IP Law Daily Photo agent’s license agreements with publisher applied retroactively
Tuesday, January 12, 2016

Photo agent’s license agreements with publisher applied retroactively

By Thomas Long, J.D.

Licenses granted by a licensing agent to an academic publishing company applied retroactively to a professional photographer’s works that the publisher allegedly used without authorization, the federal district court in Brooklyn has determined. However, it could not be determined on summary judgment whether the publisher exceeded the scope of its licenses with respect to some of the alleged violations (Young-Wolff v. John Wiley & Sons, Inc., January 12, 2016, Oetken, J.).

Infringement dispute. Photographer David Young-Wolff alleged that John Wiley & Sons, Inc. (“Wiley”) unlawfully exploited several of his copyrighted works by obtaining the photographs from licensing agent PhotoEdit, Inc., and then publishing them in a manner outside the scope of its licenses. Wiley allegedly made unauthorized sales outside North America, exceeded the approved print-run, and allowed foreign-language translations without permission. Young-Wolff moved for summary judgment as to liability on 34 of 37 alleged unauthorized uses. Wiley cross-moved for summary judgment, asserting that it never made 11 of the alleged uses and 26 of the uses at issue complied with the relevant licenses.

Wiley’s motion on 11 uses. Wiley contended that Young-Wolff failed to provide sufficient evidence that it engaged in 11 of the alleged uses. Wiley outlined eight instances in which Young-Wolff’s photographs never—despite allegations to the contrary—appeared in Wiley’s publications. Young-Wolff did not contest Wiley’s assertion on these eight instances, and the court granted Wiley’s motion with respect to them. As for the three remaining contested uses, Young-Wolff failed to provide evidence of actual copying; Wiley was therefore entitled to summary judgment on these uses.

Retroactive license agreements. The core dispute between the parties was the effect of so-called “retroactive” license agreements between PhotoEdit and Wiley. Wiley purchased many of its licenses from PhotoEdit only after it published Young-Wolff’s photographs without authorization. This dispute raised three questions, according to the court. First, could an agreement between a licensing agent and a third party retroactively cure infringement claims against the third party by the exclusive license holder? Second, did the license agreements between PhotoEdit and Wiley act retroactively? Third, did PhotoEdit, as Young-Wolff’s agent, have the authority to convey a retroactive license to Wiley?

Retroactive licenses in general. The court held that an agreement between a licensing agent and a third party can, as a matter of law, retroactively cure claims of infringement asserted against that third party by the exclusive license holder. Section 501(b) of the Copyright Act—which provided that only the legal or beneficial owner of an exclusive right can bring an infringement action—did not render the retroactive licenses invalid. The fact that an agent lacked standing to independently bring a suit for infringement did not bear on the agent’s ability to act on behalf of its principal and affect the principal’s legal rights.

Licenses between PhotoEdit and Wiley. The court next determined that the licenses between PhotoEdit and Wiley had retroactive effect. It was not necessary for the licenses to expressly acknowledge and sanction a retroactive use; the clear terms of the agreements otherwise permitted such uses. By their terms, the licenses gave Wiley permission to use specific photos in specific publications, subject to stated conditions. Without any reference to prospective or retroactive use, the licenses were presumed to apply to both. Young-Wolff did not provide evidence that the licenses were procured fraudulently.

Agency relationship. Next, the court decided that PhotoEdit had actual authority to convey retroactive licenses on Young-Wolff’s behalf. Neither party offered a written agreement between Young-Wolff and PhotoEdit, but it could be deduced from their other words and conduct that Young-Wolff had given the relevant authority to PhotoEdit. Young-Wolff testified that he had no control over the terms of licenses between PhotoEdit and third parties. Young-Wolff also testified that PhotoEdit had resolved an earlier potential copyright infringement claim on his behalf and with his knowledge, which bolstered the conclusion that PhotoEdit was invested with unrestricted authority to license photos on Young-Wolff’s behalf.

The licenses did not contain print-run limits. Accordingly, Wiley was granted summary judgment on all claims based on asserted print-run violations. In addition, the licenses authorized “World” rights, so Wiley was granted summary judgment on related geographic violation claims. However, the licenses authorized only “English” rights, so the court had to separately address claims for unauthorized foreign-language uses.

Foreign-language translations. Young-Wolff alleged that Wiley improperly authorized the use of one photograph in foreign-language translations of the publications Abnormal Psychology 11e and Abnormal Psychology 12e. Wiley concedes that its wholly owned subsidiary John Wiley & Sons International Rights, Inc. (“Wiley International”) licensed the right to create foreign translations to John Wiley & Sons (HK) Ltd (“Wiley HK”) and John Wiley & Sons, Singapore Pte (“Wiley Singapore”). Wiley argued, however, that it was not secondarily liable for unlicensed uses by these entities. The court decided that there was conflicting evidence as to whether Wiley knew of the infringements, that Wiley induced the infringements, or that Wiley had the right and ability to supervise the entities that published the infringing works. Therefore, both parties’ motions for summary judgment were denied as to the alleged foreign-language translations.

The case is No. 12-CV-5230 (JPO).

Attorneys: Danial A. Nelson (Nelson & McCulloch LLP) for David Young-Wolff. Andrew David Jacobs (Frankfurt Kurnit Klein & Selz, PC) and Christopher Perry Beall (Levine, Sullivan, Koch & Schulz, LLP) for John Wiley & Sons, Inc.

Companies: John Wiley & Sons, Inc.

MainStory: TopStory Copyright NewYorkNews

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