Minden Pictures, Inc. v. John Wiley & Sons, Inc.

Filing 50

ORDER by Judge Edward M. Chen Granting in Part and Denying in Part 31 Defendant's Motion to Dismiss. (emcsec, COURT STAFF) (Filed on 5/13/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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MINDEN PICTURES, INC.,

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Plaintiff,
ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT’S
MOTION TO DISMISS

v.

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For the Northern District of California

United States District Court

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No. C-12-4601 EMC

JOHN WILEY & SONS, INC.,

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Defendant.
___________________________________/

(Docket No. 31)
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I.

INTRODUCTION

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In this action, Plaintiff, a stock photography agency, brings suit against Defendant, an

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educational publisher, alleging that Defendant has exceeded usage restrictions in photograph

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licensing agreements, and bringing claims for copyright infringement. Pending before the Court is

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Defendant’s motion to dismiss this action for lack of jurisdiction under Rule 12(b)(1). In another

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action filed by Plaintiff on similar grounds against a different educational publisher, Judge Alsup

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recently granted summary judgment, finding that Plaintiff lacked standing to sue under the

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Copyright Act because it did not have the necessary ownership interest in the photographs that were

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allegedly infringed. Defendant contends that given the overlap of photographers involved in the two

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actions and the similarity in the underlying contracts between Plaintiff and the photographers, Judge

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Alsup’s decision has collateral estoppel effect on the question of Plaintiff’s standing to bring suit in

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this case. Plaintiff opposes, arguing that since Judge Alsup declined to consider one set of relevant

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contracts – the original agency agreements between Plaintiff and the photographers – as a sanction

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for discovery abuses, the effect of those contracts was not fully litigated in that case. Plaintiff

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additionally argues that it has standing based on a recently executed set of agreements with the

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photographers whose work was allegedly infringed.

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At the May 9, 2013 hearing on this matter, the parties agreed that in order to properly address

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the effect of the agency agreements between Plaintiff and the various photographers, they wished to

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take additional discovery and file cross motions for summary judgment addressing whether these

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agreements confer standing to bring suit under the Copyright Act. The Court thus DENIES

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Defendant’s motion without prejudice as to the effect of the agency agreements, and rules as follows

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on the remaining issues raised by Defendant’s motion.

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II.

LEGAL, FACTUAL & PROCEDURAL BACKGROUND

Plaintiff is a stock photography agency that licences photographs to publishers, including

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For the Northern District of California

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Defendant. Compl. ¶ 2. Plaintiff acts as an agent for the photographers who created the images.

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Declaration of Richard L. Minden (“Minden Decl.”) ¶ 3 (Docket No. 39). Plaintiff licensed various

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photographs to Defendant, using licensing agreements that placed limits on the number of

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reproductions, distribution area, language, duration, and/or media in which Defendant was permitted

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to reproduce the images. Compl. ¶ 8. In the instant suit, Plaintiff brings claims of copyright

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infringement, alleging that Defendant has exceeded the limits of in the licensing agreements and

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used the photographs for unlicensed purposes. Compl. ¶¶ 13-15, 27-35. Plaintiff also alleges that

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Defendant transmitted the photographs to unlicensed third parties with the knowledge that those

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parties intended to use the photographs without authorization. Compl. ¶ 20-23.

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Plaintiff attaches to the complaint copies of 228 images by 36 photographers that it alleges

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were the subject of Defendant’s infringement. Compl. ¶¶ 8, 13, Ex. 1; Declaration of Robert W.

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Crockett (“Crockett Decl.”) ¶ 2 (Docket No. 40.).

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A.

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Standing Under the Copyright Act
Under the Copyright Act,
The legal or beneficial owner of an exclusive right under a copyright
is entitled, subject to the requirements of section 411, to institute an

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action for any infringement of that particular right committed while he
or she is the owner of it.1

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17 U.S.C. § 501. In order to “be entitled to sue for copyright infringement, the plaintiff must be the

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legal or beneficial owner of an exclusive right under a copyright.” Silvers v. Sony Pictures Entm’t,

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Inc., 402 F.3d 881, 884 (9th Cir. 2005) (internal quotation marks omitted).

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The Copyright Act provides an exhaustive list of six “exclusive rights” held by copyright
owners:

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Subject to sections 107 through 122, the owner of copyright under this
title has the exclusive rights to do and to authorize any of the
following:

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(1)

to reproduce the copyrighted work in copies or phonorecords;

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(2)

to prepare derivative works based upon the copyrighted work;

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(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.

