SCO Grp v. Novell Inc

Filing 774

OBJECTIONS to 739 Proposed Jury Instructions filed by Defendant Novell, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Brennan, Sterling)

SCO Grp v. Novell Inc

Doc. 774 Att. 1

EXHIBIT 1

Dockets.Justia.com

ASPEN PUBLISHERS

Goldstein on Copyright
Third Edition

Paul Goldstein

Lillick Professor of Law
Stanford University

Volume I

TM Wolters Kluwer
Law & Business
AUSTIN BOSTON CHICAGO NEW YORK THE NETHERLANDS
2009 Supplement

This publication is designed to provide accurate and authoritative infonnaiion in regard
to the subject matter covered. It is sold with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional services. If legal advice or

other professional assistance is required, the services of a competent professional person
should be sought.

-From a Declamtion of Principles jointly adopted by a Committee of the American Bar Association and
a Commiuee of

Publishers and Associations

1;1 2009, 2008-2005 Paul Goldstein

Published by Aspen Publishers. All Rights Reserved.
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Printed in the United States of Ainerica

ISBN 978-0-7355-4485-7 (set)
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i 2 3 4 5 6 7 8 9 10

2009 Supplement

~.
Contracts, Conveyances and Termination of Transfers

§5.l.i

1976 Act differ from those imposed by the 1909 Act. Nonetheless, the transfer provisions of the 1909 Act have continued importance today. Since the validity and effect of a copyright transfer wil be determined by the law that applied at the time
the transfer was made, the rules imposed by the 1909 Act govern

the validity and effect of transfers executed before January 1,
1978, the effective date of the 1976 Act.15

§5.l.i Assignments and Licenses

§5.1.1.1 Under the 1976 Act

Under section 201(d)(1) of the 1976 Copyright Act, the author of a work may, as the initial owner of copyright, transfer
his copyright by assigning all rights in the work. His assign-

ees - and their assignees - may similarly assign all rights in the work. Alternatively, under section 201(d)(2), the author and any

successor assignee may transfer anyone or more of the five
individual rights prescribed by section 106(1) through exclusive licenses. They may similarly grant exclusive licenses to subdivi-

sions of individual rights, such as serialization rights and the rights to reproduce the work in hardcover and paperback editions. A copyright interest holder may also give a nonexclusive license to exploit anyone or more of these rights or any subdivision of them. But an assignment or license of copyright
15 See, e.g., Real Estate Data, Inc. v. Sidwell

Co., 809 F.2d366, 371,1 U.S.P.Q.2d

1475 (7th Cir. 1987); Roth v. Pritikin, 710 F.2d 934, 937-939, 219 U.S.P.Q. 204 (2d
Cir.), cert. denied, 464 U.S. 961, 220 U.S.P.Q. 385 (1983), afjd in part, rev'd in part on

remand, 787 F.2d 54, 229 U.S.P.Q. 388 (2d Cir. 1986); National Broad. Co. v.
Sonneborn, 630 F. Supp. 524, 532, 231 U.S.P.Q. 513 (D. Conn. 1985); Rand 591 F.Supp. 726, 737,221 U.S.P.Q. 827 (N.D. Il. Mgmt. Sys., Fleet McNaly&Co. v. 1983); Sargent v. American Greetings Corp., 588 F. Supp. 912, 920, 223 U.S.P.Q. 1327 (N.D. Ohio 1984).

But see Campbell v. Board of Trustees of Leland Stanford Jr. Univ., 817

F.2d 499, 504, 2 U.S.P.Q.2d 1920 (9th Cir. 1987) (holding that tIie 1976
Copyright

Act governed a transfer made at the time the 1909 Act was in force). At least arguably, a transfer executed before January i, 1978, but recorded after that date, wil be governed by the 1976 Act.

2007 Supplement

5:5

~
§5.l.i
Ownership, Contracts, Conveyances and Term
presupposes some transfer of rights, and an agreement-such
as an outsourcing agreement - to produce copies or phono-

records of a copyrighted work wil not of itself imply such a 15.1 Courts are divided on whether the owner of a
transfer.

copyright or of an exclusive right under copyright can assign an accrued cause of action for copyright infringement apart from
16
the transfer of any other rights under copyright.

For most purposes, the Copyright Act treats an exclusive

licensee like any other copyright owner. Section 201(d) entitles the owner of any exclusive right, "to the extent of that right, to

all of the protection and remedies accorded to the copyright
owner by this title." 1 7 Like copyright owners generally, an exclusive licensee has standing to sue for copyright infringement. The exclusive licensee's relief

18

wil, however, be limited to the

particular right, or subdivision of a right, that is the subject of its license. For example, the holder of an exclusive license to publish a novel in a paperback version wil have no standing to sue an infringer who publishes an unauthorized hardcover version.19 To be fully effective, exclusive licenses must comply with the Copyright Act's statute of frauds20 and recording2 provisions. By contrast, nonexclusive licenses are subject to neither
the Act's statute of frauds nor to its recording provisions.22

Nonexclusive licensees have no standing to sue for copyright

15.1 See Postlewaite v. McGraw-Hil, Inc., 411 F.3d 63,67-68,75 U.S.P.Q.2d
1437 (2d Cir. 2005). 16 Compare Silvers v. Sony Pictures Entmt., Inc., 402 F.3d 881, 74 U.S.P.Q.2d
1065 (9th Cir. 2005) (cause of

action cannot be transferred) with ABKCO Music,

a copyright owner assigns its copyright wiÙiout expressly assigning accrued causes of action, "the assignor retains the right to bring actions accruing during its ownership of the Inc.v. Harrisongs Music, Ltd., 944 F.2d 971,980 (2d Cir. 1991) (Wen

right, even if the actions are brought subsequent to the assignment."). See also

Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (5th Cir. 1969) (causes of action
freely assignable under 1909 Act).

17 1976 Copyright Act §20 1 (d)(2).

181976 Copyright Act §501(b).
19 See § 15.5.1, below.

201976 Copyright Act §204(a). See §4.5.1., below. 211976 Copyright Act §205. See §4.5.3, below.
22 See §§5.2.1., 5.2.3, below.

5:6

2007 Supplement

~
Contracts, Conveyances and Termination of Transfers
§5.L.1

infringement. 23 Further, absent authority from its licensor, a

nonexclusive licensee cannot transfer its license or sublicense
under it.24
(Next page is 5:7.)

23See §15.5.1, below.
24 See Harrisv. Emus Records Corp., 734 F.2d 1329, 1333-1334,222 U.S.P.Q. 466 (9th Cir. 1984). In holding that copyright licenses are not transferable, Harris did not differentiate between exclusive and nonexclusive licenses. Nonetheless, the context of the court's analysis leaves little doubt that the court intended only

nonexclusive licenses to come within the rule. The court explicitly rested its
decision on the premise that a license does not convey an ownership interest,

relying on authorities under the 1909 Act that held that licenses did not confer copyright ownership interests. Since exclusive licenses under the 1976 Act do convey a copyright interest, they presumably fall outside the non transferability
rule. For a critique of the Harri decision, see §5.3.3.1, below.

2007 Supplement

5:6.1