No. _______
`
`IN THE
`
`d
`
`Supreme Court of the United States
`
`DRK PHOTO,
`
`—v.—
`
`JOHN WILEY & SONS, INC.,
`
`Petitioner,
`
`Respondent.
`
`ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES
`COURT OF APPEALS FOR THE SECOND CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`MAURICE HARMON
`Counsel of Record
`HARMON SEIDMAN BRUSS
`& KERR, LLC
`11 Chestnut Street
`New Hope, Pennsylvania 18938
`(917) 561-4434
`maurice@harmonseidman.com
`
`CHRISTOPHER SEIDMAN
`HARMON SEIDMAN BRUSS
`& KERR, LLC
`101 South Third Street, Suite 265
`Grand Junction, Colorado 81501
`(970) 245-9075
`
`Counsel for Petitioner
`
`
`
`IN THE
`
`d
`
`Supreme Court of the United States
`
`DRK PHOTO,
`
`—v.—
`
`JOHN WILEY & SONS, INC.,
`
`Petitioner,
`
`Respondent.
`
`ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES
`COURT OF APPEALS FOR THE SECOND CIRCUIT
`
`PETITION FOR A WRIT OF CERTIORARI
`
`MAURICE HARMON
`Counsel of Record
`HARMON SEIDMAN BRUSS
`& KERR, LLC
`11 Chestnut Street
`New Hope, Pennsylvania 18938
`(917) 561-4434
`maurice@harmonseidman.com
`
`CHRISTOPHER SEIDMAN
`HARMON SEIDMAN BRUSS
`& KERR, LLC
`101 South Third Street, Suite 265
`Grand Junction, Colorado 81501
`(970) 245-9075
`
`Counsel for Petitioner
`
`
`
`i
`QUESTIONS PRESENTED
`1. Whether an unequivocal transfer of copyright
`ownership,
`together with accrued claims,
`is
`effective to give the transferee the statutory right
`to sue as legal owner of copyright under 17 U.S.C.
`§ 501(b), even when the purpose of the transfer is
`to facilitate an infringement action;
`2. Whether an assignee of an accrued claim who is
`not a legal or beneficial owner of copyright has
`standing to sue for infringement, as the Fifth Circuit
`ruled in Prather,1 or does not have standing, as the
`Ninth Circuit ruled in Silvers;2 and
`3. Whether, under 17 U.S.C. § 501(b), the term
`“beneficial owner”—which the Copyright Act does
`not define—extends to third parties who have been
`granted the right to authorize §106 rights and
`derive income from their exploitation.
`PARTIES TO THE PROCEEDING AND
`CORPORATE DISCLOSURE
`There are no parties to the proceedings other
`than those listed in the caption. Petitioner DRK
`Photo (“DRK”) was the defendant and counter-
`claimant in the district court, and the appellant in
`the court of appeals. Respondent John Wiley &
`Sons, Inc. (“Wiley”) was the defendant in the
`district court and the appellee in the court of
`appeals.
`
`
`1
`
`Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (5th Cir.
`1969).
`2
`
`Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d
`881 (9th Cir. 2005).
`
`
`
`ii
`Petitioner DRK Photo, a sole proprietorship, is
`not subject to the corporate disclosure requirements
`of Supreme Court Rule 29.6.
`
`
`
`iii
`TABLE OF CONTENTS
`
`QUESTIONS PRESENTED . . . . . . . . . . . . . . . . .
`PARTIES TO THE PROCEEDING AND
`CORPORATE DISCLOSURE . . . . . . . . . . . .
`PETITION FOR A WRIT OF
`CERTIORARI . . . . . . . . . . . . . . . . . . . . . . . . . . .
`OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . .
`JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`STATUTORY PROVISIONS INVOLVED . . . .
`INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . .
`STATEMENT OF THE CASE . . . . . . . . . . . . . . .
`A. Statutory Background . . . . . . . . . . . . . . . .
`B. The Parties . . . . . . . . . . . . . . . . . . . . . . . . . .
`C. The transfers of copyright ownership
`and accrued claims at issue . . . . . . . . . . .
`D. The District Court Proceedings . . . . . . .
`E. The Second Circuit Proceedings . . . . . . .
`1. The Panel’s Decision . . . . . . . . . . . . . .
`2. Judge Parker’s Dissent . . . . . . . . . . . .
`3. Petition for Rehearing En Banc . . . .
`REASONS FOR GRANTING THE WRIT . . . .
