John Wiley & Sons, Inc. v. DRK Photo
882 F.3d 394
| 2d Cir. | 2018Background
- DRK Photo, a stock-photo agent, obtained from photographers "Assignment Agreements" purporting to transfer copyrights and/or the "right to sue" and then registered many images with the Copyright Office listing DRK as the claimant.
- Most Representation Agreements between DRK and photographers were non-exclusive: photographers retained rights to license their works to others and could use other agents.
- Wiley licensed images from DRK under one-time, non-exclusive licenses with usage limits; a dispute arose over alleged overuse in many instances.
- Wiley sued for declaratory judgment; DRK counterclaimed for copyright infringement as to images covered by non-exclusive agreements.
- The district court granted summary judgment for Wiley as to non-exclusive-agency images, holding DRK lacked statutory standing; DRK appealed.
- The Second Circuit affirmed: it held that an assignee of only the bare right to sue, who never held an exclusive §106 right, lacks statutory standing under 17 U.S.C. §501(b), and DRK was neither legal nor beneficial owner of an exclusive right.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1. May an assignee of only a "bare" right to sue bring a §501(b) infringement action? | DRK: assignment of accrued/later claims grants standing to sue. | Wiley: §501(b) permits only legal or beneficial owners of an exclusive §106 right to sue; bare assignees lack standing. | No — Assignees who never held an exclusive §106 right cannot sue under §501(b). |
| 2. Do Eden Toys / ABKCO compel denial of standing to bare assignees? | DRK: prior cases don’t definitively preclude assignees; statutes control. | Wiley: Eden Toys and ABKCO support restricting suits to owners of exclusive rights. | The court found those precedents non-dispositive but supportive of the textual reading limiting standing. |
| 3. Do the Representation and Assignment Agreements make DRK a legal owner of an exclusive right? | DRK: contract language purports to transfer "all copyrights and complete legal title." | Wiley: agreements were non-exclusive in effect; extrinsic evidence shows DRK only got registration/rights-to-sue. | No — applying Arizona law, extrinsic evidence shows DRK did not obtain an exclusive legal title when infringement occurred. |
| 4. Is DRK a "beneficial owner" of an exclusive right (entitling it to sue)? | DRK: it has a direct financial and enforcement interest from licensing activity; this creates beneficial ownership. | Wiley: beneficial ownership must be an equitable interest in an exclusive §106 right; DRK’s interest is too attenuated. | No — DRK’s non-exclusive agency and sharing of proceeds do not create an equitable interest in an exclusive right under §501(b). |
| 5. Do federal/common-law assignability principles (e.g., Sprint) allow litigation by bare assignees despite §501(b)? | DRK: common-law tradition and Sprint support assignability of federal claims absent clear congressional prohibition. | Wiley: copyright has special features; Crown Die and §501(b) silence signal Congress did not authorize bare-assignee suits. | Court: Sprint doesn’t control here; intellectual-property precedents and §501(b) text foreclose bare-assignee suits for copyright infringement. |
Key Cases Cited
- Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (discusses limits on who may sue under the Copyright Act)
- ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971 (2d Cir. 1991) (treats assignment of accrued claims and ownership rights as distinct assets)
- Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881 (9th Cir. 2005) (majority opinion limiting standing of assignees of bare right to sue)
- Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (U.S. 1923) (patent-law precedent rejecting free assignability of accrued infringement claims)
- Sprint Communications Co. v. APCC Servs., Inc., 554 U.S. 269 (U.S. 2008) (discusses historical assignability of claims; relied on by assignee-claim proponents)
- DRK Photo v. McGraw-Hill Glob. Educ. Holdings, LLC, 870 F.3d 978 (9th Cir. 2017) (similar holding that nonexclusive agent/assignee lacking exclusive §106 rights lacked standing)
- Impression Prods., Inc. v. Lexmark Int'l, Inc., 137 S. Ct. 1523 (U.S. 2017) (discusses kinship of patent and copyright law in certain contexts)