No. 05-6844-cv
`Davis v. Blige
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`August Term, 2006
`
`(Argued: January 10, 2007
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` Decided: October 5, 2007)
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`Docket No. 05-6844-cv
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`SHARICE DAVIS,
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`Plaintiff-Appellant,
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`v.
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`MARY J. BLIGE, BRUCE MILLER, RONALD LAWRENCE, KWAME HOLLAND, DANA STINSON, AUSAR
`MUSIC, MARY J. BLIGE PUBLISHING, BRUCE MILLER PUBLISHING, KWAME HOLLAND PUBLISHING,
`MARY J. BLIGE MUSIC, DAYNA S. DAY PUBLISHING, WARNER-TAMERLANE MUSIC PUBLISHING CORP.,
`UNIVERSAL MUSIC GROUP, INC., UNIVERSAL STUDIOS, INC., UNIVERSAL MUSIC PUBLISHING GROUP,
`UNIVERSAL-MCA MUSIC PUBLISHING, UNIVERSAL MUSIC & VIDEO DISTRIBUTION CORP., and MCA
`RECORDS, INC.,
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`Defendants-Appellees.
`
`Before: WINTER and CABRANES, Circuit Judges, and KORMAN, District Judge.1
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`Plaintiff appeals from an order of the United States District Court for the Southern District of
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`New York (Charles S. Haight, Jr., Judge) granting defendants’ motion for summary judgment on
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`plaintiff’s copyright-related claims. The District Court concluded that (1) plaintiff’s co-author
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`transferred his rights under copyright to one of the defendants through a written agreement; (2) the
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`transfer, which stated that it was “retroactive” to the date of the creation of the copyright, took effect
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`before the alleged infringement; and (3) the “retroactive” transfer barred plaintiff’s claim of
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`infringement against the defendant, who was the beneficiary of the transfer, and his licensees. Plaintiff
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`argues on appeal that the retroactive transfer was invalid and that plaintiff’s claims were not barred by
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`1 The Honorable Edward R. Korman, of the United States District Court for the Eastern District of New
`York, sitting by designation.
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`1
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`

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`the transfer.
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`Vacated and remanded.
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`RICHARD J. J. SCAROLA (Alexander Zubatov, on the brief), Scarola
`Ellis LLP, New York, NY, for Plaintiff-Appellant.
`
`JONATHAN D. DAVIS, New York, NY, for Defendants-Appellees
`Mary J. Blige and Mary J. Blige Music.
`
`Cynthia S. Arato, Gibson Dunn & Crutcher LLP, New York,
`NY, for Defendants-Appellees Warner-Tamerlane Publishing Corp.,
`Dana Stinson, and Dayna’s Day Publishing.
`
`Andrew H. Bart, Jenner & Block LLP, New York, NY, for
`Defendants-Appellees Universal Music Group, Inc., Universal Studios,
`Inc., Universal Music Publishing, Inc., Universal-MCA Music Publishing,
`a division of Universal Studios, Inc., Universal Music & Video
`Distribution Corp., and MCA Records, a division of UMG Recordings,
`Inc.
`
`Gregory J. Watford, New York, NY, for Defendants-Appellees
`Ronald Lawrence and Ausar Music Publishing, Ltd.
`
`George T. Gilbert, New York, NY, for Defendant-Appellee Bruce
`Miller.
`
`JOSÉ A. CABRANES, Circuit Judge:
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`The question presented, one of first impression in the courts of appeals, is whether an action
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`for infringement by one co-author of a song can be defeated by a “retroactive” transfer of copyright
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`ownership from another co-author to an alleged infringer. This action arises under the current statute
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`governing copyright law, the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. (“the Copyright Act”),
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`because “the complaint is [in part] for a remedy expressly granted by [the Copyright Act], e.g., a suit
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`for infringement . . . , [and] asserts a claim requiring construction of [the Copyright Act], . . . or, at the
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`very least . . . presents a case where a distinctive policy of [the Copyright Act] requires that federal
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`principles control the disposition of the claim.” T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir.
