415 F.Supp.3d 514
E.D. Pa.2019Background
- Photographer Bob Krist licensed images through Corbis, which used "Preferred Vendor Agreements" (PVAs) to issue limited, rights-managed invoices to Scholastic for specific uses (print run, territory, duration).
- Corbis registered many photographs via group/collective registrations, then assigned copyrights back to Krist; Scholastic accessed Corbis’s archive, paid invoices, but Krist alleges Scholastic exceeded invoice scope or used images without invoices.
- Krist filed suit on November 30, 2016 alleging 45 instances of infringement; he moved for partial summary judgment on eight claims (covering four photographs), Scholastic moved for summary judgment on all claims.
- Key factual dispute: when Krist learned of potential claims — he met counsel Maurice Harmon in November 2013, then delayed investigation and did not sue until 2016; this timing drives the statute-of-limitations analysis.
- Core legal disputes: (1) who bears the burden to prove use was unauthorized; (2) validity of Corbis group registrations; (3) whether many claims are time-barred under the 3-year Copyright Act limitations period (discovery/storm-warnings rule); and (4) whether alleged overuse sounds in copyright or only contract.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Burden to prove copying was unauthorized | Krist contended he established ownership and copying; unauthorized use need not be pleaded as part of the prima facie case | Scholastic argued plaintiff must prove copying was unauthorized | Court adopted In re McGraw-Hill approach: unauthorized use is an affirmative defense; defendant bears burden to prove authorization, so Scholastic’s motion on that ground denied |
| Validity of Corbis group registrations | Krist: Corbis group registrations (listing Corbis + "and others") valid and sufficient; Copyright Office practice supports this | Scholastic: group registrations invalid because most registrations did not list individual authors’ names | Court held group registrations valid under §409 when in accordance with Copyright Office practice; gave Skidmore deference and denied summary judgment on invalidity |
| Statute of limitations / discovery rule (accrual and tolling) | Krist: royalty statements did not provide storm warnings; discovery rule tolled claims until he reasonably discovered injury | Scholastic: Krist had notice earlier (royalty statements, meetings) and claims accrued before Nov 30, 2013 | Court found the Nov 14, 2013 meeting with counsel gave objective "storm warnings;" claims that accrued before Nov 30, 2013 are time-barred where no post-2013 infringing acts are shown; summary judgment granted for many pre-2013 acts but denied where dates are disputed or post-2013 acts exist |
| Contract vs. copyright remedy (condition vs covenant) | Krist: exceeding license is an unlicensed use of copyright and actionable under copyright law | Scholastic: PVAs create contractual covenants; breaches are contract claims, not copyright infringement | Court held PVAs contain unmistakable conditional language (e.g., "unless," payment conditions) making license limitations conditions precedent; exceeding them can be copyright infringement, so claims are copyright-based |
| Willfulness (enhanced damages) | Krist urged a willful-infringement finding to permit enhanced statutory damages | Scholastic disputed willfulness | Court found genuine factual disputes about actual knowledge/reckless disregard; willfulness not decided as a matter of law (summary judgment denied on willfulness) |
Key Cases Cited
- Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) (two-element test for copyright infringement: ownership and copying of original elements)
- In re McGraw-Hill Global Education Holdings LLC, 909 F.3d 48 (3d Cir. 2018) (treated unauthorized copying as defendant’s affirmative defense; influenced burden allocation)
- Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197 (3d Cir. 2002) (Third Circuit precedent listing "unauthorized copying" as element, discussed and narrowed)
- Muhammad-Ali v. Final Call, Inc., 832 F.3d 755 (7th Cir. 2016) (held burden lies with defendant to prove copying was authorized)
- Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (statute-of-limitations accrual discussion informing discovery/injury rule debate)
- Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ'g Co., 747 F.3d 673 (9th Cir. 2014) (upholding group/collective registration practice and deference to Copyright Office guidance)
- Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F. Supp. 2d 84 (S.D.N.Y. 2010) (contrasting decision that deemed certain group registrations deficient)