Can a licensee sue someone for infringing the licensed work?

Most licenses are written for the good times: what the licensee may do and what it pays. The question on this page comes up when someone else starts copying the licensed work and the licensee, who has the most to lose, wants to act. Our page on IP licensing and assignments explains exclusive, sole and nonexclusive grants in business terms. Here is what the Copyright Act does with those labels when a lawsuit is on the table.

How a licensee's infringement claim works, step by step

1. Identify the right that was infringed. Copying prints infringes reproduction and distribution; streaming a video infringes public performance. Each is a separate exclusive right under 17 U.S.C. 106.
2. Check that you own that right. Under 17 U.S.C. 501(b), the legal or beneficial owner of an exclusive right may sue for infringement of that particular right committed while it is the owner.
3. Confirm the license is a valid transfer. An exclusive license is a "transfer of copyright ownership" under section 101, so it must be in a writing signed by the owner (section 204(a)).
4. Make sure the work is registered. The licensee's right to sue is "subject to the requirements of section 411," which bars a suit over a United States work until the claim is preregistered or registered (17 U.S.C. 411(a)).
5. Notify the owner and others. The court may require notice to anyone shown to have an interest in the copyright, and must require it for anyone whose interest is likely to be affected; it may require them to join and must let them intervene (501(b)).
6. File in federal court. Copyright claims belong in federal court, and our page on what happens in an Atlanta federal IP lawsuit walks through the local steps.

Why does exclusivity decide the right to sue?

Because the statute ties the right to sue to ownership, and section 101 treats an exclusive license as a form of ownership. The definition of "transfer of copyright ownership" includes an exclusive license "whether or not it is limited in time or place of effect, but not including a nonexclusive license." Section 201(d)(2) then says the owner of any particular exclusive right "is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner" (17 U.S.C. 201(d)). The House Report printed with section 201 gives the classic example: a local broadcaster with an exclusive license to transmit a work in a particular area for a particular period could sue an infringer of that right in its own name.

A nonexclusive licensee has permission, not ownership. The owner can grant the same permission to anyone, so copying by a third party infringes the owner's rights rather than the licensee's. That licensee's practical tools are contractual: a clause requiring the owner to enforce, or to let the licensee take part.

Who is a "beneficial owner"?

The House Report printed with section 501 gives this example: "an author who had parted with legal title to the copyright in exchange for percentage royalties based on sales or license fees." A songwriter who assigned a song to a publisher for a share of income, or an author who assigned a book for royalties, keeps an economic stake in the copyright and can be a beneficial owner. That matters when a publisher or label declines to pursue an infringer. Our page on what you keep and give up when you sell a music catalog shows why the form of the payment in a sale can affect this.

Who registers, and why does it matter to a licensee?

Registration is usually the bottleneck. Only a "claimant" may register, and the Copyright Office's rule defines a claimant as the author or a person or organization that has obtained ownership of all the rights initially belonging to the author (37 CFR 202.3(a)(3)). An exclusive licensee of one right does not fit that definition, so it depends on the owner to register. A license that leaves registration to chance can leave the licensee unable to sue at the moment it most needs to.

Timing also limits the money. Statutory damages and attorney's fees depend on registration timing under section 412, as our page on what you can recover in a copyright infringement lawsuit explains. Our page on registration cost and processing time compares the standard and special handling routes.