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`1964) (Friendly, J.).
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`2
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`Plaintiff Sharice Davis (“plaintiff” or “Davis”) appeals from an order of the United States
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`District Court for the Southern District of New York (Charles S. Haight, Jr., Judge) dismissing by
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`summary judgment her claims under the Copyright Act, her claim for a declaratory judgment under 28
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`U.S.C. § 2201, and her state-law claims alleging unfair competition, unjust enrichment, and violations of
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`New York’s consumer protection statutes. See Davis v. Blige, 419 F. Supp. 2d 493 (S.D.N.Y. 2005). The
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`District Court concluded that a “retroactive” written agreement between Bruce Chambliss, Davis’s
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`alleged co-author, and Bruce Miller, one of the defendants, purporting to assign Chambliss’s rights in
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`two disputed songs as of the time of their creation, was valid. Reasoning that “a co-owner has a legal
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`right to grant a license without another co-owner’s permission or transfer his rights in the copyright
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`freely,” id. at 500, the District Court held that the transfer of co-ownership rights by Chambliss to
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`Miller—who had licensed the copyright to third parties also named as defendants (collectively the
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`“third-party defendants”) before the written agreement was executed—defeated Davis’s claims not only
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`against Miller but also against the third-party defendants, who were in privity with Miller.
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`We disagree, and therefore vacate the judgment and remand for further proceedings consistent
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`with this opinion.
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`A. Facts
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`BACKGROUND
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`The facts of this case are laid out fully in Judge Haight’s opinion. We recount here only those
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`facts relevant to the issues on appeal. Unless otherwise noted, the facts are undisputed.
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`The dispute between the parties arises from the release in 2001 of an album entitled “No More
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`Drama” (“the Album”). Defendant Mary J. Blige, the “Queen of Hip-Hop Soul,” J.A. 325, was the
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`performer on the Album, which achieved “triple platinum” status.2 Davis alleges that two of the songs
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`2 “Platinum” status, a term of art of musical-recording sales certification created by the Recording Industry
`Association of America, refers to the sale of over one million copies of a musical recording. Thus, “triple platinum”
`status means over 3 million copies of the Album were sold. See Recording Industry Association of America, Gold and
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`3
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`contained on the Album—“LOVE” and “Keep It Moving” (collectively, the “Album
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`compositions”)—infringe her copyright in two compositions (collectively, the “disputed
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`compositions”). In particular, she claims that “LOVE” is virtually identical to her composition
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`“L.O.V.E.,” and that “Keep It Moving” bears substantial similarity to her composition “Don’t Trade in
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`My Love.” Davis does not receive any song-writing credit on the Album; instead, the labels and
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`packaging of the Album identify (1) Blige, Miller, and defendants Kwame Holland and Ronald
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`Lawrence as the authors of “LOVE” and (2) Blige, Miller, Holland, and defendant Dana Stinson as the
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`authors of “Keep It Moving.” See id. at 495 n.2.
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`Davis claims the disputed compositions were co-authored in 1998 by her and Chambliss,
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`Miller’s father; Chambliss is not a party to this action. According to one witness, Hunter College
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`Professor Barbara Ottaviani, the disputed composition “L.O.V.E.” was written in 1998 during jam
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`sessions in the home of Ottaviani attended by, among others, Davis, Chambliss, and Miller. A tape
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`recording of “L.O.V.E.” was made during one of these jam sessions, but the tape disappeared shortly
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`thereafter. At about this time Davis met Blige, who is Miller’s sister and the step-daughter of
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`Chambliss. Davis states that she had performed “L.O.V.E.” for Blige and that Miller subsequently
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`approached Davis on behalf of Blige, seeking to buy several of Davis’s songs, including “L.O.V.E.”
