Psihoyos v. Pearson Educ., Inc.

• Decision Date: 29 February 2012
• Docket Number: No. 10 Civ. 5912 (JPO).,10 Civ. 5912 (JPO).
• Citation: Psihoyos v. Pearson Educ., Inc., 855 F.Supp.2d 103, 2012 Copr.L.Dec. P 30214 (S.D. N.Y. 2012)
• Parties: Louis PSIHOYOS and James P. Reed, Plaintiffs, v. PEARSON EDUCATION, INC.; R.R. Donnelley & Sons Company; Courier Corporation; and Failsafe Media Company, Defendants.
• Court: U.S. District Court — Southern District of New York

855 F.Supp.2d 103

2012 Copr.L.Dec. P 30,214

Louis PSIHOYOS and James P. Reed, Plaintiffs,

v.PEARSON EDUCATION, INC.; R.R. Donnelley & Sons Company; Courier Corporation; and Failsafe Media Company, Defendants.

No. 10 Civ. 5912 (JPO).

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

Feb. 29, 2012.

Danial A. Nelson, Kevin Patrick McCulloch, Nelson & McCulloch LLP, New York, NY, for Plaintiffs.

David W. Marston, Jr., Ezra Dodd Church, Morgan, Lewis & Bockius LLP, Philadelphia, PA, Namita Elizabeth Mani, Morgan, Lewis & Bockius LLP, New York, NY, for Defendants.

MEMORANDUM AND ORDER

J.PAUL OETKEN, District Judge:

PlaintiffsLouis Psihoyos and James P. Reed bring this action for copyright infringement against DefendantsPearson Education, Inc.(“Pearson”) and R.R. Donnelley & Sons Company, Courier Corporation, and Failsafe Media Company(collectively, the “Printer Defendants”).Plaintiffs allege that Pearson published, and the Printer Defendants printed, books containing unauthorized copies of images to which Plaintiffs hold the copyright.

Plaintiffs move, pursuant to Rule 56 of the Federal Rules of Civil Procedure(“Rule 56”), for summary judgment on their copyright infringement claims against Defendants, and for summary judgment that, as a matter of law, the infringements committed by Defendants were “willful” for purposes of 17 U.S.C. § 504(c)(2).(Dkt. No. 73.)

For the reasons that follow, Plaintiffs' motion for summary judgment on copyright infringement is denied in part and granted in part, and Plaintiffs' motion for summary judgment as to willfulness is denied.

I. BackgroundA.Factual Background

Unless otherwise noted, the following facts are undisputed and are derived from the parties' Local Civil Rule 56.1 statements, affidavits, and other submissions.The Court construes all evidence in the light most favorable to the non-moving party and draws all inferences in the non-moving party's favor.SeeAnderson v. Liberty Lobby, Inc.,477 U.S. 242, 250, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202(1986).

1.The Parties

PlaintiffsLouis Psihoyos and James P. Reed are professional photographers who make their livings, in part, by licensing their photographs to third parties.

Defendant Pearson is a publishing company specializing in educational publications.

The Printer Defendants are printing companies that published the allegedly infringing publications at issue in the case.

2.Works at Issue

Plaintiffs claim that Defendants infringed their copyrights in the following four works, each of which was created by one of the two Plaintiffs.“TyrannosaurusBeing Cleaned”(“Tyrannosaurus”) is a photograph taken by Mr. Psihoyos.Mr. Psihoyos registered the copyright in the photograph under registration number VA 1–747–473 in November 2010.(Declaration of Daniel A. Nelson in Support of Plaintiffs' Motion for Partial Summary Judgment(“Nelson Dec”)Exs. 21–22.)“One Hundred Monkeys Type Shakespeare”(“Monkeys”) is an image depicting several monkeys in various poses around computer terminals in what appears to be a library reading room.The image is a digital composite of photographs taken by Mr. Psihoyos.Mr. Psihoyos registered the copyright in this image under registration VA 888–300 in December 1997.(NelsonDec. Exs. 15–17.)“Vintage Sketch of an Iguanodon”(“Iguanodon”) is a photograph taken by Mr. Psihoyos.Mr. Psihoyos registered the copyright in this photograph under registration number TX 4–083–613 in August 1995.(NelsonDec. Exs. 18–20.)“Storm Researchers in Action”(“Storm”) is a photograph taken by Mr. Reed.Mr. Reed registered the copyright in this photograph under registration number TX 6–912–618 in November 2007.(NelsonDec. Exs. 23–24.)

3.Relationship Among the Parties

Plaintiffs licensed their photographs through stock photography agencies, including Visions of Tomorrow, Inc. d/b/a Science Faction (“Science Faction”).Science Faction licensed these images directly, and also, at times, licensed its catalogue through sub-agents, including Getty Images (“Getty”).At all times relevant to this case, until December 12, 2008, the four photographs at issue were represented by both Science Faction and Getty (collectively, the “Agencies”).(Defendants' Statement of Additional Material Facts Pursuant to Local Rule 56.1 (“Defs. 56.1 Stmt”)¶ 79.)

