Sorry, didn't see this before posting. Keeping it simple, again:
Yes, but the concepts are the same.
Not since the 1976 Copyright Act, they're not. Since then, copyright ownership is very different from either patent or trademark ownership.
Yes, an ownership interest is transferred in an exclusive license. But not the complete ownership interest.
The "ownership interest" that is transferred is legal ownership.
But whatever you call it, "all of the protection and remedies accorded to the copyright owner by this title" are transferred to the exclusive licensee, and are no longer held by the licensor. That was the entire reason the Gardner court ruled as it did.
An assignment is a transfer of legal and beneficial ownership interests. An exclusive license is a transfer of partial beneficial ownership interest.
Now you're just making stuff up. Nearly every person who assigns a copyright retains some form of beneficial ownership. If the assignment also assigned beneficial ownership, then the assignor would have no ownership interest at all, and no standing to sue.
As Black says, "the legal title remains in the proprietor."
Since 1976, there is no such thing as a copyright proprietor.
On the contrary, it is only a beneficial owner who can exploit the copyright.
What the hell are you talking about? As Congress said, "a 'beneficial owner' [...] would include, for example, an author who had parted with legal title to the copyright in exchange for percentage royalties based on sales or license fees." An author who has parted with legal title to the copyright cannot exploit the copyright, precisely because he is not the legal owner.
You bring up - again - the notion that an exclusive licensee is a "beneficial owner," but they are the legal owner of those rights. You're trying to prove that an exclusive licensee is a beneficial owner by showing that only beneficial owners can exploit the copyright, and then using the idea that only beneficial owners can exploit the copyright to prove that an exclusive licensee is a beneficial owner. That's just circular reasoning - otherwise known as begging the question.
You think the licensor cannot exploit the copyright because he has given legal title to another.
As does every single court case that I've read, including the Essex case I just posted, and including the ones you've cited.
By the way, here's another case that makes it clear that when you grant an exclusive license, you lose ownership of the rights:
A company claiming to be the licensee of exclusive rights under the copyright to a popular song [Essex Music] sues a company claiming to be the owner of the copyright [ABKCO] for copyright infringement and violations of the Lanham Act. [...]
In Fantasy v. Fogerty, the composer of a song, who had granted exclusive rights in the copyright to the song to the plaintiff's predecessor in interest in return for a sales percentage and other royalties, authorized the distribution of copies of an allegedly identical song. The composer, like ABKCO, argued that his interest in the copyright immunized him from an infringement suit. The Court articulated the general principle that "[a] copyright owner can infringe upon any exclusive right which he transfers or grants to another," and held that since the composer had "no independent right to use or license the copyright" to the song, he had infringed upon the licensee's exclusive rights.
Defendants seek to distinguish Fantasy v. Fogerty by pointing out that the composer transferred the entirety of his interest in the copyright and then created a derivative work which was in direct competition with plaintiff's work. As Nimmer and the Fogerty Court point out, however, the 1978 Act is concerned with the transfer not only of entire copyrights but also of specific "rights" under the copyrights; indeed, "[o]nce the copyright owner grants an exclusive license of particular rights, only the exclusive licensee and not his grantor may sue for later occurring infringements of such rights." Nimmer, supra, § 12.02 at 12-29 & n. 13 (emphasis added). ABKCO is not alleged to have infringed its own rights, as defendants suggest, because it has allegedly transferred the specific rights which it now exercises.
That is not correct. I posted two quotes evidencing the actual law
...one of which (Black) was from a time in which copyright rights were indivisible; and one of which (Presley) was talking about trademark law, not copyright law.
Regarding copyrights, every case I've seen has held that an exclusive license is a transfer of ownership. Even Gardner said, flat out, that an exclusive license was a "transfer of ownership."
The licensee is the legal owner of the transferred rights. The licensor is a beneficial owner of the transferred rights, and the legal owner of the residual interests.
I know you're wrong, because under copyright law, beneficial owners cannot exploit any exclusive rights. The exclusive rights to do and to authorize the 106 activities belong solely to the legal owner; beneficial owners may have an interest in the exploitation of the rights, but cannot exploit any of the rights themselves without the legal owner's permission.
Okay. I realize you wanted me to keep it simple, so you probably didn't even read my last reply.
Putting it simply, in copyright law:
"Legal title" = the exclusive right to do and/or authorize any of the activities specified in 17 USC 106; that is, the exclusive right to exploit the 106 rights.
"Legal owner" = holder of the legal title; that is, one who holds the exclusive right to exploit the 106 rights.