`
`PAGE
`i
`
`i
`
`1
`1
`1
`1
`2
`4
`4
`4
`
`5
`6
`8
`8
`9
`14
`15
`
`
`
`iv
`
`PAGE
`
`I. The petition should be granted to
`resolve the split of authority regarding
`assignability of copyright infringement
`claims to a non-owner of copyright,
`and the assignee’s standing under
`17 U.S.C. § 501(b) to pursue them . . .
`A. The Second Circuit’s bare-right-to-
`sue rule conflicts with the Fifth
`Circuit’s decision in Prather . . . . . .
`B. The Second Circuit’s decision conflicts
`with Ninth Circuit’s rulings about
`the temporary transfer of copyright
`ownership and standing of stock
`photography agencies . . . . . . . . . . . .
`II. The petition should be granted because
`the Second Circuit’s decision conflicts
`with Supreme Court precedent and the
`language of the Copyright Act . . . . . . .
`A. The Panel’s decision on standing in
`copyright infringement actions is
`at odds with this Court’s decision
`in Sprint . . . . . . . . . . . . . . . . . . . . . . . . .
`B. The Panel’s decision contravenes the
`principles of statutory construction
`articulated in Supreme Court decisions
`like United States v. Texas . . . . . . .
`
`15
`
`17
`
`19
`
`21
`
`21
`
`24
`
`
`
`
`
`
`
`v
`
`PAGE
`
`C. The Panel’s decision also conflicts
`with the Supreme Court’s rulings in
`Sony and Kirtsaeng by erroneously
`comparing Copyright Act provisions
`to nineteenth- century patent
`law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`III. The petition should also be granted to
`define “beneficial ownership” of copyright
`and to resolve confusion about transfers
`of copyright ownership . . . . . . . . . . . . . .
`A. The Court should take this
`opportunity to examine the
`important question of who is a
`“beneficial owner” of copyright
`under the 1976 Copyright Act . . . .
`B. The bare-right-to-sue rule
`undermines the Copyright Act’s
`core purpose and leads to wasteful
`litigation invalidating crystal-
`clear transfers of copyright
`ownership . . . . . . . . . . . . . . . . . . . . . . .
`IV. This case is of substantial importance
`and presents an ideal vehicle for
`resolving the questions presented . . . .
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`
`26
`
`28
`
`29
`
`31
`
`33
`35
`
`
`
`
`
`
`
`vi
`
`PAGE
`
`1a
`
`APPENDICES
`APPENDIX A: United States Court of Appeals
`for the Second Circuit Decision in John
`Wiley & Sons, Inc. v. DRK Photo,
`dated February 16, 2018, with Dissenting
`Opinion of Judge Barrington D. Parker . .
`APPENDIX B: United States District Court
`for the Southern District of New York
`Opinion and Order in John Wiley &
`Sons, Inc. v. DRK Photo,
`dated February 21, 2014 . . . . . . . . . . . . . . . . . 58a
`APPENDIX C: United States Court of Appeals
`for the Second Circuit Order in John
`Wiley & Sons, Inc. v. DRK Photo,
`dated April 12, 2018 . . . . . . . . . . . . . . . . . . . . . 120a
`APPENDIX D: Statutory Provisions
`Involved . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122a
`
`
`
`
`
`
`
`vii
`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`Cases
`ABKCO v. Harrisongs Music, Ltd.,
`994 F.2d 971 (2d Cir. 1991) . . . . . . . 11, 17, 22, 34
`Alaska Stock v. Houghton Mifflin
`Harcourt Publishing Co.,
`747 F.3d 673 (9th Cir. 2014) . . . . . . . . . . . . . 16, 19
`Astoria Federal Savings & Loan
`Association v. Solimino,
`501 U.S. 104 (1991) . . . . . . . . . . . . . . . . . . . . . .
`Bandai America, Inc. v. Bally Midway Mfg. Co.,
`775 F.2d 70 (3d Cir. 1985) . . . . . . . . . . . . . . .
`BG Litigation Recovery I, LLC v.
`Barrick Gold Corp.,
`180 F.Supp.3d 316 (S.D.N.Y. 2016) . . . . . . .
`Bluebird Partners, L.P. v.
`First Fidelity Bank, N.A. N. J.,
`85 F.3d 970 (2d Cir. 1996) . . . . . . . . . . . . . . .
`Broadcast Music, Inc. v.
`Columbia Broadcasting System, Inc.,
`441 U.S. 1 (1979) . . . . . . . . . . . . . . . . . . . . . . . .