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17 U.S.C. § 106; see also Silvers, 402 F.3d at 886-87 (recognizing that this list is exhaustive). The

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various exclusive rights provided for under this section may be transferred and owned separately.

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Id. § 201(d).

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Since the right to bring suit for an accrued claim is not one of the “exclusive rights”

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identified in § 106, the Ninth Circuit has held that a person may not bring suit for copyright

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infringement where they own only the “bare right to sue,” but do not own any of the exclusive rights

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Section 411 sets out requirements concerning pre-registration of copyrights prior to the
initiation of legal action. 17 U.S.C. § 411.

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provided for in § 106. Silvers, 402 F.3d at 885-86. Whether an agreement conveys any of the

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exclusive rights under the Copyright Act or merely a bare right to sue is determined by looking at

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the substance of an agreement, and not just the label put on the agreement. Nafal v. Carter, 540 F.

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Supp. 2d 1128, 1142 (C.D. Cal. 2007) aff’d, 388 F. App’x 721 (9th Cir. 2010). While two or more

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parties can be co-owners of certain rights, where they do not have “an independent and equivalent

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power to exercise [their] rights” courts have concluded that there is not a true ownership interest. Id.

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If an assignment does not actually grant an ownership interest, but is instead a “disguised

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assignment of a cause of action,” the assignee will lack standing to bring suit under the Copyright

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Act. Nafal v. Carter, 388 F. App’x 721, 723 (9th Cir. 2010).
B.

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Agency Agreements
Prior to licensing photographs to publishers, Plaintiff enters into agency agreements with the

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photographers who created the images, or the photographers’ representatives. Minden Decl. ¶ 3.

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Plaintiff argues that under these agreements, photographers assign to Plaintiff three of the exclusive

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rights recognized under § 106. As the Court is deferring ruling on the effect of these agreements, no

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detailed summary of their contents is necessary here. In short, though the various agency

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agreements differ in some respects, they generally provide that Plaintiff is authorized to license the

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photographer’s photographs to third parties within certain parameters and subject to certain

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exceptions or limitations. Minden Decl. Ex. 1.

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C.

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Copyright Assignments
Plaintiff also claims standing to sue based on copyright assignment agreements executed

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with the photographers prior to filing the instant suit. Pl.’s Opp. at 4-5. These agreements appear to

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have been largely executed with the various photographers between 2010 and 2012.2 Minden Decl.

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Ex. 2. The majority of these contracts are identical, and read:

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The only exception to this time frame is the copyright assignment pertaining to
photographers Patricia and Michael Fogden. Docket No. 39-10 at 27. Michael Fogden signed the
agreement in February 2010, but Patricia Fogden did not sign the agreement until March 29, 2013.
Id.

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Copyright Assignment, Accrued Causes of Action, and Litigation
Agreement

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The undersigned, the sole owner of the copyrights in the undersigned’s
images (‘the Images’) selected by Minden Pictures, Inc. (‘Agency’)
and included in its collection, hereby assigns to Agency co-ownership
of all copyrights in the Images. This assignment authorizes Agency,
in its sole discretion, to present, litigate and settle any accrued or later
accruing claims, causes of action, choses in action – which is the
personal right to bring a case – or lawsuits, brought by Agency to
address unauthorized uses of the Images by licensees of Agency, as if
Agency were the undersigned. Agency agrees to reassign its coownership of the Images back to the undersigned immediately upon
the conclusion of any such litigation.

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Any proceeds obtained by settlement or judgment for said claims
shall, after deducting all costs, expenses and attorney’s fees, be
divided as provided in the Photographer’s Agency Agreement.

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Minden Decl. Ex. 2.

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Plaintiff has not submitted copyright assignments for one of the photographers whose images

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are at issue in this suit, Pete Oxford. Additionally, three of the photographers involved with this suit

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executed copyright assignments that were limited to actions brought against Houghton Mifflin

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Publishing Company. Minden Decl. Ex. 2 at 5, 14, 31. It would thus appear that Plaintiff has not

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provided copyright assignments that are applicable to this lawsuit for four of the photographers.

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D.

