• You Still Have to Own the Copyright

    by  • November 14, 2008 • copyright

    The requirement for a written assignment of copyright can bedevil a copyright claimant, as in Tacori Enterprises v. Rego Manufacturing. In Tacori, the plaintiff was vulnerable because the assignment of copyright was not in a writing, although the original copyright owner and assignee agreed that the copyright had been assigned. Luckily for copyright owners, the cases generally teach that a defendant cannot collaterally attack the validity of the assignment where there is no dispute between the transferring parties about who owns the copyright.

    But the rule is not a free pass on ownership questions. In any copyright case the plaintiff has the burden of proving the ownership of a valid copyright. In the case like Tacori of a non-written assignment, there is no question who the owner is at the time of suit, it’s only a question of complying with the writing requirement (although the absence of a writing creates all sorts of problems with the accuracy of the registration, another basis for attack).

    In Giddings v. Vision House Production, Inc., years before she filed the lawsuit plaintiff Lori Jo Giddings had assigned her copyright in nine paintings to various family members and her lawyer in order to keep them out of the reach of the bankruptcy court. The assignment was abundantly clear:

    The undersigned does hereby sell, transfer, convey, absolutely assign and set over . . . all right, title and interest in said original mixed media painting . . . including without limitation all copyrights and the right to secure copyright registration and any and all copyright renewal rights and in any works derived therefrom throughout the entire world and any and all rights the assignor now has or to which he may become entitled under existing or subsequently enacted federal, state or foreign law statutes or regulations for or during the full term of said copyright including without limitation the right to produce the artwork and copies of prints, the right to prepare derivative works based on the artwork, the right to distribute copies of the artwork, the right to perform and display the artwork publically [sic].

    [ellipses in original; brackets added]. The alleged infringement arose as the result of a failed business relationship and revolved around how the defendant used some of the works after the relationship ended, with the infringement ending in September, 2005 when the lawsuit was filed. But Giddings didn’t have the works assigned back to her until February 8, 2008, and assigned back without the express transfer of accrued causes of action.

    Giddings claimed that the defendant didn’t have standing to attack the validity of her ownership, based on the oral transfer cases. The argument didn’t work for the court and, while “the Court is reluctant to dispose of a case without addressing the merits of the claim,” her case was dismissed for lack of subject matter jurisdiction.

    Giddings v. Vision House Prod., Inc., No. CV-05-2963 PHX MHM, 2008 U.S. Dist. LEXIS 89419 (D. Ariz. Oct. 21, 2008).

    © 2008 Pamela Chestek