A Copyright Chicken and Egg Problem
by Pamela Chestek • March 6, 2023 • copyright • 0 Comments
As told in the complaint, plaintiff Gail Taylor nee Bridges started her concert photography career in high school, with some of her photographs published in a 1975 high school yearbook. By 1980, she had at least 1000 photos of the most famous artists and bands of the era. She stored the photos at her parents’ house.
In 1981 Taylor married the late Timothy Aaron, whose sister, Myra Nix, and niece, Andrea Johns, are defendanats in the lawsuit. Taylor and Aaron divorced in 1989. In September 1989, Taylor moved to San Antonio and left her furniture and photos at her parents’ house. She discovered the photos were missing in 1990 and contacted her ex-husband; he admitted to entering Taylor’s parents’ house and taking furniture but denied having the photographs. He said that all the concert photos he had were stolen from his truck and never recovered.
Aaron passed away in 2014. Defendants Nix and Johns found a box of Taylor’s photos, including Taylor’s concert photos and personal and childhood photos, in a shed on the ex-husband’s property. Johns contacted Taylor and agreed to return the photos. She did not though; instead, Nix, Johns and co-defendant Trina Hill formed defendant Mystery Ship LLC. Mystery Ship registered the copyright in some of the photos, including ones of Freddy Mercury and REM, and allegedly sold a license to publish at least one of them.
Taylor filed a lawsuit in Gwinnett County (GA) Superior Court for the return of the photographs. She thereafter filed a lawsuit in federal court for a preliminary injunction, although the basis for a federal claim could have been a little crisper. The defendants filed a motion to dismiss the federal lawsuit on several grounds, including that the suit was a claim for return of the physical property, not copyright infringement, and, if it was a claim for copyright infringement, the claim should be dismissed because Taylor had not registered the copyright in the photos.
On the defendants’ first theory, the court held that the complaint stated a claim under the Copyright Act:
Although Plaintiff’s Complaint focuses on the relief sought—a temporary and permanent injunction—rather than a substantive federal claim, it is ostensibly a copyright infringement action. Plaintiff cites 17 U.S.C. § 408(a) and 17 U.S.C. § 502(a) as the bases for her suit.
However, while § 502 allows a court to grant injunctive relief on a copyright claim, one must have registered the copyright before bringing a lawsuit. Taylor did not have any copyright registrations—she couldn’t, because she wasn’t in possession of the photographs.
Taylor argued that Foundation for Lost Boys & Girls of Sudan, Inc. v. Alcon Entertainment, LLC, No. 1:15-cv-00509-LMM (N.D. Ga. Mar. 22, 2016) provided an exception to the registration requirement. In that case, the plaintiff also did not have possession of the photographs and therefore could not register the copyright. In Lost Boys the lawsuit was not dismissed, though, because there were co-pending counts that would allow the plaintiff to take possession of the copies and therefore be able to register the copyright. But recall that Taylor first filed a state law claim for return of the photographs. By the time the federal court decided the motion to dismiss, the state court jury had decided against her on her claim for return of the photos.
Therefore, unlike the plaintiffs in Foundation for Lost Boys & Girls, Plaintiff’s opportunity to register the copyrights has already been foreclosed. And without any valid substantive claim to sustain her action, Plaintiff cannot get injunctive relief.
The court also distinguished an earlier Eleventh Circuit decision, Pacific & Southern Co. v. Duncan, 744 F.2d 1490 (11th Cir. 1984). In Duncan, the court granted an injunction against future works, which by definition lack a copyright registration. However, Duncan “allowed injunctive relief to be sought prior to registration because the plaintiffs had already shown infringement of a registered work and demonstrated that future infringement was both likely and predictable based on the series of works at issue” (quoting Fourth Est. Pub. Ben. Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1342 (11th Cir. 2017)). Here, though,
Plaintiff admits that she has not registered any copyrights. She has not indicated that she continues to create similar works, and she has not alleged potential infringement of future works. Instead, she alleges only that Defendants have already misused her photos, taken several decades prior, by registering and selling them without her permission and that they may continue to infringe her rights in the same existing set of photos, which is already in Defendants’ possession.
The case was therefore dismissed. With cold comfort, the court advised her
that if Plaintiff does acquire her photographs at a later date, she may be able to register copyrights and then bring an infringement action, at which point she would be able to recover for any infringement that occurred before registration.
The verdict form for the state law case had claims for conversion, theft of lost or mislaid property, unjust enrichment, and tortious interference. None of the defendants were the ones who took the photos or misled Taylor about their existence, so it’s understandable why the claims for return of the photos failed. But it seems undisputable that Taylor owns the copyright and would likely have a successful infringement claim, if she can only get the darn things registered. This seems like a statutory gap, even though the fact patterns seems quite likely to arise—anytime an artist creates a single copy, such as a painting or sculpture, without remembering to take a photo before selling it.
I’m not sure why Taylor couldn’t register the copyright in photos that the defendant had registered, or why she didn’t plead infringement claims for the one that reportedly was licensed by the defendant. She should have had access to the images for the registered works, either from whomever might have published them or by obtaining copies of the deposit from the Copyright Office. She may have a successful stand-off though—if, every time the defendants publish a photo, Taylor then registers the copyright in the photo and sues them and the party that was granted the license, the defendant can’t build much of business on the photos. There should be some bargain that they can strike.
Taylor v. Mystery Ship, LLC, No. 1:22-CV-01617-LMM (N.D. Ga. Dec. 19, 2022).
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