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`Davis alleges that she declined the offer. She also alleges that she wrote “Don’t Trade in My Love”
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`with Chambliss in or around November 1998 at Ruff Riders Studio.
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`In August 2001, defendants Ausar Music, Mary J. Blige Publishing, Bruce Miller Publishing, and
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`Kwame Holland Publishing registered “LOVE” and defendant Universal Music MCA Music
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`Publishing, and Blige, Miller, and Stinson registered “Keep It Moving” with the United States
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`Copyright Office (“Copyright Office”). On February 28, 2002, Miller contracted with Universal Tunes,
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`a division of defendant Universal, Inc., to provide an exclusive license to exploit his copyright interest
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`Platinum , http://www.riaa.com/goldandplatinum.php (last visited Aug. 8, 2007).
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`4
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`in the Album compositions as well as his copyright interests in any other compositions not previously
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`assigned to other music publishing companies. On August 14, 2002, Davis registered the disputed
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`compositions with the Copyright Office, listing Chambliss as a co-author. In December 2003, Davis
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`filed suit, alleging infringement of her copyright in the two disputed compositions and a variety of
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`related state claims.
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`Defendants’ April 30, 2003 and August 11, 2003 answers to Davis’s complaint denied that
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`anyone other than the defendants listed as authors on the Album wrote the songs. But in depositions
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`given in December 2003 and January 2004 (Miller), and June and August 2004 (Chambliss), both Miller
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`and Chambliss testified that Chambliss had initially written the disputed compositions and that they
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`formed the basis for the Album compositions;3 Chambliss denied ever collaborating on any songs with
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`Davis.4 Chambliss and Miller also stated that they had orally agreed Chambliss would grant Miller
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`certain rights in the compositions, although the existence and nature of the alleged oral agreement is in
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`dispute.5 See Davis, 419 F. Supp. 2d at 498 (noting that “a genuine issue exists as to whether Chambliss
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`3 Miller testified that he and Blige contributed to the “revised” version of “LOVE.”
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`4 Chambliss’s deposition testimony is somewhat confused on this point. Although during his deposition he
`categorically denied ever having written songs with Davis, Chambliss identified several instances in which Davis’s
`handwriting or name appeared in his papers documenting several songs. Chambliss explained this documentation as
`either identifying songs meant for her as a perform er, or areas where she added unauthorized verses.
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`5 Miller’s and Chambliss’s deposition testimony contain inconsistent descriptions of the nature and timing of
`the alleged oral agreement. Miller stated during his deposition that he and Chambliss had a conversation “[p]robably like
`the end of ’98, ’99 . . . somewhere in there,” during which Chambliss told him, “basically, ‘Any song that I have written,
`if it needs to be used at any point in time, use it. It is yours.’” Miller said that this agreement was never written down,
`and that he never compensated Chambliss for any songs that Chambliss had given to him.
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`According to Chambliss, he “sign[ed] all of [his] songs over to [Miller]” because he “knew [Chambliss] was
`going to be in prison, and [he] knew [Miller] could handle everything.” Chambliss also described the alleged oral
`agreement alternatively as an agreement that “[Miller] can use all of [the songs].” As the District Court noted, however,
`Chambliss was incarcerated sometime in 1997, and again from 2001 to 2003; thus, it appears that Chambliss could not
`have known “he was going to be in prison” during late 1998 or early 1999, when Miller says that the oral agreement was
`reached. See Davis, 419 F. Supp. 2d at 498. It is also worth noting that it is unclear whether the oral agreement
`(assuming arguendo that it existed) transferred all of Chambliss’s interests in his compositions to Miller, or whether
`Chambliss merely intended to grant Miller only the right to use Chambliss’s compositions. Finally, it is unclear whether
`the alleged agreement related only to the disputed compositions, or whether the agreement related to all of the 3000-
`4000 compositions that Chambliss claimed to have created.