"Beneficial owner" = someone who retains a beneficial interest in the legal owner's exploitation of the 106 rights. They may, but often do not, hold "equitable title" in the copyright. (An equitable title "gives the holder the right to acquire formal legal title," according to Black's, and the majority of beneficial owners lack this right).
With a copyright assignment:
Assignor = beneficial owner. Usually does not hold equitable title.
Assignee = legal owner, and holds the legal title.
What is transferred to assignee = the exclusive right to exploit all 106 rights.
With an exclusive license:
Licensor = beneficial owner. Usually holds equitable title.
Licensee = legal owner, and holds the legal title.
What is transferred to licensee = the exclusive right to exploit some 106 rights (under 17 USC 201(d)(2)), but not all of them.
With a non-exclusive license:
Licensor = legal owner, and holds the legal title.
Licensee = neither legal nor beneficial owner.
What is transferred to licensee = nothing.
As this makes clear, Righthaven was never assigned the copyrights. But even if they were, then the supposed "exclusive license" was in reality an assignment back to Stephens Media.
An equitable owner, such as a licensee, no longer needs to join his licensor in order to institute an infringement action. [...] The 1976 Copyright Act changed things to allow exclusive licensees to be able to sue in their own name, but it didn't divest legal owners of the right to sue.
This is simply wrong.
Along with allowing both legal and beneficial owners to sue, the 1976 Copyright Act explicitly said that an exclusive license is a "transfer of ownership" under 201(d)(2).
The exclusive licensee is not an "equitable owner," they are the full, legal title owner of the licensed rights. The licensor may be (and usually is) a beneficial owner, but they are no longer the legal owner of the licensed rights.
On the other hand, a non-exclusive licensee cannot bring suit under copyright law. That's because they're neither a legal or beneficial owner under copyright law. This is the type of "licensee" whose standing did not change between 1909 and 1976.
You need to make that distinction. Exclusive license = legal ownership. Non-exclusive license = no ownership.
Besides, in any real sense, the "exclusive license" in the SAA was a full assignment of all copyright rights. (As was the supposed "non-exclusive license" in the revised SAA, according to the court.)
And you're still missing the most important part in all of this: you cannot be transferred ownership of a copyrighted work ("title," "equitable," or otherwise) without being transferred the exclusive right to do or authorize one of the 106 activities.
Thus Righthaven is not the "title owner," since they never held the "title" in the first place.
If you want to put in terms of a "legal title"/"equitable title" distinction (as far as I understand the terms), think of it this way: In order to transfer the "legal title" of a copyright, you must transfer the "equitable title" as well.
But that distinction is merely for your benefit, since the Copyright Act does not talk about "legal title" and "equitable title" at all - only about "legal ownership" and "beneficial ownership," which are not synonymous. For example, a "beneficial owner" under copyright law holds neither the "equitable title" nor the "legal title" - or, again, not as I understand those terms.
In fact, there does not appear to be any equivalent under copyright law to a distinct "legal title" under property law. You must have "equitable title" to be the legal owner, and "beneficial owners" hold neither equitable nor legal title. Those are the only two forms of ownership contemplated by the Copyright Act.
The case does not say that that such a transferee has to be able "to do or to authorize" the exclusive rights.
Yes, they do say exactly that. In order to be transferred ownership, you must have been transferred the rights - not a "title" to the rights, but the actual rights themselves. A sampling: "By contrast, the recording statute does not contemplate a transfer of anything other than an ownership interest in the copyright, along with the concomitant exclusive rights."
The statutes also say, explicitly, that only "the owner of copyright under this title has the exclusive rights to do and to authorize" the 106 activities. If you hold those exclusive rights, then you are clearly the legal owner.
But there are lots of parties who have standing to sue yet who cannot exercise the exclusive rights.
They are called "beneficial owners." They must have a beneficial interest in the legal owner's exploitation of the works. If they have no such interest, they are not beneficial owners either, and do not have standing to sue.
The licensor cannot exercise the right granted, despite being the legal owner of it
The licensor is not the legal owner of the exclusively-licensed rights. They are usually a beneficial owner, and thus have standing to sue, but they are not the legal owner. No court that I'm aware of (including Gardner) has ever said otherwise.
I think your mistake is the same mistake made by the court here, and that's in thinking that the only type of ownership interest that counts for standing purposes is the one that permits the holder to exercise the rights.
I think your mistake here (as it always has been) is believing that there is some form of legal ownership of a copyright, that is distinct from the exclusive right to do or authorize the 106 activities. There is not. They are synonymous.
