Appellate Court Decides Important Copyright Case In Favor Of Photographers

Posted on 6/2/2020 by Nancy e. Wolff | Printable Version | Comments (0)

    This report was written by Nancy Wolff, Senior Legal Counsel, DMLA and Sara Gates, Associate, Cowan, DeBaets, Abraham & Sheppard LLP
The Appellate Court of the Second Circuit in New York has decided an important important case for photographers regarding registrations and “Look Back” periods for copyright damages (Sohm v. Scholastic Inc., No. 18-2110, 2020 WL 2375056 (2d Cir. May 12, 2020)

In a recent decision that finally resolved two outstanding copyright issues, the Second Circuit Court of Appeals—the appellate court encompassing New York—upheld the validity of the copyright registration procedure utilized by photography licensing agencies like Corbis Corporation, and held that courts may award copyright damages only for the three-year period preceding commencement of the action.

The decision vindicates photography agencies who file group registrations on behalf of photographers, as the court held that both the individual images and the collection are protected by the registration.  Photographers and agencies, however, should be aware of the court’s holding, which limits the amount of damages that can be collected: courts will no longer “look back” farther in time than three years prior to suit.  So copyright owners should be sure to bring timely suit when infringements occur or risk losing out on damages outside the three-year window.

In the case, Sohm v. Scholastic Inc., No. 18-2110, 2020 WL 2375056 (2d Cir. May 12, 2020), a photographer, Joseph Sohm, brought a copyright infringement action against Scholastic Inc., which had used 89 of Sohm’s photographs in various publications, outside the limited license granted by Sohm’s third-party licensing agent. As Sohm’s agent, Corbis had previously registered a number of Sohm’s photographs with the Copyright Office.  Under the agreement, Sohm assigned his copyrights to Corbis for registration purposes, and Corbis reassigned the copyrights back to Sohm after registration was completed.  Corbis then managed the licensing of the photographs and entered into preferred vendor agreements with publishers like Scholastic.  In this instance, Scholastic was accused of using images outside the scope of the license agreement, in numbers exceeding the print runs contemplated in the invoices.

Before the district court, Scholastic made several arguments to try to defeat Sohm’s claims and invalidate his copyright registration, including arguing that the Corbis group registrations did not extend to the individual photographs in the collection because the registrations failed to list the name of the “author” (i.e., the individual photographers).  The district court did not buy this argument, even though another court in the district had reached the opposite conclusion eight years earlier.  See Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F. Supp. 2d 84, 87 (S.D.N.Y. 2010).  The court instead followed the reasoning of the Ninth Circuit, concluding that because the name of the author of the “work” (i.e., the collection) was provided, this was sufficient to satisfy the statutory requirements for registration.  In a comprehensive opinion, reviewing both cases, the Second Circuit affirmed this view, concluding that the “‘author’ that must be identified in a group registration under 17 U.S.C. § 409(2) is the author of the compilation, rather than the author of each underlying work, and a valid group registration works to register each individual work included in the compilation.”  The court’s decision on this point is favorable to photographers and agencies who file group registrations on their behalf.

Additionally, the Second Circuit also considered whether the district court had appropriately awarded Sohm copyright damages spanning back years and years before the commencement of the lawsuit.  This analysis involved a somewhat tricky interpretation of the Second Circuit’s prior ruling on the Copyright Act’s statute of limitations (Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014)) and a Supreme Court case on when an infringement is actionable (Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014)).  For the most part, courts to date have read these two decisions separately, acknowledging the Petrella court’s three-year look-back period for a plaintiff’s recovery of monetary damages in a copyright action, while continuing to apply the Psihoyos court’s “discovery” rule, which extends the time when the Copyright Act’s statute of limitations period starts to run based on when the copyright owner “discovers” the infringement.  The Second Circuit in the Sohm case, however, finally resolved how the decisions should be read together.

Reviewing the prior decisions, the appellate court explained that the discovery rule is binding precedent in this circuit, so that rule remains operative—meaning that a copyright owner’s claim does not accrue until he “discovers” the infringement, thereby delaying the start of the three-year statute of limitations period.  However, the Second Circuit also determined that the Supreme Court’s decision in Petrella counsels that there is only a three-year “look back” period from when suit is filed to determine the extent of monetary damages available.

As a result, the court’s holding limits a copyright owner’s recovery when the discovery rule is applied. For example, if an infringement occurred 10 years ago but was only recently discovered, prompting the copyright owner to file suit, the copyright owner would only be able to recover damages for the three years prior to filing, and would not be able to “look back” through the 10 years since the infringement.  The decision on this point lends an advantage to copyright defendants where plaintiffs delay in bringing suit yet still seek to recover expansive damages dating back as far as they can count.  While this decision may force plaintiffs to sue promptly instead of negotiating a settlement, one way to stop the statute of limitations clock while negotiating any agreement is to request a “tolling agreement” that stops the statute of limitations running for an agreed-upon period of time.

Copyright © 2020 Nancy e. Wolff. The above article may not be copied, reproduced, excerpted or distributed in any manner without written permission from the author. All requests should be submitted to Selling Stock at 10319 Westlake Drive, Suite 162, Bethesda, MD 20817, phone 301-461-7627, e-mail: wvz@fpcubgbf.pbz


Be the first to comment below.

Post Comment

Please log in or create an account to post comments.

Stay Connected

Sign up to receive email notification when new stories are posted.

Follow Us

Free Stuff

Stock Photo Pricing: The Future
In the last two years I have written a lot about stock photo pricing and its downward slide. If you have time over the holidays you may want to review some of these stories as you plan your strategy ...
Read More
Future Of Stock Photography
If you’re a photographer that counts on the licensing of stock images to provide a portion of your annual income the following are a few stories you should read. In the past decade stock photography ...
Read More
Blockchain Stories
The opening session at this year’s CEPIC Congress in Berlin on May 30, 2018 is entitled “Can Blockchain be applied to the Photo Industry?” For those who would like to know more about the existing blo...
Read More
2017 Stories Worth Reviewing
The following are links to some 2017 and early 2018 stories that might be worth reviewing as we move into the new year.
Read More
Stories Related To Stock Photo Pricing
The following are links to stories that deal with stock photo pricing trends. Probably the biggest problem the industry has faced in recent years has been the steady decline in prices for the use of ...
Read More
Stock Photo Prices: The Future
This story is FREE. Feel free to pass it along to anyone interested in licensing their work as stock photography. On October 23rd at the DMLA 2017 Conference in New York there will be a panel discuss...
Read More
Important Stock Photo Industry Issues
Here are links to recent stories that deal with three major issues for the stock photo industry – Revenue Growth Potential, Setting Bottom Line On Pricing and Future Production Sources.
Read More
Recent Stories – Summer 2016
If you’ve been shooting all summer and haven’t had time to keep up with your reading here are links to a few stories you might want to check out as we move into the fall. To begin, be sure to complet...
Read More
Corbis Acquisition by VCG/Getty Images
This story provides links to several stories that relate to the Visual China Group (VCG) acquisition of Corbis and the role Getty Images has been assigned in the transfer of Corbis assets to the Gett...
Read More
Finding The Right Image
Many think search will be solved with better Metadata. While metadata is important, there are limits to how far it can take the customer toward finding the right piece of content. This story provides...
Read More

More from Free Stuff