PAUL SPINELLI, SCOTT BOEHM, PAUL JASIENSKI, GEORGE NEWMAN LOWRANCE, DAVID STLUKA, DAVID DRAPKIN, and THOMAS E. WITTE, Plaintiffs, v. NATIONAL FOOTBALL LEAGUE, NFL PROPERTIES, LLC, NFL VENTURES, L.P., NFL PRODUCTIONS, LLC, NFL ENTERPRISES, LLC, REPLAY PHOTOS, LLC, GETTY IMAGES (US), INC., ASSOCIATED PRESS, ARIZONA CARDINALS HOLDINGS, INC., ATLANTA FALCONS FOOTBALL CLUB LLC, BALTIMORE RAVENS LIMITED PARTNERSHIP, BUFFALO BILLS, INC., PANTHERS FOOTBALL LLC, CHICAGO BEARS FOOTBALL CLUB, INC., CINCINNATI BENGALS, INC., CLEVELAND BROWNS LLC, DALLAS COWBOYS FOOTBALL CLUB, DENVER BRONCOS FOOTBALL CLUB, DETROIT LIONS, INC., GREEN BAY PACKERS, INC., HOUSTON NFL HOLDINGS LP, INDIANAPOLIS COLTS, INC., JACKSONVILLE JAGUARS LTD., KANSAS CITY CHIEFS FOOTBALL CLUB, INC., MIAMI DOLPHINS, LTD., MINNESOTA VIKINGS FOOTBALL CLUB LLC, NEW ENGLAND PATRIOTS, LP, NEW ORLEANS LOUISIANA SAINTS, LLC, NEW YORK FOOTBALL GIANTS, INC., NEW YORK JETS FOOTBALL CLUB, INC., OAKLAND RAIDERS LP, PHILADELPHIA EAGLES FOOTBALL CLUB, INC., PITTBURGH STEELERS SPORTS, INC., SAN DIEGO CHARGERS FOOTBALL CO., SAN FRANCISCO FORTY NINERS LTD., FOOTBALL NORTHWEST LLC, THE RAMS FOOTBALL CO. LLC, BUCCANEERS LIMITED PARTNERSHIP, TENNESSEE FOOTBALL, INC., and WASHINGTON FOOTBALL INC., Defendants.
13 Civ. 7398 (RWS)
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
March 27, 2015
Sweet, D.J.
Attorneys for the Plaintiffs
NELSON & MCCULLOCH LLP
155 East 56th Street
New York, NY 10022
By: Danial A. Nelson, Esq.
Kevin Patrick McCulloch, Esq.
Attorneys for the Defendants
SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
Four Times Square
42nd Floor
New York, NY 10036
By: Jeffrey A. Mishkin, Esq.
Anthony Joseph Dreyer, Esq.
Jordan Adam Feirman, Esq.
Karen Hoffman Lent, Esq.
WILSON ELSER MOSKOWITZ EDELMAN & DICKER LLP
1133 Westchester Avenue
White Plains, NY 10604
By: Jura Christine Zibas, Esq.
Jana A. Slavina, Esq.
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
25th Floor
New York, NY 10153
By: Bruce S. Meyer, Esq.
DLA PIPER US LLP
1251 Avenue of the Americas
New York, NY 10020
By: Andrew Lawrence Deutsch, Esq.
Marc Evan Miller, Esq.
Paolo Morante, Esq.
Tamar Y. Duvdevani, Esq.
There are several motions currently pending in this action between plaintiffs Paul Spinelli, Scott Boehm, Paul Jasienski, George Newman Lowrance, David Stluka, David Drapkin, and Thomas E. Witte (“Plaintiffs“) and defendants National Football League (“NFL“), NFL Properties, LLC, (“NFLP“), NFL Ventures, L.P., NFL Productions, LLC, NFL Enterprises, LLC (together with NFL, NFLP, NFL Ventures, L.P, and NFL Productions, “NFL Entities“), Arizona Cardinals Holdings, Inc., Atlanta Falcons Football Club LLC, Baltimore Ravens Limited Partnership, Buffalo Bills, Inc., Panthers Football LLC, Chicago Bears Football Club, Inc., Cincinnati Bengals, Inc., Cleveland Browns LLC, Dallas Cowboys Football Club, Denver Broncos Football Club, Detroit Lions, Inc., Green Bay Packers, Inc., Houston NFL Holdings LP, Indianapolis Colts, Inc., Jacksonville Jaguars Ltd., Kansas City Chiefs Football Club, Inc., Miami Dolphins, Ltd., Minnesota Vikings Football Club LLC, New England Patriots, LP, New Orleans Louisiana Saints, LLC, New York Football Giants, Inc., New York Jets Football Club, Inc., Oakland Raiders LP, Philadelphia Eagles Football Club, Inc., Pittsburgh Steelers Sports, Inc., San Diego Chargers Football Co., San Francisco Forty Niners Ltd., Football Northwest LLC, The Rams Football Co. LLC, Buccaneers Limited Partnership,
NFL Defendants, Replay and AP have moved to dismiss the amended complaint (the “AC“). Getty has moved to dismiss the AC and compel arbitration, or stay the action as to Getty.
For the reasons set forth below, NFL Defendants‘, Replays‘, and AP‘s motions to dismiss, and Getty‘s motion to compel arbitration, are granted.
Prior Proceedings
Plaintiffs filed their initial complaint (“Complaint“) against the NFL Entities, Replay, Getty, and AP on October 21, 2013. On December 16, 2013, Getty moved to dismiss or, in the alternative, to stay the action as against it based on arbitration clauses contained within contracts at issue in this dispute. (See Dkt. Nos. 21, 22, 24.) At the same time, Getty filed a demand for arbitration with the American Arbitration
On February 12, 2014, in lieu of opposing Defendants’ motions to dismiss, Plaintiffs filed the AC against all currently named Defendants. (See Dkt. No. 42.) On March 31, 2014, Defendants renewed their motions to dismiss. (Dkt. No. 51.) Getty and Plaintiffs have agreed to hold the arbitration proceeding in abeyance pending resolution of Getty‘s motion to compel arbitration. (See Bloom Decl. Ex. B.)
The instant motions were heard and marked fully submitted on October 1, 2014. Subsequently, and while the motions to dismiss have been pending, motions to stay discovery were filed by Defendants and granted by the Court. (See Dkt. Nos. 99, 100.)
Facts
The following facts are taken from the Plaintiffs AC, which are taken to be true for the purposes of disposing of the instant motions, and the terms of certain agreements either
Plaintiffs are seven “professional photographers who make their living taking and licensing sports-related photographs, including but not limited to content related to [NFL] practices, games, functions, and other events.” (AC ¶ 1.)
Plaintiffs, collectively, have photographed “hundreds, if not thousands” of NFL and NFL Club games, practices and events, and have taken “literally hundreds of thousands of NFL-
The NFL has collectively licensed and protected NFL and NFL Club trademarks, including names, nicknames, logos, colors, designs, slogans, symbols, and other identifying indicia for decades. (See AC ¶¶ 44-45; NFL Def.‘s Mot. 7) [REDACTED] NFL and NFL Clubs, [REDACTED] provided NFL with exclusive licensing rights for certain business operations [REDACTED]
Prior to 2004, NFL maintained an in-house department that directly licensed the rights to NFL-related photographs. (AC ¶¶ 44-46.) For many years, Plaintiffs obtained media credentials – either through their agents, Getty and AP, or
In July 2004, NFL — through NFLP — entered into a five-year licensing agreement with Getty (“Getty Agreement“), whereby Getty acquired rights to license photographs of NFL content to: (i) NFL business partners (including sponsors and licensees of the NFL, and other NFL-approved companies) for commercial uses; and (ii) media organizations for editorial uses. (Getty Agreement [REDACTED]; see also AC ¶ 46.) The rights granted under the Getty Agreement covered a “worldwide” territory (Getty Agreement [REDACTED]), and became exclusive in 2007 when Getty acquired WireImage, another stock photography agency. (AC ¶ 46.)
Among the images covered by the Getty Agreement were photographs in which Getty owned the copyrights (Getty Agreement [REDACTED]), and photographs from independent contributors such as Plaintiffs (“Contributor Photographs“), [REDACTED]
The Getty Agreement authorized “NFL Entities” — defined to include the NFL (and its affiliates, subsidiaries, and successors in interest), and NFL Clubs (Getty Agreement [REDACTED]) — to make royalty-free use of photographs owned by Getty for a wide variety of uses, including:
[REDACTED]
(Id.) The right of NFL Entities to make such uses extended to Contributor Photographs, [REDACTED] [REDACTED] (Getty Agreement [REDACTED]) Plaintiffs each
Plaintiffs allege that “[d]espite the fundamental obligations to license Plaintiffs’ works . . . Getty . . . granted the NFL nearly unfettered access to Plaintiffs’ photo collections and, either expressly or by inaction, allowed the NFL to make free or ‘complimentary’ use of Plaintiffs’ copyrights photos.” (AC ¶ 72.) Plaintiffs further allege that Getty “lacked authority to grant such unfettered usage rights or complimentary and indefinite use licenses to the NFL without obtaining separate and express permission from Plaintiffs for each such ‘complimentary’ license or use,” (AC ¶ 77) and that the Getty Contributor Agreements “precluded Getty . . . from granting usage rights at no cost and Getty[‘s] . . . own standard terms and conditions for usage licenses pertaining to its Rights Managed collections photos prohibited such use.” (AC ¶ 78.)]
The Getty Agreement expired on March 31, 2009. (Getty Agreement [REDACTED])
In 2009, “[NFLP] entertained bids for exclusive
Plaintiffs also allege that because they owned the copyrights and licenses for other non-NFL sports-related content, and Getty had exclusive licensing deals and/or significant licensing partnerships with other sports entities, such as Major League Baseball and National Collegiate Athletic Association, they were presented with an “impossible choice.” (AC ¶¶ 56, 58.) Getty, Plaintiffs allege, threatened to remove Plaintiffs’ other sports content from its distribution networks and/or terminate its relationship with Plaintiffs entirely if they did not agree to continue licensing their NFL content
Five of the Plaintiffs, Jasienski, Stluka, Spinelli, Witte, and Drapkin, ended their relationships with Getty (AC ¶ 62), entered into license agreements with AP (“AP Contributor Agreements“), and transferred their existing images of NFL content from Getty to the AP photo library. (AC ¶ 59.) Subsequently, Plaintiffs Lowrance and Boehm entered into license agreements with AP and moved their NFL images from Getty to AP. (AC ¶ 62.) As a result of terminating their relationships with Getty, Plaintiffs allege that they have lost significant revenue due to the loss of licensing opportunities for their non-NFL content. (AC ¶ 63.)
