclusive license
claim.

Eden's Claim as Exclusive Licensee

   Eden also sues for infringement as exclusive North American licensee for
certain Paddington Bear products.  An exclusive licensee of a right under a
copyright is entitled to bring suits for infringement "of that particular right,
" 17 U.S.C. § 501(b) (Supp. IV 1980), without being required to join his
licensor. 3 M. Nimmer, supra, § 12.02, at 12-24 (1981). The question, then, is
whether Eden was the exclusive licensee of the right allegedly infringed by
Florelee,

Twenty years later, the Silvers vs Sony judgement quoted the above case.

http://caselaw.findlaw.com/us-9th-circuit/1195551.html

In Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir.1982), superseded by rule and statute on other grounds, the court held that one who owns no exclusive right in a copyright may not sue for infringement.   The court explained:

Eden apparently believed that a third basis for standing under the Copyright Act existed, namely authorization by the copyright holder of suit by a person other than an exclusive licensee.   Clause 9 of the 1975 Eden/Paddington agreement ․ contemplates such an arrangement.   We do not believe that the Copyright Act permits holders of rights under copyrights to choose third parties to bring suits on their behalf.   While F.R. Civ. P. 17(a) ordinarily permits the real party in interest to ratify a suit brought by another party, the Copyright Law is quite specific in stating that only the “owner of an exclusive right under a copyright” may bring suit.

Id. at 32 n. 3 (citations omitted).

It is not entirely clear whether the copyright holder in Eden Toys had granted to Eden the right to sue on accrued causes of action, as is the case here, or only the right to sue prospectively.   Whether the assignment was prospective or retrospective, however, the court made plain the basic principle, which we also have derived from § 501(b) and its context and history, that only the owner of an exclusive right under the copyright is entitled to sue for infringement.

[SoylentGreen]

Good links.
But, you should just let it go, bro.

S.G.

[Matthew Chan]

Scraggy,

I admire your tenacity. But assuming everything you say is correct, "someone" or "some people" has to want to pursue something like this.

So far, here in the U.S., no one is stepping forward to take on such a role.

Even if there was "someone" willing to be the 1st client, there is also the issue of having some attorney(s) with class-action experience willing to take it on contingency.

That is pretty much how I see the situation at the current time.

[Oscar Michelen]

OK - part of the problem with forums like this is that copyright law is highly specialized and has many nuances. Also, this is not the place for a 60 page dissertation on the meaning of the term "exclusive and non-exclusive."  Let me just say that what I meant and what I stand by is the Getty can have been granted the exclusive right to sue but not have other rights exclusively like the right to re-print the image meaning the totality of its rights are not exclusive.  I have often argued with Getty (many years ago when we actually talked on the phone) that if they did not have an exclusive right they could not sue under the Copyright Act and they always argued that they had exclusive rights.  The argument never went any further because they never showed me their rights agreement and once I realized they never registered the images anyway, it became a moot point

[SoylentGreen]

Thanks, Oscar.
It's clear that anyone that's seriously thinking of a class action should consult an experienced attorney.
Hopefully we can let it rest.

S.G.