Panoramic Stock Images, Ltd. v. John Wiley & Sons, Inc.
963 F. Supp. 2d 842
N.D. Ill.2013Background
- Panoramic, a stock photo licensing agency, sued Wiley for direct and contributory copyright infringement and common-law fraud, alleging Wiley exceeded limited licenses and distributed images beyond licensed quantities/territories.
- Twenty photographs are at issue; some were licensed to Wiley via Getty Images master license agreements (with arbitration clauses) and others were licensed directly by Panoramic.
- Getty–Wiley master agreements (2006 and 2010 versions) include arbitration clauses but also carve out Getty’s (and, Panoramic contends, Getty’s successors’) right to litigate for injunctive or other relief.
- Several photographs are the subject of pending copyright registration applications (not yet finalized); others are registered only as part of photographic compilation registrations that do not list each image/author individually.
- Wiley filed a partial motion to dismiss under Rules 12(b)(3) and 12(b)(6), arguing (1) certain Getty images must be arbitrated, (2) claims based on pending registrations must be dismissed for failure to satisfy 17 U.S.C. § 411(a), and (3) images registered only in compilations cannot support individual infringement suits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims for Getty-licensed images must be compelled to arbitration | Getty’s carve-out (allowing litigation) is available to Panoramic as successor/stand-in for Getty, so claims may be litigated | Getty–Wiley arbitration clauses require arbitration of disputes arising from the agreements | Court treated motion as stay request and denied arbitration enforcement; carve-out permits litigation and Wiley forfeited counterargument by not replying |
| Whether claims based on pending copyright applications must be dismissed under § 411(a) | Filing an application suffices to meet § 411(a) (application approach), so suit may proceed | § 411(a) requires completed registration (registration approach), so pending applications are insufficient | Adopted the application approach; claims based on pending applications may proceed |
| Whether compilation registrations suffice to support suits for the compilation’s individual photographs | A registrant-owner of the compilation who also owns the underlying images may sue for infringement of those images despite the compilation not listing each image/author | Compilation registrations that omit individual image titles/authors fail § 409 and cannot support suits for discrete images | Denied dismissal as to those images (followed Fourth Circuit precedent); compilation registrations are sufficient here at pleading stage |
| Proper procedural remedy when arbitration clause applies | N/A | Requested dismissal under Rule 12(b)(3) to enforce arbitration | Court held stay (not dismissal) is the appropriate remedy under the FAA and treated the request accordingly |
Key Cases Cited
- Granite Rock Co. v. Int'l Bhd. of Teamsters, 561 U.S. 287 (U.S. 2010) (arbitrability principles and limits on FAA enforcement)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (U.S. 2010) (§ 411(a) is a precondition to suit but not a jurisdictional test)
- Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612 (9th Cir. 2010) (endorses application approach to § 411(a) to avoid legal limbo)
- Metro. Reg'l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591 (4th Cir. 2013) (compilation registration by a compilation owner who owns component works suffices to permit suit on underlying parts)