`Corbello v. DeVito,
`777 F.3d 1058 (9th Cir. 2015) . . . . . . . . . . . .
`Cordes & Co. Financial Services, Inc.
`v. A.G. Edwards & Sons, Inc.,
`502 F.3d 91 (2d Cir. 2007) . . . . . . . . . . . . . . .
`Crown Die & Tool Co. v.
`Nye Tool & Machine Works,
`261 U.S. 24 (1923) . . . . . . . . . . . . . . . . . . . . . 9, 14, 26
`
`32
`
`20
`
`22
`
`25
`
`30
`
`23
`
`22
`
`
`
`viii
`
`PAGE(S)
`
`18
`
`Davis v. Blige,
`505 F.3d 90 (2d Cir. 2007) . . . . . . . . . . . . . . .
`DRK Photo v. McGraw-Hill
`Global Education Holdings, LLC,
`870 F.3d 978 (9th Cir. 2017) . . . . . . . . . . 16, 23, 32
`Duncan v. Walker,
`533 U.S. 167 (2001) . . . . . . . . . . . . . . . . . . . . . .
`Eden Toys, Inc. v. Florelee
`Undergarment Co, Inc.,
`697 F.2d 27 (2d Cir. 1982) . . . . . . . . . . . . . . .
`Eldred v. Ashcroft,
`537 U.S. 186 (2003) . . . . . . . . . . . . . . . . . . . . . .
`Hacienda Records, L.P. v. Ramos,
`718 Fed.Appx. 223 (5th Cir. 2018) . . . . . . . . 18, 34
`Impression Products, Inc. v.
`Lexmark International, Inc.,
`137 S.Ct. 1523 (2017) . . . . . . . . . . . . . . . . . . . . 26, 27
`John Wiley & Sons, Inc. v. DRK Photo,
`882 F.3d 394 (2d Cir. 2018) . . . . . . . . . . . . . .
`John Wiley & Sons, Inc. v. DRK Photo,
`998 F.Supp.2d 262 (S.D.N.Y. 2014) . . . . . . .
`Kirtsaeng v. John Wiley & Sons, Inc.,
`568 U.S. 519 (2013) . . . . . . . . . . . . . . . . . . . . . .
`Mazer v. Stein,
`347 U.S. 201 (1954) . . . . . . . . . . . . . . . . . . . . . . 27, 31
`Minden Pictures, Inc. v.
`John Wiley & Sons, Inc.,
`795 F.3d 997 (9th Cir. 2015) . . . . . . . . . . . . . 16, 19
`
`30
`
`7
`
`27
`
`1
`
`1
`
`26
`
`
`
`ix
`
`PAGE(S)
`
`29
`
`28
`
`Moran v. London Records, Ltd.,
`827 F.2d 180 (7th Cir. 1987) . . . . . . . . . . . . .
`Order of St. Benedict of
`New Jersey v. Steinhauser,
`234 U.S. 640 (1914) . . . . . . . . . . . . . . . . . . . . . .
`Prather v. Neva Paperbacks, Inc.,
`410 F.2d 698 (5th Cir. 1969) . . . . . . 15, 17, 18, 24
`Rawlings v. National Molasses Co.,
`394 F.2d 645 (9th Cir. 1968) . . . . . . . . . . . . .
`Ray Charles Foundation v. Robinson,
`795 F.3d 1109 (9th Cir. 2015) . . . . . . . . . . . .
`Righthaven LLC v. Hoehn,
`716 F.3d 1166 (9th Cir. 2013) . . . . . . . . . . . .
`Righthaven LLC v. Wolf,
`813 F.Supp.2d 1265 (D. Colo. 2011) . . . . . .
`Silvers v. Sony Pictures Entertainment, Inc.,
`402 F.3d 881 (9th Cir. 2005) . . . . . . . . . . . . passim
`Sony Corp. of America v.
`Universal City Studios, Inc.,
`464 U.S. 417 (1984) . . . . . . . . . . . . . . . . . . . . . . 26, 27
`Sprint Communications Co.
`v. APCC Services, Inc.,
`554 U.S. 269 (2008) . . . . . . . . . . . 12, 21, 22, 23, 33
`Topolos v. Caldeway,
`698 F.2d 991 (9th Cir. 1983) . . . . . . . . . . . . .
`U.S. v. Chalupnik,
`514 F.3d 748 (8th Cir. 2008) . . . . . . . . . . . . .
