IP Law Daily, COPYRIGHT—N.D. Cal.: Photo agency lacked standing to sue textbook publisher, (Nov 25, 2013)

By Thomas Long, J.D.

A stock photography agency that licensed images taken by two photographers could not go forward with 485 copyright infringement claims against a textbook publisher, the federal district court in San Francisco has decided (Muench Photography, Inc. v. Pearson Education, Inc., November 19, 2013, Orrick, W.). The agency lacked standing to sue for infringement on behalf of the photographers. In addition, the claims were based on invalid copyright registrations.

The plaintiff, Muench Photography, Inc. (“MPI”) was formed by David and Marc Muench as a stock photography agency to license photographic images taken by the Muenches. MPI allegedly gave permission to a third-party stock photo agency, Corbis Corporation, to license the photos at issue to defendant Pearson Education, Inc.

Pearson and Corbis had a long-standing and ongoing business relationship dating back to at least 1997. Pearson and Corbis had entered into a number of master licensing agreements (“MLAs”) through which Pearson obtained the nonexclusive right to use images licensed by Corbis in Pearson’s publications. Corbis and Pearson entered into three MLAs in 2001, 2004, and 2007, which governed almost every usage of the photographs at issue in this case. Pearson argued that these MLAs provided Pearson with a nonexclusive, general license to use images obtained from Corbis in Pearson’s publications, including the Muenches’ photos.

Marc and David Muench had entered into representation agreements with Corbis, in their individual capacities. The agreements provided that if the Muenches chose to participate in a copyright registration program offered by Corbis, Corbis would register the copyrights in the Muenches’ images on their behalf. Corbis registered copyrights for some of the photos at issue. In addition, David Muench personally registered the “David Muench Collection No. 1.”

Between 2001 and 2009, Corbis sold Pearson “limited licenses authorizing Pearson to reproduce the Photographs [at issue] in certain education publications. MPI alleged that Pearson had exceeded authorized print runs of textbooks containing the Muenches’ photos. On July 27, 2010, Corbis notified MPI that Corbis did not intend to take any action regarding alleged “unauthorized uses” of the photographs at issue by Pearson, and Corbis “assigned its claims” to MPI. MPI filed suit against Pearson on April 18, 2012, asserting copyright infringement. Pearson moved for summary judgment, arguing, alternatively, that MPI lacked standing to bring the infringement claims and that the claims were based on invalid copyright registrations.

Standing to sue. MPI lacked standing to sue Pearson, the court determined. MPI failed to produce evidence that it was the owner of the copyrights for the photographs at issue. The complaint asserted that MPI owned the copyrights to all of the photos, but the complaint also said that David and Marc Muench took the pictures. There was no evidence that the Muenches transferred their copyright interests to MPI or that the photographs were works made for hire.

Corbis’s right to use the photographs at issue stemmed from its agreements with David and Marc Muench as individuals, not MPI. The Muenches signed the agreements with Corbis in their individual capacity. MPI produced no other documentary evidence that it licensed any of the photographs at issue to Corbis.

MPI argues that it has standing to sue because it owned the copyrights to the photographs at issue, which were created by the Muenches within the scope of their employment as MPI employees. However, in the court’s view, MPI put forth nothing but “bald, uncorroborated, and conclusory assertions” that it owned the copyrights to the photographs. Declarations by Marc and David Muench that they were employees of MPI and took the photos while working within the scope of their employment were uncorroborated and self-serving. In addition, MPI did not explain why the agency agreements were between Marc and David Muench and Corbis, but there were no such agreements between Corbis and MPI.

Registration requirement. The infringement claims also failed because they were based on invalid copyright registrations, the court held. A valid copyright registration is a prerequisite for a copyright infringement action.

Pearson argued that, even if MPI had standing, it could not establish that the photos at issue were validly registered because: (1) collateral estoppel barred MPI’s re-litigation of the validity of the registrations and (2) compilation registrations for the works were invalid because they did not identify the author or title of the works.

Collateral estoppel. The court determined that collateral estoppel barred 406 of MPI’s 485 claims. In a 2010 decision, the federal district court in New York City held that the compilation registrations asserted by MPI did not validly register the individual photographs contained in the compilations because MPI was not listed as an author of each work as required by 17 U.S.C. §409(2).

The issue of the validity of MPI’s asserted registrations was fully litigated in the prior case and was the same issue now before the court. MPI did not argue that it lacked a full and fair opportunity to litigate the issue. MPI—the party against whom collateral estoppel was being asserted—was the plaintiff in the prior action, so the privity element was met, the court said. Although the New York action was still pending, the judgment in that case was “sufficiently firm” to be given conclusive effect.

Compilation registrations. Even if collateral estoppel did not apply, the court determined that compilation registrations did not automatically register the underlying works. Section 409 of the Copyright Act requires that a registration application include the name of the claimant, the name of the author, and the title of the work. A compilation of works may be registered as one, in which case the registration requires identification of any preexisting work or works that the compilation is based on or incorporates. None of the compilation registrations asserted by MPI identified the titles of the photographs, and six of the seven registrations did not mention MPI or the Muenches as authors.

In the court’s view, the text of the Copyright Act indicated that registration of a compilation did not extend copyright protection to the underlying works. Because the compilation registrations at issue did not contain the information required by Sec. 409 with regard to the underlying works, the registrations could not encompass the individual photos.

Accordingly, Pearson’s motion for summary judgment was granted on the alternative grounds of standing and the invalidity of the copyright registrations.

The case is No. 12-cv-01927-WHO.

Attorneys: Robert William Crockett (Harmon & Seidman LLC) for Muench Photography, Inc. Andrew Colby Whitney (Morgan, Lewis & Bockius LLP) for Pearson Education, Inc.

Companies: Muench Photography, Inc.; Pearson Education, Inc.; Corbis Corporation

Cases: Copyright CaliforniaNews