Another example is a person who parts with legal title in exchange for royalties.
Right, and such a person is called a beneficial owner, and is not the legal owner of the copyright. Furthermore, if he parted with legal title wihtout retaining any beneficial interest at all, he wouldn't be an owner in any way, shape, or form, and would not have standing to sue. At least, no court that I'm aware of has ever said differently.
Long story short: Righthaven = legal owner; Stephens Media = beneficial owner
Righthaven is not the legal owner. Only the legal owner has the legal power to exploit the exclusive rights under 106. If you don't have the power to do so, you are not the legal owner. That is clear from Silvers, and it's clear from the statutes.
You would be better off arguing that Stephens Media is the legal owner, and Righthaven is a beneficial owner. But even that argument would fail, since Righthaven has absolutely no beneficial interest in Stephens Media's exploitation of their rights.
The truth is that Righthaven never held any interest whatsoever in the exploitation of the copyrights, so they were never any kind of owner - nether beneficial, nor legal.
I'm not sure why you're having such a hard time with this. What you're saying is directly contradicted by multiple courts in multiple jurisdictions - not just those dealing with Righthaven. Silvers doesn't agree with you, Nike v. Gardner doesn't agree with you, Campbell doesn't agree with you. You have not cited one case that actually supports your viewpoint. No copyright lawyer, anywhere, who was not hired by Righthaven, has agreed with you. Clearly, you are wrong.
Furthermore, the only people who might benefit from this wrong belief are scammers like Righthaven. I know you are driven by irrational hatred for anything you think is remotely piratey, but is that hatred really so strong that you are willing to disregard the law and side with scammers like Righthaven to satisfy it?
I don't really see the point in running through all of your lengthy post line by line and rebutting everything you said. It's a waste of time, and I get nothing out of it. However, if you have any argument that I'm wrong here that you think is particularly strong, go ahead and make your point (and please keep it short) and I'll respond.
Oh, there's lots of things you've said that I think are wrong, but I'll keep it brief.
1. You're misrepresenting Silvers, in order to directly contradict it. That case said, explicitly, that unless you are transferred the exclusive right to do or to authorize one of the enumerated activities in 106, you are not transferred any kind of copyright ownership; and unless you legally possess the exclusive right to do or authorize one of the 106 activities, you are not the legal owner of that right.
Righthaven was never transferred the exclusive right to do or to authorize any of the activities in 106, so they were never the copyright holders.
2. You're also misrepresenting Gardner v. Nike. They were not talking about exclusive licenses per se, but about any transfer of ownership under 17 USC 201(d)(2). Furthermore, they explicitly say that an exclusive licensee owns "all of the protection and remedies" accorded by law. The only issue they decided was whether the right to transfer licenses is a "protection" or "remedy" under 201(d)(2), and they held that it wasn't. (There's more that makes Gardner a bad fit - like the policy decisions underlying the ruling - but I said I'd keep it brief.)
So, even if you assume Righthaven ever held the rights, then:
a. Gardner doesn't apply to Righthaven's "exclusive license," since the exclusive rights were not "subdivided" or "owned separately" as in 201(2)(d), but transferred to Stephens Media in toto.
b. But even if Righthaven transferred the rights via 201(2)(d), Gardner says that Righthaven transferred "all of the protection and remedies accorded to the copyright owner by this title" to Stephens Media when they granted the "exclusive license." So, Righthaven would still lack standing to sue.
So, nothing in Gardner contradicts this case. Righthaven's "ownership" is still a sham, even applying Gardner.
The controlling issue, as per Silvers, is whether they hold a "legal or beneficial interest in the copyright itself."
Actually, that's not quite what Silvers said:
The meaning of that provision appears clear. To be entitled to sue for copyright infringement, the plaintiff must be the "legal or beneficial owner of an exclusive right under a copyright."
The Silvers court is quoting the actual statute, 17 USC 501(b).
Furthermore, the definition of an infringer is "anyone who violates any of the exclusive rights of the copyright owner." That's from 17 USC 501(a).
And, as Silver again makes clear, those exclusive rights are nothing other than the exclusive right "to do and to authorize" any of the activities specified in 17 USC 106.
So unless your "legal or beneficial interest" is in the exclusive right to do or to authorize one of the activities enumerated in 17 USC 106, you're not a "legal or beneficial owner" at all.
That is what Silvers said. Explicitly.
There are ownership interests other than the right to use the exclusive right. A licensor holds an ownership interest in the right licensed even though he cannot exercise the right.
