• The Second Circuit on Assigning the Right to Sue

    by  • February 19, 2018 • copyright • 1 Comment

    I’ve written in the past (recursive link) about the phenomenon of copyright infringement lawsuits brought by photographers or their agents against textbook publishers. The textbook publishers allegedly exceed the license they had for the use of stock photos, either by exceeding the number of print copies authorized or using the works outside of the territorial scope of the license. It has been a hard-fought battle, with the publishers expending a great deal of effort to avoid getting to the substance of the suits by using procedural challenges to registration and, for discussion here, standing.

    I thought it was black letter law that only the owner of the rights infringed can bring a suit for infringement. This is a shoe that doesn’t fit well for agency-as-plaintiff, because the agency never, in reality, acts as a copyright owner. That is, it doesn’t use the works itself but is a licensing agent for the rights. The agencies have tried to find ways to paper up their relationship with the photographers to allow the agency to bring a claim, but my anecdotal recall is that it is generally unsuccessful. The courts examine the documentation and, a la Righthaven, find that the only right that the agent truly had was the right to sue.1

    That was the case in the district court opinion in John Wiley & Sons, Inc. v. DRK Photo. The district court held that none of the various agreements vested the photo agency, DRK Photo, with enough copyright interest to have standing to bring the copyright infringement lawsuit against John Wiley & Sons, the publisher.

    The thrust of the appeal wasn’t the reading of the documents though, it was to the very premise that the bare right to sue cannot be assigned. That is one of those things I thought was well-settled, and then the day comes when someone challenges it.

    The Second Circuit gives a thorough exegisis, re-examining the cases underlying the legal premise and the statute. Nevertheless, it reaches the same conclusion, that one cannot assign the bare right to sue on copyright, efficiency notwithstanding:

    Aggregation could provide a practical means of forestalling and compensating for repeated small infringements and Congress might reasonably have chosen to permit such aggregation by assignment. But, as drafted, the Copyright Act does not, in our reading, permit DRK to assert those claims when it has received nothing more than the bare right to sue for infringement and has never held an exclusive right under copyright in the photographs. It is for Congress, not our Court, to say otherwise.

    There was a dissent with some persuasive points too, also worth reading. Nevertheless I don’t see the Supreme Court in the future of this issue; the Ninth Circuit has the same standard. Frankly I’m on the side of the majority, mostly because we have enough problems with copyright trolling even with the current significant hurdle to standing.

    John Wiley & Sons, Inc. v. DRK Photo, No. 15-1134 (9th Cir. Feb. 16, 2017)
    John Wiley & Sons, Inc. v. DRK Photo, No. 11 Civ. 5454 (KPF) (S.D.N.Y. Feb. 21, 2014)

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    1. See this recent post discussing one exception. 
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