The First AP Agreement encompassed the use and
When the First AP Agreement expired, “[NFLP] again entertained bids for the exclusive commercial licensing rights for NFL and NFL Club photos and eventually renewed its agreement with AP.” (AC ¶ 27.) AP and the NFL thus entered into a new license agreement, with a term from April 1, 2012 through March 31, 2015 (the “Second AP Agreement“). (Second AP Agreement [REDACTED]) The Second AP Agreement, while not identical to the First AP Agreement, states that AP is: (i) the “exclusive” and “worldwide agent and distributor” for licensing commercial uses of NFL photographs to NFL business partners (Second AP Agreement [REDACTED]); and (ii) a non-exclusive worldwide agent and distributor for licensing editorial uses. (Second AP Agreement [REDACTED])
[REDACTED]
(Second AP Agreement [REDACTED]) The Second AP Agreement expressly authorizes the foregoing uses of photographs by the NFL and NFL Clubs from April 1, 2009 through the end of the agreement‘s term. (Id.)
Plaintiffs allege that at one time they contacted the NFL to “demand that it cease and desist using their copyrighted works without permission and without paying the requisite licensing fees.” (AC ¶ 83.) The NFL responded that the First AP Agreement included an express license that allowed complimentary use of any NFL-related photos licensed by AP.
Plaintiffs allege that despite repeated cease and desist demands, the NFL Defendants continue to use thousands of Plaintiffs’ photographic works to promote the NFL‘s brand, sell NFL-related products, and “enhance the NFL‘s image” in order to generate revenue both as an independent entity and on behalf of the NFL Clubs. (AC ¶ 98.) To that end, Plaintiffs allege that NFL permits visitors to NFL.com to access large resolution copies of Plaintiffs’ photos “without appropriate copyright management information or protection against illegal copying,” as well as “encourage[] visitor to ‘tweet’ on Twitter.com or ‘share’ on Facebook.com copies of Plaintiffs’ works.” (AC ¶ 111.)
Effective as of April 1, 2012, AP entered into an “NFL Photo Store Services and License Agreement” with Replay (“Replay Agreement“), under which Replay agreed to operate the “NFL Photo Store” for AP and fulfill customer orders. (Replay Agreement; AC ¶ 114 (“AP and Replay . . . also sell copies of photographs directly to consumers through the NFL Photo Store.“).) Plaintiffs allege that Replay is an online retailer that specializes in selling sports-related photographs, and that owns and operates the website located at www.replayphotos.com. (AC ¶ 19.) Plaintiffs contend that Replay “infringed Plaintiffs’ copyrights by copying, publishing, displaying, exporting, and otherwise using and exploiting photographic works to which Plaintiffs own all copyrights without a valid license.” (AC ¶ 166.) Plaintiffs further allege that AP requested that
The AC sets forth seven counts: Count I alleges violations of the Sherman Act against NFL Defendants, Getty, and AP for conspiring to “restrain trade” through exclusive licensing agreements (AC ¶¶ 122-59); Count II alleges copyright infringement against all Defendants (AC ¶¶ 160-200); Counts III through VI allege vicarious copyright infringement, contributory copyright infringement, breach of contract, and breach of fiduciary duties against Getty and AP (AC ¶¶ 201-46); and Count VII alleges unjust enrichment against all Defendants (AC ¶¶ 247-55).
The Contributor Agreements
Central to the success of Plaintiffs’ claims are the Getty Contributor Agreements and the AP Contributor Agreements. As such, the relevant terms of each will be briefly outlined below.
Each of the Getty Contributor Agreements requires arbitration of any disputes arising in connection with the agreements. Specifically, Section 9.5 of the Lowrance Agreement provides that “[a]ny dispute arising out of or in connection with the Agreement shall be finally settled under the Commercial Rules of the [AAA] or International Chamber of Commerce (‘ICC‘) . . . .” (Lowrance Getty Contributor Agreement § 9.5.) In virtually identical language, Section 11.8 of the Getty Images Standard Terms and Conditions, which is incorporated into the remaining six Getty Contributor Agreements, provides that “[a]ny dispute arising out of or in connection with the Brand Agreement shall be finally settled under the Commercial Rules of the [AAA] or [ICC] . . . .” (See Lindquist Decl. Exs. B-G.)
2. The AP Contributor Agreements
a. The Relationship Between the Parties
The AP Contributor Agreements are all governed by New
While each Plaintiff retains copyright in his photos, he provides a broad copyright license to AP in all of his photos that are not rejected by AP. (AP Contributor Agreements, § 4 or §4.2). In exchange for the license, AP agrees to pay royalties to each Plaintiff for certain sublicenses that AP grants to third parties. (Id., §§ 5.1-5.2). Either AP or the Plaintiff is entitled to terminate an AP Contributor Agreement, with or without cause, upon thirty days written notice. (Id., §§ 7 or 7.1). Obligations under the license section of the AP
In the AP Contributor Agreements, each Plaintiff agrees that he is an independent contractor to AP and that he has no agency relationship with AP:
Photographer shall be acting as an independent contractor and shall not represent himself or herself as an employee of AP, but only as an independent contractor. . . . Neither the making of this Agreement nor the performance of its provisions shall be construed to constitute either Party an agent, partner, joint venture, employee or legal representative of the other Party.
(AP Contributor Agreements, §1 or §1.3.)
b. The License Provisions
Section 4 of each AP Contributor Agreement, with slight variation, contains a broad license to AP of the photographer‘s rights in his photos, which grants AP the right to copy, disseminate and otherwise use those photos, and permits AP to transfer and sublicense all these rights to “other entities“:
Photographer hereby provides to AP a perpetual, irrevocable, transferable, worldwide, right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer
(Boehm and Drapkin AP Contributor Agreements § 4.2.)
Subject to Section 7.1, Photographer hereby provides to AP a perpetual, irrevocable, transferable, worldwide, right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use the Final Photos and to transfer or sublicense these rights to other entities. With respect to NFL Event Photos taken at NFL Events for which AP directly or indirectly arranges for Photographer to obtain a credential, the foregoing rights shall be exclusive for so long as the NFL (or one of its affiliates) confers to AP (or one of its affiliates) the exclusive rights to operate as an NFL commercial use licensing agent, and non-
(Spinelli, Stluka, Witte and Jasienski AP Contributor Agreements § 4.2.)
Photographer hereby provides to AP a non-exclusive, transferable, perpetual, irrevocable, worldwide right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use the Event Photos and to transfer or sublicense these rights to other entities. AP shall present the Final Photos through AP’s image database currently known as “AP Images” and other image databases at AP’s discretion.
(Lowrance AP Contributor Agreement § 4.2)
In all but Lowrance’s AP Contributor Agreement, the photographer has granted AP an exclusive license for NFL Event Photos taken by him at an NFL event where AP directly or indirectly arranges for the photographer to be credentialed for the event. The license is to be exclusive for the period of time that AP remains the NFL’s exclusive licensing agent, and is non-exclusive thereafter. The Lowrance AP Contributor Agreement grants AP the same broad rights as the other AP Contributor
c. The Royalty Provisions
Each of the AP Contributor Agreements sets forth AP’s agreement to pay royalties to the contributor, “[i]n exchange for the license granted in Section 4.” The Boehm, Drapkin, and Lowrance Agreements require AP to pay the photographer a royalty equal to a defined percentage of “Net Revenue” on “qualifying Event Photo Sales.” “Event Photo Sales” are defined as “mean[ing] only the a la carte sale of licenses for Event Photos through AP’s online database service, currently known as ‘AP Images.‘” “A la carte sales” are further defined as “the sale of licenses for individual photos for which a per-image price is established.” “Net Revenue” is defined as “all cash actually collected by AP from the sale of copies of a particular Event Photo, less sales commission.” The AP Contributor Agreements also recognize that AP may offer the Event Photos for a la carte sale at a “bulk rate” which may include the photographs of photographers other than the contributor. In such a case, to determine royalties, AP is to apportion the cash received on an
Section 5.1 of the Jasienski, Spinelli, Stluka and Witte AP Contributor Agreements provide that upon a “qualifying Event Photo Sale,” AP will provide the contributor with the greater of royalties calculated on the revenue-share basis described in the above paragraph, and “a royalty equal [to] twenty-five dollars ($25.00) per Final Photo.” However, these AP Contributor Agreements also provide that these minimum royalties are only due on “qualifying Event Photo Sales,” which means “the a la carte sale of licenses for Event Photos.” (Id.)
The AP Contributor Agreements do not require AP to license the contributors’ photographs to third parties only through a “sale” that would generate revenue and therefore royalties.7 Nothing in the AP Contributor Agreements requires AP to issue only royalty-bearing sublicenses. Additionally there is nothing in the AP Contributor Agreements that compels AP to limit the uses that NFL (or any other sublicensed third party) makes of a sublicensed photo, or to “track and manage” such sublicensee uses. (Cf. AC ¶¶ 69-72).
On a motion to dismiss pursuant to
A claim is facially plausible when “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 663 (quoting Twombly, 550 U.S. at 556). In other words, the factual allegations must “possess enough heft to show that the pleader is entitled to relief.” Twombly, 550 U.S. at 557 (internal quotation marks omitted).
When determining whether parties have agreed to arbitrate a dispute, courts consider two questions: (1) whether a valid agreement to arbitrate under the contract in question exists and (2) whether the particular dispute in question falls
I. The Motion To Compel Arbitration Of Plaintiffs’ Claims Against Getty Is Granted
Arbitration is “strictly a matter of contract.” Ross v. Am. Express Co., 478 F.3d 96, 99 (2d Cir. 2007) (citing Thomson–CSF, S.A. v. Am. Arbitration Ass‘n, 64 F.3d 773, 779 (2d Cir. 1995)). The Federal Arbitration Act (FAA) provides that “an agreement in writing to submit to arbitration an existing controversy . . . shall be valid, irrevocable and enforceable . . . .”
Because of this policy favoring arbitration, “the burden of persuasion falls on the party attempting to escape an arbitration agreement, not the one attempting to enforce it.” Marubeni Am. Corp. v. M/V “OHFU” her Engines, No. 94 CIV. 6251 (SAS), 1996 WL 84485, at *2 (S.D.N.Y. Feb. 27, 1996). When the existence of an arbitration agreement is undisputed, “doubts as to whether a claim falls within the scope of that agreement should be resolved in favor of arbitrability.” ACE Capital Re Overseas Ltd. v. Cent. United Life Ins. Co., 307 F.3d 24, 29 (2d Cir. 2002) (citing Moses H. Cone Mem’l Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 24-25 (1983)). Courts in this Circuit have held that, where a valid arbitration clause has been found to exist, they must abstain from adjudicating plaintiffs’ claims. See, e.g., Robinson Brog Leinwand Greene Genovese & Gluck P.C. v. Quinn & Assoc. LLP, 523 F. App‘x 761, 764 (2d Cir. 2013).
