By Thomas K. Lauletta, J.D.
An agency’s group registration of photographs protected the copyright of the individual photographer, but damages were limited to infringements occurring within the three years before suit was filed.
A group registration of a series of photographs by an agency under the agency’s name did not deprive the actual photographer of the right to sue for copyright infringement, the U.S. Court of Appeals in New York City has held, affirming a district court’s decision on this issue. However, the appellate court reversed the district court’s determination that publisher Scholastic Inc.—which had licensed several of the photographs but exceeded the print limits of its license—was not liable for copyright infringement. In so ruling, the appellate court held that the license agreement’s limitations constituted a condition precedent under New York state law, the violation of which gave rise to a claim for copyright infringement. The appellate court also reversed the lower court’s holding that allowed for the allowance of damages for more than three years prior to when the photographer filed his copyright infringement action (Sohm v. Scholastic Inc., May 12, 2020, Sullivan, R.).
Joseph Sohm, a professional photographer, shot the 89 photographs at issue. Around 1986, Sohm entered into agreements with third-party agencies, who issued limited licenses on Sohm’s behalf to Scholastic to use Sohm’s photographs. In the 1990s, one of the agencies, Corbis, registered several of Sohm’s photographs with the Copyright Office. Sohm assigned his copyrights to Corbis for registration purposes, with the intention that Corbis would reassign the copyrights back to him after registration was completed. Corbis later entered into a "preferred vendor agreement" with Scholastic, which set fee amounts for certain print-run ranges of his photographs. Scholastic at times exceeded the print run estimates in its invoices, which Sohn contended violated the license agreements and constituted copyright infringement. Scholastic contended that exceeding the print runs constituted "a contractual matter." Sohn alleged 117 infringing uses of the 89 photos. After discovery closed, the parties each moved for partial summary judgment as to certain of the uses.
The district court ruled on summary judgment that Corbis’s group registrations were valid under the Copyright Act for Sohm’s individual photographs. Hence, Sohm could bring a copyright infringement claim based on these registrations. The district court also held that in exceeding the print run limitations of its licenses Scholastic at most had committed a contractual violation, rather than copyright infringement. The court saw the print limitations as merely setting "acceptable and unacceptable" conduct, rather than setting a precondition for use, which would have supported a claim of copyright infringement. Each party appealed the above rulings as well as attacking several of the district court’s findings that underpinned them.
Validity of group registration. Scholastic argued that Solm’s copyright infringement claims were invalid because Corbis’s group copyright registrations failed to include Solm’s name as author. Affirming the district court, the appellate court held that the author that must be identified in a group registration under 17 U.S.C. § 409(a) is the author of the compilation, rather than the author of each underlying work. Accordingly, a valid group registration works to register each individual work included in the compilation.
Scholastic’s use as copyright infringement. Sohm appealed the district court ruling that Scholastic’s exceeding the print-run limitations contained in the licensing agreements constituted at most a contractual breach of a covenant, rather than copyright infringement. Citing New York state law, the appellate court interpreted the print-run limitations on Scholastic’s right to copy Sohm’s photos as containing unmistakable language of conditions precedent, which allowed Sohm to properly plead copyright infringement. Accordingly, the district court’s grant of summary judgement to Scholastic on this issue was reversed.
Time limitations. Scholastic appealed the district court holding that awarded Sohm damages relating to infringements occurring more than three years prior to the time that the infringement action was commenced. The appellate court agreed, citing the Supreme Court’s holding that under the Copyright Act’s three-year statute of limitations "an infringement is actionable within three years, and only three years, of its occurrence" and that "the infringer is insulated from liability for earlier infringements of the same work."
Accrual of claims—discovery rule. To determine when a copyright infringement claim arises, the district court applied the discovery rule, which requires that a civil action for copyright infringement must be commenced within three years after the claim accrued and that such a claim does not accrue until the copyright holder discovers, or with due diligence should have discovered, the infringement. Concluding that this decision was binding precedent in the Second Circuit that had not been overruled by the Supreme Court’s Petrella decision, the appellate court affirmed the district court’s reliance on the discovery rule.
Burden of proving the copyright claims. The appellate court affirmed the district court’s requiring Sohm to bear the burden of proving Scholastic’s use was outside the scope of the licenses. Sohm could not question the existence of the licenses, since he admitted they existed in his complaint. Therefore, it was proper to place the burden of proving any unauthorized copying by Scholastic on Solm.
Attorneys: Christopher Seidman (Harmon Seidman Bruss & Kerr LLC) for Joseph Sohm and Visions of America, LLC. Edward Rosenthal (Frankfurt Kurnit Klein & Selz, P.C.) for Scholastic Inc.
Companies: Visions of America, LLC; Scholastic Inc.
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