According to Gardner, that only applies if the right was transferred "in part," as allowed by 17 USC 201(d)(2). If they were transferred wholesale (not as in 201(d)(2)), Gardner is silent on the issue.
And that holds for any type of "transfer of ownership" (Gardner's words) specified in 201(d)(2), whether exclusive license (as in Gardner), assignment, or other.
And the Gardner court explicitly said that a transfer of ownership allowed in 201(d)(2) also transferred "all of the protection and remedies" accorded by law.
So even if Righthaven was the rightful copyright owner at some point, whatever "protections and remedies" Righthaven once held were transferred to Stephens through the exclusive license. Even Gardner would hold that Righthaven had no standing to sue.
You're all over the place in the comments, so I'm going to just reply to your points here in one go.
I think that every single federal judge knows far more about the law than I do. But on this particular issue, I think they're confused.
You'll note that not one single judge who saw the SAA thought the transfers were valid. Not a single one. Nor did any actual lawyer who wasn't on Righthaven's staff.
I think it's pretty clear who's confused.
Wow. Um, wrong. It takes an en banc opinion to do that. It amazes you state these things with such certainty when you truly have no basis for making the claim.
Fair enough. I'm neither a lawyer nor a law student, so I don't know the procedural rules for a court overturning its own decision.
But that's still immaterial, as this court does not overturn or contradict Gardner. Unless, of course, you believe Gardner contradicted Campbell, which it does not. Campbell is controlling, both here and in Gardner. If Gardner claimed what you say it claimed, then Gardner would have necessitated (as you say) an en banc opinion. It did not. And the fact that there's no contradiction between any of these cases means that your analysis is wrong.
Furthermore, your claim is directly and explicitly contradicted by Silvers (which, incidentally, was an en banc opinion). So, even if Gardner said what you claim it says (which it doesn't), it would have been superceded by Silvers.
That is referring to later-occurring infringements. Righthaven is about past infringements that have already accrued. That section is inapplicable, and it shows just how confused the panel here was.
And, now, you're bring up yet another legal distraction. You can't be transferred the right to sue - for any infringements - without being transferred the exclusive right "to do or to authorize" any of the 106 rights. Whether those were past infringements or not is completely immaterial. (And, incidentally, the Righthaven court was not referring to later-occurring infringements.)
The point of Gardner that I'm referring to is the notion that a licensor retains an ownership interest in the copyright during the existence of the exclusive license.
That's not quite how the court in Gardner puts it:
Despite the explicit changes in the 1976 Act, this case presents the issue of whether the 1976 Act eliminates the limitation on an exclusive licensee's right to re-sell or sublicense under our interpretation of the 1909 Act.
As discussed by the District Court, the crux of this case is the appropriate interpretation of 17 U.S.C. 201. Gardner, 110 F.Supp.2d at 1284. The District Court rejected Appellants' argument, finding that 201(d)(1) did not apply to the present case and that 201(d)(2) only conferred the "protections and remedies" explicitly included in the 1976 Act, but not the rights. Gardner, 110 F.Supp.2d at 1286±87. We agree with the conclusions reached by the District Court for the reasons discussed below. [...]
The District Court correctly determined that 201(d)(1) addresses the apportionability of the copyright owner's interest in the totality of the copyright. Section 201(d)(1) enables the owner to transfer any fraction of his or her ownership interest to another party, thereby making that party a whole or joint owner. [...] However, the limiting language in 201(d)(2), as discussed next, indicates that this section does not, in fact, cover transfers by exclusive licensees or owners of a particular exclusive right.
The plain language of 201(d)(2) limits the rights of [the owner of any particular exclusive right] to those "protections and remedies" afforded in the 1976 Act. [...]
Appellants' argument ignores the plain language of 201(d)(2), which states that the owner of such exclusive rights is entitled only to "the protection and remedies" accorded the copyright owner under the 1976 Act. This explicit language limits the rights afforded to an owner of exclusive rights.
The court in Gardner was talking about any transfer of ownership that was not total - that is, any transfer of ownership of "any particular exclusive right" or "subdivision of any of the  rights" allowed under 201(d)(2). If that is the case, then what is transferred are "only" the "protections and remedies" under copyright law. Because the resale privilege is not part of the "protections and remedies" granted by statute, it is not transferred. But they did not say that an exclusive license was not any kind of transfer of ownership at all.
