Craig v. UMG Recordings, Inc.
380 F. Supp. 3d 324
S.D. Ill.2019Background
- Plaintiff Glen Craig, a photographer, alleges UMG Recordings, Kingsid Ventures, and the Estate of B.B. King used three of his photographs (from a 1971 tour book) on various B.B. King albums without permission; 43 albums were identified, 29 released abroad, 13 sold in the U.S. during the relevant period.
- Craig registered the photographs in March 2014, sent a cease-and-desist in 2014, and sued on July 7, 2016 asserting Copyright Act and DMCA claims.
- Defendants moved for summary judgment (seeking dismissal as to Kingsid and the Estate and partial relief as to UMGI) and for sanctions against Craig and his counsel for a meritless motion to disqualify Defendants’ expert.
- Evidence showed: Kingsid had no role in album production; the Estate’s trustee passively received communications/royalties but had no approval/volitional role; UMGI employee Ryan Null transferred a digital copy of a contested photograph from the U.S. to UMGI’s UK affiliate for certain "Ladies and Gentlemen, Mr. B.B. King" (LG) albums.
- The court granted summary judgment for Kingsid and the Estate, denied summary judgment to UMGI as to the LG albums (finding a U.S. predicate act—unauthorized digital transfer—could make related foreign sales actionable), limited damages timing to acts since July 7, 2013 (and continuing), denied statutory damages/fee claims for pre-registration infringements but found the 2015 LG release to be a continuation of pre-registration infringement, granted summary judgment to Defendants on the DMCA claim, and granted sanctions against Craig’s counsel (but not Craig).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Liability of Kingsid | Kingsid facilitated and benefited from infringement | Kingsid only licensed King’s name; no evidence of involvement | Granted for Kingsid — no evidence of involvement |
| Liability of the Estate | Estate’s trustee reviewed releases and received royalties -> potential volitional conduct | Trustee lacked approval power; only passive receipt of royalties/communications | Granted for Estate — no volitional conduct to support direct liability |
| UMGI liability for foreign albums (extraterritoriality) | UMGI transmitted photos from U.S. enabling foreign reproductions, so foreign sales may be actionable | Copyright Act is not extraterritorial; UMGI didn’t manufacture/distribute foreign albums; affiliates are separate | Denied as to LG albums (evidence of U.S. predicate act via digital transfer); granted as to other foreign albums |
| Damages: period and remedies (actual/profits/statutory) | Damages from July 7, 2013 through present; statutory damages possible for post-registration releases | Limit damages to July 7, 2013–July 7, 2016; bar statutory damages because infringing series began pre-registration | Damages period: July 7, 2013–present; actual damages and disgorgement claims survive fact issues; statutory damages/fees unavailable for infringements predating March 2014; 2015 release deemed continuation of pre-registration infringement |
| DMCA (§1202) claim | CMI removed or altered on album releases | Any CMI removal occurred earlier (pre-1971) and Defendants lacked intent/knowledge | Granted for Defendants — plaintiff failed to show intent or Defendants’ knowledge of removed CMI |
| Sanctions for disqualification motion | Motion to disqualify expert justified | Motion was meritless and multiplied proceedings | Sanctions against counsel Richard Liebowitz and his firm under §1927 and inherent power; no sanctions against Craig |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden-shifting)
- Ricci v. DeStefano, 557 U.S. 557 (genuine dispute standard at summary judgment)
- Update Art, Inc. v. Modiin Publ’g, Ltd., 843 F.2d 67 (copyright law generally non-extraterritorial)
- Robert Stigwood Grp. Ltd. v. O’Reilly, 530 F.2d 1096 (U.S. predicate act permitting foreign reproductions may make foreign acts actionable)
- Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640 (unauthorized online transfer duplicates and reproduces digital files)
- On Davis v. The Gap, Inc., 246 F.3d 152 (gross revenues must be reasonably related to infringement for disgorgement)
- Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (copyright accrual under discovery rule)
- Revson v. Cinque & Cinque, P.C., 221 F.3d 71 (requirements for sanctions under §1927 and inherent power)
- Oliveri v. Thompson, 803 F.2d 1265 (awarding sanctions for frivolous litigation conduct)
- In re 60 E. 80th St. Equities, Inc., 218 F.3d 109 (bad faith may be inferred from completely meritless actions)