998 F. Supp. 2d 262
S.D.N.Y.2014Background
- DRK Photo licensed stock images to Wiley for textbooks; DRK is a sole proprietorship run by Daniel Krasemann.
- DRK’s photographer representations were largely nonexclusive, except for Bean and French, who had exclusive agency arrangements.
- DRK pursued copyright registrations and executed Assignment Agreements granting DRK a right to sue for infringements, with DRK promising to reassign copyrights upon registration completion.
- Wiley challenged DRK’s standing to sue, arguing DRK held only nonexclusive licenses and/or that Assignment Agreements were ineffective to confer ownership or standing.
- DRK sought damages and injunctive relief for DRK Counterclaim Instances; Wiley sought declarations of non-infringement for Wiley Non-Infringement Instances and validity of Krasemann registrations.
- The court addressed standing first, then accrual/limitations issues, and separately evaluated Bean/French versus Krasemann and other photographer instances.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| DRK’s standing to sue for non-Bean/non-French instances | DRK argues Representation/Assignment Agreements confer standing. | Wiley contends these agreements confer no ownership or exclusive rights. | DRK lacks standing for non-Bean/non-French instances. |
| Effect of Assignment Agreements on standing | Assignment Agreements give DRK ownership or exclusive rights. | Assignments confer only bare rights to sue, not ownership. | Assignments confer no standing; DRK’s claim limited to Bean instances. |
| Accrual of DRK’s infringement claims (statute of limitations) | Discovery rule applies; timely under DRK’s theory. | Injury rule applies; untimely for lines 8-56, 87, 88. | Injury rule applies; lines 8-56, 87, 88 dismissed as untimely. |
| Bean Instances: whether Wiley infringed within license scope | Wiley exceeded license terms; DRK entitled to summary judgment. | Printing under Pricing Agreement could alter scope; disputes exist. | Three Bean Instances (lines 6, 7, 75) infringing; DRK granted partial summary judgment. |
| Declaratory relief as to non-Bean/non-French Wiley Non-Infringement Instances | DRK’s standing supports declaratory relief for non-infringement. | Lack of standing bars declaratory relief. | Dismissed for lack of subject-matter jurisdiction; no standing. |
Key Cases Cited
- Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27 (2d Cir. 1982) (Copyright owners or exclusive licensees only may sue)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (Exclusive licensees may sue; licenses immunize licensees)
- Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) (Non-exclusive licensees lack standing to sue)
- Righthaven LLC v. Hoehn, 716 F.3d 1166 (9th Cir. 2013) (Bare assignment of rights not sufficient for standing)
- ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971 (2d Cir. 1991) (Copyright holders’ enforcement rights defined; standing constraints)
- TRW Inc. v. Andrews, 534 U.S. 19 (2001) (Accrual rule analysis for statutory claims; guided by injury rule in some contexts)
- Merck & Co. v. Reynolds, 559 U.S. 633 (2010) (Discovery rule is an exception; generally injury rule governs accrual)