It doesn't contradict this case in any way. Even if Righthaven owned the copyright in the works, then they transferred ownership of all of the rights, not just a "particular exclusive right" or "subdivision of any of the rights" in 106. In this case they transferred ownership of the copyright completely (not just the "protections and remedies" under copyright law), and Gardner does not apply. On the other hand, if they transferred ownership of one or more "particular exclusive rights" via 201(d)(2), then Gardner does apply - and says that they transferred the "protections and remedies" afforded a copyright owner.
Either way, the Gardner court would agree that Righthaven would have no standing to sue, having transferred all "protections and remedies" afforded by copyright law to Stephens. There is no contradiction whatsoever between Gardner and this case.
Of course, that assumes Righthaven ever owned any of the rights in the first place, which they did not.
And the court cites no authority whatsoever for its claim that unless a party has an ownership interest that permits him to exercise the exclusive rights, then he has no ownership interest at all.
They're not exactly saying that the original owner "has no ownership interest at all," just that an exclusive license is equivalent to an assignment in terms of ownership. Just as someone who assigned a copyright has no standing to sue (in general), the licensor has no standing to sue (in general).
Whether they have an "ownership interest" depends on the actual license itself. If the license divests the licensor of the exclusive right to do or to authorize a 106 right, then it divests him of legal ownership of that right. If the license divests the licensor of all interest in the legal owner's right to do or to authorize a 106 right, then it also divests him of beneficial ownership in that right.
Silvers just says the transfer of the right to sue for prior infringements must be accompanied by an ownership interest in the exclusive rights.
That is not the extent of what Silvers says. Silvers says that unless a party has an interest that permits him to exercise the exclusive rights, or retains an interest in the legal owner's exercise of the exclusive rights, they have no ownership interest at all for the purposes of bringing an infringement suit:
Article I, section 8, clause 8, of the Constitution states: "The Congress shall have Power ... To promote the Progress of Science and useful Arts by securing for limited Times to Authors ... the exclusive Right to their ... Writings ... ." As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection.
Copyright, therefore, is a creature of statute, and the only rights that exist under copyright law are those granted by statute. [...]
Section 501(b) of the 1976 Copyright Act establishes who is legally authorized to sue for infringement of a copyright:
The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.
17 U.S.C. 501(b) (emphasis added). The meaning of that provision appears clear. To be entitled to sue for copyright infringement, the plaintiff must be the "legal or beneficial owner of an exclusive right under a copyright." See 4 Business and Commercial Litigation in Federal Courts, at 1062, 65.3(a)(4) (Robert L. Haig ed.) (West Group & ABA 1998) ("If a claimant is not a proper owner of copyright rights, then it cannot invoke copyright protection stemming from the exclusive rights belonging to the owner, including infringement of the copyright.").
Section 106 of the 1976 Copyright Act, in turn, defines "exclusive rights": [...] The right to sue for an accrued claim for
infringement is not an exclusive right under 106. Section 201(d) refers to exclusive rights [...] Exclusive rights in a copyright may be transferred and owned separately, but 201(d) creates no exclusive rights other than those listed in 106, nor does it create an exception to 501(b).
Section 501(b) must also be read in conjunction with 501(a), which provides that one who "violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 ... is an infringer." The definition of an infringer in subsection (a) is parallel to the definition of a proper plaintiff in subsection (b). Common to both subsections is an exclusive copyright interest. [...]
[On the legislative history:] The House Report suggests strongly that Congress intended to limit the class of persons who may sue for infringement: [...] Although Congress allowed for divisibility of ownership interests under a copyright, it did not alter the requirement that only owners of an exclusive right in the copyright could bring suit.
The legislative history makes clear, too, that the list of exclusive rights found in 106 is exhaustive. The House Report states:
The exclusive rights accorded to a copyright owner under section 106 are "to do and to authorize" any of the activities specified in the five numbered clauses.
H.R. Rep. No. 94-1476, at 61, reprinted in 1976 U.S.C.C.A.N. at 5674.
(Bold emphasis is mine; italic emphasis is the court's.)
That's explicit: unless you were transferred the exclusive right "to do and to authorize" a 106 right, you were not transferred any kind of ownership interest whatsoever. And the moment you divest yourself of all interest in the exclusive right "to do and to authorize" all 106 rights, you divested yourself of copyright ownership entirely - whether through assignment, mortgage, exclusive license, or any other transfer of ownership.
Righthaven was never transferred any exclusive right to do or authorize any 106 right, so they were never at any point a copyright owner.
But even if they had been, the SAA divested Righthaven of all interest in the exclusive right to do or authorize any of the 106 rights, so they divested themselves of all ownership interest, whether they called it an "exclusive license" or not (or even if, as in the revised SAA, they called it a "non-exclusive license").