The Second Circuit has directed courts to classify arbitration clauses as either broad or narrow. JLM Indus., Inc. v. Stolt-Nielsen SA, 387 F.3d 163, 172 (2d Cir. 2004) (quoting Louis Dreyfus Negoce S.A. v. Blystad Shipping & Trading Inc., 252 F.3d 218, 224 (2d Cir. 2001)). Clauses requiring
A “presumption of arbitrability” arises from contracts containing broad arbitration clauses. ACE Capital, 307 F.3d at 34. In particular, a broad arbitration clause is “presumptively applicable to disputes involving matters going beyond the ‘interpret[ation] or enforce[ment of] particular provisions’ of the contract which contains the arbitration clause.” JLM, 387 F.3d at 172 (citation omitted).
a. The Arbitration Clauses Are Enforceable
b. Breach Of Contract Claims Must Be Arbitrated
c. Breach Of Fiduciary Duties Claims Must Be Arbitrated
The breach of fiduciary duties claims also clearly arise out of and in connection with the Getty Contributor Agreements. Claimed breaches of fiduciary duty arising out of agreements with broad arbitration clauses are subject to arbitration. See, e.g., Syncora Guar. Inc. v. HSBC Mexico, S.A., 861 F. Supp. 2d 252, 259 (S.D.N.Y. 2012) (“This claim alleges that HSBC, as [t]rustee, owes Syncora a fiduciary duty under the Trust Agreement, and that HSBC breached its fiduciary duty owed to Syncora, and falls within the plain meaning of
In short, the breach of fiduciary duties claims are encompassed by the arbitration clauses and must be arbitrated.
d. Unjust Enrichment Claims Must Be Arbitrated
e. Federal Copyright Infringement Claims Must Be Arbitrated
As noted, the FAA establishes a strong federal policy in favor of arbitration, and courts have long considered arbitration to be “presumptively an appropriate and competent forum for federal statutory claims.” MBNA Am. Bank, N.A. v. Hill, 436 F.3d 104, 110 (2d Cir. 2006). Statutory claims may be arbitrated “so long as the prospective litigant effectively may vindicate his or her statutory cause of action in the arbitral forum.” Green Tree Fin. Corp.-Ala. v. Randolph, 531 U.S. 79, 90 (2000) (citation omitted). “The burden is on the party opposing
The Supreme Court has set forth a two-step inquiry for determining whether statutory claims arising out of a contract are arbitrable. First, courts must determine “whether the parties’ agreement to arbitrate reached the statutory issues.” Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U.S. 614, 628 (1985). Second, courts must consider whether legal constraints external to the parties’ agreement foreclosed the arbitration of those claims – namely, if a party has “made the bargain to arbitrate,” it “should be held to it unless Congress . . . has evinced an intention to preclude a waiver of judicial remedies for the statutory rights at issue.” Id.; see also Gilmer v. Interstate/Johnson Lane Corp., 500 U.S. 20, 26 (1991) (holding that claims under federal statutes generally are arbitrable so long as the arbitration agreement is broad enough to encompass the statutory claim and Congress has not indicated its intent to prohibit arbitration of the claim). Finally,
It is well settled that copyright claims asserted in connection with licensing disputes are encompassed by broad arbitration clauses like those contained in the Getty Contributor Agreements. In Kamazaki Music Corp. v. Robbins Music Corp., 684 F.2d 228 (2d Cir. 1982), the Second Circuit affirmed that an arbitration clause requiring the parties to arbitrate claims “arising out of, or relating to” their contract covered copyright claims. See id. at 229-31. Similarly, in Cole the arbitration clause at issue required that “[a]ny dispute in connection with this stock picture invoice including its validity, interpretation, performance, or breach shall be arbitrated . . . .” 2011 WL 4483760 at *4 (emphasis added). The court held that the arbitration clause “include[d] disputes arising under the copyright law. Defendant licensed all of the works claimed by the Plaintiff to have been infringed, and any
The arbitration provisions in the Getty Contributor Agreements are substantially similar to those held in Kamazaki and Cole to encompass both contract and related copyright claims. Moreover, Plaintiffs’ copyright claims clearly arise “out of or in connection with” their agreements with Getty, as they are predicated on Getty’s alleged authorization of or failure to prevent the NFL from engaging in uses of Plaintiffs’ images that purportedly fell outside the scope of the Getty Contributor Agreements. (See AC ¶¶ 71-78, 167-71, 203-06, 212-15.) In other words, the claimed infringements are defined by the scope of the Getty Contributor Agreements. The copyright claims therefore must be arbitrated.8
The Supreme Court has made clear that Sherman Act antitrust conspiracy claims are arbitrable. See Mitsubishi, 473 U.S. at 633-34; Gilmer, 500 U.S. at 28 (claims under the Sherman Act “are appropriate for arbitration“); see also In re Cotton Yarn, 505 F.3d at 282 (“We . . . have no difficulty concluding that domestic antitrust claims, as a class, are suitable for arbitration.“). Indeed, the Court in Mitsubishi found no “explicit support” in either the Sherman Act or in the FAA for holding Sherman Act claims to be nonarbitrable. 473 U.S. at 628-29.
The Second Circuit has held that if the allegations underlying claims “touch matters covered by the parties’ contracts,” those claims must be arbitrated “whatever the legal labels attached to them.” JLM, 387 F.3d at 172 (emphasis added). Conspiracy allegations may “touch matters” covered by a contract even if the alleged conspiracy includes non-parties to the contract or involves alleged wrongdoing that occurred before or after the formation of the contract. Alghanim v. Alghanim, 828 F. Supp. 2d 636, 655-56 (S.D.N.Y. 2011) (“independent conspiracies may lie within the scope of arbitration clauses“).
The Second Circuit disagreed:
[T]he damages which JLM asserts it suffered as a result of the conspiracy among the Owners result from the fact that it entered into the charters, each of which specifies price terms which are variously characterized in the amended complaint as “artificially high” and as “overpayments.” We therefore conclude that this is a dispute “arising out of” the charters, and is therefore within the scope of the [] arbitration clause.
Id. The court added that in dealing with broad arbitration clauses, it “ha[s] not limited arbitration claims to those that constitute a breach of the terms of the contract at issue,” id. at 176 (quoting Mehler v. Terminix Int’l Co., 205 F.3d 44, 50 (2d Cir. 2000)), and it cited earlier cases in which it had held claims based on alleged conspiratorial conduct by a party with whom the plaintiffs were in privity to be arbitrable. See JLM, 387 F.3d at 176.
[t]he NFL’s illegal monopoly and NFL Properties’ agreement to grant an exclusive license to Getty Images and then AP also artificially undermined Plaintiffs’ ability to bargain fairly with Getty Images and AP to obtain more favorable terms in their contributor contracts. . . . Because other licensors could not offer commercial licenses for NFL photos, Plaintiffs were forced into an impossible dilemma of either accepting the contract terms being offered by the NFL’s licensing partner or losing the ability to earn revenue from the sale of more lucrative commercial licenses.
(AC ¶ 144.) As in JLM, Plaintiffs contend that the damages they purportedly suffered as a result of the alleged conspiracy among the NFL Defendants and Getty flowed from the Getty Contributor Agreements. See JLM, 387 F.3d at 175. Given these allegations, any assertion that the antitrust claims are not sufficiently
Nor are there any “legal constraints external to the parties’ agreement,” Mitsubishi, 473 U.S. at 628, that should prevent arbitration of the antitrust claims despite the agreement to arbitrate. In their response and objection to Getty’s arbitration demand, Plaintiffs argued that the Sherman Act claims should not be arbitrated because Getty is “a necessary and indispensable party to several of [Plaintiffs’] claims against the Getty Images co-defendants,” which are not subject to arbitration. (See Bloom Decl. Ex. C at 2.) However, alleged co-conspirators “are not necessary parties; a plaintiff can prove the existence of a conspiracy in an action against just one of the members of the conspiracy.” In re Cotton Yarn, 505 F.3d at 284 (citing Georgia v. Pa. R.R. Co., 324 U.S. 439, 463 (1945) (“In a suit to enjoin a[n anti-trust] conspiracy not all the conspirators are necessary parties defendant.“)); Cf. Doctor’s Assocs., Inc. v. Distajo, 66 F.3d 438, 445-46 (2d Cir. 1995) (noting that individuals not party to an arbitration agreement cannot be “indispensable” for
In In re Cotton Yarn, the plaintiffs sought to evade a broad arbitration clause by arguing that “the inability to join all defendants in a single proceeding [by virtue of a no-joinder clause in the arbitration agreements] prevent[ed] them from vindicating their statutory rights.” 505 F.3d at 283. They argued that “severing the conspiracy into separate parts would deprive [them] of the full benefit of their proof, and make the proving of the conspiracy, if not impossible, extremely difficult.” Id. In rejecting this argument, the Fourth Circuit found that potential inconvenience to the plaintiffs was trumped by congressional intent:
[C]o-conspirators are not necessary parties in an action against a single conspirator. There is nothing in the arbitration agreements that would prevent the plaintiffs from presenting evidence about the actions of non-party defendants in order to establish the existence of the price-fixing conspiracy alleged by the plaintiffs. Accordingly, the mere fact that the plaintiffs may not join the defendants in a single arbitration proceeding does not prevent the plaintiffs from effectively vindicating their statutory rights. While individual proceedings may be less efficient than a single proceeding, that inefficiency is a function of Congress’s preference for resolution of disputes by arbitration and cannot be a basis for defeating the arbitration that Congress was seeking to encourage.
The same reasoning applies here. Plaintiffs’ assertion of nonarbitrable claims against alleged co-conspirators should not prevent arbitration of the claims against Getty. Indeed, the principle that co-conspirators are not necessary parties applies in this case because the alleged conspiracy is based on separate, successive exclusive licenses between the NFL and Getty and AP, respectively. (See AC ¶ 134 (alleging the NFL granted exclusive licenses to “Getty Images and then AP“).) Plaintiffs allege that Getty held exclusive NFL licensing rights until 2009, (AC ¶ 46) after which AP entered into its own exclusive license agreement with the NFL (AC ¶ 46). The lack of any alleged temporal overlap between these licensing deals undermines Plaintiffs’ assertion that Getty is a necessary party to this litigation.
Plaintiffs argue that their antitrust claims are collateral to any contracts between Plaintiffs and Getty and that the claims do not depend on the interpretation of the Getty Contributor Agreements. (Pls.’ Opp‘n to Getty Mot. 24-26.) However, the AC expressly links the claimed conspiracy to the Getty Contributor Agreements by alleging that the purported adverse impact of the alleged conspiracy between NFL and Getty
“[T]he damages which JLM asserts it suffered as a result of the conspiracy among the Owners result from the fact that it entered into the charters, each of which specifies price terms which are variously characterized in the amended complaint as ‘artificially high’ and as ‘overpayments.’ We therefore conclude that this is a dispute ‘arising out of’ the charters, and is therefore within the scope of the [] arbitration clause.”