`
`
`33
`
`32
`
`7
`
`30
`
`29
`
`20
`
`
`
`
`
`x
`
`PAGE(S)
`
`23
`
`United States v. Texas,
`507 U.S. 529 (1993) . . . . . . . . . . . . . . . . . . . . . . 13, 24
`Wallach v. Eaton Corp.,
`837 F.3d 356 (3d Cir. 2016) . . . . . . . . . . . . . .
`Warner/Chappell Music, Inc.
`v. Blue Moon Ventures,
`2011 WL 662691
` (M.D. Tenn. Feb. 14, 2011) . . . . . . . . . . . . . .
`Wu v. Pearson Education, Inc.,
`277 F.R.D. 255 (S.D.N.Y. 2011) . . . . . . . . . .
`Statutes and Rules
`Act of May 21, 1790, 1st Cong., 2d Session,
`1 Stat. 124, § 1 . . . . . . . . . . . . . . . . . . . . . . . . . .
`17 U.S.C. § 28
`(U.S. Copyright Act of 1909) . . . . . . . . . . . . .
`17. U.S.C. §§ 101 et seq.
`(U.S. Copyright Act of 1976) . . . . . . . . . . . . passim
`17 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12, 20
`17 U.S.C. § 106 . . . . . . . . . . . . . . . . . . . . . . 12, 20, 24, 29
`17 U.S.C. § 201(d) . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 28
`17 U.S.C. § 202(d)(2) . . . . . . . . . . . . . . . . . . . . . . .
`20
`17 U.S.C. § 301(a) . . . . . . . . . . . . . . . . . . . . . . . . . .
`2
`17 U.S.C. § 301(b) . . . . . . . . . . . . . . . . . . . . . . . . . .
`2
`17 U.S.C. § 501(b) . . . . . . . . . . . . . . . . . . . . . . . . . passim
`28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . .
`1
`
`34
`
`33
`
`4
`
`4
`
`
`
`xi
`
`PAGE(S)
`28 U.S.C. § 1291 . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`1
`28 U.S.C. § 1331 . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`1
`28 U.S.C. § 1338 . . . . . . . . . . . . . . . . . . . . . . . . . . . .
`1
`37 C.F.R. 202.3(a)(3) . . . . . . . . . . . . . . . . . . . . . . . .
`6
`47 U.S.C. § 226 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12, 21
`29
`
`H.R. Rep. No. 94‐1476 . . . . . . . . . . . . . . . . . . . . . .
`
`Other Authorities
`S. Balganesh, Copyright Infringement Markets,
`113 COLUM. L. REV. 2277, 2307 (2013) . . . . 20, 23
`R. Blair & T. Cotter, The Elusive Logic of
`Standing Doctrine in Intellectual Property,
`74 TUL.L.REV. 1323, 1336 (2000) . . . . . . . . .
`3 Nimmer on Copyright § 12.02[A] (2013) . . .
`3 Nimmer on Copyright § 12.02[B] at 12-54
`and n. 27 (2000) . . . . . . . . . . . . . . . . . . . . . . 18, 20, 24
`2 Party on Copyright § 5:104 (2017) . . . . . . . . .
`20
`
`27
`18
`
`
`
`1
`PETITION FOR A WRIT OF CERTIORARI
`DRK Photo respectfully petitions for a writ of
`certiorari to review the judgment of the United
`States Court of Appeals for the Second Circuit in
`this case.
`
`OPINIONS BELOW
`The opinion of the United States Court of
`Appeals for the Second Circuit, App. 1a-57a, is
`reported at 882 F.3d 394. The opinion of the
`United States District Court for the Southern
`District of New York, App. 58a-119a, is reported at
`998 F.Supp.2d 262.
`JURISDICTION
`The district court had jurisdiction under 28
`U.S.C. §§ 1331 and 1338, and Second Circuit had
`jurisdiction under 28 U.S.C. § 1291. The Second
`Circuit denied Petitioner’s timely-filed petition for
`rehearing en banc on April 12, 2018. App. 120a-
`121a. This Court’s jurisdiction rests on 28 U.S.C.
`§ 1254(1).
`STATUTORY PROVISIONS INVOLVED
`Section 501(b) of the Copyright Act provides:
`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
`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
`
`
`
`2
`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.3
`Other pertinent sections of the Copyright Act
`include 17 U.S.C. §§ 101
`(definitions), 106
`(exclusive rights
`in copyright work), 201(d)
`(transfer of ownership), and 301(a) and
`(b)
`(preemption), and are reproduced in the Appendix.
