Filewrapper® | A patent, trademark, and copyright law blog - Assignments

Ninth Circuit: Termination of rights allows Lassie to come home to author's heir

Thu, 17 Jul 2008 07:55:00-0500

In a decision last week, the Ninth Circuit reversed a district court's denial of summary judgment in a copyright case. The district court held the heir of an author had, by agreement, "given away" the termination right granted by 17 U.S.C. § 304(c).

The Ninth Circuit reversed, stating that the district court had gone against the express language of § 304(c)(5), Congress's intent of protecting authors, and the lack of any language transferring the right of termination in the agreement. The court specifically stated that the language of § 304(c) and Congress's clear intent in the passage of § 304(c) was to allow authors the opportunity to renegotiate previously-granted rights in copyright after the 1976 Copyright Act extended the term of protection in existing works. The court said that Congress wanted to reward authors, and it would not make sense for the Act to benefit the assignee rather than the author's heir. As a result, the court reversed the grant of summary judgment in favor of the assignee and remanded with instructions to enter judgment for the heir.

More on Classic Media, Inc. v. Mewborn after the jump.

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Ninth Circuit: Heirs of "Pink Panther" coauthor do not retain interest in copyright in the films

Wed, 25 Jun 2008 13:16:00-0500

In a decision last week, the Ninth Circuit affirmed the district court's grant of summary judgment in a copyright case, holding that a coauthor of a story treatment is not necessarily a coauthor of a motion picture produced based on that treatment, and the factors applied to determine coauthorship led to the conclusion that the coauthor of the treatment was not a coauthor of the motion picture.

In this case, that meant the heirs of one coauthor of the treatment that formed the basis for the film "The Pink Panther" could not assert an interest in the copyright in the motion picture. Likewise, renewal of the copyright in the motion picture had no effect on the copyright of the treatment, as its copyright is separate and distinct under the law. Accordingly, the court affirmed the district court's grant of summary judgment.

More on Richlin v. Metro-Goldwyn-Mayer Pictures, Inc. after the jump.

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Patent ownership may change by operation of law, including operation of foreign law

Mon, 31 Mar 2008 12:50:00-0500

In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership. The inventor of the patent died intestate as the only owner of the patent. While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estate had to first transfer the patent rights to the heirs, and without such a transfer, there was no standing to bring suit.

The Federal Circuit vacated, noting that while § 261 states that patents are assignable only in writing, previous decisions have held that state law controls the issue of patent ownership. Further, ownership may transfer by operation of law, and when a patent owner dies, it is state probate law that determines to whom ownership passes.

The court held that this concept applied in this case, even though it would be Japanese law that would determine ownership rather than a state's law. Because it was unclear from the record whether an administrator is required under Japanese law when a person dies intestate, the court remanded the case to make that determination, which would resolve the standing issue.

More detail of Akazawa v. Link New Tech. Int'l, Inc. after the jump.

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Second Circuit: retroactive assignment cannot cure past infringement claim by co-author

Mon, 08 Oct 2007 16:54:00-0500

The Second Circuit yesterday issued a decision regarding whether an action for infringement brought by one co-author of a song can be defeated by the grant of a "retroactive" transfer of ownership to the infringer from a co-author who is not party to the infringement action. The case involved licensing and litigation regarding authorship of two tracks on Mary J. Blige's 2001 album, ironically named "No More Drama."

In this issue of first impression, the court held that the "retroactive" transfer of ownership does not defeat any infringement causes of action that had already accrued at the time that the transfer occurred. This was because the retroactive assignment amounted to a transfer of rights that had already vested in the other co-authors, namely the right to sue for infringement.

More on Davis v. Blige after the jump.

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