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Minden Pictures v. Pearson
In November 2011, Plaintiff filed suit against Pearson Education, Inc., alleging copyright

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infringement on similar grounds to those asserted in this suit. Minden Pictures, Inc. v. Pearson

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Educ., Inc., C11-5385, Docket No. 1 (“Pearson”). This action involved photographs by 133

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photographers, 32 of whom are involved in this case. Crockett Decl. ¶ 2. There are four

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photographers involved in this case whose photographs were not included in the Pearson action. Id.

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While Plaintiff points out the fact that not all photographers involved in this action were involved in

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the Pearson case, it does not specifically identify the photographers, or argue that these

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photographers had agency agreements or copyright assignments that varied from the other

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photographers in any meaningful way. Pl.’s Opp. at 6 n.17.

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On March 5, 2013, Judge Alsup granted summary judgment for the defendant in Pearson,

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holding that Plaintiff did not have standing to sue under the Copyright Act.3 Minden Pictures, Inc.

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v. Pearson Educ., Inc., ___ F. Supp. 2d ___, C 11-05385 WHA, 2013 WL 812412 (N.D. Cal. Mar.

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5, 2013). Plaintiff had argued there, as it does here, that it had standing based on both the agency

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agreements and the copyright assignments. Id. at *1.

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Judge Alsup found that Plaintiff was precluded from relying on the agency agreements to

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establish standing because it had been delinquent in producing those agreements. Id. at *3-4. The

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court found that there were several times in the litigation where Plaintiff was required to identify or

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produce the agency agreements—including in response to an order of the court to attach to the
second amended complaint all agreements relevant to Plaintiff’s standing to sue—but that Plaintiff

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had failed to do so. Id. Judge Alsup specifically rejected Plaintiff’s argument that it had initially

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failed to appreciate the relevance of the agreements, finding that internal correspondence indicated

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that Plaintiff understood the significance of the agency agreements but had “made a strategic choice

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at the outset of this litigation not to disclose the agency agreements and instead to rely solely on the

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assignment agreements.” Id. at *4. Given Plaintiff’s “multiple violations of the Court’s orders and

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the discovery rules,” Judge Alsup found that “a lesser remedy than preclusion would not be

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appropriate” and struck the agency agreements from the record. Id. at *4-5.

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Judge Alsup then turned to the copyright assignments, and found that under Silvers and

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Nafal, these agreements “simply disguise an assignment of a bare right to sue.” Id. at *5. The court

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noted that the assignments conveyed no right to royalties outside of the litigation, and that the

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purported ownership of the photographs reverted back to the photographer immediately upon the

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termination of the litigation. Id. at *6. The court found that the copyright assignments were

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substantially similar to the sham assignments rejected by the court in Nafal, and that when “viewed

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Plaintiff also notes that Judge Alsup had earlier denied a motion to dismiss that was based
in part on the argument that Plaintiff lacked standing under the Copyright Act. Pl.’s Opp. at 6-7. In
that order, Judge Alsup concluded that Plaintiff had alleged sufficient facts to find that it had
standing to sue. Crockett Decl. Ex. 5 at 5. There is no discussion of the effect of any of the
agreements relevant to the instant motion. Id. In any case, as this was not a final determination of
that action, this order cannot be the basis for collateral estoppel, and is irrelevant to the instant
motion.

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as a whole, the clear and unambiguous intent of the parties was to assign to Minden the bare right to

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sue.” Id.

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The court also considered parole evidence offered by both parties on the meaning of the

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copyright assignments. Plaintiff had submitted declarations from a subset of involved photographers

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stating that each “intended to make ‘whatever assignments are necessary to accomplish [the]

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purpose’ of ‘pursuing this action against Pearson for its infringements of images licensed by Minden

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Pictures’. . . , and to assign ‘whatever rights are necessary to confer standing on Minden Pictures to

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assert and prosecute copyright infringement claims, including an assignment of co-ownership of the

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copyrights on the photographs in question.’” Id. at *7 (quoting declarations). Considering the
declarations, the court found that:

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These statements are clearly doublespeak tainted by the influence of
litigation. They do not evince any intent to transfer any specific legal
(or beneficial) ownership to Minden. Rather, the objective was to
create the mere appearance of standing in this lawsuit. They do not
render the copyright assignments reasonably susceptible of the
interpretation that they transferred legal title in the underlying
copyrights to Minden.