`INTRODUCTION
`The central purpose of the Copyright Act is to
`encourage dissemination of creative works for the
`public benefit by making copyrights enforceable—
`not just in theory, but as a practical matter. This
`case presents a crucial,
`frequently
`litigated
`question about assignment of accrued claims for
`copyright infringement—namely, whether a stock
`photography agency has standing
`to pursue
`copyright infringement claims involving photographs
`from its collection under the Copyright Act of 1976.
`This
`issue remains subject
`to substantial
`litigation and inter-circuit disagreement. Various
`District Courts, Federal Appellate Courts, and
`legal scholars have considered this issue and
`reached conflicting conclusions.
`
`
`3
`
`17 U.S.C. § 501(b).
`
`
`
`3
`The Second Circuit’s decision below perpetuates
`this split of authorities. The majority’s opinion
`held that “the Copyright Act does not permit
`prosecution of infringement suits by assignees of
`the bare right to sue that are not and have never
`been a legal or beneficial owner of an exclusive
`right under copyright.” App. 2a. In so ruling, the
`Panel found that DRK was not a “beneficial owner”
`of an exclusive right, yet failed to define the term.
`App. 39a-41a. However, as Judge Parker noted in
`his 19-page dissent in this case, “nothing in the
`1976 Act bars the assignment of the right to sue
`because a central purpose of the 1976 modifications
`was to expand the ability to bring suits for
`infringement.” App. 47a.
`This Court should grant DRK’s petition in order
`to (1) resolve the split of authorities regarding
`assignability of copyright infringement claims to a
`non-owner of copyright, and the assignee’s standing
`to pursue them;
`(2) resolve confusion about
`transfers of copyright ownership; and (3) address
`the important question of who qualifies as “beneficial
`owner” of copyright under the 1976 Copyright Act.
`While this petition alone affects the interests of
`dozens of photographers, the Second Circuit’s ruling
`impacts tens of thousands of others who are now
`effectively without a way to redress copyright
`infringements. In essence, the Panel’s decision
`contravenes the core purpose of the Copyright Act
`by barring enforcement efforts by parties best
`situated to pursue them, thus allowing infringers
`to escape accountability.
`
`
`
`4
`STATEMENT OF THE CASE
`A. Statutory Background.
`Copyright statutes have long recognized that
`copyright ownership is transferable.4 No act of
`Congress has expressly addressed,
`let alone
`prohibited, assignment of accrued infringement
`claims. Yet, “Congress unquestionably knows how
`to bar assignments of claims when that is its
`intention.” App. 47a.
`B. The Parties.
`DRK is a stock photography agency that licenses
`use of
`images
`created by
`its
`contributing
`photographers to publishing entities, including
`Respondent John Wiley & Sons, Inc. (“Wiley”).
`App. 59a. Since its inception in 1981, DRK has
`built a collection of hundreds of thousands of
`photographs, primarily depicting worldwide wildlife,
`marine life, and natural history. App. 59a-60a.
`Wiley is a publisher of textbooks and other materials.
`App. 68a. Between 1997 and 2009, DRK granted
`limited licenses to Wiley for use of images from
`DRK’s collection in Wiley’s textbooks. App. 68a-70a.
`
`
`4
`
`See, e.g., Act of May 21, 1790, 1st Cong., 2d Session, 1
`Stat. 124, § 1 (conferring rights upon authors and assigns who
`“legally acquired the copyright”); 17 U.S.C. § 28 (1909)
`(“Copyright secured under this title or previous copyright laws
`of the United States may be assigned, granted, or mortgaged by
`an instrument in writing signed by the proprietor of the
`copyright, or may be bequeathed by will.”).
`
`
`
`5
`C. The transfers of copyright ownership and
`accrued claims at issue.
`DRK entered into “Representation Agreements”
`with the photographers whose images are in
`DRK’s collection at the beginning of DRK’s
`relationship with each contributor. App. 62a.
`These Representation Agreements empowered DRK
`to act as “agent with . . . respect to the sale or
`leasing of the photographs or transparencies”
`delivered to DRK, and provide that DRK and the
`photographer split evenly the proceeds
`from
`licenses granted by DRK. App. 62a-63a.