Since the SAA covered all supposed copyright transfers, the transfers were a complete sham.
The court does not equate an assignment with an exclusive license for all purposes, but just for the question of whether the purported owner/licensor has standing to sue.
Do you mean the court in this ruling (on Righthaven)? Here's the entire relevant section:
This argument again emphasizes form over substance. But even analyzing it on its own formalistic terms, the argument still fails because once Righthaven granted Stephens Media an exclusive license, Righthaven was no longer the owner of exclusive rights under the Copyright Act. The Copyright Act does not distinguish between transferring a copyright via an assignment or an exclusive license. Both, unlike an assignment of a non-exclusive license, constitute a “transfer ofcopyright ownership.” 17 U.S.C. § 101; see also Campbell, 817 F.2d at 504 (relying on this section of the Copyright Act to construe a contract as transferring the ownership of a copyright, even though the contract used the term “exclusive license”). It follows that if 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. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 12.02[C] (2012).
That's where I got the connection to Gardner, by the way.
I don't see anything in Gardner that's relevant to whether a titular copyright owner who has licensed away all exclusive rights has standing to sue for infringement. Am I missing it?
That's not precisely the point. The point was that Gardner did say, explicitly, that an "exclusive license" is a transfer of ownership.
Average Joe (the original handle of the A.C.) is claiming that Nike ruled that it wasn't; but if he were right, the Nike court would have had to overturn Gardner, which it never claimed to do. It just shows that his interpretation of Nike is wrong.
On the other hand, Silver is right on point, requires ownership of an exclusive 106 right (which Righthaven did not have), and also binds this panel.
Average Joe doesn't believe Silver applies in this case.
He is simply repeating Righthaven's argument: they actually were the "owner" of the 106 rights - even though they never at any point had any right, power, or privilege to exploit those rights. In Joe's mind, Righthaven was the "title owner," and Stephens the "exclusive licensee," so he trots out largely-irrelevant case law to attempt to show that an exclusive license is not a transfer of ownership.
Of course it's nonsense, but Average Joe is a recent law grad. So he thinks he knows more about the law than, say, every single judge who ruled against Righthaven (which is all of them).
Or - more likely - he cares more about attacking "piracy" than he does about justice, and will twist the judges' words to pretend that case law agrees with him. See also: his insistence that Arcara v. Cloud Books (alone!) allows the government to seize websites without notice.
Big surprise. Here's an organization that abused the law for its own ends, but because it's supposedly "infringement," you'll defend them no matter what.
And, big surprise again, you twist the case law to do it:
The court equated an exclusive license with an assignment. The Ninth Circuit in Gardner v. Nike differentiated the two[...] That opinion binds this panel.
This is exactly the same court that decided the Nike case, so it's doesn't "bind" this panel. A court can overturn or vacate its earlier decisions. That's assuming, of course, that there's a conflict between the two rulings... which there isn't.
This is the part you don't like:
It follows that if 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. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 12.02[C] (2012).
Unfortunately for you, nothing in Gardner v. Nike contradicts this.
Gardner v. Nike was focused on the very narrow question of whether the right to resell or sublicense the exclusive license is automatically transferred. And because it was a question of first impression due to the 1976 Act, and not explicitly addressed in that Act, they went with the case law as it currently stood from the 1909 Act onwards.
But the court did not say that the licensor retained the right to sue for infringement on the rights that were transferred by exclusive license. Only that, absent written consent, the "resale right" was not automatically transferred as well.
Indeed, this same court held that an "exclusive license" was in fact a transfer of ownership, in Campbell v. Bd. of Trs. of Leland Stanford Junior Univ.: "Because we conclude that the grant of an exclusive license to CPP of some of the exclusive copyright rights constitutes a prohibited transfer under the Stanford-Campbell contract, we reverse the district court's contrary holding." But I assume you don't consider that ruling "binding" over Gardner v. Nike.
The Nike court certainly did not contemplate a situation where the "licensor" never, at any point, held a single one of the rights granted to copyright holders in 17 USC 106.
And that - not the phony label of an "exclusive license" - is what determined this case:
That some language in the contract described Righthaven as the owner, however, does not itself prove that Righthaven owned any exclusive rights.
When determining whether a contract has transferred exclusive rights, we look not just at the labels parties use but also at the substance and effect of the contract. [...]
Therefore, that the assignment agreements used language purporting to transfer ownership to Righthaven is not conclusive. We must consider the substance of the transaction. The SAA provided that any copyrights transferred to Righthaven were subject to the terms of the SAA, and many of these terms placed limits on what Righthaven could do with anycopyright assigned to it. Those limits lead us to conclude that Righthaven did not actually possess any exclusive rights under the Copyright Act.