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`5
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`ever orally transferred his rights in the [disputed] compositions”). On June 23, 2004, one day before
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`Chambliss’s initial deposition, Chambliss and Miller allegedly reduced to a writing the transfer of
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`Chambliss’s interest in the disputed compositions.6 There were two written agreements (collectively,
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`the “transfer agreements”), one for each of the disputed compositions. Each written agreement stated
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`that Chambliss “does hereby sell, assign, transfer, and set over unto Bruce Miller . . . an undivided one
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`hundred percent (100%) share in and to all the undersigned’s right, title and interest” in the respective
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`disputed compositions “and any and all universe-wide copyrights and all renewals, extensions and
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`reversions thereof [and] any and all causes of action for infringement of the same past, present, and future;
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`any and all proprietary rights; and all the proceeds from the foregoing accrued and unpaid and hereafter
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`accruing.” (emphasis added). According to the transfer agreements, the “instrument of transfer is
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`effective as of the date [Chambliss] first create[d] the above-referenced Composition”—a date not
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`otherwise specified. Defendants claimed that these written agreements merely served to confirm or
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`6 When asked during his first deposition on June 24, 2004, if there was any written agreement memorializing
`the transfer of his interest to Miller, Chambliss first said “No, he’s my son, I don’t need a written agreement.” But when
`questioned further, he changed his answer and stated, “Yeah, there is a signed document.” When asked about the details
`of that signed document, Chambliss responded:
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`Q. . . . Do you recall what songs were listed on that document?
`A. L-O-V – I’m not sure.
`Q. Do you remember if there any other songs besides L-O-V-E that were listed?
`A. I’m not positive.
`Q. Do you know if there were more than five songs listed?
`A. I’m not positive.
`. . . .
`Q. Do you know why [Miller] was asking you to sign that document?
`A. Yes.
`Q. Why?
`A. Because he was trying to sell them [the songs].
`Q. Do you know who he was going to try to sell them to?
`A. Not right offhand. There was a lot of songs.
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`The alleged agreement was not made available to Davis, however, until August 8, 2004— the day before Chambliss’s
`second deposition—when two written agreements transferring Chambliss’s rights in the disputed compositions (but no
`others) to Miller were shown to Davis. The District Court took note that Chambliss’s vague testimony during his June
`24, 2004 deposition appeared to be inconsistent with the written agreements that he allegedly signed the day before, see
`Davis, 419 F. Supp. 2d at 498 (“Chambliss was unable to recall the day, or even the month, in which he executed the
`written agreement[s], despite the fact that [they are] dated June 23, 2004, the day before the Chambliss deposition was
`taken”), but nonetheless gave legal effect to the written agreements, see id. at 499.
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`6
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`ratify the prior oral agreement.
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`B. Procedural History
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`Davis’s complaint alleges that defendants infringed her copyright to the disputed compositions
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`by (1) recording and registering copyrights on “LOVE” and “Keep It Moving,” which were
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`substantially similar to her compositions, and (2) falsely attributing authorship to (a) Blige, Miller,
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`Holland, and Lawrence on “LOVE” and (b) Blige, Miller, and Stinson on “Keep It Moving.” Davis
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`also alleges that defendants falsely designated the origin of their goods in violation of the Lanham Act §
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`43(a), 15 U.S.C. § 1125(a);7 engaged in unfair competition; and were unjustly enriched. Finally, she
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`claims that defendants’ acts were intentionally designed to mislead the public in violation of N.Y. Gen.
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`Bus. Law §§ 349 and 350.8
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`Following the completion of discovery, defendants moved for summary judgment on the
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`ground that Chambliss had transferred his rights in the disputed compositions to Miller through an oral
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`agreement before the compositions were used by Miller, or, alternatively, on the ground that the written
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`transfer agreements conveyed the copyrights retroactively. See Davis, 419 F. Supp at 489-99.