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Id.
The conclusion that the agreements were intended to merely convey the right to bring suit

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was further bolstered by evidence submitted by the defendant in the form of emails from Plaintiff’s

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president Larry Minden to individual photographers. In these emails, Mr. Minden asked the

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photographers to execute the copyright assignments because Plaintiff’s counsel was concerned that

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the agency agreements were insufficient to confer standing. Id. He explained the assignments:

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What this amendment does is assign Minden Pictures coownership of
copyrights of images we represent solely for actions or lawsuits
brought by Minden Pictures to address unauthorized image use by our
clients. My understanding is this is the sole purpose this assignment
of co-ownership may be used for.

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Id. (quoting email) (emphasis in Pearson order). The court found that these emails clearly indicated

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that the copyright assignments were intended only to convey the right to sue, and not to convey legal

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title. Id.

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Finding that both the text of the agreement and the submitted extrinsic evidence indicated
that the copyright assignments conveyed only the bare right to sue, the court thus found that Plaintiff

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lacked standing to sue under the Copyright Act, and granted summary judgment in favor of the

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defendants. Id. at *8. The court noted that this decision did not bar the photographers who owned

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the images from themselves bringing suit for copyright infringement. Id. at *9.

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Plaintiff has appealed the grant of summary decision in Pearson.

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E.

Subsequent Assignment of Rights
After Judge Alsup’s order granting summary judgment in Pearson, Plaintiff executed another

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round of agreements with the photographers whose images are at issue in this suit. Minden Decl.

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Ex. 3, 3-S. The text of these agreements, which all appear to have been executed after Defendant

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filed the instant motion, is generally identical:
Copyright and Accrued Causes of Action Assignment

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This agreement memorializes the relationship between the
undersigned parties and governs all photographic images authored by
the undersigned photographer (“Photographer”) that have been
included in the collection of Minden Pictures, Inc. (“Minden”) and
licensed by Minden to John Wiley & Sons, Inc. (“Wiley”), including
those to which Photographer holds the copyrights and those to which
co-ownership of the copyrights was previously assigned to Minden
(“the Images”).

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Photographer hereby assigns to Minden co-ownership of the
copyrights in the Images not previously assigned to Minden. Minden
hereby assigns to Photographer co-ownership of the copyrights in the
Images previously assigned to Minden. These assignments are
intended to vest in both parties a co-ownership interest in the
copyrights to the Images. These assignments include the right of both
parties to authorize the reproduction of the Images in copies and the
right to authorize the distribution and display of copies of the Images
to the public, and affirms Photographer’s prior assignment of these
rights to Minden effective the date the Images were included in
Minden’s collection.

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Photographer assigns to Minden all rights, title and interest in any
accrued or later accruing claims, causes of action, choses in action –
which is the personal right to bring a case – or lawsuits brought
against Wiley to enforce copyrights in the Images. This assignment
authorizes Minden, in its sole discretion, to present, litigate and settle
any claims against Wiley relating to unauthorized uses of the Images.
Any proceeds obtained by settlement or judgment for said claims
shall, after deducting costs, expenses of litigation and attorneys’ fees,
be divided as provided in Photographer’s agency agreement with
Minden.

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Minden Decl. Ex. 3 at 2 of 34.4 These assignment agreements, however, are missing for four of the

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photographers: Richard L. Minden, Anup Shah, Eddy Marissen, and Aad Schenck. Minden Decl.

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Ex. 3.

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III.

DISCUSSION

subject matter jurisdiction over the claim. Fed. R. Civ. P. 12(b)(1). Thus, Rule 12(b)(1) is the

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appropriate vehicle for dismissing a claim where the plaintiff lacks standing to sue under the

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Copyright Act. Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1140 (9th Cir. 2003). Once

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the moving party has asserted lack of subject matter jurisdiction, the burden is on the party asserting

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jurisdiction; the court will presume that there is no jurisdiction until proved otherwise. Kokkonen v.

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A motion to dismiss brought under Rule 12(b)(1) may be granted where the court lacks

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United States District Court

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Guardian Life Ins. Co. of Am., 511 U.S. 375, 377 (1994). “A jurisdictional challenge under Rule

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12(b)(1) may be made either on the face of the pleadings or by presenting extrinsic evidence.” Id. at

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1139.

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A.

