OPINION & ORDER
KIMBA M. WOOD, United States District Judge:
Plaintiffs Jose Luis Pelaez, Inc. and Jose Pelaez (collectively, "Pelaez") bring
BACKGROUND
I. Factual Background
The following facts are not genuinely disputed unless otherwise noted.
Jose Pelaez is a commercial photographer and president and sole owner of Jose Luis Pelaez Inc., a corporation organized under New York law. (Pls.' Resp. to Defs.' Statement of Undisputed Material Facts ("Pelaez 56.1 Response"), ECF No. 155, ¶ 3.) McGraw-Hill is a publisher of textbooks and educational products. (Id. ¶ 1.)
Beginning in 1990, Pelaez entered into representation agreements with non-parties Corbis and its predecessor-in-interest The Stock Market (collectively, "Corbis"), authorizing Corbis to sub-license Pelaez's photographs on his behalf. (Defs.' Resp. to Am. Statement of Undisputed Material Facts ("McGraw-Hill's 56.1 Resp.") ¶ 8, ECF No. 132.) The agreements authorized Corbis to issue limited licenses for the use of Pelaez's images by third parties in exchange for reasonable license fees. (Id. ¶ 9.)
During the time period relevant to this suit, Corbis and McGraw-Hill entered into a series of preferred pricing agreements (collectively, the "PPAs"), including:
(Pelaez's Counterresp. to Defs.' Counterstatement of Additional Material Facts ("Pelaez 56.1 Counterresp.") ¶¶ 69, 116, ECF No. 143.) The PPAs set varying fees for different tiers of anticipated use, typically based on ranges of estimated print runs. (Id. ¶ 113.)
Initially, Corbis provided Pelaez's photographs to McGraw-Hill in collections of slide transparencies or online image collections from which McGraw-Hill could review and select photographs. (Id. ¶¶ 71-72.) Beginning by at least 2004, however, McGraw-Hill had access to high-resolution versions of Pelaez's photographs suitable for printing. (Id.)
In the event McGraw-Hill decided to use a photograph from Corbis's collection in one of its textbooks, McGraw-Hill would request an invoice from Corbis. (Id.) The request provided Corbis with information regarding the anticipated print run, geographic distribution, language(s), and format(s) of the textbook that was expected to contain the selected photograph. (Id.)
The invoices issued by Corbis generally set forth the "rights" granted to McGraw-Hill (e.g., "[o]ne time non-exclusive, North
Pelaez contends that, from 1992 through 2017, McGraw-Hill repeatedly exceeded the limitations contained on the invoices issued by Corbis, thereby infringing his copyrights. (Id. ¶ 10.) The photographs on which Pelaez's claims are based are included in Exhibits 1, 2 and 3 to the Third Amended Complaint ("TAC"). (ECF No. 117.) With respect to the photographs contained in Exhibits 1 and 2 to the TAC, Pelaez alleges that McGraw-Hill exceeded the limitations on the licenses it was granted by (1) printing or distributing more copies of the photographs than authorized; (2) distributing publications containing the photographs outside the authorized distribution area; (3) publishing the photographs in electronic, ancillary, or derivative publications without permission; (4) publishing the photographs in international editions and foreign publications without permission; and (5) publishing the photographs beyond the specified time limits. (Id. ¶ 15.) With respect to the photographs in Exhibit 3, Pelaez alleges that McGraw-Hill never obtained a license to use those photographs, and thus that each use of those photographs by McGraw-Hill constituted copyright infringement. (Id. ¶ 16.)
The core of the parties' disagreement is what significance should be ascribed to the invoices exchanged between Corbis and McGraw-Hill, the PPAs, and the course of conduct between McGraw-Hill and Corbis. According to Pelaez, McGraw-Hill's authorization to use Pelaez's photographs was limited by the terms included in the invoices. According to McGraw-Hill, the invoices did not control the scope of its license to use a given photograph; rather, they at most provided estimates of McGraw-Hill's anticipated use of a photograph and the applicable billing level for such use.
II. Procedural Background
Pelaez filed the initial complaint in this suit on July 6, 2016. (ECF No. 1.) He filed an amended complaint on September 22, 2016 and subsequently filed a second amended complaint on February 3, 2017. (ECF Nos. 22, 35.)
On June 23, 2017, both parties moved for partial summary judgment. (ECF Nos. 57, 64.)
On February 26, 2018, Pelaez was granted leave to file a further amended complaint. (ECF No. 111.)
