Sohm v. Scholastic Inc.
959 F.3d 39
| 2d Cir. | 2020Background:
- Joseph Sohm (photographer) licensed 89 photos to agencies (Corbis, The Image Works, Photo Researchers) that in turn licensed uses to Scholastic under invoices and a Corbis preferred vendor agreement (PVA) with print-run, territory, payment, and other limits.
- Corbis registered several group compilations with the Copyright Office in its own name in the 1990s; the group registrations did not list Sohm as an author of individual images.
- Sohm sued Scholastic in 2016 alleging 117 infringing uses (exceeding invoiced print runs and other license limits); parties cross‑moved for partial summary judgment.
- The district court treated the license terms as covenants (not conditions), placed the burden on Sohm to prove uses were outside the license, found some infringements in favor of Sohm (for images from Image Works and Photo Researchers), granted summary judgment to Scholastic on other claims, and upheld validity of Corbis group registrations.
- On appeal, Sohm challenged the covenant/condition analysis, the burden allocation, and one dismissed claim; Scholastic cross‑appealed on accrual rule, damages lookback, and validity of group registrations.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether exceeding invoice print‑run/terms sounds in copyright infringement (condition) or only breach of contract (covenant) | Sohm: Corbis PVAs/invoices use unmistakable conditional language ("conditioned upon," "unless") making limits conditions precedent → infringement when exceeded | Scholastic: Print‑run/payment terms are covenants; remedy is breach of contract, not copyright | Held: Terms are conditions precedent; exceeding them can be copyright infringement — reverse grant for Scholastic on this ground |
| Who bears burden to prove use was unauthorized under a license | Sohm: Scholastic should prove it had a license for challenged uses; shifting burden to Sohm is improper | Scholastic: Existence of licenses is affirmative defense, but when scope is contested owner must prove uses were unauthorized | Held: District court correctly required Sohm to prove use was outside the admitted licenses |
| When copyright claim accrues for §507(b) statute of limitations (discovery vs injury rule) | Sohm: discovery rule should apply; accrual occurs when holder discovers or should with due diligence discover infringement | Scholastic: Psihoyos should be abandoned in favor of injury rule; discovery rule inconsistent with later Supreme Court language | Held: Second Circuit adheres to Psihoyos — discovery rule applies; district court did not err in applying it |
| Whether damages are limited to infringements within three years before filing | Sohm: Petrella did not bar recovery for infringements older than three years if claim accrued later under discovery rule | Scholastic: Petrella limits damages to three‑year window regardless of accrual rule | Held: Petrella limits recoverable damages to three years before suit; district court erred in allowing older damages |
| Whether Corbis group registrations that list Corbis (not individual photographers) validly register individual photos | Sohm: Group registrations valid if agency holds rights; listing author of collective work suffices | Scholastic: Registrations invalid without listing individual authors (Muench) | Held: Group registrations valid — author required is author of the collective work (Corbis), and registration covers included individual images |
Key Cases Cited
- Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014) (adopted discovery rule for copyright‑claim accrual)
- Petrella v. Metro‑Goldwyn‑Mayer, Inc., 572 U.S. 663 (2014) (held damages limited to three years prior to filing; informed laches analysis)
- Alaska Stock, LLC v. Houghton Mifflin Harcourt Publishing Co., 747 F.3d 673 (9th Cir. 2014) (group registration of a stock agency can register individual images)
- Jorgensen v. Epic/Sony Records, 351 F.3d 46 (2d Cir. 2003) (elements of copyright infringement claim)
- Graham v. James, 144 F.3d 229 (2d Cir. 1998) (distinguishing conditions from covenants in license scope cases)
- Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995) (license is affirmative defense; scope issues affect burden)
- Skidmore v. Swift & Co., 323 U.S. 134 (1944) (agency interpretations entitled to deference based on persuasiveness)