). Plaintiffs also argue that the Court is “required to determine whether the claims would actually require construction of contract terms or determining rights under contract provisions.” (Pls.’ Opp‘n to Getty Mot. 24.) However, a broad arbitration clause is “presumptively applicable to disputes involving matters going beyond the ‘interpret[ation] or enforce[ment of] particular provisions’ of the contract which contains the arbitration clause.” JLM, 387 F.3d at 172 (citation omitted). Plaintiffs’ reliance on Collins & Aikman Prods. Co. v. Bldg. Sys., Inc., 58 F.3d 16 (2d Cir. 1995) to assert otherwise is misplaced.9
In sum, because Plaintiffs’ antitrust claims touch and concern the Getty Contributor Agreements, the antitrust claims are properly referred to arbitration.
g. Objections Based On Cost Do Not Bar Arbitration
Finally, Plaintiffs’ objection that they will incur additional expense or inconvenience from having to arbitrate their claims against Getty (see Bloom Decl. Ex. C at 2) cannot defeat the strong federal policy in favor of enforcing arbitration agreements. The “possibility that a party to an arbitration clause will be inconvenienced and will incur some extra expense . . . does not necessarily mean that the party cannot effectively vindicate its statutory rights through arbitration.” In re Cotton Yarn, 505 F.3d at 285. As the Supreme Court stated in Italian Colors, the antitrust laws “do not guarantee an affordable procedural path to the vindication of every claim.” 133 S. Ct. at 2309. “It would be unwieldy . . .
Additionally, “uninformed speculation about cost” is insufficient to carry the burden of proving that proceeding against antitrust defendants individually would prevent the plaintiffs from effectively vindicating their statutory rights. In re Cotton Yarn, 505 F.3d at 285; see also Green Tree, 531 U.S. at 90 (rejecting argument that statutory claims could not be arbitrated due to prohibitive costs as “too speculative to justify the invalidation of an arbitration agreement.“) While Plaintiffs note the high costs of federal court litigation, they do not provide support for the proposition that arbitration would be more expensive (see Pls.’ Opp‘n to Getty Mot. 20), or that the expense would be so great as to impede prosecution of their claims. See AT&T Mobility LLC v. Concepcion, 131 S. Ct. 1740, 1749 (2011) (“the informality of arbitral proceedings is itself desirable, reducing the cost and increasing the speed of dispute resolution“); see also Vera, 335 F.3d at 116 (noting Congress’ determination that arbitration “is to be encouraged as a means of reducing the costs and delays associated with litigation” (citation omitted).
Because Plaintiffs have failed to adequately plead or establish their objections based on cost, these objections are disregarded.
II. The Motion To Dismiss Plaintiffs’ Sherman Act Antitrust Claims (Count I) Against NFL Defendants and AP Is Granted
a. Antitrust Claims Against NFL Defendants
In order to state a claim against the NFL Defendants, Getty, and AP under
The AC asserts that the NFL Defendants, in concert with Getty11 and AP, “conspire[d] to create a monopoly in favor of NFL in order to illegally restrain trade and otherwise fix and control the market for commercial licensing of NFL-related ‘stock’ photos.” (AC ¶¶ 28, 37.) According to Plaintiffs, the NFL Defendants conspired to restrain trade in two ways.
First, Plaintiffs allege that each NFL Club “authorized the NFL and/or [NFLP] to make decisions regarding [its] separately owned intellectual property [and] to grant an exclusive license to a single licensing company to market and sell commercial licenses for all stock photography of NFL-related photos.” (Id. ¶ 24.) As such, according to Plaintiffs,
As a threshold matter, “Congress did not intend the antitrust laws to provide a remedy in damages for all injuries that might conceivably be traced to an antitrust violation.” Associated Gen. Contractors of Cal., Inc. v. Cal. State Council of Carpenters, 459 U.S. 519, 534 (1983) (quoting Hawaii v. Standard Oil Co., 405 U.S. 251, 263 n. 14 (1972)). To have standing, a plaintiff must, among other things, be “an ‘efficient enforcer’ of the antitrust laws.” Gatt Commc‘ns, Inc. v. PMC Assocs., L.L.C., 711 F.3d 68, 78 (2d Cir. 2013). The Second Circuit has identified four factors to determine whether a plaintiff is an “efficient enforcer:”
- the directness or indirectness of the asserted injury;
- the existence of an identifiable class of persons whose self-interest would normally motivate them to vindicate the public interest in antitrust enforcement;
- the speculativeness of the alleged injury; and
- the difficulty of identifying damages and apportioning them among direct and indirect victims so as to avoid duplicative recoveries.
Id. (quoting Paycom Billing Servs., Inc. v. MasterCard Int‘l, Inc., 467 F.3d 283, 290-91 (2d Cir. 2006)). Here, all four factors weigh against Plaintiffs’ ability to establish antitrust standing, requiring dismissal of Plaintiffs’ antitrust claims. Gatt Commc‘ns, Inc., 711 F.3d at 75 (“[A]ntitrust standing is a threshold, pleading-stage inquiry and when a complaint by its terms fails to establish this requirement we must dismiss as a matter of law.” (citation omitted)).
Generally speaking, “[i]n order to limit the class of plaintiffs with antitrust standing to the most efficient enforcers of the antitrust laws, courts have typically limited the types of individuals that may bring an antitrust action to direct competitors or consumers.” Port Dock & Stone Corp. v. Oldcastle Ne., Inc., No. 05 Civ. 4294, 2006 WL 2786882, at *3 (E.D.N.Y. Sept. 26, 2006), aff‘d, 507 F.3d 117 (2d Cir. 2007); see also Solent Freight Servs., Ltd. v. Alberty, 914 F. Supp. 2d 312, 319 (E.D.N.Y. 2012) (“Generally, a plaintiff that is ‘neither a consumer nor a competitor in the market in which trade was restrained’ does not have standing to allege an antitrust injury to that market.” (citation omitted)).
Plaintiffs are neither consumers nor competitors in the alleged market for commercial licensing of NFL-related photographs. Plaintiffs do not purchase the rights to use NFL-related photographs for commercial purposes. Nor do they enter into license agreements with commercial enterprises that wish to use NFL photographs. Instead, they supply photographs to stock photography agencies, like Getty and AP, which compete in the alleged market. See Reading Int‘l, Inc. v. Oaktree Capital Mgmt. LLC, 317 F. Supp. 2d 301, 335 (S.D.N.Y. 2003) (“Under Associated General Contractors, courts have held that suppliers to direct market participants ‘typically cannot seek recovery under the antitrust laws because their injuries are too secondary and indirect.‘” (citation omitted)).
Plaintiffs contend in their opposition that they “directly competed with agencies such as Getty Images and AP,” (Pls.’ Opp‘n to NFL Def.‘s Mot. 28) and that “prior to the NFL‘s
Specifically, with respect to the first “efficient enforcer” factor, to satisfy the antitrust injury requirement, see Atl. Richfield Co. v. USA Petroleum Co., 495 U.S. 328, 344 (1990), a plaintiff must plead facts showing that it has suffered “injury of the type the antitrust laws were intended to prevent and that flows from that which makes defendants’ acts unlawful.” Brunswick Corp. v. Pueblo Bowl-O-Mat, Inc., 429 U.S. 477, 489 (1977). “The antitrust injury requirement obligates a plaintiff to demonstrate, as a threshold matter, ‘that the challenged action has had an actual adverse effect on competition as a whole in the relevant market.‘” George Haug Co. v. Rolls Royce Motor Cars Inc., 148 F.3d 136, 139 (2d Cir. 1998) (emphasis in original) (citation omitted). In other words, a plaintiff must allege “that its loss comes from acts that reduce output or raise prices to consumers.” Chi. Prof‘l Sports Ltd. P‘ship v. NBA, 961 F.2d 667, 670 (7th Cir. 1992). Here, Plaintiffs’ purported injury is at most an indirect result of the challenged agreements.
The AC contains no facts to suggest that the challenged conduct reduced output of commercial licenses for NFL photographs or raised prices for consumers. Plaintiffs do not allege that fewer commercial entities are licensed to use NFL photographs, nor do they allege that the prices those entities or consumers pay are higher because of the NFL Clubs’ collective licensing or the exclusive licenses with Getty and AP. The injury alleged by Plaintiffs is damage to their personal economic interests, namely that they received from Getty and AP insufficient royalties for the commercial use of their NFL-related photographs. (See, e.g., AC ¶¶ 146-49.)
Plaintiffs also have failed adequately to plead antitrust injury because their asserted injury was not the
Plaintiffs’ claim that, absent the NFL Clubs’ collective licensing arrangement, Getty and AP could have negotiated and secured better terms in agreements with
Plaintiffs separately contend that they have adequately pled antitrust injury by alleging a per se “horizontal price fixing scheme.” (Pls.’ Opp‘n to NFL Def.‘s Mot. 25.) They also assert that “an adequate injury is alleged if the plaintiff is ‘a participant in some capacity in the market in which the merger occurs,‘” or “merely allege[s] an intent to enter the relevant market.” (Pls.’ Opp‘n to NFL Def.‘s Mot. 24.) However, antitrust injury is not as broadly defined as Plaintiffs contend, see Brunswick, 497 U.S. at 489, and, in any case, no merger is at issue here, and the AC does
In sum, because Plaintiffs fail to plead sufficient facts to demonstrate antitrust injury, they do not satisfy the first “efficient enforcer” factor and dismissal is warranted. See Paycom, 467 F.3d at 293 (holding merchant lacked antitrust standing to challenge MasterCard‘s policy prohibiting banks from participating in competitor payment-card networks because it was those competitor networks, not the merchant, that were directly harmed); Boyd v. A WB Ltd., 544 F. Supp. 2d 236, 250 (S.D.N.Y. 2008) (holding wheat farmers did not have standing to challenge alleged conspiracy by certain wheat exporters because the farmers’ injuries were derivative of the injury suffered by competitor wheat exporters).
With respect to the second factor, directly affected market participants could seek to enforce the antitrust laws on the basis of Plaintiffs’ alleged violations. Specifically, Getty‘s and AP‘s competitors are potential plaintiffs with respect to the exclusive dealing claims, and Getty and AP themselves are potential plaintiffs with respect to the collective licensing claims. Because each constitutes “an identifiable class . . . whose self-interest would normally
With respect to the third factor, Plaintiffs’ claimed injuries are too speculative to support antitrust standing. Plaintiffs have alleged that absent the NFL Clubs’ agreement to collectively license their intellectual property, Getty and AP would have negotiated better terms in agreements with individual NFL Clubs, and that absent the exclusive licensing agreements with Getty and AP, Plaintiffs would have negotiated better terms in their contributor agreements. (AC ¶ 148.) Plaintiffs’ theory is too speculative. See, e.g., Paycom, 467 F.3d at 293 (affirming dismissal under Rule 12(b)(6) and rejecting as speculative claim that, absent MasterCard‘s policy prohibiting member banks from participating in competitor payment-card networks, competition from Discover and American Express would have caused MasterCard to adopt policies more favorable to plaintiff).
All four “efficient enforcer” factors weigh against a finding of antitrust standing. As such, Plaintiffs’ antitrust claims are subject to dismissal.