On March 8, 2018, Pelaez filed the TAC. (ECF No. 117.)
On March 12, 2018, Pelaez moved for partial summary judgment on 129 of his copyright infringement claims alleged in the TAC. (ECF No. 120.)
On March 14, 2018, McGraw-Hill answered the TAC. (ECF No. 129.)
On March 26, 2018, McGraw-Hill filed its memorandum in opposition to Pelaez's motion. (Mem. Law Opp'n Pls.' Mot. Partial Summ. J. ("McGraw-Hill Opp'n"), ECF No. 131.) On April 2, 2018, Pelaez filed his reply. (Pls.' Reply Mem. Supp. Mot. Summ. J. ("Pelaez Reply"), ECF No. 142.)
On April 10, 2018, McGraw-Hill moved for summary judgment on all of Pelaez's claims and filed a memorandum in support
Pelaez subsequently filed five letters providing supplemental authority in support of his motion for partial summary judgment and in opposition to McGraw-Hill's motion for summary judgment. (ECF Nos. 175-78; ECF Nos. 187-88.) McGraw-Hill filed one letter providing supplemental authority in support of its motion for summary judgment and in opposition to Pelaez's motion for partial summary judgment. (ECF No. 179.)
LEGAL STANDARDS
"Summary judgment is proper only when, construing the evidence in the light most favorable to the non-movant, `there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.'" Viacom Int'l, Inc. v. YouTube, Inc., 676 F.3d 19, 30 (2d Cir. 2012) (quoting Fed. R. Civ. P. 56(a)). "When both sides have moved for summary judgment, `each party's motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration.'" Lyons v. Lancer Ins. Co., 681 F.3d 50, 57 (2d Cir. 2012) (quoting Law Debenture Tr. Co. of N.Y. v. Maverick Tube Corp., 595 F.3d 458, 468 (2d Cir. 2010)).
"The moving party bears the initial burden of showing that there is no genuine dispute as to a material fact." Jaffer v. Hirji, 887 F.3d 111, 114 (2d Cir. 2018) (quoting CILP Assocs., L.P. v. PriceWaterhouse Coopers LLP, 735 F.3d 114, 123 (2d Cir. 2013)). "But where `the burden of proof at trial would fall on the nonmoving party,' the moving party can shift the initial burden by `point[ing] to a lack of evidence to go to the trier of fact on an essential element of the nonmovant's claim.'" Id. (alteration in Jaffer) (quoting Simsbury-Avon Pres. Soc'y, LLC v. Metacon Gun Club, Inc., 575 F.3d 199, 204 (2d Cir. 2009)). It follows that, where a plaintiffs motion for summary judgment would be meritorious absent the assertion of an affirmative defense, in order to avoid summary judgment, the defendant "must adduce evidence which, viewed in the light most favorable to and drawing all reasonable inferences in favor of [it], would permit judgment for [it] on the basis of that defense." Frankel v. ICD Holdings S.A., 930 F.Supp. 54, 65 (S.D.N.Y. 1996) (Kaplan, J.).
"In ruling on a motion for summary judgment, the district court may rely on `any material that would be admissible' at a trial." Lyons, 681 F.3d at 57 (quoting Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290, 309 (2d Cir. 2008)). The court "may not properly focus on individual strands of evidence and consider the record in piecemeal fashion; rather, it must consider all of the evidence in the record, reviewing the record taken as a whole." Id. (internal citations and quotation marks omitted).
DISCUSSION
The Copyright Act gives copyright holders several "exclusive rights," including the right "to reproduce the copyrighted work" or to authorize others to do so. 17 U.S.C. § 106. "Anyone who violates any of the exclusive rights of the copyright owner ... is an infringer of the copyright, or right of the author, as the case may be." Id. § 501(a). A copyright owner who claims
Ownership of a valid license to use the copyrighted work is generally a defense to copyright infringement. See id. at 197 ("A valid license to use the copyrighted work `immunizes the licensee from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with the licensor.'" (quoting Davis v. Blige, 505 F.3d 90, 100 (2d Cir. 2007))). However, a copyright owner may bring a claim for infringement against a licensee of his or her work where: "(1) the licensee's alleged infringement is outside the scope of the license; (2) the licensee failed to satisfy a condition precedent to the license, such that the license is invalid; or (3) the licensor rescinded the license after the licensee materially breached one of its covenants." PaySys Int'l, Inc. v. Atos Se, Worldline SA, Atos IT Servs. Ltd., 226 F.Supp.3d 206, 215 (S.D.N.Y. 2016) (Forrest, J.) (citing Graham v. James, 144 F.3d 229, 235-38 (2d Cir. 1998)).
