• It’s Hard to Get Copyright Standing Right

    by  • March 27, 2013 • copyright • 1 Comment

    I gotta think that book publisher Pearson Education has lousy recordkeeping. I found 10 reported cases filed against it, not including this one, alleging that Pearson Education exceeded the scope of the license for photographs it uses in books. The plaintiff in Minden Pictures, Inc. v. Pearson Education, Inc. claims “that Pearson has been sued on similar copyright claims by others in at least 15 other federal actions, i.e., that Pearson is a willful, repeat offender.” Here are cases I found:

    StockFood America, Inc. v. Pearson Educ., Inc., No. 2:12-cv-124-JAW (D. Me.)
    Bean v. Pearson Educ., Inc., No. CV 11-8030-PCT-PGR (D. Ariz.)
    Clifton v. Pearson Educ., Inc., No. 5:11-cv-03640-EJD (N.D. Cal.)
    DRK Photo v. Pearson Educ. Inc., No. CV 11-8097-PCT-PGR (D. Ariz.)
    Frerck v. Pearson Educ., Inc., No. 11-cv-5319 (N.D. Ill.)
    Grant Heilman Photography, Inc. v. Pearson Educ., Inc., No. 11-cv-4649 (E.D. Pa.)
    Pacific Stock, Inc. v. Pearson Educ., Inc., No. 11-00423 SOM/BMK (D. Haw.)
    Cole v. Pearson Educ. Inc., No. 10 Civ. 7523 (JFK) (RLE) (S.D.N.Y.)
    Psihoyos v. Pearson Educ., Inc., No. 10 Civ. 5912 (JPO) (S.D.N.Y.)
    Wu v. Pearson Educ. Inc., No. 10 Civ. 6537 (KBF) (S.D.N.Y.)

    Because the photographic industry uses an agency model, Pearson Education has the opportunity to attack standing. Here, Minden Pictures had two theories why it had standing to sue: it had both copyright assignments and documents entitled “Agency Agreements” with its photographers.

    But Minden Pictures had all sorts of problems with the documents. The court threw out the Agency Agreements because of late disclosure, not believing Larry Minden or his lawyer’s claim that they didn’t realize the Agency Agreements were relevant. (The court held this opinion in no small part because, during the litigation, Larry Minden was sending out new agreements for two photographers to sign, saying the new agreements were to “help insure against some nit picking judge from finding fault with” the agreements.)

    So Minden Pictures was left with copyright assignments only, and the agreements didn’t do the job. Here is one of the assignments:

    Minden Pictures Assignment

    If you can’t read the image, it says:

    The undersigned, the sole owner of the copyrights in the undersigned’s images (“the Images”) selected by Minden Pictures, Inc. (“Agency”) and included in its collection, hereby assigns to agency co-ownership of all copyrights in the Images. This assignment authorizes Agency, in its sole discretion, to present, litigate and settle any accrued or later accruing claims, causes of action, choses in action — which is the personal right to bring a case — or lawsuits, brought by Agency to address unauthorized uses of the images by licensees of Agency, as if Agency were the undersigned. Agency agrees to reassign its co-ownership of the Images back to the undersigned immediately upon the conclusion of such litigation.

    Any proceeds obtained by settlement or judgment for said claims shall, after deducting all costs, expenses and attorney’s fees, be divided as provided in the Photographer’s Agency Agreement.

    As we know from RightHaven, the person who sues for copyright infringement has to own a substantive right to exclude; owning the “bare right to sue” isn’t good enough.

    But the court held that it was only a “a bare right to sue” here. Despite having characterized Pearson Education’s interest as a joint ownership in the agreement,

    it’s not the label that the parties put on an agreement — plaintiff’s label cannot serve as a method to subvert summary judgment…. The sole function of the copyright assignment is to grant an exclusive license to bring suit and divvy up any returns; there is no right to participate in any royalties apart from the litigation. Beyond the express terms, the parties’ intent is also evidence from what is missing from the agreement: a term specifying the duration of the license. Instead, the copyright assignment terminates automatically upon conclusion of any litigation with the reassignment of “co-ownership” back to the copyright owners. If the parties genuinely intended to transfer co-ownership, under the terms of the contract Minden would retain that co-ownership in perpetuity if it failed to bring suit. Such a reading would put Minden on coequal footing with the copyright owners. The copyright assignments, however, cannot reasonably be read in this manner. Implicitly, the contracting parties intended for Minden to bring the instant suit and not for it to be a genuine, potentially-permanent owner of any of the exclusive rights under Section 501(b).

    The Agency Agreement is a grant of an exclusive license, so I’m curious what led Minden Pictures to believe that it needed to enter into amendments and assignments with the photographers, and more importantly, why it didn’t produce them in a more timely fashion.

    Minden Pictures is appealing. Maybe we’ll find out more of the story.

    Minden Pictures, Inc. v. Pearson Education, Inc., No. C 11-05385 WHA (N.D. Calif. March 5, 2013).

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    One Response to It’s Hard to Get Copyright Standing Right

    1. Freddy
      April 1, 2013 at 10:17 pm

      Let’s backdate some license agreements because some nitpicking Judge actually wants to see the basis for how we have standing That was funny.

      On that other convoluted agreement that purports to assign c0-ownership to the extent needed to provide standing and then re-assign it back when litigation is concluded. If my memory serves it smells like the same kind of agreement involved in the Meunch 2nd Circuit case that Corbis would get.

      Is this common in the photo industry to try to obtain standing in this manner ? It never seems to satisfy 501(b).

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