Palmer/Kane LLC v. Rosen Book Works LLC

• Decision Date: 30 August 2016
• Docket Number: 15-cv-7406 (JSR)
• Citation: 204 F.Supp.3d 565
• Parties: PALMER/KANE LLC, Plaintiff, v. ROSEN BOOK WORKS LLC d/b/a Rosen Publishing Group, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

204 F.Supp.3d 565

PALMER/KANE LLC, Plaintiff,

v.ROSEN BOOK WORKS LLC d/b/a Rosen Publishing Group, Inc., Defendant.

15-cv-7406 (JSR)

United States District Court, S.D. New York.

Signed August 30, 2016

Clyde Alvin Shuman, Veronica Mullally Munoz, Daniel J. Melman, Pearl Cohen Zedek Latzer Baratz LLP, New York, NY, for Plaintiff Palmer/Kane LLC.

Kieran Gerard Doyle, Thomas Kjellberg, Cowan, Liebowitz & Latman, P.C., New York, NY, for Defendant Rosen Book Works LLC d/b/a Rosen Publishing Group, Inc.

OPINION AND ORDER

JED S. RAKOFF, United States District Judge.

In this copyright action, plaintiff Palmer/Kane LLC ("Palmer/Kane") brings suit against defendant Rosen Book Works LLC ("Rosen") alleging infringement of plaintiff's copyrights in numerous stock photographs (the "Images"). Both parties sought summary judgment on the 11 remaining Images at issue. At the final pre-trial conference held on August 3, 2016, the Court awarded summary judgment to defendant on plaintiff's claims arising out of defendant's alleged infringement of Image Nos. 1, 8, 10, 12, 15, 16, and 18.¹ In a "bottom-line" Order issued the next day, the Court also awarded summary judgment to defendant on plaintiff's claims arising out of defendant's alleged infringement of Image Nos. 6 and 13. In the same Order, the Court also awarded summary judgment to plaintiff as to infringement on plaintiff's claims arising out of defendant's use of Image Nos. 2 and 5, leaving the issue of damages flowing from such infringement for trial. This Opinion and Order explains the reasons for those rulings.

Plaintiff Palmer/Kane is a stock photography production company that has been in business since 1975. See Palmer/Kane LLC's Rule 56.1 Statement in Support of Its Mot. for Partial Summ. J. of Copyright Infringement ("Pl's Local Rule 56.1 Stmt.") ¶¶ 4, 5, ECF No. 55.² Palmer/Kane licenses its stock photography through licensing agencies such as non-parties Corbis Corporation and Alamy Limited. See id. ¶ 4. Defendant Rosen has been in the business of creating and publishing children's library books since 1981. See Decl. of Roger Rosen in Further Support of Def.'s Mot. for Partial Summ. J. dated July 18, 2006 ("Rosen Decl. dated July 18, 2016"), ¶ 1, ECF No. 74.

Over the relevant time period, Rosen licensed plaintiff's images through Corbis on an ongoing basis under a series of Preferred Pricing Agreements ("PPAs") that set out the terms, rights, and pricing that governed Rosen's use of images licensed from Corbis. See Decl. of Steve Spelman dated June 25, 2016 ("Spelman Decl. dated June 25, 2016"), ¶¶ 4-5, ECF No. 65. The first PPA (the "2003 PPA") became effective September 12, 2003. See Decl. of Clyde A. Shuman in Opp'n to Def.'s Mot. for Partial Summ. J. dated July 11, 2016 ("Shuman Decl. dated July 11, 2016"), Ex. 1, ECF No. 62-1. The second PPA (the "2006 PPA"), which superseded the 2003 PPA, became effective May 15, 2006. See id. Ex. 2, ECF No. 62-2. The third PPA (the "2008 PPA"), which superseded the 2006 PPA, became effective October 6, 2008. See id. Ex. 3, ECF No. 62-3. Each PPA incorporated a set of standard terms and conditions, referred to in the 2003 PPA as the "Terms and Conditions," and in the 2006 and 2008 PPAs as the "End User License Agreement" (all referred to herein, for the sake of simplicity, as "EULAs"). Each of the three EULAs specified, inter alia , that images obtained from Corbis were licensed for use by Rosen within one year from the date of the relevant invoice for such use. See 2003 PPA at 6; 2006 PPA, EULA § 3(b); 2008 PPA, EULA § 3(b). As a matter of practice, however, Rosen would frequently use plaintiff's images prior to licensing the images from Corbis.

