DRK Photo v. McGraw-Hill Global Education Holdings, LLC, et al.

The Copyright Act provides that the “legal or beneficial owner” of copyright “is entitled” to institute an action for infringement, 17 U.S.C. § 501(b), but Section 501(b) does not say whether an assignee of an accrued infringement claim, who is not a copyright owner, has standing. The Ninth Circuit in this case held that Petitioner, a stock photography agency authorized to issue licenses for use of photographs and share licensing revenue, is not a copyright owner and therefore lacks standing to sue its licensee for infringing copyright. The Ninth Circuit so held even though 74 of Petitioner’s contributing photographers executed assignments granting it “all copyright rights and complete legal title in the Images” at issue, together with accrued infringement claims. The first question is: Whether an assignee of an accrued claim who is not a legal or beneficial owner of copyright has standing to sue for infringement, as the Fifth Circuit ruled in Prather,1 or does not have standing, as the Ninth Circuit ruled in Silvers?2

The second question is: Whether an unequivocal transfer of copyright ownership, together with accrued claims, is effective to give the transferee the statutory right to sue as legal owner of copyright, even when the purpose of the transfer is to facilitate an infringement action?

The third question is: Whether “beneficial owner” – which the Copyright Act does not define – extends to an assignee of accrued claims who has pre-existing interests in the copyright and is injured by infringement? 1 Prather v. Neva Paperbacks, Inc., 410 F.2d 698 (5th Cir. 1969). 2 Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881 (9th Cir. 2005). (i)