However, even if Plaintiffs had adequately established standing, the AC would still fail to adequately set forth an antitrust claim. An antitrust complaint must allege a relevant product market in which the anticompetitive effects of the challenged activity can be assessed. City of New York v. Grp. Health, 649 F.3d 151, 155 (2d Cir. 2011); see also In re Aluminum Warehousing Antitrust Litig., No. 13-md-2481 (KBF), 2014 WL 4277510, at *21 (S.D.N.Y. Aug. 29, 2014); Global Disc. Travel Servs., LLC v. Trans World Airlines, Inc., 960 F. Supp. 701, 704 (S.D.N.Y. 1997) (“In order to survive a motion to dismiss, a claim under . . . the Sherman Act must allege a
Plaintiffs have defined the relevant market as the “market for commercial licensing of NFL-related stock photographs.” (AC ¶¶ 23, 126.) Generally, however, “the distribution of a single brand, like the manufacture of a single brand, does not constitute a legally cognizable market,” Global Disc. Travel Servs., LLC, 960 F. Supp. at 705 (citation omitted), because to define the market as that group of products over which a defendant exercises control would “as an analytic matter read[] the market definition step out of the Sherman Act.” Carell, 104 F. Supp. 2d at 265 (citation omitted); cf.
In light of relevant Circuit case law, see, e.g., Belfiore v. N.Y. Times Co., 826 F.2d 177, 180 (2d Cir. 1987) (rejecting as “implausible” product market limited to the New York Times newspaper because substitutes reasonably included all “general circulation daily newspapers,” at least some of which plaintiffs themselves distributed), the AC does not make sufficient factual allegations that would justify a product market limited to NFL-related photographs to the exclusion of, at a minimum, other sports-related photographs. Indeed, Plaintiffs contend that they “own the copyrights to and license other sports-related content, including photographs of Major League Baseball (‘MLB‘) and National Collegiate Athletic Association (‘NCAA‘) games and events, and Getty Images had exclusive licensing deals and/or significant licensing partnerships with these entities, including MLB.” (AC ¶ 56.) However, Plaintiffs do not address why the commercial licensing of MLB- or NCAA-related photographs (or any other sports-related photographs) is not reasonably interchangeable with the commercial licensing of NFL-related photographs.
Plaintiffs contend that American Needle v. New Orleans Louisiana Saints, 385 F. Supp. 2d 687 (N.D. Ill. 2005) and Dang v. San Francisco Forty Niners, 964 F. Supp. 2d 1097 (N.D. Cal. 2013) support the market limited to commercial licenses for NFL-related photos that they have defined. However, Second Circuit precedent instructs that there exist available substitutes for the intellectual property of a professional sports organization. See Salvino, 542 F.3d at 330. Moreover, the relevant markets alleged in American Needle and Dang are distinguishable from the market Plaintiffs assert here. The product markets in those cases were potentially limited to NFL-related headwear and apparel because there was evidence suggesting that “for many people purchasing headwear and apparel with an NFL team‘s logo, they are purchasing the ability to be identified with a particular team - the right to be recognized as a fan.” New Orleans Louisiana Saints, 385 F. Supp. 2d at 694. As a result, the courts concluded that “[i]f a store sold out of hats carrying the Chicago Bears logo, these individuals would not necessarily find caps carrying logos for Spongebob, the University of Michigan, or even the Chicago Bulls to be reasonable substitutes.” Id.; Dang, 964 F. Supp. 2d at 1108.
The same cannot be said of the “market for commercial licensing of NFL-related stock photographs.” The “consumers” in the market alleged here are commercial enterprises licensing NFL-related photos to promote their products. (AC ¶¶ 150-52.) Plaintiffs have not plausibly alleged, and the AC is devoid of any facts to suggest, that if the price of NFL-related photos were to increase, “national photo licensors, media outlets, online vendors, clothing retailers, and any other companies that sell advertisements or products” (AC ¶ 151) would not simply substitute different, less costly sports photographs to promote their products.
Adidas America is analogous to the instant case. In Adidas America, the court rejected plaintiff‘s proposed “market for the sales of NCAA promotional rights” because plaintiff had “failed to explain . . . why . . . sponsorship agreements with teams or individuals competing in the National Football League, the National Basketball Association, the Women‘s National Basketball Association, Major League Baseball, Major League Soccer, or the Olympics, are not reasonably interchangeable with
Additionally, Plaintiffs allege that the NFL Clubs conspired to restrain trade in the market for commercial licensing of NFL-related photographs by allowing the NFL to “control and make decisions relating to each NFL Team‘s independently owned intellectual property.” (AC ¶ 127.) However, the court in Washington v. National Football League, 880 F. Supp. 2d 1004 (D. Minn. 2012) dismissed nearly identical claims.
In Washington, a putative class of former professional football players alleged that the NFL and NFL Clubs had monopolized the market for former players’ likenesses in violation of
Here, unlike in American Needle, the intellectual property involved is historical football game footage, something that the individual teams do not separately own, and never have separately owned. Rather, the NFL owns the game footage, either alone or in conjunction with the teams involved in the game being filmed. These entities must cooperate to produce and sell these images; no one entity can do it alone . . . . The NFL and its teams can conspire to market each teams’ individually owned property, but not property the teams and the NFL can only collectively own.
Washington, 880 F. Supp. 2d at 1006.
Similarly here, many if not most of the photographs at issue contain intellectual property owned by the NFL and at least one NFL Club - e.g., photographs displaying both the NFL shield and NFL Club marks on a player‘s jersey and/or helmet, typically in NFL game-action settings or at NFL events. Plaintiffs claim that their photo libraries include “tens of thousands of photos . . . that do[] not include any marks, logos, or other intellectual property owned by the NFL
With respect to those photographs that reflect the intellectual property of only a single NFL Club, Plaintiffs also fail to allege a viable antitrust claim challenging the NFL Clubs’ collective licensing arrangement. As the Second Circuit held in Buffalo Broadcasting Co. v. American Society of Composers, Authors & Publishers, a collective licensing agreement does not constitute a “restraint” within the meaning of
Additionally, Plaintiffs’ assertion that this case involves “tens of thousands of photos [in their photo libraries] that do[] not include any marks, logos, or other intellectual property owned by the NFL Entities” (AC ¶¶ 34-35) is contradicted by the exhibits that Plaintiffs attached to the AC, which depict a multitude of images, many of which, if not most,
Thus, Plaintiffs have not adequately alleged that the NFL Clubs’ collective licensing is a “restraint” within the meaning of
Plaintiffs further allege that the NFL Defendants’ granting of exclusive licenses to Getty and then AP violates
Moreover, because the benefits of exclusive licensing agreements are well-recognized, the Second Circuit has stated that these “arrangements are presumptively legal.” E&L Consulting, Ltd., 472 F.3d at 30. An exclusive licensing arrangement violates
In order to adequately plead foreclosure in a relevant market, a plaintiff first must properly define the relevant market. See, e.g., Linzer Prods. Corp., 499 F. Supp. 2d at 554-55 (dismissing exclusive dealing claim because single patented product was not a relevant product market). As discussed above, Plaintiffs have failed to allege a properly defined product market. In fact, Plaintiffs allege that despite losing the NFL exclusive license to AP, Getty continued to hold commercial licensing rights to MLB- and NCAA-related photographs (AC ¶ 58), thus acknowledging that competition for commercial licensing of sports-related photographs is not foreclosed by the NFL‘s exclusive licensing agreements.
In addition, the challenged agreements are not “exclusive;” rather, as noted above, the agreements provide Getty and AP only with exclusive rights limited to licensing NFL photographs to not to individual NFL Club business partners. (Getty Agreement , First AP Agreement , Second AP Agreement .) Once the relevant market is properly defined to include, at a minimum, the commercial licensing of all sports-related photographs (a market
It also is well established that exclusive agreements do not harm competition when there is competition to obtain the exclusive contract. The Second Circuit has recognized that “[s]uch a situation may actually encourage, rather than discourage, competition, because the incumbent and other [competitors] . . . have a strong incentive continually to improve the [services] and prices they offer in order to secure
Here, the NFL‘s licensing agreements with Getty and AP had exclusivity periods of no more than three years, and the NFL “entertained bids for the exclusive commercial licensing rights for NFL and NFL Team photos” at the conclusion of each agreement‘s term. (AC ¶¶ 25-27.) These types of contracts do not foreclose competition and are not anticompetitive as a matter of law. See Indeck Energy Servs., Inc., 250 F.3d at 975, 977-78 (dismissing
b. Antitrust Claims Against AP
As discussed above with respect to the NFL Defendants, Plaintiffs lack standing to recover damages for the alleged antitrust violation because (1) Plaintiffs’ asserted injury is indirect; (2) other, better-positioned potential plaintiffs
Additionally, Plaintiffs’ AC does not allege that AP had any involvement in an alleged agreement between the NFL and the NFL Clubs to create NFLP and to manage all commercial licensing of NFL-related stock photographs through NFLP. (AC ¶¶ 23-24; see also AC ¶¶ 37-39, 126-128, 130, 133). Plaintiffs allege only two agreements involving AP in their antitrust claim: the First and Second AP Agreements, effective respectively April 1, 2009 and April 1, 2012, each of which granted AP the exclusive right to commercially license NFL and NFL Club photographs for a term of three years. (AC ¶¶ 26-27, 54.)
Plaintiffs do not allege facts supporting a plausible inference that these exclusive license agreements are unlawful. An exclusive license, which merely confers upon the licensee the ability to exploit the licensor‘s exclusive intellectual property rights, does not violate the antitrust laws. Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 135-36 (1969); D.E. Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 36-37 (1913); Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 949 (Fed. Cir. 1993), cert. denied, 114 S. Ct. 1126 (1994), abrog. on other grounds, 551 U.S. 277 (1994); U.S. v. Studiengesellschaft Kohle, m.b.H., 670 F.2d 1122, 1127 (D.C. Cir. 1981); U.S. v. Westinghouse Elec. Corp., 648 F.2d 642, 647 (9th Cir. 1981); SCM Corp. v. Xerox Corp., 463 F. Supp. 983, 1005 (D. Conn. 1978), aff‘d on other grounds, 645 F.2d 1195 (2d. Cir. 1981). Moreover, the license agreements in this case are “vertical” arrangements, meaning that they occur between companies at different levels of the distribution chain. See Bus. Elecs. Corp. v. Sharp Elecs. Corp, 485 U.S. 717, 730 and n. 4 (1988). Exclusive vertical arrangements of this nature are presumptively legal under the antitrust laws. See E&L Consulting, 472 F.3d at 30 (citing Elec. Comm‘s Corp. v. Toshiba Am. Consumer Prods., 129 F.3d 240, 245 (2d Cir 1997)). To overcome that presumption at the pleading stage, a plaintiff must allege facts showing exceptional circumstances, such as evidence of predatory practices or a “unique” opportunity to leverage two distinct monopolies. E&L Consulting, 472 F.3d at 30. A plaintiff that fails to allege such exceptional circumstances fails to state a
In this case, Plaintiffs’ AC fails to allege
Accordingly, Plaintiffs have not alleged facts that would support a finding of exceptional circumstances, and have not overcome the presumption that the NFL and AP‘s exclusive license agreements are legal. Plaintiffs’ antitrust claim against AP must, on this basis, therefore be dismissed.