In its operative pleading, Palmer/Kane alleged that Rosen infringed its copyrights in 19 stock images, which Rosen allegedly used in 21 publications either without a valid license or beyond the scope of the license it had been granted. See First Am. Compl., Exs. A, B. At the time the parties moved for summary judgment, however, only 11 of Palmer/Kane's images remained in dispute: Image Nos. 1, 2, 5, 6, 8, 10, 12, 13, 15, 16, and 18.³

Plaintiff initially moved for partial summary judgment on its claims for infringement relating to Image Nos. 10, 12, 15, 16, and 18. Defendant initially moved for partial summary judgment on plaintiff's claims for infringement relating to Image Nos. 1, 2, 5, 6, 8, 10, 12, and 13, in addition to one of plaintiff's claims relating to Image No. 16. However, in their opposition briefs, both parties requested summary judgment on all Images its adversary was moving on as well, such that plaintiff sought summary judgment as to infringement for each of the 11 Images at issue and such that defendant sought dismissal of plaintiff's action in its entirety. Since each side had a chance to reply to these broadened requests, both in papers and in oral argument, the Court treated the broadened requests as the appropriate scope of the respective motions.

Under Rule 56(a) of the Federal Rules of Civil Procedure, summary judgment is appropriate when the "movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The movant bears the burden of demonstrating the absence of a genuine dispute of fact, see Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), and, to award summary judgment, the court must be able to find "after drawing all reasonable inferences in favor of a non-movant" that "no reasonable trier of fact could find in favor of that party," Heublein, Inc. v. United States , 996 F.2d 1455, 1461 (2d Cir.1993). However, with respect to issues as to which the burden of proof lies with the nonmoving party, "the burden on the moving party may be discharged by ‘showing’—that is, pointing out to the district court—that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett , 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A fact is considered material "if it might affect the outcome of the suit under the governing law," and a dispute of fact is deemed genuine when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Holtz v. Rockefeller & Co. , 258 F.3d 62, 69 (2d Cir.2001) (internal quotation marks omitted).

To prevail on a claim for copyright infringement, a plaintiff must demonstrate "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). "When the contested issue is the scope of a license, rather than the existence of one, the copyright owner bears the burden of proving that the defendant's copying was unauthorized under the license ...." Graham v. James , 144 F.3d 229, 236 (2d Cir.1998) ; see also Harris v. Simon & Schuster, Inc. , 646 F.Supp.2d 622, 630 (S.D.N.Y.2009) ("A valid license, either exclusive or non-exclusive, immunizes the licensee from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with the licensor." (internal quotation marks omitted)).

However, under the Copyright Act (subject to certain exceptions not relevant here) "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a). Though the Supreme Court has clarified that this "precondition to filing a claim" is not jurisdictional in nature, Reed Elsevier, Inc. v. Muchnick , 559 U.S. 154, 157, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010), "proper registration is a prerequisite to an action for infringement," Whimsicality, Inc. v. Rubie's Costume Co. , 891 F.2d 452, 453 (2d Cir.1989). See also Family Dollar Stores, Inc. v. United Fabrics Int'l, Inc. , 896 F.Supp.2d 223, 229 (S.D.N.Y.2012) ("A copyright holder may only sue for infringement of that copyright if it possesses a valid copyright registration." (emphasis added)). Under 17 U.S.C. § 410(c), a certificate of copyright registration "constitute[s] prima facie evidence of the validity of the copyright and of the facts stated in the certificate," and, "[o]rdinarily, a copyright registration is presumed valid," Overseas Direct Imp. Co. v. Family Dollar Stores Inc. , 929 F.Supp.2d 296, 309 (S.D.N.Y.2013). However, "the presumption of validity may be rebutted where other evidence in the record casts doubt on the question." Fonar Corp. v. Domenick , 105 F.3d 99, 104 (2d Cir.1997) (internal quotation marks and alteration omitted).

Here, Rosen argues that Image Nos. 8, 12, 15, 16, and 18 are not validly registered under Registration No. VA 1-297-358 (the "'358 Registration");⁴ that Image Nos. 1 and 13 are not validly registered under Registration No. VA 1-816-720 (the "'720 Registration"); and that Image No. 10 is not validly registered under Registration No. VA 1-811-724 (the "'724 Registration"). In particular, Rosen contends that although these Registrations were apparent "group" registrations, they do not satisfy the conditions upon which such registrations may be made—at least as to the photographs in question. Palmer/Kane counters that the Registrations are not group registrations, but rather registrations for compilations.

As a threshold matter, Palmer/Kane's insistence that Rosen's argument is not properly before the Court as to Image Nos. 1 and 8 is misplaced. Although defendant introduced its argument regarding these Images in opposition to a motion that did not encompass these Images, plaintiff was on notice of defendant's argument and conceded at oral argument that its position as to these Images was "the same." Transcript dated August 3, 2016, at 4, ECF No. 79. It would meaninglessly elevate form over substance to send plaintiff's claims relating to Image Nos. 1 and 8 to trial...