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Collateral Estoppel Effect of Minden Pictures v. Pearson
Defendant argues that Plaintiff is collaterally estopped from asserting standing under the

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Copyright Act because Judge Alsup’s order in Pearson determined that the agency agreements and

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copyright assignments were not sufficient to confer standing. Def.’s Mot. at 7-9.

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Issue preclusion prevents a party from relitigating an issue decided in
a previous action if four requirements are met:

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(1)

there was a full and fair opportunity to litigate the issue in the
previous action;

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(2)

the issue was actually litigated in that action;

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(3)

the issue was lost as a result of a final judgment in that action;
and

(4)

the person against whom collateral estoppel is asserted in the
present action was a party or in privity with a party in the
previous action.

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The agreement for photographer Carr Clifton varies from this standard template in ways
that are ultimately irrelevant to this Court’s analysis on this motion. See Minden Decl. Ex. 3 at 3 of
34.

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Kendall v. Visa U.S.A., Inc., 518 F.3d 1042, 1050 (9th Cir. 2008). Collateral estoppel “has the dual

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purpose of protecting litigants from the burden of relitigating an identical issue with the same party

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or his privy and of promoting judicial economy by preventing needless litigation.” Parklane

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Hosiery Co., Inc. v. Shore, 439 U.S. 322, 326 (1979). In discussing the effect of collateral estoppel,

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the Ninth Circuit has recognized that “once an issue is raised and determined, it is the entire issue

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that is precluded, not just the particular arguments raised in support of it in the first case.” Kamilche

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Co. v. United States, 53 F.3d 1059, 1063 (9th Cir. 1995) (emphasis in original) (quoting Yamaha

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Corp. of America v. United States, 961 F.2d 245, 254 (D.C. Cir.1992)), opinion amended on other

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grounds, Kamilche v. United States, 75 F.3d 1391 (9th Cir. 1996).
Federal courts permit non-mutual collateral estoppel, also known as defensive collateral

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estoppel, which “occurs when a defendant seeks to prevent a plaintiff from asserting a claim the

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plaintiff has previously litigated and lost against another defendant.” Id. at 326 n.4. Thus,

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“[f]indings made in one proceeding in which a party has had a full and fair opportunity to litigate

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may be used against that party in subsequent litigation.” Masson v. New Yorker Magazine, Inc., 85

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F.3d 1394, 1400 (9th Cir. 1996).

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Plaintiff does not appear to contest the collateral estoppel effect of the Pearson decision as to

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the interpretation of the copyright assignments. Pl.’s Opp. at 12. In any case, all of the requirements

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of collateral estoppel appear to be met. Plaintiff was a party in Pearson, it had a full and fair

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opportunity to litigate the effect of the copyright assignments, it did in fact present its arguments on

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this issue, and the order granting summary judgment was a final judgment on the merits. The only

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possible argument against the full application of collateral estoppel here (which Plaintiff does not

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explicitly raise), is that according to the parties there are four (unidentified) photographers whose

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work is the subject of the alleged infringement here whose work was not implicated in Pearson.

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Since these four photographers have copyright assignments that are verbatim identical to the

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assignments signed by the photographers in Pearson, however, the issue here is identical, and this

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Court finds that collateral estoppel applies.

Collateral Estoppel Effect as to Copyright Assignments

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In the alternative, even if collateral estoppel does not apply as to these four photographers,

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this Court finds Judge Alsup’s reasoning on the effect of these agreements persuasive, and follows

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Pearson in finding that these agreements convey nothing more than a bare right to sue, and thus

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cannot be the basis for standing under the Copyright Act.

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This Court thus finds that Plaintiff may not assert standing to sue based on the copyright

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assignments it executed with the photographers between 2010 and 20125 which are subjects of the

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instant case.6

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2.

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Plaintiff’s main argument against the application of collateral estoppel is that Pearson does

Collateral Estoppel Effect as to Agency Agreements

not preclude consideration of the agency agreements, since their effect was not actually litigated.

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Pl.’s Opp. at 12. Plaintiff contends that because Judge Alsup struck the agency agreements as a

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sanction for Plaintiff’s discovery misconduct, “the Court did not address Minden’s contention that it

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has standing to sue for copyright infringement for the independent reason that it owned ‘exclusive

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rights’ under 17 U.S.C. § 106 at the time of the alleged infringements.” Pl.’s Opp. at 12-13.