`DRK’s contributing photographers subsequently
`executed Copyright Assignment, Registration, and
`Accrued Cases
`of Action Agreements
`(the
`“Assignments”), which provide in pertinent part:
`The undersigned photographer . . . grants
`to DRK all copyrights and complete legal
`title in the Images. DRK agrees to reassign
`all copyrights and complete legal title back
`to the undersigned
`immediately upon
`completion of the registration of the
`Images . . . and resolution of infringement
`claims brought by DRK relating to the
`Images.
`The undersigned agrees and fully transfers
`all right, title and interest in any accrued
`or later accrued claims, causes of action,
`choses of action . . . or lawsuits, brought
`to enforce copyrights
`in the Images,
`appointing and permitting DRK
`to
`prosecute said accrued or later accrued
`claims, causes of action, choses in action or
`lawsuits, as if it were the undersigned.
`
`
`
`6
`App. 65a. The Assignments also provide that DRK
`and the photographers will share equally the net
`proceeds of any litigation award or settlement.
`App. 65a-66a.
`As assignee of copyright ownership, and as
`copyright “claimant,”5 the Copyright Office issued
`41 Certificates of Copyright Registration to DRK.
`As Judge Parker noted in his dissenting opinion
`below,
`[S]tock photography companies like DRK
`Photo are in the business of aggregating
`copyright infringement claims that have
`accrued to their clients.
` Aggregation
`provides . . . a practical means of affording
`redress
`to
`the
`photographers
`and
`compensating them for repeated small
`infringements of their copyrights.
`App. 42a.
`D. The District Court Proceedings.
`Wiley
`initiated this action
`in August 2011
`seeking a declaration that it did not commit
`copyright infringement when it exceeded the scope
`of DRK-issued licenses. App. 58a-59a.
`Wiley’s Amended Complaint
`identified 316
`instances of alleged non-infringement (the “Wiley
`Non-Infringement Instances”) for which it sought
`declaratory relief. App. 71a. DRK filed an Answer
`and Counterclaim against Wiley for copyright
`infringement with respect to 295 of the Wiley Non-
`Infringement Instances. App. 71a-72a.
`
`5
`
`37 C.F.R. 202.3(a)(3) (“copyright claimant” includes “(ii)
`A person or organization that has obtained ownership of all
`rights under the copyright initially belonging to the author.”).
`
`
`
`7
`As Judge Parker summarized in his dissent,
`John Wiley & Sons, Inc. purchased from
`photographers for relatively small amounts
`of money the right to use their works in
`various of its publications. Wiley then
`proceeded to use the photographs
`in
`additional instances for which it had not
`obtained permission and for which it did
`not pay the photographers. The crux of this
`lawsuit
`is whether the Copyright Act
`permits this misappropriation.
`App. 42a.
`In a published February 21, 2014 Opinion and
`Order, Honorable Katherine Polk Failla granted
`DRK’s motion for summary judgment in part,
`finding that Wiley committed copyright infringement.
`App. 109a. But the District Court also found that
`DRK lacked standing to pursue many of its claims,
`finding DRK was not a “beneficial owner” of
`copyright, and the photographer assignments did
`not effect a transfer of legal ownership. App. 119a.
`The District Court cited the Second Circuit’s
`decision in Eden Toys, Inc. v. Florelee Undergarment
`Co, Inc.6 for the proposition that the Copyright Act
`“does not permit ‘holders of rights under copyrights
`to choose third parties to bring suits on their
`behalf.’” App. 90a. The District Court’s decision
`also looked to Righthaven LLC v. Hoehn,7 a readily
`distinguishable Ninth Circuit case, to conclude that
`the Assignments did not confer standing. App. 95a.
`
`
`6
`
`697 F.2d 27 (2d Cir. 1982).
`7
`
`716 F.3d 1166 (9th Cir. 2013).
`
`
`
`8
`E. The Second Circuit Proceedings.
`1. The Panel’s Decision.
`On February 16, 2018, the Second Circuit issued
`an opinion affirming the judgment of the District
`Court, finding that DRK did not have statutory
`standing to pursue accrued claims of copyright
`infringement, despite the Assignments’ clear and
`unequivocal transfer of copyright ownership. See
`App. 1a-57a. In its opinion below, the Panel
`majority acknowledged the “equitable merit in
`allowing stock photography companies like DRK to
`aggregate copyright infringement claims otherwise
`accrued to their clients.” App. 40a. Ultimately,
`however, the Panel found “that DRK is not and has
`never been the holder of an exclusive right in the
`photographs,” App. 2a, and concluded that “a bare
`assignee that does not hold and has never held any
`other exclusive rights in copyright, may not bring a
`cause of action for copyright infringement.” App.