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`Defendants argue that, as a result of the transfer agreements, Miller became a co-owner of the disputed
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`compositions as of the date of the creation of the compositions. Accordingly, they contend that,
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`because Davis cannot sue a co-owner of her copyright for infringement, Davis’s suit is barred against
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`Miller and those to whom Miller had licensed the disputed compositions (including Blige and the other
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`defendants).
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`The District Court agreed. In a memorandum and order filed November 22, 2005, it declined
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`7 Davis did not respond to defendants’ motion for summary judgment on this claim, and does not appeal the
`resulting dismissal of her Lanham Act § 43(a) claim.
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`8 N.Y. Gen. Bus. Law § 349 reads in relevant part as follows: “(a) Deceptive acts or practices in the conduct of
`any business, trade or commerce or in the furnishing of any service in this state are hereby declared unlawful.”
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`N.Y. Gen. Bus. Law § 350 reads in relevant part as follows: “False advertising in the conduct of any business,
`trade or commerce or in the furnishing of any service in this state is hereby declared unlawful.”
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`7
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`to determine whether the written ratification of a prior oral transfer could satisfy the Copyright Act’s
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`requirement that transfers of copyright ownership be in writing, 17 U.S.C. § 204(a), or whether the
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`transfer agreements indeed ratified a prior oral agreement between Chambliss and Miller. Instead, it
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`held that Chambliss could “cure past infringement” through the grant of a retroactive assignment of
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`the copyright. Davis, 419 F. Supp. 2d at 500 (quoting Silberstein v. Fox Entm’t Group, Inc., 424 F. Supp.
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`2d 616, 629 (S.D.N.Y. 2004)). Because there is no appellate case law on the issue of retroactive
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`assignment of copyright, the District Court relied on other district court opinions, among them
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`Silberstein, 424 F. Supp. 2d at 629 (holding that a retroactive license, obtained after alleged infringement
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`occurred and after institution of legal action, immunized defendant from infringement); Country Road
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`Music, Inc. v. MP3.com, Inc., 279 F. Supp. 2d 325, 329 (S.D.N.Y. 2003) (concluding that a settlement
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`agreement between defendants and co-owner granting retroactive reproduction rights barred any
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`infringement claim by remaining co-owners and cured past infringement); and Lone Wolf McQuade
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`Assocs. v. CBS Inc., 961 F. Supp. 587, 597 (S.D.N.Y. 1997) (stating that a retroactive license cures past
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`infringement). See Davis, 419 F. Supp. 2d at 499-500. Ultimately, the District Court concluded that, as
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`a result of the written retroactive assignment of rights by Chambliss to Miller, “Davis has no claim for
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`copyright infringement against defendants.” Davis, 419 F. Supp. 2d at 501. Noting that “one joint
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`owner may always transfer his interest in the work to a third party, including the grant of non-exclusive
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`licenses,” id. at 500 (citing 1 Melvin B. and David Nimmer, Nimmer on Copyright § 6.11 (2005)
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`(“Nimmer”)), the District Court reasoned that “Davis’ [alleged] status as joint owner with Chambliss,
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`who in turn transferred his interests to Miller, bars her from stating a claim for copyright infringement
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`against Miller, or any of the other defendants, [who are] his licensees.” Id. Davis’s timely appeal
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`followed.
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` DISCUSSION
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`In reviewing a grant of summary judgment, we draw all factual inferences in favor of the non-
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`8
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`moving party and review the matter de novo. See, e.g., Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292,
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`300 (2d Cir. 2003). Summary judgment is only appropriate where there are no genuine issues of
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`material fact and the moving party is entitled to judgment as a matter of law. See, e.g., Kapps v. Wing, 404
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`F.3d 105, 112 (2d Cir. 2005). Because the District Court’s grant of summary judgment was based on its
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`conclusions about the legal effect of the transfer agreements—a matter that our Court has not yet
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`addressed—resolution of the matter before us will depend on our own analysis of the relevant
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`copyright law. See Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 775 (2d Cir. 1992).
