Expressly State the Right to Recover for Past Infringements in a Copyright Assignment

Like with patents, in order for a copyright assignee to recover damages for infringement occurring before the assignee obtained ownership of the copyright, the general rule is that the assignment must expressly so state. The Nimmer on Copyright treatise provides that a “grant of copyright—even if it purports to convey ‘all right, title and interest’—is generally construed not to assign existing causes of action, unless expressly included.”

This is illustrated in the case of Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155 (C.D. Cal. 2010). There Oskar sued a number of defendants for allegedly infringing Oskar’s copyright in source code for a computer program used in the operation of go-kart tracks. Contemporary Systems, Inc. (CSI) developed in 2001-2002 a computer software program (Oskar Software) to be used in connection with certain go-karting facilities. In 2005, CSI licensed the Oskar Software to and installed it on the premises of Pole Position Raceway. In 2006, certain defendants hired a programmer to design and develop a replacement software to operate Pole Position’s track, and that replacement software called Speed Sheet is developed. Pole Position declines to renew its license for the Oskar Software in August 2006.

On October 1, 2007, CSI transfers “all of its business assets related to the ‘Oskar’ business operations” to Plaintiff OSKAR Systems, LLC. Oskar later sued a number of defendants including Pole Position alleging infringement of Oskar’s copyright in source code for Oskar Software in connection with the Speed Sheet replacement program.

But one of the reasons that the copyright infringement claim failed was because the assignment transferring “all of its business assets related to the ‘Oskar’ business operations” to Plaintiff OSKAR Systems failed to expressly include causes of action for past copyright infringement. The allegedly infringing Speed Sheet software was developed in 2006 before Oskar Software became owner of the copyright via the October 1, 2007 assignment. And since there was no explicit assignment of claims for past copyright infringement, Oskar Software had no rights in copyright claims occurring before October 1, 2007.

There might be an exception to the general rule that assignment of claims for past infringement must be explicit. That exception might apply, for example, when “all assets of a business are sold in addition to and in connection with the sale of the copyright.” See SAPC, Inc. v. Lotus Dev. Corp., 699 F. Supp. 1009, 1012 (D. Mass. 1988), aff’d, 921 F.2d 360 (1st. Cir. 1990) (appeals court finding the contract “unambiguously transferred accrued claims for infringement” but did not explicitly mention them). Even if there is an exception, its better not to rely on it and instead explicitly include claims for past infringement.

If a copyright assignee desires to pursue claims for past infringement occurring before the date of the copyright assignment, the copyright assignment should include expressly the right to sue and recover for past infringements and damages.