Furthermore, as discussed above with respect to the NFL Defendants, Plaintiffs have not alleged facts plausibly
- “The NFL has been able to convince Plaintiffs’ licensing agents to purportedly allow this rampant and blatant exploitation of Plaintiffs’ works only because of its illegal monopoly over the commercial licensing rights to NFL content.” (AC ¶ 96.)
- “The NFL Defendants’ illegal conduct directly and proximately created the circumstances that forced Plaintiffs into a ‘take-it-or-leave-it’ scenario when negotiating license terms with the NFL‘s chosen exclusive licensing partner (first Getty Images until 2009 and then AP thereafter).” (AC ¶ 144.)
- “If it were not for the NFL‘s illegal efforts to control the commercial licensing market for NFL-related stock photos, Plaintiff‘s licensing agents would not have been forced to purportedly grant the NFL ‘complimentary’ usage of Plaintiffs’ photos.” (AC ¶ 148.)
Because NFL‘s exclusive license to AP is not alleged to be the cause of Plaintiffs’ alleged anticompetitive injury, the AC fails to allege an “antitrust injury” with respect to AP.
Neither is Plaintiffs’ assertion that “[t]he NFL Teams and NFL Entities conspired to and did illegally restrain trade in concert with Getty Images and AP” (AC ¶ 129; see also AC ¶ 141) persuasive. There are no facts alleged to support this assertion of concerted action, and the conclusion itself does not state an antitrust claim against AP. Twombly, 550 U.S. at 570; Iqbal, 556 U.S. at 678; Port Dock, 507 F.3d at 121; In re Elevator Antitrust Litig., 502 F.3d at 50. In particular, Plaintiffs do not allege that AP was involved in the agreement between the NFL Defendants that is the alleged source of the anticompetitive harm.
Indeed, even if the NFL Defendants’ alleged conduct violated the
Because Plaintiffs’ alleged anticompetitive injury does not derive from AP‘s exclusive license, and the AC does not allege that AP was involved in any other anticompetitive agreement, Plaintiffs have failed to allege an antitrust injury with respect to AP. Additionally, for the reasons stated above, Plaintiffs also fail to allege a plausible relevant product
The antitrust claim against AP must be dismissed for failure to state a claim.
III. The Motions To Dismiss Plaintiffs’ Copyright Infringement Claims (Count II) Against AP And NFL Defendants Are Granted18
a. Copyright Infringement Claims Against AP
In general, Plaintiffs allege that AP “exceeded the scope” of the limited rights granted to it under the AP Contributor Agreements by granting NFL an invalid sublicense, thereby infringing on Plaintiffs’ copyrights. (AC ¶ 192.) They further allege that AP also infringed Plaintiffs’ copyrights by offering copies of Plaintiffs’ photos for sale through its “NFL Photo Store” that it operates jointly with Replay. (AC ¶ 195.)
In general, a copyright owner who grants an exclusive or nonexclusive license to use a work waives any right to assert
The license that each Plaintiff granted to AP in his
Nothing in the license requires AP to issue only royalty-bearing sublicenses. AP acted within its licensed rights by granting the NFL Entities a sublicense giving them [redacted] The NFL Entities’ permissible uses include all those set forth in the Second AP Agreement‘s definition of “Scope of Use” (the “NFL Scope of Use“).19 (Second AP Agreement,
The Second AP Agreement further states that [redacted] Id. [redacted]. The license provisions of the AP Contributor Agreements show that when AP granted this sublicense, each Plaintiff had already given AP the rights to issue such a sublicense, as of the effective date of the Plaintiff‘s AP Contributor Agreement.
Plaintiffs contend that reading the AP Contributor Agreements to include a right to issue non-royalty-bearing sublicenses constitutes an “overly broad reading” and that there is no language that “expressly permit[s]” the issuance of retroactive or non-royalty-bearing sublicenses. (See Pls.’ Opp‘n to AP Mot. 26-27.) However, Plaintiffs fail to cite to authority holding that each right in a license must be specifically called out to exist.20
[redacted]
Copyright licenses are construed according to neutral principles of contract interpretation. See Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481, 487 (2d Cir. 1998); Wu v. Pearson Educ. Inc., No. 10 Civ. 6537, 2013 WL 145666 at *4 (S.D.N.Y. Jan. 11, 2013); Leutwyler v. Royal Hashemite Court of Jordan, 184 F. Supp. 2d 303, 306 (S.D.N.Y. 2001). In cases where only the scope of the license is at issue, it is the copyright owner‘s burden to prove that defendant‘s usage was unauthorized. MAI Photo News Agency, Inc. v. Am. Broad. Co., Inc., 97 Civ. 8908, 2001 WL 180020, at *4 (S.D.N.Y. Feb. 22, 2001). The licensor who argues that there should be an exception or deviation from the meaning reasonably conveyed by the language of a license loses, because he or she “should bear the burden of negotiating for language that would express the limitation or deviation.” Boosey & Hawkes Music Publishers, 145 F.3d at 487.
As made plain by the language of the AP Contributor Agreements, the grant of rights made by Plaintiffs to AP, and AP‘s right to sublicense these rights to others is broad and unlimited. Section 4.2 of the AP Contributor Agreements state that AP is granted a “perpetual, irrevocable, transferable, worldwide, right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform,
In their opposition, Plaintiffs assert, among other things,21 that the language of the AP Contributor Agreements supports their argument that non-royalty-bearing sublicenses constitute a breach of contract. Specifically, Plaintiffs contend that apart from two instances in which AP is not
The two instances Plaintiffs raise — thumbnails and AP
Plaintiffs separately contend that AP was not entitled to grant sublicenses that covered periods before the issue date. Under § 4(a) of the Second AP Agreement, [redacted]
Contrary to Plaintiffs’ assertions, however, such a license is permissible. As a matter of copyright law, copyright owners and exclusive licensees are free to grant such licenses “after the fact” as they see fit. See Wu, 2013 WL 145666, at *4 (“[T]here is no legal prohibition to obtaining a retroactive license if it is authorized by the rights holder.“); Silberstein v. Fox Entm‘t Grp., Inc., 424 F. Supp. 2d 616, 629 (S.D.N.Y. 2004) (“The retroactivity of the licensing agreement between DAS and Fox has no necessary effect on its power to immunize Fox against claims of infringement of the [] copyright.“), aff‘d sub nom. Silberstein v. John Does 1-10, 242 F. App‘x 720 (2d Cir. 2007).
Plaintiffs contend that the Second Circuit has held
AP does not appear to have been a co-owner purporting to grant a license to which the other co-owner did not consent. Indeed, Plaintiffs make clear that AP is not a co-owner of Plaintiffs’ copyrights. (AC ¶¶ 65, 131, 185.) Far from being a co-owner “extinguishing” Plaintiffs’ rights behind their backs after Plaintiffs filed their infringement suit — which was the scenario in Davis — AP was expressly granted by Plaintiffs complete authority to sublicense their photographs as AP saw fit, and AP exercised those rights without “extinguishing” any legal action commenced by Plaintiffs.
Each AP Contributor Agreement licensed to AP all the
Plaintiffs further contend that AP lacked authority to grant such a license with respect to “Archival Event Photos” because it purportedly holds only a non-exclusive license for
In fact, the instant case bears a close resemblance to Wu. In Wu, the court distinguished and limited Davis to its specific facts by granting judgment as a matter of law to the defendant sublicensee based on a retroactive license granted by the plaintiff photographer‘s licensee. Id. At *4-5. As here, the plaintiff photographer in Wu had entered into licensing agreements with photography agencies that gave the agencies broad discretion to sublicense the photographs. The court determined that by granting the agencies discretion to confer upon the defendant “whatever licenses” were needed, the plaintiff “indisputably gave the Photo Agencies the discretion to enter into retroactive licenses.” Id. at *5. As such, no copyright infringement claim could lie. Similarly here, each
Plaintiffs’ additional contention that the “retroactive” license (or the Second AP Agreement in general) was invalid because it was “illegal under the Sherman Act” is without basis. (AC ¶¶ 168, 181.) However, as discussed above, Plaintiffs’ antitrust claims are insufficient. Because Plaintiffs do not adequately plead that the Second AP Agreement violates the
Plaintiffs also allege that AP was required to “track or monitor” the NFL‘s uses of photos, to limit the uses that the NFL could make of photos, and to pay Plaintiffs royalties for uses of their photos by the NFL or by Replay. They further contend that AP breached the AP Contributor Agreements by failing to perform these obligations. (AC ¶¶ 168-174, 220-26.) As shown above, the language of the AP Contributor Agreements imposes no such obligations on AP. However, even if the AP Contributor Agreements had contained such terms, and AP had breached those terms, AP would not be liable for copyright
Second Circuit law is clear that where a licensee‘s use of a copyrighted work is authorized by a license, any claim for unpaid royalties for that use cannot form the basis of an infringement claim. Rather, a failure to pay royalties under a valid license agreement could only give rise to a breach of contract claim against the party with which the copyright owner has contracted to receive royalties. See, e.g., Graham, 144 F.3d at 236-37 (finding that “the payment of royalties” is a “covenant” giving rise to a breach of contract claim but not a claim of copyright infringement); 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 10.15(A)(5) (2013) (“Failure to pay royalties does not render past conduct an infringement of the copyright.“); cf. U.S. Naval Inst., 936 F.2d at 695 (“[A]n exclusive licensee of any of the rights comprised in the copyright, though it is capable of breaching the contractual obligations imposed on it by the license, cannot be liable for infringing the copyright rights conveyed to it.“); Russian Entm‘t Wholesale Inc. v. Close-Up Int‘l, Inc., 767 F. Supp. 2d 392, 408 (E.D.N.Y. 2011) (“A licensee‘s breach of a covenant in a copyright license does not rescind the authorization to use the copyright work, but rather provides the licensor with a
Plaintiffs contend that their AP Contributor Agreements differ from those in Graham because AP‘s obligations to pay royalties was a “condition” made “[i]n exchange for the license,” and therefore breach of that condition could give rise to an infringement claim. (See Pls.’ Opp‘n to NFL Def.‘s Mot. 32-33.) However, at least one court in this Circuit has held that language virtually identical to “in exchange for” is a covenant, not a condition. Powlus v. Chelsey Direct, LLC, No. 09 Civ. 10461, 2011 WL 135822, at *5 (S.D.N.Y. Jan. 10, 2011) (“No court applying New York law has every construed the commonly used phrase ‘[i]n consideration for’ as indicating a condition precedent.“). Indeed, under New York law, “[c]onditions are not favored” and “in the absence of unambiguous language, a condition will not be read into [a contract].” Id., at *4; see also Graham, 144 F.3d at 237 (“New York respects a presumption that terms of a contract are covenants rather than conditions.“) Plaintiffs offer no support for their assertion that the “in exchange for” language denotes a condition, rather than a covenant.