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`The question of whether one joint owner of a copyright can retroactively transfer his ownership
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`by a written instrument, and thereby cut off the accrued rights of the other owner to sue for
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`infringement, is an issue of first impression in the courts of appeals. Although the Copyright Act itself
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`is silent on the issue of retroactive transfer or license, we conclude that such retroactive transfers violate
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`basic principles of tort and contract law, and undermine the policies embodied by the Copyright Act.
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`A. General Principles of Copyright Law
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`We revisit some general principles of copyright law in order to place the instant case in its legal
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`context.
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` Copyright, of course, is a federal grant of a property interest in the production, replication,
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`publication, and distribution of certain classes of “original works of authorship fixed in any tangible
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`medium of expression,” 17 U.S.C. § 102(a), including musical compositions, Id. § 102(a)(2).9 “Copyright
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`in a work protected under [the Copyright Act] thus initially vests in the author or authors of the work.”
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`17 U.S.C. § 201(a). “The authors of a joint work are co[-]owners of copyright in the work,” id., and, as
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`described in the House Report accompanying passage of the Copyright Act, are to “be treated generally
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`9 The United States Constitution confers on Congress the power “[t]o promote the Progress of Science and
`useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and
`Discoveries.” U.S. Const. art 1, § 8, cl. 8. In the exercise of that power, Congress regulates copyright of creative works
`through the Copyright Act.
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`9
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`as tenants in common, with each co[-]owner having an independent right to use or license the use of a
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`work, subject to a duty of accounting to the other co[-]owners for any profits.” H.R. Rep. No. 94-1476,
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`at 121 (1976); see Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998) (“Joint authorship entitles the co-
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`authors to equal undivided interests in the whole work—in other words, each joint author has the right
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`to use or to license the work as he or she wishes, subject only to the obligation to account to the other
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`joint owner for any profits that are made.”). We long ago observed that
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`[t]he rights of property which the [co-owner] had were transferable by sale and delivery,
`and there is no distinction, independent of statute, between [copyrighted property] and
`property of any other description. The right to sell and transfer personal property is an
`inseparable incident of the property. An author or proprietor of a literary work or
`manuscript [or other work protected by the Copyright Act] possesses such a right of
`sale as fully and to the same extent as does the owner of any other piece of personal
`property. It is an incident of ownership.
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` Maurel v. Smith, 271 F. 211, 214 (2d Cir. 1921).
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`Like other forms of property ownership, copyright ownership is a “bundle of discrete rights”
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`regarding the owner’s ability to use his property. See Faulkner v. Nat’l Geographic Enters., Inc., 409 F.3d
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`26, 35 (2d Cir. 2005) (“The Supreme Court stressed that in enacting the 1976 revision [of the Copyright
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`Act], Congress rejected the doctrine of indivisibility, recasting the copyright as a bundle of discrete
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`exclusive rights, 17 U.S.C. § 106 (1994 ed. and Supp. V), each of which may be transferred . . . and
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`owned separately, § 201(d)(2).” (quoting New York Times v. Tasini, 533 U.S. 483, 495-96 (2001)) (internal
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`quotation marks omitted)). These rights include “reproduc[ing,]” “prepar[ing] derivative works,”
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`“distribut[ing,]” “perform[ing,]” or “display[ing]” a creative work. 17 U.S.C. § 106. Owners may
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`license others to exercise these rights or assign the rights to others. T.B. Harms, 339 F.2d at 825. In
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`addition, an owner may sue for infringement those who exploit the creative work without permission
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`or assignment. See 17 U.S.C. § 501(b) (“The legal or beneficial owner of an exclusive right under a
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`copyright is entitled . . . to institute an action for any infringement of that particular right committed
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`while he or she is the owner of it.”); Knickerbocker Toy Co., Inc. v. Azrak-Hamway Int’l., Inc., 668 F.2d 699,
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`10
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`702 (2d Cir. 1982) (stating that “[t]o prevail on a claim of copyright infringement, a plaintiff must show
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`both ownership of a valid copyright and copying”).