`41a.
`The Panel read the language of § 501(b) to limit
`actions for infringement to owners of exclusive
`rights when the infringement was committed. App.
`3a. This interpretation, as Judge Parker observed
`in his dissent, “prevents even holders of one of the
`exclusive section 106 rights from suing unless the
`alleged infringement occurred ‘while he or she
`[was] the owner of it.’” App. 49a. Further relying
`upon the maxim “expressio unius est exclusio
`alterius,” the Panel
`found that because the
`language of Section 106 of the Copyright Act does
`not expressly mention assignments, they cannot be
`part of the exclusive rights listed. App. 46a.
`The majority held that with respect to the
`Assignments, “the Copyright Act does not permit
`
`
`
`9
`prosecution of infringement suits by assignees of
`the bare right to sue that are not and have never
`been a legal or beneficial owner of an exclusive
`right under copyright.” App. 2a. Its opinion relied
`largely on Crown Die & Tool Co. v. Nye Tool &
`Machine Works8—“a single example of patent law”
`from 19239—to bolster its assertion that the common
`law right to assignability of claims does not extend
`to copyright law. App. 25a-27a. The Panel also
`relied upon the Ninth Circuit’s decision in Silvers
`v. Sony Pictures Entertainment, Inc., 402 F.3d 881
`(9th Cir. 2005). App. 14a, 19a, 21a-27a. Under
`Silvers, “[t]he bare assignment of an accrued cause of
`action is impermissible under 17 U.S.C. § 501(b).”10
`Finally, the Panel found that “DRK is not a . . .
`beneficial owner” of an exclusive right, but failed to
`define the term. App. 41a.
`2. Judge Parker’s Dissent.
`Honorable Judge Barrington Parker dissented
`from the majority’s ruling below, authoring a
`separate, 19-page opinion:
`The dispositive legal issue in this appeal is
`whether the copyright laws forbid the
`assignment of a bare right to sue on
`copyright claims to entities such as DRK.
`Because I conclude that the law does not
`forbid such assignments, I respectfully
`dissent.
`App. 42a.
`
`
`8
`
`261 U.S. 24, 40 (1923).
`9
`
`App. 52a.
` 10
`402 F.3d at 880.
`
`
`
`10
`Judge Parker carefully considered the history of
`the Copyright Act, canons of statutory construction,
`principles of common law, Supreme Court opinions,
`and decisions from other circuit courts, ultimately
`finding that “nothing in the Copyright Act precludes
`DRK from prosecuting claims on its non-exclusive
`licenses as an assignee of a bare right to sue.” App.
`55a.
`The dissent first examined the history of the
`Copyright Act and the
`interpretation of
`its
`provisions by various circuit courts :
`It is clear that prior to the enactment of
`the 1976 Act, the bar to suit on assigned
`claims erected by the majority did not exist
`. . . Under the Copyright Act of 1909 (the
`“1909 Act”), the “proprietor” of a copyright
`was afforded the right to sue for copyright
`infringement. Even though the 1909 Act
`granted standing solely to the “proprietor”
`of the entire copyright, courts nevertheless
`allowed assignees of an accrued cause of
`action for copyright infringement to sue for
`infringement . . .
`As Judge Bea noted, “[t]he infringement
`claim, like any other contingent asset,
`could be sold, much like the copyright
`holders’s claim against a trade debtor or a
`coupon clipped from the copyright holder’s
`bond portfolio,” and all defenses against
`the assignor were valid against
`the
`assignee who stood in the shoes of the
`assignor. Silvers, 402 F.3d at 897.
`This conclusion concerning the general
`assignment of causes of action is congruent
`with unusually well-established law.
`App. 43a-44a (internal citations omitted).
`
`
`
`11
`Judge Parker also discussed how the Panel’s
`decision conflicts with precedent established by
`this and other courts. Looking to the majority’s
`interpretation of section 501(b), he found that the
`decision could not be reconciled with the Second
`Circuit’s earlier decision in ABKCO v. Harrisongs
`Music, Ltd.,11 “which held that the owner of rights
`under a copyright can sell the rights and, at the
`same time, sell claims for infringement that had
`accrued when the (now former) owner possessed
`the rights.” App. 49a.
`The majority’s reading of § 501(b) would
`preclude such a transaction, because the
`subsequent owner would then be permitted
`to sue for infringement that occurred when
`he or she was not the owner of the
`copyright. But, where the majority extracts
`a charter for such a carve-out is elusive.
