Tag Archives: Malibu Media

Who are you to sue?

Supreme Court, Appellate Division - BrooklynWhat’s the difference between standing — the right to seek judicial redress for an alleged wrong — in copyright and patent?

Who else, besides someone litigating the matter, but Pamela Chestak would ask that question, and understand how to answer it:

I’m curious about the different legal standards that the courts apply in patent versus copyright cases when deciding whether a plaintiff who acquired the rights through transfer has standing. Patent law seems draconian, as exemplified byAbraxis Bioscience, Inc. v. Navinta, LLC.

In Abraxis (blogged here and here), standing for a patent infringement suit was foiled by a complex transfer that would have been perfectly fine under New York law, the choice of law for the transaction, but that wasn’t under the law of the Federal Circuit. Even an assignment to a corporate family member, perhaps carefully worded for tax purposes, can deprive a party of standing for patent infringement, like here and here. Often there are attempts to fix the problem with confirmatory assignments, but often the effort fails.

Compare this to copyright cases. Twice in the past few weeks I’ve seen a statement like this, which I find somewhat remarkable: “When the parties to an assignment have no dispute over the transfer, third-party infringers lack standing to invoke Section 204′s writing requirement to avoid suit.” Malibu Media, LLC v. DoesNo. 12-2078 (E.D. Pa. Jan. 3, 2013). . . .

I don’t really see any support in the statutory language for the different treatment between patent and copyright cases. We have “patentee” and “owner”–equivalent terms–as the only ones who may bring suit. Transfers have to be in writing in both cases. In both cases, the burden is on the plaintiff to prove ownership–which is the point that I think the copyright cases play fast and loose with. I mean seriously, a defendant doesn’t have standing to ask that the plaintiff be put to its proof that it owns the rights it is asserting? Personally, I think that’s a bit of crazy talk.

And we hate it when judges talk crazy.

But how about the Righthaven cases?  One of the big deals about the Righthaven decisions was that holding that Righthaven didn’t really have anything to sue for infringement over, or had merely, as Marc Randazza and I put it in one (relatively insignificant) Righthaven brief, obtained a “chose in action,” which the Copyright Act does not authorize.  In other words, Righthaven didn’t have standing to sue.

The Court ultimately agreed with this argument, Read More…