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`The right to prosecute an accrued cause of action for infringement is also an incident of
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`copyright ownership. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991).
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`Moreover, it is a right that may be exercised independently of co-owners; a joint owner is not required
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`to join his other co-owners in an action for infringement. See 17 U.S.C. § 501(b) (noting that a court
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`“may require” an owner of a copyright to serve notice on a person who is shown “to have or claim an
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`interest in the copyright” and “may require the joinder . . . of any person having or claiming an interest
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`in the copyright”) (emphasis added); Edward Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 268, 269
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`(2d Cir. 1944) (“It was early decided that the holder of the legal title to a copyright might sue without
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`joining others who had an equitable interest in the copyright.”); Copyright.net Music Publ’g LLC v.
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`MP3.com, 256 F. Supp. 2d 214, 218 (S.D.N.Y. 2003) (holding that copyright infringement plaintiffs were
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`not obligated to join alleged co-owners of compositions at issue).
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`Early in the twentieth century, we stated in the copyright context the venerable principle of the
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`law of property that, while an owner may convey any of his rights to others permanently or temporarily,
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`he may not convey more than he owns. Maurel, 271 F. at 215 (“[W]hen the [co-owners] granted rights
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`to [a music publisher], they could but transmit what they had to part with, and they could not transfer
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`what interest the [other co-owner] had.”); see also Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91, 93 (2d
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`Cir. 1981) (“[T]he proprietor of a derivative copyright cannot convey away that which he does not own
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`. . . .”). Accordingly, an owner may give a license to someone to exploit the work in some way,
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`provided he owns that particular copyright interest. 17 U.S.C. § 106. An owner may also convey his
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`interest in prosecuting accrued causes of action for infringement. ABKCO Music, 944 F.2d at 980; see
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`also Prather v. Neva Paperbacks, Inc., 410 F.2d 698, 700 (5th Cir. 1969) (noting the effectiveness of an
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`assignment of accrued causes of action for copyright infringement).
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`11
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`An owner may not, however, convey the interests of his fellow co-owners without their express
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`written consent, even if the transferee has no notice of the non-consenting owners’ interest. See Crosney
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`v. Edward Small Productions, 52 F. Supp. 559, 561 (S.D.N.Y. 1942) (“One [co-owner of a copyright]
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`cannot bind the interest of another, although he purports to do so, in the absence of assent or
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`ratification upon her part.” (internal quotation marks omitted)). A co-owner’s ability to grant licenses
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`to third parties unilaterally will therefore depend on the type of licenses granted. There are two general
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`categories of licenses: non-exclusive licenses, which permit licensees to use the copyrighted material
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`and may be granted to multiple licensees; and exclusive licenses, which grant to the licensee the
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`exclusive right—superior even to copyright owners’ rights—to use the copyrighted material in a
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`manner as specified by the license agreement.10 A valid license of either sort immunizes the licensee
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`from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with
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`the licensor. See Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998) (“A copyright owner who grants a
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`nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright
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`infringement.”); United States Naval Institute v. Charter Commc’ns, Inc., 936 F.2d 692, 695 (2d Cir. 1991)
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`(“[A]n exclusive licensee of any of the rights comprised in the copyright, though it is capable of
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`10 Under current copyright law, exclusive licenses are recognized as a type of an ownership interest, conveying
`a particular exclusive right of copyright. See 17 U.S.C. § 101 (“‘Copyright owner’, with respect to any one of the
`exclusive rights comprised in a copyright, refers to the owner of that particular right.”). Exclusive licensees may sue
`without joining the copyright owners, 17 U.S.C. § 501, and exclusive license agreements must be in writing, 17 U.S.C. §
`204(a); see also Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 36 (2d Cir. 1982). The differences between an
`“exclusive” license and an assignment or transfer of copyright ownership interest have diminished to the point that the
`terms are nearly synonymous. See 17 U.S.C. § 101 (“A ‘transfer of copyright ownership’ is an assignment, mortgage,
`exclusive license, or any other conveyance . . . of a copyright or 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.”). However, although it is
`possible to share ownership of a copyright interest as co-owners, an exclusive licensee of an interest is the only one who
`may exercise that right. “Each author’s rights in a joint work are non-exclusive, whereas a sole author retains exclusive
`rights in his or her own work.” Thomas, 147 F.3d at 205 (internal citations omitted). Therefore, in order to convey
`exclusive rights, all co-owners must agree to convey their shares of the sam e right.
