John Wiley Partial Photo Copyright Win Affirmed On Appeal

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By Peter Leung

Educational books publisher John Wiley & Sons Inc. won’t have to defend against some of the copyright infringement claims by brought DRK Photo, because DRK doesn’t have enough rights in the images to bring a lawsuit.

About 100 photographers signed agreements assigning DRK the right to sue to enforce their copyrights, but that isn’t enough because that’s only a “bare right to sue,” the U.S. Court of Appeals for the Second Circuit ruled Feb. 16 in a split decision.

The decision may make it more difficult for agents like DRK to sue on behalf of individual photographers.

DRK acts as an agent for individual photographers, who sign agreements to allow DRK to license their photos. John Wiley had taken several such licenses from DRK, which give the publisher a non-exclusive right to use a photo a certain number of times. DRK sued John Wiley, alleging that the publisher had exceeded the number of uses in several instances.

The trial court said DRK didn’t have the right to sue on behalf of those photographers, and DRK appealed.

Exclusive Rights Needed

To have standing, the plaintiff must have a legal or beneficial right to one of the exclusive copyright rights, such as the right to reproduce, to distribute, or to display. A bare right to sue, without one of the exclusive rights under copyright, doesn’t convey standing to sue, Judge Susan L. Carney wrote, in an opinion that Judge Denny Chin joined.

Congress clearly set the requirement in 17 U.S.C. § 501(b) by stating that the one with the “legal or beneficial owner of an exclusive right under a copyright” is “entitled” to sue, the appeals court said. That language shows that Congress intended to limit the right to sue in copyright, even though the common law allows for the bare assignment of a right to sue in other instances, the majority said.

Congress has a similar requirement for patents, and there’s a “historic kinship” between the two areas of law, the majority said.

The majority also rejected DRK’s argument that the agreements gave it the exclusive rights under copyright.

The agreement in question says the photographer will assign all copyrights in the photo to DRK, which will register it with the Copyright Office and then assign the copyrights back to the photographer, after the registration is complete, and after the resolution of any infringement actions. The agreement also assigns to DRK “all right, title and interest” which constitute the right to file an infringement lawsuit.

The majority said the agreement was ambiguous as to whether DRK got any of the exclusive rights, and so it looked at external evidence about the terms of the agreement. It noted that DRK had told photographers that the agreement was nonexclusive, meaning that they could use other agents as well. DRK also told photographers that the rights transfer was only for registering with the Copyright Office and to file lawsuits.

Both of the statements support the conclusion DRK had none of the exclusive rights required to file a copyright lawsuit, the majority said.

Dissent

Judge Barrington D. Parker dissented, saying that Section 501(b) doesn’t prohibit the assignment of a bare right to sue. The statute doesn’t state that a plaintiff must have one of the exclusive rights in order to sue, because it only refers to who is “entitled” to sue, which suggests it isn’t a requirement, he said.

The trial court found DRK did have the right to sue on behalf of other photographers that signed a different agreement, and that part of the case wasn’t appealed.

Levine Sullivan Koch & Schulz LLP represented John Wiley, while Harmon & Seidman LLC represented DRK.

The case is John Wiley & Sons v. DRK Photo , 2018 BL 52803, 2d Cir., No. 15-1134, 2/16/18 .

To contact the reporter on this story: Peter Leung in Washington at pleung@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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