`The text does not reveal, and the majority
`does not proffer, any explanation for why a
`former copyright owner who transferred
`ownership but not claims is entitled under
`§ 501(b) to institute an infringement suit.
`
`Id.
`The dissent also considered the assignability of
`causes of action in other areas of law. Citing a
`string of cases upholding transfers of accrued
`claims, the dissent noted “numerous other cases
`have applied this principle and treat the right to
`bring a cause of action as a right separate from the
`particular property that gave rise to the right.”
`App. 44a.
`
`
` 11
`994 F.2d 971 (2d Cir. 1991).
`
`
`
`12
`this
`Significantly, Judge Parker examined
`Court’s decision in Sprint Communications Co. v.
`APCC Services, Inc.,12 which held that, under 47
`U.S.C. § 226, the plaintiff assignee’s aggregation of
`1400 claims provided standing to pursue the
`assigned claims in federal court—even where the
`assignee promised to remit the proceeds of the
`litigation to the assignor, and even though the
`statute was silent on that question. See App. 45a-
`46a. There, the Court “emphasized that ‘history
`and precedent are clear . . . Assignees of a claim
`. . . have long been permitted to bring suit.’” App.
`45a (citing Sprint, 544 U.S. at 275).
`Then, turning to the language of the 1976
`Copyright Act, Judge Parker observed that while
`the 1976 Act enacted major changes to the 1909
`regime with respect to standing and access to the
`courts, “‘. . . nothing in the 1976 Act eliminated the
`rights of copyright owners under Section 101 of the
`Act to their remedies, nor the right of property
`owners to enjoy the property rights granted by the
`statute including the assignment and enforcement
`of accrued causes of action.’” App. 46a (quoting
`Silvers, 402 8 F.3d at 898-99).
`issue with the
`The dissent took particular
`Panel’s rejection of well-established principles of
`common law and statutory construction.
`The majority’s analysis . . . proceeds under
`the assumption that if assignments are not
`mentioned in § 106 then they cannot be a
`part of the exclusive rights listed. But, this
`analysis collides head on with the fact that
`the common law of assignments is law and
`
` 12
`554 U.S. 269, 285–86 (2008).
`
`
`
`13
`trumps canons of statutory
`law
`. . .
`interpretation.
`App. 46a-47a.
`Judge Parker further noted “statutes that invade
`the common law must be read with a presumption
`favoring the retention of longstanding principles of
`common law ‘except when a statutory purpose to
`the contrary is evident.’ From the text of the
`statute.” App. 47a “[T]o abrograte [sic] a common
`law principle, the statute must ‘speak directly’ to
`the question addressed by the common law.” Id.
`(quoting United States v. Texas, 507 U.S. 529, 535
`(1993)).
`In Judge Parker’s view, the majority’s analysis
`inverted this principle
`in their analysis and
`rejection of DRK’s Assignments. App. 47a. “There
`is no question that the 1976 Act did not ‘speak
`directly’ to the common law of assignment and no
`intention to repeal that longstanding principle of
`law is anywhere ‘evident.’” Id.
`Judge Parker also reasoned, “nothing in the 1976
`Act bars the assignment of the right to sue because
`a central purpose of the 1976 modifications was to
`expand the ability to bring suits for infringement
`. . . it is far from clear to us that § 501(b) is
`even reasonably susceptible to the majority’s
`interpretation.” App. 47a. “Congress unquestionably
`knows how to bar assignments of claims when that
`is its intention.” Id. And, in Judge Parker’s view,
`it was not Congress’s intention to do so here. Id.
`Finally, the dissent disputed the applicability of
`patent law to the present copyright dispute.
`its
`The majority’s main support
`for
`contention that the common law right to
`
`
`
`14
`assignability of claims does not extend to
`copyright
`law
`is the Supreme Court’s
`decision in Crown Die & Tool Co. v. Nye
`Tool & Machine Works, 261 U.S. 24, 40
`(1923), which was not even a copyright
`case. This difference is important because
`while patent and copyright law are related,
`the Supreme Court has emphasized that
`caution must be exercised in applying
`doctrine formulated in one area to the
`other because major differences exist . . .
`In my view, Crown Die has little relevance
`to this appeal for a number of reasons . . .
`First, it cannot be seriously disputed that
`Chief Justice Taft’s view, formed from the
`single example of patent law, that in
`the a
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