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This Court recognizes that there are cases indicating that collateral estoppel may apply even

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where the issue was decided against a party in the previous case as a sanction for litigation

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misconduct. See In re Daily, 47 F.3d 365, 368 (9th Cir. 1995); United States v. Gottheiner (In re

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Gottheiner), 703 F.2d 1136 (9th Cir.1983). Even where the formal requirements of collateral

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estoppel are met, however, the Court has discretion to deny application of the doctrine where it

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deems appropriate in light of the facts of the case. In re Daily, 47 F.3d at 368 n.6. In this case,

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Plaintiff’s misconduct in Pearson was not sufficiently severe to justify extending the sanction

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applied in that case here. Particularly given that Defendant asks us to apply non-mutual collateral

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estoppel here, this Court is concerned about the draconian consequences of forever precluding

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Plaintiff from bringing suit against any defendant where the suit is based on the same or

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As noted above, this group of assignments includes the assignment signed by Michael
Fogden on February 24, 2010, and by Patricia Fogden on March 29, 2013. Docket No. 39-10 at 27.
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Though the Pearson decision is currently on appeal, a final judgment retains preclusive
effect while appeal is pending. Collins v. D.R. Horton, Inc., 505 F.3d 874, 882 (9th Cir. 2007).

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substantially similar agreements to those at issue in Pearson. Accordingly, this Court declines to

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give the Pearson decision collateral estoppel effect as to the impact of the agency agreements on

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Plaintiff’s standing to sue under the Copyright Act. As discussed above, the parties have agreed to

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conduct further discovery related to the agency agreements, and to then file cross motions for

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summary judgment on the question of whether they confer standing on Plaintiff.

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B.

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Effect of Subsequent Assignments
Plaintiff argues that even if it is collaterally estopped from asserting standing based on the

obtained in March and April of 2013. Pl.’s Opp. at 18-23; Minden Decl. Ex. 3. Though these

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assignments were executed after the initiation of this action (and after the filing of the instant

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For the Northern District of California

copyright assignments and agency agreements, it has standing because of the new assignments it

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United States District Court

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motion), Plaintiff argues that it should nonetheless be permitted to cure any deficiency in the

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assignment of rights and that such assignment should relate back to the date the complaint was filed.

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Pl.’s Opp. at 20-21.

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Whether a plaintiff has standing to file suit is evaluated by looking to “the facts as they exist

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when the complaint is filed.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 571 n.4 (1992)

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(emphasis in original). See Clark v. City of Lakewood, 259 F.3d 996, 1006 (9th Cir. 2001)

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(“Standing is determined by the facts that exist at the time the complaint is filed.”). See also

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Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 832 (1989) (statute permitting amendment of

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defective allegations of jurisdiction “allows appellate courts to remedy inadequate jurisdictional

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allegations, but not defective jurisdictional facts”); Righthaven LLC v. Hoehn, ___ F.3d ___,

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11-16751, 2013 WL 1908876 (9th Cir. May 9, 2013) (noting that while there are some limited

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exceptions to the rule that standing is determined as of the time the complaint is filed, “permitting

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standing based on a property interest acquired after filing is not one of them”).

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In a series of cases analogous to the case at bar, a Nevada district court has rejected

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arguments that a subsequent assignment of copyright can confer standing where the assignment of

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rights in place at the time the suit was filed had conferred only a bare right to sue. Righthaven LLC

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v. Allec, 2:11-CV-00532-KJD, 2012 WL 909832 (D. Nev. Mar. 16, 2012); Righthaven, LLC v.

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Hyatt, 2:10-CV-01736-KJD, 2011 WL 3652532 (D. Nev. Aug. 19, 2011); Righthaven LLC v.

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Mostofi, 2:10-CV-1066-KJD-GWF, 2011 WL 2746315 (D. Nev. July 13, 2011). In those cases, the

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court had already determined that the assignment of rights that was in effect at the time the

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complaint was filed did not confer standing to sue because it assigned to the plaintiff only the bare

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right to sue. The plaintiff and the original copyright holder then executed an amendment to the

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original assignment that he claimed addressed the problem. The court in Righthaven LLC v. Mostofi

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explained why this argument was unavailing:

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Notwithstanding the actual transaction that occurred, Plaintiff argues
that the amendment it executed with Stephens Media on May 9, 2011
fixes any possible errors in the original SAA that would prevent
Plaintiff from having standing in this matter. Specifically, Plaintiff
alleges that this amendment further clarifies and effectuates, “to the
extent not already accomplished, what has at all times been the intent
of the parties – to transfer full ownership in copyright,” to Plaintiff.
This amendment, however, cannot create standing because “[t]he
existence of federal jurisdiction ordinarily depends on the facts as they
exist when the complaint was filed.” Lujan v. Defenders of Wildlife,
504 U.S. 555, 571 n. 4 (1992) (quoting Newman–Green, Inc. v.
AlfonzoLarrain, 490 U.S. 826, 830 (1989)) (emphasis in Lujan).
Although a court may allow parties to amend defective allegations of
jurisdiction, it may not allow the parties to amend the facts
themselves. Newman–Green, 490 U.S. at 830. As an example, a party
who misstates his domicile may amend to correctly state it. This is an
amendment of the allegation. However, that party is not permitted to
subsequently move in order to change his domicile and amend
accordingly. This would be an amendment of the jurisdictional facts,
which is not allowed. See id. Here, Plaintiff and Stephens Media
attempt to impermissibly amend the facts to manufacture standing.
Therefore, the Court shall not consider the amended language of the
SAA, but the actual assignment and language of the SAA as it existed
at the time the complaint was filed.

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Righthaven LLC v. Mostofi, 2011 WL 2746315, at *3. Plaintiff offers no convincing argument

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distinguishing the Righthaven cases, or establishing why it is entitled to an exception to the general

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rule that standing is determined by the facts as they exist at the time the complaint is filed.

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Plaintiff relies on Co-opportunities, Inc. v. Nat’l Broad. Co., Inc., 510 F. Supp. 43 (N.D. Cal.

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1981). In that case, the plaintiff had acquired transfer of copyright before filing suit, but the court

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found that this conveyance did not include an assignment of existing causes of action for

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infringement. Id. at 46. The defendant filed a motion for summary judgement arguing that the

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infringement had occurred before the assignment of copyright, and that without the assignment of

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existing causes of action, the plaintiff thus lacked standing to bring suit. Id. After the motion was

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filed, the plaintiff and its predecessor in interest effected an assignment of the right to pursue

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existing causes of action. Id. at 46-47. The court held that the assignment of the accrued cause of

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action related back to the date of the original complaint, and that the plaintiff thus had standing to

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bring suit. Id. at 48. Plaintiff also cites to a treatise indicating that where a general assignment of

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copyright does not include accrued causes of action, such defects may be cured by a later grant

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executed prior to trial. Pl.’s Mot. at 21 (quoting 3-12 Nimmer on Copyright § 12.02(c)).

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The problem for Plaintiff is that the case at bar does not involve a previous transfer of

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copyright that simply failed to assign the right to pursue previously accrued causes of action. While

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the effect of the agency agreements on Plaintiff’s standing to bring suit has yet to be determined,
there is no argument that these agreements transferred copyright but simply failed to assign accrued

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For the Northern District of California

United States District Court

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causes of action. Indeed, there is nothing in the record to date indicating that the alleged

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infringement in this case occurred prior to the execution of the agency agreements, so there would

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be no accrued causes of action to transfer.

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If this Court finds that the agency agreements transferred rights under the Copyright Act

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sufficient to confer standing to sue, these recent assignments are moot. If this Court reaches the

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contrary conclusion, however, the reasoning in Righthaven cases will apply here. If Plaintiff lacked

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standing to sue at the time the case was filed, it cannot now “cure” this fundamental lack with a later

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assignment of rights. See Clark, 259 F.3d at 1006. Co-Opportunities and the passage from Nimmer

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are thus inapplicable.

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This Court thus finds that Plaintiff may not assert standing to sue in this case based on an

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assignment of rights in the agreements executed in March and April of 2013.

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///

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///

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///

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///

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///

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///

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///

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IV.

CONCLUSION

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For the foregoing reasons, the Court GRANTS Defendant’s motion to dismiss to the extent

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that Plaintiff relies on the copyright assignments or the subsequent assignment of rights to establish

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standing to sue under the Copyright Act. The Court DENIES Defendant’s motion without prejudice

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as to the effect of the agency agreements.

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This order disposes of Docket No. 31.

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IT IS SO ORDERED.

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Dated: May 13, 2013

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For the Northern District of California

United States District Court

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_________________________
EDWARD M. CHEN
United States District Judge

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