The SAA provided that Stephens Media automatically received an exclusive license in any copyrighted work it assigned to Righthaven, so that Stephens Media retained "the unfettered and exclusive ability" to exploit the copyrights. Righthaven, on the other hand, had "no right or license" to exploit the work or participate in any royalties associated with the exploitation of the work. The contracts left Righthaven without any ability to reproduce the works, distribute them, or exploit any other exclusive right under the Copyright Act. See 17 U.S.C. § 106. Without any of those rights, Righthaven was left only with the bare right to sue, which is insufficient for standing under the Copyright Act and Silvers.
They then go on to say that the amended SAA is still invalid, even though the "license" granted to Stephens was nominally a "nonexclusive license."
As the court (amusingly) said:
Abraham Lincoln told a storyabout a lawyer who tried to establish that a calf had five legs by calling its tail a leg. But the calf had only four legs, Lincoln observed, because calling a tail a leg does not make it so. [...] Heeding Lincoln’s wisdom, and the requirements of the Copyright Act, we conclude that merely calling someone a copyright owner does not make it so.
It's also noteworthy that Bessen had absolutely nothing to do with the report. He only alerted Mike to its existence.
The posts that are sponsored through the Insight Community are always clearly labeled as such. No conflict of interest here.
Furthermore, those same companies are not just patent defendants, but instigate patent infringement lawsuits as well. (And I notice you didn't mention Oracle, who is involved in pretty famous patent litigation against Google.) Some of them (UPS) haven't been involved in patent litigation at all, as far as I know. Calling them "huge corporate infringers" is pretty much a lie.
Forgot to mention that the superseding indictment alleges direct infringement by one of the Mega crew:
FYI, from merely reading the paragraph that you supplied, that is not enough to allege criminal infringement. Direct infringement it may be, but there's no allegation of willfulness and private financial gain. (That file certainly wasn't worth $1000, and since it's called a "DVDRip," it's likely not a pre-release.)
The "inducement" standard in Grokster, is not the same as the "aiding and abetting" (which includes "inducement") sections of criminal law.
Here's the text from Grokster:
For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.
As you can see, it's not developed from any copyright statute, but derived from the common law doctrines of patent laws. It also invokes liability for any distributor of a device who is "promoting its use to infringe copyright."
To prove that the defendant is guilty of a crime based on aiding and abetting that crime, the People must prove that:
1. The perpetrator committed the crime;
2. The defendant knew that the perpetrator intended to commit the crime;
3. Before or during the commission of the crime, the defendant intended to aid and abet the perpetrator in committing the crime;
4. The defendant's words or conduct did in fact aid and abet the perpetrator's commission of the crime.
Someone aids and abets a crime if he or she knows of the perpetrator's unlawful purpose and he or she specifically intends to, and does in fact, aid, facilitate, promote, encourage, or instigate the perpetrator's commission of that crime. [...]
If a specific intent crime is aided and abetted, the aider and abettor must share the requisite specific intent with the perpetrator.
For aiding and abetting, merely "promoting its use" is not enough. You have to have actual knowledge of the specific crime, actively aid in it, and share the principal's mens rea.
The crime in the copyright act is direct copyright infringement.
Direct copyright infringement is not a crime. It must be "willful," and it must be either for profit; worth over $1000; or a pre-release ("leaked" or "camcorded") copy.
If the primary infringement does not meet this criteria, it is not criminal. Furthermore, "evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement of a copyright." It's all in 17 USC 506.
18 USC 2 makes it a crime to willfully "aid, abet, counsel, command, induce or procure" criminal infringement, but doing the same for civil infringement is not in any way a criminal act.
I really don't understand the argument. Aiding and abetting is a crime under 18 USC 2.
I guess you missed this part of the article?
Supporters of the DOJ will argue that there is aiding and abetting, but the rules there are quite different and, again, it doesn't look like Dotcom and crew would be guilty of such a charge.
There are more details in the white paper. Here are the relevant sections, with the footnotes included in the text:
The Copyright Act creates civil and criminal liability for various acts of copyright infringement, but it does not expressly give rise to liability for infringement committed by third parties. See MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) (the Act “does not expressly render anyone liable for infringement committed by another” (quoting Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984)); Demetriades v. Kaufmann, 690 F. Supp. 289, 291-92 (S.D.N.Y. 1988) (“Federal copyright law, unlike patent law, does not expressly create any form of derivative, third-party liability.”). Furthermore, the U.S. Supreme Court has defined specific circumstances under which service providers may be held civilly liable (i.e., not criminally responsible) for direct copyright infringement by third parties, such as distributing “a device with the object of promoting its use to infringe copyright.” See Id., at 919, 936-37.
