Photographic Illustrators Corp. v. Orgill, Inc.
118 F. Supp. 3d 398
D. Mass.2015Background
- PIC photographed OSI light fixtures and granted OSI a written non‑exclusive, worldwide license to use and sublicense PIC’s images, subject to (1) no sublicensing for valuable consideration (e.g., as stock photography) and (2) including copyright/attribution “to the extent reasonably possible and practical.”
- Orgill (distributor) routinely obtained OSI product images from OSI and supplied dealers (including Farm & City) via an FTP library (free) and a ProShip e‑commerce platform (access required a $750 setup + monthly fee).
- Farm & City used Orgill’s images on its website and eBay storefront, at times watermarking them “farmandcitysupply”; Farm & City claims it first learned of PIC only when sued.
- After suit, OSI and Orgill executed a confirmatory sublicensing agreement (retroactive) memorializing Orgill’s right to use/sublicense images and covenants to include PIC attribution where practical.
- PIC sued Orgill and Farm & City for copyright infringement (17 U.S.C. § 501), DMCA CMI violations (17 U.S.C. § 1202), and Lanham Act false designation/advertising (15 U.S.C. § 1125(a)); defendants moved for summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright infringement — scope of license / sublicense | Orgill/Farm & City exceeded PIC–OSI license by sublicensing for a fee and failing to attribute | OSI impliedly licensed Orgill; images available free via FTP so no fee‑sublicensing violation; cropping made attribution impractical | Denied summary judgment as to Count I: factual disputes on fee, attribution, and knowledge preclude judgment for defendants |
| Innocent infringement (statutory damages reduction) | PIC: Orgill knew or should have known of PIC’s copyright (sublicense references PIC) | Defendants: lacked knowledge, believed use was licensed; Farm & City only learned at suit | Denied for Orgill (fact issue); Allowed for Farm & City (undisputed innocent state of mind) |
| DMCA (adding/removing CMI) — §1202(a) / §1202(b) | PIC: Farm & City added false CMI (watermark); defendants removed PIC CMI | Defendants: did not receive images with PIC CMI and lacked requisite intent | Allowed defendants’ summary judgment on DMCA claims — no evidence of removal; Farm & City’s watermark lacked intent to induce/conceal infringement |
| Lanham Act — false designation / false advertising §43(a) | PIC: watermark misrepresents origin/author of photographs; Lanham Act covers repackaging of photos used to sell goods | Defendants: Dastar bars false‑authorship claims where goods sold are tangible products (lightbulbs) | Allowed defendants’ summary judgment on Lanham claims: Dastar controls; authorship of communicative works not cognizable under §43(a)(1)(A)/(B) |
Key Cases Cited
- Estate of Hevia v. Portrio Corp., 602 F.3d 34 (1st Cir. 2010) (nonexclusive licenses can be implied by conduct; scope matters)
- John G. Danielson, Inc. v. Winchester‑Conant Props., Inc., 322 F.3d 26 (1st Cir. 2003) (uses within a nonexclusive license immunize from infringement)
- Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995) (burden shifts to licensor to show licensee exceeded license scope)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard and allocation of burdens)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (Lanham Act ‘‘origin of goods’’ refers to producer of tangible goods; false‑authorship claims for communicative works are constrained to avoid conflict with copyright law)