United States District Court, D. Oregon
D. Crowell, Crowell Law Of Attorneys for Plaintiff.
H. Madden, Mersenne Law Of Attorneys for Defendant.
OPINION AND ORDER
Michael H. Simon, United States District Judge.
Fathers & Daughters Nevada, LLC (“F&D”)
brings this action against Defendant Lingfu Zhang. F&D
alleges that Defendant copied and distributed F&D's
motion picture Fathers & Daughters through a
public BitTorrent network in violation of F&D's
exclusive rights under the Copyright Act. Before the Court is
Defendant's motion for summary judgment. Defendant argues
that F&D is not the legal or beneficial owner of the
relevant exclusive rights under the Copyright Act and thus
does not have standing to bring this lawsuit. For the
following reasons, the Court grants Defendant's motion.
is entitled to summary judgment if the “movant shows
that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). The moving party has the burden of
establishing the absence of a genuine dispute of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). The court must view the evidence in the light most
favorable to the non-movant and draw all reasonable
inferences in the non-movant's favor. Clicks
Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1257
(9th Cir. 2001). Although “[c]redibility
determinations, the weighing of the evidence, and the drawing
of legitimate inferences from the facts are jury functions,
not those of a judge . . . ruling on a motion for summary
judgment, ” the “mere existence of a scintilla of
evidence in support of the plaintiff's position [is]
insufficient . . . .” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 252, 255 (1986). “Where the
record taken as a whole could not lead a rational trier of
fact to find for the non-moving party, there is no genuine
issue for trial.” Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citation
and quotation marks omitted).
Standing Under the Copyright Act
the Copyright Act, only the ‘legal or beneficial owner
of an exclusive right under a copyright' has standing to
sue for infringement of that right.” Righthaven LLC
v. Hoehn, 716 F.3d 1166, 1169 (9th Cir. 2013) (quoting
17 U.S.C. § 501(b)). The “exclusive rights” that
can be held under the Copyright Act are enumerated in Section
106. “They are the rights ‘to do and to
authorize' others to do six things with the copyrighted
work: to reproduce the work, to prepare derivative works
based upon the work, to distribute copies of the work, to
perform the work publicly, to display the work publicly, and
to record and perform the work by means of an audio
transmission.” Minden Pictures, Inc. v. John Wiley
& Sons, Inc., 795 F.3d 997, 1002 (9th Cir. 2015).
This list of exclusive rights is exhaustive. Id. It
does not include the right to sue for infringement. See
Righthaven, 716 F.3d at 1169 (“Absent from the
list of exclusive rights is the right to sue for
infringement.”). Thus, a copyright holder cannot assign
or transfer a bare right to sue. Id.; see also
DRK Photo v. McGraw-Hill Global Educ. Holdings, LLC, 870
F.3d 978, 987 (9th Cir. 2017) (holding that the substance and
effect of the assignments and agreements purporting to assign
ownership were “merely a transfer of the right to sue
on accrued claims, which cannot confer standing” under
the Copyright Act); Silvers v. Sony Pictures
Entm't, Inc., 402 F.3d 881, 890 (9th Cir.
2005) (“The bare assignment of an accrued cause of
action is impermissible under 17 U.S.C. §
and how it can be transferred and parsed, is unique under the
A ‘transfer of copyright ownership' is an
assignment, mortgage, exclusive license, or any
other conveyance, alienation, or hypothecation of a copyright
or of 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.
17 U.S.C. § 101 (emphasis added). Thus, an owner of a
copyright can transfer ownership of a copyright “via an
assignment or an exclusive license” and both
“constitute a ‘transfer of copyright
ownership.'” Righthaven, 716 F.3d at 1170
(emphasis added) (quoting 17 U.S.C. § 101). “[I]f
a copyright owner grants an exclusive license of particular
rights, only the exclusive licensee and not the original
owner can sue for infringement of those rights.”
Id. (emphasis added) (citing 3 M. Nimmer & D.
Nimmer, Nimmer on Copyright § 1202[C] (2012)); see
also J. Ginsburg & R. Gorman, Copyright Law, Ch.
3.II.A (2012) (“Ginsburg”).
owner of a copyright who transfers exclusive rights may still
have standing to sue on those rights if the owner qualifies
as a “beneficial owner” of those rights.
See Ginsburg, supra, at Ch. 3.II.A. The
Copyright Act does not define the term “beneficial
owner.” “The classic example of a beneficial
owner is ‘an author who ha[s] parted with legal title
to the copyright in exchange for percentage royalties based
on sales or license fees.'” DRK Photo, 870
F.3d at 988 (alteration in original) (quoting Warren v.
Fox Family Worldwide, Inc., 328 F.3d 1136, 1144 (9th
Cir. 2003)). “Beneficial ownership arises by virtue of
section 501(b) for the purpose of enabling an author or
composer to protect his economic interest in a copyright that
has been transferred.” Broad. Music, Inc. v.
Hirsch, 104 F.3d 1163, 1166 (9th Cir. 1997).
Sales Agency Agreement
is the author and registered the copyright for the screenplay
and motion picture Fathers & Daughters. ECF
36-1. On December 20, 2013, with an effective date of April
1, 2013, F&D entered into a sales agency agreement with
Goldenrod Holdings (“Goldenrod”) and its
sub-sales agent Voltage Pictures, LLC
(“Voltage”). ECF 36-2. Under this agreement,
F&D authorized Goldenrod and Voltage as “Sales
Agent” to license most of the exclusive rights of
Fathers & Daughters, including rights to
license, rent, and display the motion picture in theaters, on
television, in airplanes, on ships, in hotels and motels,
through all forms of home video and on demand services,
through cable and satellite services, and via wireless, the
internet, or streaming. F&D reserved all other rights,
including merchandising, novelization, print publishing,
music publishing, soundtrack album, live performance, and
video game rights. ECF 36-2 at 3.
further authorized Goldenrod and Voltage to execute
agreements in their own name with third parties for the
“exploitation” of the exclusive rights of
Fathers & Daughters and agreed that Goldenrod
and Voltage had “the sole and exclusive right of all
benefits and privileges of [F&D] in the Territory,
including the exclusive right to collect (in Sales
Agent's own name or in the name of [F&D] . . .),
receive, and retain as Gross Receipts any and all royalties,
benefits, and other proceeds derived from the ownership
and/or the use, reuse, and exploitation of the Picture . . .
.” ECF 36-2 at 4. The “Territory” is
defined as the “universe.” Id.
sales agency agreement sets forth how Gross Receipts will be
distributed. ECF 36-2 at 6-8. There are eight enumerated
payment categories, listed in payment priority order. The
first is costs of production, with a capped amount that is
redacted in the copy provided to the Court. The second is
overhead and a producer fee equal to a lesser amount that
also is redacted in the Court's copy. The third is a
marketing fee to Goldenrod and Voltage. The fourth includes
recoupable expenses (which were previously defined) to
Goldenrod and Voltage. The fifth includes other described
fees and costs. The sixth consists of certain payments to
Goldenrod and Voltage that are redacted in the Court's
copy. The seventh is box office bonuses or other deferments
not assumed by third party domestic distributors. The eighth
is approved deferments, which are redacted in the Court's
copy. After ...