Plaintiffs finally argue that, “at worst,” the AP
“The determination of whether a contract term is ambiguous is a threshold question of law for the court.” Walk-In Med. Ctrs., Inc. v. Breuer Capital Corp., 818 F.2d 260, 263 (2d Cir. 1987). “An agreement is ambiguous only if it is ‘capable of more than one meaning when viewed objectively by a reasonably intelligent person who has examined the context of the entire integrated agreement.‘” GSI Commerce Solutions, Inc. v. BabyCenter, L.L.C., 618 F.3d 204, 209 (2d Cir. 2010) (citations omitted); see also British Int‘l Ins. Co. v. Seguros La Republica, S.A., 342 F.3d 78, 82 (2d Cir. 2003). Silence, or omission of a term, however, does not generally create ambiguity. See Millgard Corp. v. E.E.Cruz/Nab/Fronier-Kemper, No. 99 CIV. 2952 (LBS), 2003 WL 22741664, at *3 (S.D.N.Y. Nov. 18, 2003) (“[U]nder New York law, the omission of terms in a contract does not create ambiguity.“); Kirschten v. Research Institutes of Am., Inc., No. 94 CIV. 7947 (DC), 1997 WL 739587, at *9 (S.D.N.Y. Sept. 24, 1997) (citing Metropolitan Life Ins. Co. v. RJR Nabisco, Inc., 716 F. Supp. 1504, 1515 (S.D.N.Y. 1989) (“While it may be true that no explicit provision either permits or prohibits an LBO, such contractual silence itself cannot create ambiguity to avoid the dictates of the parol evidence rule . . . .“)); Kaplan v. Cott Beverage Corp., 27 Misc.2d 655, 656–57, 212 N.Y.S.2d 103, 105 (Sup. Ct. 1961) (“The written contract makes no mention of any adjustment in purchase price because of any variation in inventory and it is silent on the subject of any adjustments as to rent, taxes, etc. on closing of title. The plaintiff sought to overcome this apparent difficulty by asserting that the written contract is ambiguous and that the real intent of the parties may be shown by their conduct . . . . The written agreement is clear in its terms and purports to express the entire arrangement of the parties . . . . Therefore it may not be varied nor [sic] explained. All that can be said is that the plaintiff is the victim of his own circumstances.“)
As noted above, on the face of the AP Contributor Agreements, the grant of rights made by Plaintiffs to AP is
Because the facts of the AC do not sufficiently allege direct copyright infringement by AP, Count II of the AC against AP is dismissed.
b. Claims Against NFL Defendants
- Placement on NFL.com, including in “articles, as part of photo ‘essays,’ and also to create standalone photo ‘galleries‘” (id. ¶¶ 75, 99, 104, 107, 109, 111);
- Publication on international websites such as nfljapan.com, nflmexico.com, and nfl.com/international (id. ¶¶ 75, 100, 107, 194);
- Incorporation in printed publications such as NFL Magazine, Super Bowl programs, reports, newsletters, and game programs (id. ¶¶ 75, 101, 118);
- Use in television programming on the NFL Network (id. ¶¶ 75, 102, 117);
Display of a “multi-story” image “draped” over facades of the Dallas Omni Hotel in Dallas and Cowboys Stadium to promote Super Bowl XLV (id. ¶ 103); and - Use of unspecified internet “links that allow and encourage visitors to buy copies of the photos through www.nflshop.com” (id. ¶ 113).
In addition to these alleged infringements, Plaintiffs also make reference to alleged “remov[al]” of “copyright management information” from photographs. (Id. ¶ 112.)
The purported basis of Plaintiffs’ copyright claims, however, is not that the NFL lacked authority from Getty or AP to make the foregoing uses of Plaintiffs’ photographs. (See id. ¶ 72.) Nor do Plaintiffs allege that Getty or AP lacked the authority and ability to grant a license to the NFL that would encompass all of the allegedly infringing uses identified in the AC. Rather, as set forth in detail below, Plaintiffs take issue only with the fact that they did not receive monetary compensation in the form of royalties for the NFL‘s uses - i.e., “the appropriate commercial licensing rates required for such
Although Plaintiffs bring copyright infringement claims against “all defendants,” Plaintiffs fail to make allegations of specific instances of copyright infringement by any of the 32 NFL Clubs.25 (See, e.g., id. ¶¶ 75, 94, 98-100, 164, 166, 176, 194.) None of the exhibits to the AC include any alleged uses of Plaintiffs’ photographs by an individual NFL Club. (Id. Exs. 8-14.) Rather, substantive allegations in (and exhibits to) the AC relating to the infringement claims are made against the “NFL” or “NFL Defendants,” which, in the AC, are defined to exclude the 32 individual NFL Clubs. (AC ¶ 16.) To the extent that the NFL Clubs are nominally included in the “catch all” infringement claim against “all defendants,” this
As noted above, it is well established that use of a copyrighted work within the scope of a valid license is noninfringing as a matter of law, Graham, 144 F.3d at 236, and a “valid license, either exclusive or non-exclusive, immunizes the licensee from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with the licensor.” Harris, 646 F. Supp. 2d at 630 (citation and internal quotation marks omitted). The same holds true for a sublicensee‘s use that has been authorized by a licensee. See Ariel, 2006 WL 3161467, at *9-10 (finding that “defendants’ status as licensees or sub-licensees” precluded plaintiff from bringing copyright infringement claims as a matter of law), aff‘d, 277 F. App‘x 43 (2d Cir. 2008); Major League Baseball Promotion Corp. v. Colour-Tex, Inc., 729 F. Supp. 1035, 1041 (D.N.J. 1990) (“Under copyright law, a person is innocent of infringement if he possesses a sublicense issued by a licensee upon the due authority of the copyright owner.” (citing Pathe Exch. v. Int‘l Alliance, 3 F. Supp. 63, 65 (S.D.N.Y. 1932))).
The various NFL uses challenged by Plaintiffs fall within three categories: the first category consists of the NFL‘s publication and display of the photographs for marketing purposes-specifically on (i) NFL.com, (ii) international websites, (iii) NFL-controlled print publications, (iv) the NFL Network, and (v) a “multi-story” image on buildings (AC ¶¶ 75, 99-104, 107, 109, 111); the second category is the NFL website “includ[ing] links that allow and encourage visitors to buy copies” of the Plaintiffs’ photographs “through www.nflshop.com” (id. ¶ 113); the third category is removal of “copyright management information” from photographs in purported violation of the
With respect to the second category - the NFL‘s alleged “allowing” and “encouraging” of visitors to the NFL
With respect to the third category, the solitary reference to removal of “copyright management information” (AC ¶ 112) is vague and conclusory. To the extent the alleged removal of information is part of Plaintiffs’ cause of action for
Plaintiffs’ contention that the Second AP Agreement constitutes a “retroactive” license (AC ¶ 87) with respect to alleged royalty-free uses of contributor photographs prior to the effective date of that agreement (April 1, 2012) does not alter the conclusion that the NFL‘s alleged uses were authorized and the infringement claims against the NFL and NFL Clubs should be dismissed. As discussed further above with respect to AP, the grant of a retroactive license can be permissible, and in fact is permissible when there is a broad grant of rights, as here.
Additionally, Plaintiffs do not allege that their contributor agreements foreclosed Getty and AP from licensing the use of their photographs to the NFL for editorial, charitable, or marketing purposes across a wide variety of media. Rather, Plaintiffs’ complaint is that that they were not paid by Getty and AP - and that Getty and AP did not seek to collect from the NFL (or NFL Clubs) - “the appropriate
- Getty and AP “allowed the NFL to make free or ‘complimentary’ use,” “failed to charge the NFL appropriate market value” (id. ¶ 72), and permitted the NFL to use Plaintiffs’ photos “without paying for any usage rights and without reporting usages to Plaintiffs on their royalty statements” (id. ¶ 82);
- “[T]he NFL has never paid any fees or compensation to Plaintiffs . . . and none of [the challenged] uses has ever been reported by Getty Images or AP to Plaintiffs on any royalty report or otherwise” (id. ¶ 106);
- Plaintiffs’ photographs were not included in Getty‘s or AP‘s existing “royalty-free collections or offerings” (id. ¶ 173) and should have been part of “Rights-Managed licensing” that “would require a higher license fee than a license granting more narrow usage rights” (id. ¶ 70);
- “The notion that AP was authorized to grant its customers complimentary or ‘non-royalty bearing’ licenses” without any “compensation to Plaintiffs is anathema to the
fundamental purpose and objective” of the Plaintiffs’ agreements (id. ¶ 80); and - “Plaintiffs have never received any compensation in exchange for the NFL Defendants’ prolific and ongoing use of thousands of Plaintiffs’ photos.” (Id. ¶ 76.)
However, even assuming arguendo that Plaintiffs are entitled to such royalties under their agreements with AP, such an allegation cannot form the basis for a copyright infringement claim. As discussed above, a failure to pay royalties under a valid license agreement can only give rise to a breach of contract claim, not a claim of copyright infringement and Plaintiffs have failed to adequately establish that the failure of royalties constituted a violation of a “condition.” See, e.g., Graham, 144 F.3d at 236-37.
c. Copyright Infringement Claims Against Replay
As with NFL, AP had a right to grant broad sublicense to Replay to use Plaintiffs’ photographs, and did, in fact, grant such a sublicense as part of the Replay Agreement. (See Zibas Decl. Ex. A; AC ¶ 114.); see also Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995) (under copyright law, “the
III. The Motion To Dismiss Plaintiffs’ Vicarious Copyright (Count III) and Contributory Infringement Claims (Count IV) Against AP Is Granted
Counts III and IV of the AC do not state plausible claims for vicarious and contributory copyright infringement against AP, based on the NFL and Replay‘s asserted use of photos. AP‘s license from Plaintiffs permitted the uses of the photos by NFL and Replay alleged in the AC, and AP was entitled to sublicense those rights to the NFL and Replay. The alleged uses are not copyright infringement. See Colour-Tex, 729 F. Supp. at 1041. As discussed above, because Plaintiffs have not adequately alleged primary infringement by either the NFL or Replay, AP cannot be liable for either vicarious or contributory copyright infringement. See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005); Faulkner v. Nat‘l Geographic Enters. Inc., 409 F.3d 26, 40 (2d Cir. 2005); see also Russian Entm‘t Wholesale, 482 F. App‘x at 606.
As such, Counts II through IV of the AC for direct or secondary copyright infringement against AP are dismissed.
