Photo Agency Can Press |Wiley Copyright Suit

     (CN) – Stock photo agency Minden Pictures Inc. has standing to sue a textbook publisher for allegedly printing hundreds of thousands of unauthorized copies of photos, the Ninth Circuit ruled on Friday.
     Minden Pictures Inc., “one of the world’s premium providers of wildlife and nature photos,” according to its founder and CEO, Richard Minden, sued one of the companies it granted licenses to – the 206-year-old publisher John Wiley & Sons Inc. – in September 2012.
     The Watsonville, Calif.-based stock photo agency claims that until recently, with each affiliated photographer, it entered into “agency agreements” that gave Minden the “unrestricted, exclusive right” to license the images without seeking special permission to do so.
     The 26-year-old firm claims it first thought of suing Wiley in 2010, the year when many affiliated photographers signed contracts authorizing Minden “to present, litigate, and settle any accrued or later accruing claims” over unauthorized uses of the images.
     But Minden also agreed under the contracts to “reassign its ownership of the images back to the [photographers] immediately upon the conclusion of any such litigation,” the firm says.
     The next year, Minden sued textbook publisher Pearson Education Inc., alleging it exceeded its limited licenses by printing hundreds of thousands of unauthorized copies of photos.
     After a San Francisco federal judge found that Minden lacked standing under the Copyright Act to bring the 2011 lawsuit, the agency and 12 of its photographers, including Frans Lanting, Jim Brandenburg, and Mark Moffett, sued Pearson in New Jersey federal court.
     Though the parties agreed to dismiss Minden’s appeal of the California ruling, a New Jersey federal judge refused on Oct. 3, 2013, to dismiss Minden’s second Pearson lawsuit.
     Now, Minden alleges that Wiley printed hundreds of thousands of photo-filled textbooks despite its license to print only 20,000 copies, and that the agency agreements and the 2010 assignments give Minden enough ownership interest in the photos to bring an infringement suit.
     After filing suit, Minden and the photographers signed a set of assignments that give the agency “co-ownership” of copyrights in images not previously assigned to it, but -unlike the 2010 contracts – do not provide for their own termination once litigation ends.
     Wiley moved to dismiss – and later for summary judgment – arguing that Minden lacked an ownership interest in the photos it licensed to the publishing house.
     U.S. District Judge Edward Chen granted the motions in San Francisco March 13, 2015, finding that the various agreements did not give Minden standing to sue under the Copyright Act.
     Minden appealed, and the Ninth Circuit reversed the lower court’s ruling Friday, finding that only Minden has the power to allow third parties to reproduce, distribute, and display the photos.
     “We see no reason why, having appointed Minden to manage the commercial use of their photographs in the first instance as their licensing agent, the photographers should not also be able to rely on Minden to protect and defend the licenses that it has issued on their behalf,” U.S. Circuit Judge William Fletcher wrote for the three-judge panel. “Nothing in the text of the Copyright Act, or in the agency agreements, compels a contrary conclusion.”
     Both the 1976 Act and common sense helped the court reach its finding, the ruling states.
     “Because we conclude that the agency agreements convey the rights to reproduce, distribute, and display the photographs to Minden via an ‘exclusive license’ to grant licenses to third parties, we hold that Minden may bring an infringement action to remedy the unauthorized reproduction, distribution, and display of the photographs by those to whom it has granted licenses,” Fletcher wrote. “We do not reach Minden’s remaining arguments.”
     Courthouse News is awaiting comment from Wiley.
     “We are, of course, happy with the decision,” Minden’s lawyer, Maurice Harmon, said. “This opinion essentially means copyright infringers can’t get off the hook by technical defenses. Wiley, rather than contesting the merits of our copyright infringement case, attempted to bar the courthouse doors for dozens of photographers who otherwise had no practical way to bring their individual cases against this serial infringer.”

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