Today’s post is another of the many currently-pending lawsuits by photographers against textbook publishers (recursive link) for under-reporting the number of copies of books that were published. In this case, the defendant publisher Pearson Education challenged the standing of plaintiff Viesti Associates, Inc., a stock photo agency.
Viesti had four different agreements with photographers, two of them signed before the lawsuit was filed and two signed afterwards trying to cure the standing problem. The first agreement was an assignment so that Viesti could bring an earlier suit against Houghton Mifflin Harcourt Publishing Company; the court held for various reasons the document didn’t assign the copyright of the photographs for this lawsuit.
Next up, Viesti and the photographers also had Agency Agreements. Viesti claimed these agreements assigned the copyright. Here is the paragraph in the agreement that matters:
If you can’t read it, it says:
1. I, the undersigned certify and warrant that I am the sole and exclusive owner of all negatives, prints, positives, original color transparencies, duplicates, stories, motion picture films, text information, and other photographic materials delivered to you, now and in the future. I appoint you as a nonexclusive Agent and representative in respect of the leasing and sale of said materials throughout the world. All negotiations shall be at your discretion without prior consultation with me, except when outright purchase of originals is to be negotiated.
The court found that this language was not an assignment of copyright; instead
the plain meaning of the agreements does not purport to convey to Viesti any ownership interest in the copyright. Rather, the agreements’ first paragraph contains the only reference to ownership and clearly states that the sole and exclusive ownership in the images is vested in the photographer.
There were other theories, based on this part of the agreement:
Viesti’s theory that it was a beneficial owner of the copyright because it earned money from the licensing didn’t work either. A beneficial owner is one who assigns legal ownership of a copyright in exchange for an economic interest in its exploitation.
Because Viesti’s economic interests are derived solely from its own use of the copyright and not from the use of the copyright by its legal owners, the photographers, Viesti is not a beneficial owner pursuant to § 501(b). Viesti does not reconcile its position with the well-settled rule that nonexclusive licensees lack standing to bring an action ….
The last paragraph, which gives Viesti “full and complete authority to make claims or institute suit, in your name if necessary, without further permission from me,” does not describe one of the exclusive rights set forth in § 106 of the Copyright Act and therefore isn’t a basis for standing.
Whether a plaintiff has standing is determined by the ownership at the time of suit; therefore the two agreements signed after the suit was filed didn’t cure the standing problem and the case was dismissed.
Viesti Associates, Inc. v. Pearson Education, Inc., No. 11-cv-01687-PAB-DW (D. Colo. March 19, 2014).
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