IV. The Motion To Dismiss Plaintiffs’ Breach Of Contract (Count V) Against AP Is Granted
A breach of contract claim must be dismissed where the unambiguous terms of the contract do not support a plaintiff‘s claim. Soroof Trading Dev. Co. Ltd. v. GE Fuel Cell Sys. LLC, 842 F. Supp. 2d 502, 509-10 (S.D.N.Y. 2012). The provisions of the parties’ agreements establish the rights of the parties and prevail over conclusory allegations in the complaint. 805 Third Ave. Co. v. M.W. Realty Assoc., 58 N.Y.2d 447, 451, 461 N.Y.S.2d 778, 780 (1983). The Court cannot “supply a specific obligation the parties themselves did not spell out.” Tonking v. Port Auth. Of New York and New Jersey, 3 N.Y.3d 486, 490, 787 N.Y.S.2d 708, 710 (2004). Moreover, New York law and the Twombly-Iqbal standards of federal pleading require a complaint to identify, in non-conclusory fashion, the specific terms of the contract that a defendant has breached. Otherwise, the complaint must be dismissed. Swan Media Grp., Inc. v. Staub, 841 F. Supp. 2d 804, 807-08 (S.D.N.Y. 2012); Orange Cnty. Choppers, Inc. v. Olaes Enter., Inc., 497 F. Supp. 2d 541, 554 (S.D.N.Y. 2007); Highlands Ins. Co. v. PRG Brokerage, Inc., No. 01 Civ. 2272, 2004 WL 35439, at *8 (S.D.N.Y. Jan. 6, 2004).
These principles require dismissal of Plaintiffs’ breach of contract claim against AP. Plaintiffs’ nowhere allege specific contractual provisions that were allegedly breached by AP. Plaintiffs allege the following obligations on AP‘s part: (1) Plaintiffs’ photos are subject to “rights managed” licensing (AC ¶ 69); (2) the agreements restricted AP‘s ability to retroactively or otherwise sublicense the photos to the NFL on a royalty-free basis (AC ¶ 223); (3) AP was required to notify Plaintiffs that it was granting the NFL Entities a royalty-free license to use the photos (AC ¶ 67); and (4) AP was required to report non-royalty bearing licenses of their photos (AC ¶¶ 68, 225). Plaintiffs have not shown any contractual language supporting these assertions.
Finally, in their opposition to AP‘s motion to dismiss, Plaintiffs contend that the AP Contributor Agreements were obtained through “duress” or are “unconscionable.” (See Pls.’ Opp‘n to AP Mot. 16-19.) However, while Plaintiffs cite to two paragraphs of the AC which would seem to support such claims (see AC ¶¶ 144-45), these contentions are not explicitly present or set forth as claims in the AC and at best more directly relate to Plaintiffs’ first count for violations of the
In sum, Plaintiffs have failed to plausibly plead a claim for breach of contract against AP. Their conclusory allegations as to the terms of the contracts allegedly breached by AP are contradicted by the plain language of their own AP Contributor Agreements. As such, Count V is dismissed.
V. The Motion To Dismiss Plaintiffs’ Breach of Fiduciary Duties (Count VI) Against AP Is Granted
Count VII of the AC, which alleges that AP breached a fiduciary duty to Plaintiffs, is premised on the legal conclusion that AP “held itself out” as Plaintiffs’ “agent” and therefore owes them a special fiduciary duty. (AC ¶¶ 235-45.) However, the assertion of agency is conclusively contradicted by the Plaintiffs’ own agreements. Each Plaintiff‘s AP Contributor Agreement expressly states that:
Photographer shall be acting as an independent contractor and shall not represent himself or herself as an employee of AP, but only as an independent contractor. . . . Neither the making of this Agreement nor the performance of its provisions shall be construed to constitute either Party an agent, partner, joint venture, employee or legal representative of the other
Party.
(AP Contributor Agreements § 1 or § 1.3.) In disputes between a purported principal and purported agent, where the interests of third parties or government agencies are not in issue, the parties are bound by a contractual agreement that their relationship is not one of agency. Such a disclaimer bars a claim for breach of fiduciary duty. See, e.g., In re Rezulin Prods. Liab. Litig., 392 F. Supp. 2d 597, 607 n. 67 (S.D.N.Y. 2005) (parties’ own characterization of their relationship as not an agency may be disregarded only where it is attacked by a “stranger to the relationship.“); New Millennium Consulting, Inc. v. United Healthcare Servs., Inc., 695 F.3d 854, 858 (8th Cir. 2012) (“this Court affirmed the district court‘s determination that ABC Radio was not an agent . . . as a matter of law because the parties expressly disclaimed a principal-agent relationship in their contract“); Children‘s Broad. Corp. v. Walt Disney Co., 245 F.3d 1008, 1021-22 (8th Cir. 2001); Norsul Oil & Mining Co. v. Texaco, Inc., 703 F. Supp. 1520, 1545-46 (S.D. Fla. 1988). Where a contract contains a disclaimer that the defendants are not acting as a fiduciary or financial investment advisor for two financial institutions, such a disclaimer “preclude[s] a finding of a fiduciary or other special relationship, absent special circumstances.” BNP Paribas Mortg. Corp. v. Bank of America, N.A., 866 F. Supp. 2d 257, 269-70 (S.D.N.Y. 2012); see also Cooper v. Parsky, 140 F.3d 433, 439, 442 (2d Cir. 1998); Seippel v. Jenkens & Gilchrist, P.C., 341 F. Supp. 2d 363, 381-82 (S.D.N.Y. 2004); Calvin Klein Trademark Trust v. Wachner, 129 F. Supp. 2d 248, 250 (S.D.N.Y. 2001).
There are no “special circumstances” here, and Plaintiffs’ conclusory assertions that AP “held itself out as Plaintiffs’ agent” and “artfully craft[ed] the language of their contributor agreements” does not change that fact. (AC ¶¶ 235, 238.) The AP Contributor Agreements appear to embody ordinary commercial transactions. See, e.g., Rodgers v. Roulette Records, Inc., 677 F. Supp. 731, 738-39 (S.D.N.Y. 1988) (record company did not owe fiduciary duty to recording artist although it collected royalties for him); Van Valkenburgh, Nooger & Neville v. Hayden Publ‘g Co., 33 A.D.2d 766, 766, 306 N.Y.S.2d 599, 600 (1st Dep‘t 1969), aff‘d, 30 N.Y.2d 34, 330 N.Y.S.2d 329 (1972) (book publisher did not have a fiduciary relationship to author).
Finally, the breach of fiduciary duty claim must be dismissed because it is duplicative of Plaintiffs’ claim for breach of contract. Both claims are based on the same
Plaintiffs have also contended that the “terms” of the AP Contributor Agreements “demonstrate that the entire purpose for Plaintiffs to enter these agreements was to earn royalties
“In the alternative to their copyright claims” (AC ¶ 248), Plaintiffs have asserted a claim for unjust enrichment based on NFL Defendants, AP, and Replay‘s alleged uses of their photographs. This claim, too, must fail because enforceable contracts govern the use of Plaintiffs’ photographs and because the claim is preempted by the
a. Enforceable Contracts Govern The Use Of Plaintiffs’ Photographs
It is well-settled that “the existence of a valid and enforceable contract precludes an unjust enrichment claim relating to the subject matter of the contract.” Morgan Stanley & Co. v. Peak Ridge Master SPC Ltd., 930 F. Supp. 2d 532, 545 (S.D.N.Y. 2013); see also Keifer v. Harlequin Enters. Ltd., No. 12-CV-5558, 2013 WL 1324093, at *3 (S.D.N.Y. Apr. 2, 2013), rev‘d in part on other grounds, (“Plaintiffs can recover on an unjust enrichment theory only in the absence of an enforceable agreement.“); IDT Corp. v. Morgan Stanley Dean Witter & Co., 12 N.Y.3d 132, 142, 907 N.E.2d 268 (2009) (“Where the parties executed a valid and enforceable written contract governing a particular subject matter, recovery on a theory of unjust
They are similarly precluded as against AP. There is no dispute that every Plaintiff has entered into an AP Contributor Agreement, and that each AP Contributor Agreement deals with the subject matter which is the basis for the unjust enrichment claim, namely the extent to which Plaintiffs will be compensated for use of their photographs. As shown above, the AP Contributor Agreements do not prohibit AP from sublicensing Plaintiffs’ photographs to NFLP for certain uses that will not result in the payment of royalties to the Plaintiffs. As such, Plaintiffs may not circumvent their contracts through the expedient of an unjust enrichment claim.
b. Copyright Act Preempts Unjust Enrichment Claims
Under
all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
A state-law claim is preempted by
For a claim arising under state law to be preempted, two tests must be met. The first, called the “subject matter requirement,” Nat‘l Basketball Ass‘n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997), requires that the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in
For a state-law claim not to be considered ‘equivalent’ to a copyright claim, the state claim must require an additional element that is qualitatively different from the elements of copyright infringement. The courts “take a restrictive view of what extra elements transform an otherwise
Plaintiffs’ Count VII alleges that Defendants were “unjustly enriched by the uncompensated use of Plaintiffs’ photos.” (AC ¶ 249.) However, both preemption elements are satisfied in this case regarding NFL Defendants. As to the first element, Plaintiffs allege, and it is therefore presumed for purposes of this motion, that their photographs are protected by the
Moreover, no allegation is made suggesting that AP was unjustly enriched: Plaintiffs’ claim only addresses the “NFL Defendants’ uses of their photos” without paying royalties. (Id. ¶¶ 250, 252.) But even if this claim were read to assert that AP was somehow unjustly enriched, it would also fail on preemption grounds.31
Lastly, the Plaintiffs’ unjust enrichment claim against Replay is similarly preempted. Plaintiffs seek to protect their alleged interests in their photos under the theory that Replay was unjustly enriched by offering Plaintiffs’ photos for sale without compensating plaintiffs, and without appropriate attribution. (AC ¶¶ 250-54.) As with the other defendants, these rights are those which are protected by the
For the reasons set forth above, Getty‘s motion to compel arbitration is granted and Defendants’ motions to dismiss are granted. The AC is dismissed without prejudice with leave to replead within 20 days of this opinion.
It is so ordered.
New York, NY
March 27, 2015
ROBERT W. SWEET
U.S.D.J.
Notes
Specifically, Plaintiffs allege:
- “[T]he NFL Defendants leveraged their illegal monopoly to obtained [sic] unfettered access to Plaintiffs’ works and force Plaintiffs’ agents to purportedly grant ‘complimentary’ or ‘non-royalty bearing’ licenses.” (AC ¶ 75.)
- “AP granted this retroactive ‘license’ to the NFL under threats of coercive pressure by the NFL, including the threat of moving its exclusive license back to Getty Images, which had submitted a bid to reacquire the NFL‘s business.” (AC ¶ 88.)
- “The NFL exploited its illegal control and monopoly of the commercial licensing rights to NFL content to force Getty Images and now AP to grant the NFL unfettered access to Plaintiffs’ image libraries and to rob Plaintiffs of their rightful compensation for such uses.” (AC ¶ 95.)