Palmer Kane LLC v. Gareth Stevens Publishing
1:15-cv-07404
S.D.N.Y.Sep 7, 2017Background
- Palmer/Kane (stock photography company) sued Gareth Stevens Publishing for copyright infringement over four photographs (Images 4–7) included in three educational books; two other images were dismissed/abandoned by plaintiff.
- All four disputed images are registered under Copyright Reg. No. VAu 529-623 (effective June 25, 2001); the registration application history included an earlier 1999 submission that the Copyright Office delayed and closed, and a 2001 application that led to the certificate.
- Gareth Stevens argues the registration is invalid because the images were published before the 2001 application and because the application purportedly contained inaccurate information submitted with knowledge of inaccuracy (triggering 17 U.S.C. § 411(b)).
- Gareth Stevens also contends its uses were licensed through Corbis/Hodder agreements (including a Pricing Agreement and later Invoices/License Agreements); plaintiff counters that any express licenses post‑dated the alleged pre‑license uses and that no license covered the printings/sales at issue.
- The Court found genuine disputes of material fact on whether (a) Palmer/Kane knowingly included inaccurate information on the registration application such that § 411(b) invalidates the certificate for standing, and (b) Gareth Stevens’ uses were authorized (expressly or by implied course of dealing). Images 2 and 8 were dismissed; Images 4–7 proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Palmer/Kane has standing because Registration No. VAu 529‑623 is valid under 17 U.S.C. § 411(b) | Palmer/Kane: registration is valid; any inaccuracies were not made "with knowledge" and the 2001 form was a continuation following Copyright Office instructions | Gareth Stevens: registration invalid because application omitted prior publication; inaccuracies were material and known | Denied for summary judgment. Triable issues of fact exist about knowledge and publication; court cannot invalidate registration at this stage and must refer to Register only if jury finds knowledge. |
| Whether posting/onclusion of images on stockmarketphoto.com (and agent catalogs) before 1999 constituted "publication" that would have precluded registration as unpublished collection | Palmer/Kane: site was in beta and not a public publication; placement did not necessarily constitute publication; applicant reasonably relied on CO guidance | Gareth Stevens: images were publicly available and searchable; agency catalogs and web snapshots show prior publication | Denied for summary judgment. Fact‑intensive dispute about whether and when "publication" occurred and what applicant knew. |
| Whether Gareth Stevens’ uses of the Images were authorized (express or implied license) | Palmer/Kane: only the later Invoices/License Agreements govern; those post‑date alleged infringing uses, so early uses were unauthorized | Gareth Stevens: Pricing Agreement, course of dealing, industry practice, and Corbis/Hodder communications created express or implied authorization (including post‑production licensing customary in publishing) | Denied for summary judgment. Genuine disputes of fact about license scope, timing, and whether an implied license existed; jury must decide. |
| Disposition of Images 2 and 8 | Plaintiff originally asserted claims but later withdrew opposition after Copyright Office refused corrective action | Defendant sought summary judgment on those images | Granted for Images 2 and 8—those claims dismissed. |
Key Cases Cited
- DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616 (7th Cir. 2013) (§411(b)(2) requires courts to seek the Register’s advice before invalidating a registration for alleged inaccuracy)
- Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223 (S.D.N.Y. 2012) (court addressed consequences of including previously published works in an unpublished collection registration)
- Jorgensen v. Epic/Sony Records, 351 F.3d 46 (2d Cir. 2003) (elements of copyright infringement: ownership and unauthorized use)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (discussion of limits on retroactive effect of licenses in copyright contexts)
- Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (U.S. 2013) (first‑sale doctrine applies to copies lawfully made abroad)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard about genuine disputes of material fact)