The fundamental legal problem with this aspect of the government’s case is that only Congress can create new criminal liability; judges cannot. Previous instances in which courts have imposed civil liability for secondary copyright infringement – based on application of common law principles – do not apply in criminal proceedings, as federal crimes are “solely creatures of statute.” See Liparota v. United States, 471 U.S. 419, 424 (1985) (citing United States v. Hudson, 11 U.S. (7 Cranch) 32 (1812)). Whatever authority the courts may have had to recognize a contributory theory of copyright liability in the civil context, the courts simply have no power to impose a basis for criminal liability beyond what is expressly authorized by statute.
There have been other cases in which the U.S. Supreme Court rejected attempts by prosecutors to expand criminal copyright liability. In one such case, Dowling v. United States, a California man was charged criminally for selling bootleg recordings of Elvis Presley concerts through the U.S. Postal Service. After the matter had worked its way through the court system, Supreme Court Justice Harry Blackmun succinctly stated the rule that applies equally here: “The precision with which [Congress] has addressed the problem of copyright infringement for profit, as well as the precision with which it has chosen to apply criminal penalties in this area, demonstrates anew the wisdom of leaving it to the legislature to define crime and prescribe penalties.” Dowling v. United States, 473 U.S. 207, 228 (1985). [...]
Congress has had a number of opportunities to expand criminal liability for secondary copyright infringement, but instead has moved in the opposite direction. For example, in 2004, Congress rejected a bill that would have created secondary liability under the Copyright Act. See Inducing Infringement of Copyrights Act of 2004, S. 2560, 108th Cong. (2003). Subsequently, Congress twice amended the Copyright Act’s criminal provisions, and both times it omitted any reference to vicarious or contributory liability. See Prioritizing Resources And Organization For Intellectual Property Act of 2008, Pub. L. No. 110-403, §201(a), 122 Stat 4256 (2008); Family Entertainment And Copyright Act of 2005, Pub. L. No. 109-9, §103(a), 119 Stat 218 (2005).
It would be a radical departure to extend secondary liability into criminal proceedings when Congress has taken affirmative steps to scale back even civil liability of this sort. [...]
Notwithstanding the U.S. government’s improper attempt to extend criminal liability to alleged secondary infringement, the government’s indictment also falls short because it makes no attempt to allege facts that could constitute “double willfulness,” namely that Megaupload willfully aided and abetted a willful primary infringer. The government perhaps omitted such allegations because it was aware that Megaupload and its executives took steps to reduce potential copyright infringement by the company’s third-party users.
The prosecution’s allegation of a “Mega Conspiracy” is not enough to cure its flawed theory of criminal secondary infringement because conspiracy requires “a specific agreement to commit a specific crime.” See United States v. Burgos, 94 F.3d 839, 860 (4th Cir. 1996). Any “agreement” amongst the defendants could not possibly have contemplated secondary copyright infringement because, as noted, no such crime exists. Moreover, the indictment does not allege any “agreement” between the defendants and the third-party users, nor does it assert even a single instance of direct criminal infringement by any of the users. Therefore, even if secondary infringement were a viable legal theory for criminal liability, the indictment fails to set out a viable case for conspiracy.
The tl:dr; version:
Secondary civil liability based on common law (a la Napster or Grokster) is not criminal liability. There is no secondary criminal liability, and Congress rejected all attempts to create it.
To show "aiding and abetting," and "conspiracy," you need to show Megaupload willfully aided and abetted a willful primary infringer, and that there was a a specific agreement to commit that specific infringement. The government has not even alleged these things, much less shown them.
By the way, this is a clarification: I have no idea if Zach is "an employee" of Techdirt or not. He did write articles for this site.
Then again, so did I, and I did not ever get paid for writing them, nor was I ever an "employee" of Techdirt in any way. (Not that I'm complaining; I never even asked about payment, employment, or anything else.)
Since Zach wrote a hell of a lot of articles, I'm simply assuming that he got paid for one or more of them, and thus was some kind of "employee." I do not, however, have any particular evidence that this hunch is correct.
So, I may have been right all along. Or not. But there is at least a possibility that he got paid, so you're not a "liar" for assuming he did. (Just an ignoramus, like me.)