Pearson includes many photographs and images in its publications.It typically licenses those images from agencies such as Getty and Science Faction.

In broad terms, the relationship between Pearson and the Agencies was as follows: Pearson obtained access to view images offered by the Agencies, in order to determine which images were appropriate for their various publications.Pearson would decide which images it wanted to use for a given publication, and would then negotiate licenses to use those images.Pearson and the relevant agency would then enter into non-exclusive license agreements under which permission was granted for a specified use of each image in exchange for payment of an agreed-upon fee.

The relationship and course of conduct among the parties was governed, in part, by a series of different agreements.

a. License Agreements

In order to obtain permission to publish an image represented by an agency, Pearson would enter into a license agreement with the agency for that image.The record contains examples of the license agreements used by Getty and Science Faction.These agreements—which appear to be form agreements that were attached to the invoices sent by the Agencies to Pearson—govern Pearson's usage of the particular images.¹The Getty Images Editorial Rights Managed and Rights–Ready Image and Footage License Agreement (“Getty License Agreement”) grants “a non-exclusive, non-sublicensable and non-assignable right to use and Reproduce the Licensed Material ... solely to the extent explicitly stated in th[e] Agreement.”(NelsonDec. Ex. 43, Getty License Agreement¶ 2.1.)The agreement also provides that “[n]o ownership or copyright in any Licensed Material shall pass to Licensee by the issuance of the license contained in this Agreement.Except as expressly stated in this Agreement, Getty Images grants Licensee no right or license, express or implied, to the Licensed Material.”( Id.¶ 3.1.)The agreement further provides that

[a]ny use of Licensed Material in a manner not expressly authorized by this Agreement or in breach of a term of this Agreement constitutes copyright infringement, entitling Getty Images to exercise all rights and remedies available to it under copyright laws around the world.Licensee shall be responsible for any damages resulting from any such copyright infringement, including any claims by a third party.

( Id.¶ 10.1.)Finally, the Getty License Agreement states:

No action of either party, other than express written waiver, may be construed as a waiver of any provisions of this Agreement.A delay on the part of either party in the exercise of its rights or remedies will not operate as a waiver of such rights or remedies, and a single or partial exercise by either party of any such rights or remedies will not preclude other or further exercise of that right or remedy.A waiver of a right or remedy on any one occasion will not be construed as a bar to or waiver of rights or remedies on any other occasion.

( Id.¶ 10.7.)²

b. Image Storage Agreements

One way in which Pearson was able to view the Agencies' images to make selections for its publications was by placing portions of the Agencies' catalogue on an internal database called the Pearson Asset Library (“PAL”).This process was governed by separate contracts with the Agencies.In June 2005, Getty and Pearson entered into Getty's Image Storage Agreement.(NelsonDec. Ex. 3, Getty Images' Image Storage Agreement (“ISA”).)

Under that agreement, Getty agreed to “deliver to Pearson, for inclusion in the [PAL], digital copies of images ... pursuant to Pearson's research requests or special requests made periodically by Pearson.”( Id. at 1.)Getty granted to Pearson a non-exclusive license to view the images, and to reproduce the images “in order to store the Images, on the PAL for the purpose of aiding Pearson in its image licensing decisions.”( Id.)

The parties carefully limited the rights granted by the Image Storage Agreement:

Pearson acknowledges that no actual image reproduction rights, outside of inclusion on the PAL, are granted by this Agreement.Any other use of the Images requires Pearson and Getty Images to enter into a separate license agreement, requiring the payment of license fees to Getty Images by Pearson in exchange for Pearson's right to reproduce and use the Images.Getty Images retains and reserves all rights, title, and interest in and to the Images, except as specifically provided herein.There are no implied licenses to any of the Images.

( Id.)

The agreement further provided that “[d]uring the Term [of the agreement], Getty Images may notify Pearson that it no longer has the right to view an Image or Images for any reason.In that event, Pearson will remove such Image from the PAL.”( Id.)The agreement included a warranty by Getty that “it has the full right and authority to enter into and perform this Agreement, including, but not limited to, the right and authority to grant all rights and licenses granted in this Agreement.”( Id. at 2.)

Of the four images at issue in this case, the record only confirms that one of them—“Storm”—was included in the PAL.(Defs. 56.1 Stmt. ¶ 119.)The record is not clear on whether the other three images were also included in the PAL.Two of the images—“Tyrannosaurus” and “Iguanodon”—were included in publications issued by Pearson's “Curriculum Group,” which did not use the PAL, but this does not mean that the images were not also at one time included in the PAL.( Id.¶ 118.)

c. Preferred Vendor Agreements

The relationship between Pearson and the Agencies was further governed by what the parties refer to as Preferred...