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`Under the earlier version of the copyright statute, the Copyright Act of 1909, copyright ownership was
`generally considered indivisible; thus, the individual rights comprising the bundle of copyright property rights could not
`be separately assigned, and exclusive licenses granted more limited rights— for example, exclusive licensees had to join
`copyright owners in suits for infringement. Apparently, because exclusive licenses were not transfers of ownership, oral
`agreements granting exclusive licenses were permissible. See 3 Nimmer §10.01[C].
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`12
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`breaching the contractual obligations imposed on it by the license, cannot be liable for infringing the
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`copyright rights conveyed to it.”); see also McKay v. Columbia Broad. Sys. Inc., 324 F.2d 762, 763 (2d Cir.
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`1963) (“[A] license from a co-holder of a copyright immunizes the licensee from liability to the other
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`co-holder for copyright infringement.”).
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`A co-owner may grant a non-exclusive license to use the work unilaterally, because his co-owners
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`may also use the work or grant similar licenses to other users and because the non-exclusive license
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`presumptively does not diminish the value of the copyright to the co-owners. See Meredith v. Smith, 145
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`F.2d 620, 621 (9th Cir. 1944) (noting that a “co-owner had the right to give permission” for non-
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`exclusive use of a copyrighted work); 1 Nimmer § 6.10[A], 6-34. In any event, a co-owner who grants a
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`non-exclusive license is accountable to his co-owner for income gained by the grant of the license.
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`Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 223 F.2d 252, 254 (2d Cir. 1955). However, a licensee is
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`not liable to a non-licensing co-owner for use authorized by the license, because the licensee’s rights
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`rest on the license conveyed by the licensing co-owner. See McKay 324 F.2d at 763. Likewise, a licensee
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`need not pay any royalties or other consideration to the co-owners who are not parties to the license
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`agreement. See Piantadosi v. Loew’s, Inc., 137 F.2d 534, 537 (9th Cir. 1943) (holding that a third party
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`granted a non-exclusive copyright license by one co-owner had no duty to the other co-owner); 1
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`Nimmer § 6.12(c)(3). A non-exclusive license conveys no ownership interest, and the holder of a
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`nonexclusive license may not sue others for infringement. See Eden Toys, 697 F.2d at 32 (“The
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`Copyright Act authorizes only two types of claimants to sue for copyright infringement: (1) owners of
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`copyrights, and (2) persons who have been granted exclusive licenses by owners of copyrights.”). An
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`exclusive license, on the other hand, conveys an ownership interest. See Campbell v. Trustees of Stanford
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`University, 817 F.2d 499, 504 (9th Cir. 1987). Accordingly an exclusive licensee may sue others for
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`infringement, including the licensor if the licensor infringes on the exclusive right he granted the
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`licensee. See U.S. Naval Institute, 936 F.2d at 695 (citing 3 Nimmer § 12.02). Because no one other than
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`the exclusive licensee may exercise the right specified by the exclusive license agreement, the interests
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`of the other co-owners to use or grant non-exclusive licenses to the work are necessarily impaired. An
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`exclusive license thus destroys the value of a copyright to