What changes the answer

• Scope of the grant. An exclusive license to publish an illustration in print does not give the licensee a claim against someone who uses it in a video. The infringed right must be the one licensed (501(b)). The same scoping question arises in newer deals, such as those covered on our page on licensing work for AI training.
• When the infringement happened. The licensee can sue only for infringement "committed while he or she is the owner" of the right. Copying before the license started, or after it ended, belongs to whoever held the right then.
• A conflicting transfer. If the owner signed two exclusive licenses for the same right, the first one signed prevails if recorded in time; otherwise a later good-faith licensee who records first can win (17 U.S.C. 205(d)). Our page on recording a copyright assignment or license explains the one-month window.
• Labels that do not match the terms. A document headed "exclusive" that lets the owner keep licensing the same right to others may not be an exclusive license. The definitions in section 101 turn on what is granted.
• Trademarks are different. The Lanham Act gives the claim for infringing a registered mark to "the registrant" (15 U.S.C. 1114(1)), defined to include its legal representatives, predecessors, successors and assigns (section 1127), not licensees. A licensee may have a separate false designation claim under section 1125(a), which is open to "any person who believes that he or she is or is likely to be damaged."

A worked example

Common mistakes

• Calling a deal exclusive without signing it. An exclusive license that is not in a signed writing is not a valid transfer, and the licensee's standing falls with it. See our page on whether a license must be in writing.
• Leaving out an enforcement clause. Licenses often say nothing about who sues, who pays, who controls settlement and how any recovery is split.
• Forgetting registration. A licensee who cannot get the owner to register cannot file for a U.S. work.
• Suing over the wrong right. A licensee holding only print rights may not claim for a streaming use.
• Waiting. A civil copyright claim must be brought within three years after it accrued (17 U.S.C. 507(b)).
• Not recording. An unrecorded exclusive license can lose to a later one recorded first.

What should an enforcement clause cover?

Whether you are the owner or the licensee, the clause should say: who has the first right to sue and how long that party has to decide; whether the other may sue if the first declines; who pays costs; who controls the case and any settlement, including a settlement that grants the infringer a license; how damages are split between the parties' losses; a duty to register works on request; and a duty to join the case or sign documents if a court requires it. Owners who advertise the availability of licenses, as our post Creative Smarts, Part 2 suggests, should settle these terms before the first license goes out.

What to do this week

1. Pull the license and confirm it is signed by the owner, and that it says "exclusive" for the right at issue.
2. Match the infringing use to a right, medium, territory and period in the grant.
3. Check the Copyright Office public records for registrations of each work, and for any other recorded transfers of the same right.
4. Ask the owner, in writing, to register any unregistered work, citing the license.
5. Preserve evidence of the copying: dated captures, test purchases and sales listings.
6. Decide with the owner who leads and how costs and any recovery are shared, before anyone sends a demand.

Frequently asked questions

Can a nonexclusive licensee ever sue?

Not under section 501(b), which requires ownership of an exclusive right. The licensee can ask the owner to act, and the license can require the owner to enforce or to cooperate.

Does the copyright owner have to join the lawsuit?

Not automatically. The court may require joinder of anyone claiming an interest and must require notice to anyone whose interest is likely to be affected; anyone with an interest who wants to join must be allowed to intervene (501(b)).

Can an exclusive licensee register the copyright itself?

Usually not. The Copyright Office's rule lets the author, or someone who has obtained all of the author's rights, register as claimant (37 CFR 202.3(a)(3)). An exclusive licensee of one right relies on the owner.

Can a licensee use the Copyright Claims Board instead?

The Board is a voluntary small claims forum with damage caps, described on our page on whether the Copyright Claims Board is a good option. Its caps and voluntary opt-out make it worth comparing with federal court before choosing either.

What if the licensor sells the copyright to someone else?

Section 205(d) decides conflicts between transfers: the one signed first prevails if it is recorded within one month after signing in the United States (two months if signed abroad) or before the later one is recorded. Recording the exclusive license promptly is what protects the licensee against a later buyer.

Can a trademark licensee sue a counterfeiter?

The claim for infringing a registered mark belongs to the registrant and its successors and assigns. A licensee should have the license spell out enforcement, and may have a separate claim under 15 U.S.C. 1125(a) depending on the facts.

Zala IP Law drafts license enforcement terms and advises owners and licensees when copying appears, and Shreepal J. Zala practices federal intellectual property law nationally. If someone is copying a work you license, request a consultation or call 404-313-1701.