"The existence of a license is an affirmative defense, placing upon the party claiming a license `the burden of coming forward with evidence' of one." Spinelli, 903 F.3d at 197 (quoting Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995)). "By contrast, `[w]here only the scope of the license is at issue,' it is the copyright owner's burden to show that the defendant's use of a work was unauthorized." Id. (quoting Bourne, 68 F.3d at 631).
III. McGraw-Hill's Motion
McGraw-Hill moves for summary judgment on all of Pelaez's claims. In support of its motion, McGraw-Hill argues principally that the conduct Pelaez complains of constitutes, at most, a breach of the licensing agreements it entered into with Corbis and therefore cannot also constitute copyright infringement. In the alternative, McGraw-Hill argues that (1) with respect to 477 of his 573 claims, Pelaez is not eligible for statutory damages because he has not provided any evidence of when McGraw-Hill's alleged infringement began; (2) with respect to the remaining ninety-six claims, Pelaez has failed to demonstrate valid registrations, a prerequisite to liability for copyright infringement; and (3) under Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 134 S.Ct. 1962, 188 L.Ed.2d 979 (2014), Pelaez may not obtain retrospective relief based on conduct that occurred more than three years before the filing of his initial complaint in this suit.
A. License Terms
As a threshold matter, McGraw-Hill contends that to properly claim copyright infringement, Pelaez must show that McGraw-Hill violated a condition precedent to the licenses granted to it by Corbis. Absent such a showing, argues McGraw-Hill, the only potential claim based on its conduct is for breach of contract. (McGraw-Hill Mem. 15.)
McGraw-Hill is incorrect. Its argument improperly conflates an infringement claim based on the violation of a license condition with an infringement claim based on use that exceeds the scope of a license. Pelaez alleges the latter, not the former.
The agreements entered into by McGraw-Hill and Corbis restricted the scope of the licenses granted to McGraw-Hill by limiting, among other things, the number of copies McGraw-Hill was authorized to make and the time period in which it could make those copies. To the extent McGraw-Hill exceeded these limitations
Graham v. James, 144 F.3d 229, the sole controlling authority relied on by McGraw-Hill in support of its argument concerning conditions, is not to the contrary. The licensing agreement at issue in Graham authorized the licensee to sell the copyright owner's work, without limitation, in exchange for the licensee's promises to pay royalties for each copy sold. Id. at 233-34. When the licensee failed to make the payments as promised, the copyright owner sued for infringement. See id. The Second Circuit held that the publisher's promise to pay royalties was a covenant, rather than a condition, of the license. Thus, the publisher's breach of that promise, without more, did not void the license. Because the publisher had a valid license to make and sell the copies at issue, no infringement had occurred, notwithstanding the publisher's breach of the contract. See id. at 237-38.
Unlike the copyright owner in Graham, Pelaez does not base his infringement claim on nonpayment of royalties. Rather, Pelaez contends that the licenses conveyed by Corbis were limited in scope; that McGraw-Hill exceeded the limitations imposed by the license; and that, in doing so, McGraw-Hill violated Pelaez's exclusive rights under the copyright laws. Where, as here, a copyright owner claims that a defendant "acted outside the scope of its license, [he or she] properly claim[s] copyright infringement, not breach of contract." Spinelli, 903 F.3d at 202; see also Universal Instruments Corp. v. Micro Sys. Eng'g, Inc., 924 F.3d 32, 44 (2d Cir. 2019) ("[B]ecause copyright licenses prohibit any use not authorized, a licensee infringes the owner's copyright if its use exceeds the scope of its license."). This type of claim does not require the court to consider whether a particular contract term was a condition or a covenant.
Although this conclusion is supported by the weight of Second Circuit authority, it nevertheless conflicts with two recent decisions from this district. See Muench Photography, Inc. v. McGraw-Hill Glob. Educ. Holdings, LLC, 367 F.Supp.3d 82 (S.D.N.Y. 2019) (Preska, J.); Sohm v. Scholastic Inc., No. 16-CV-7098 (JPO), 2018 WL 1605214 (S.D.N.Y. Mar. 29, 2018)
The Court declines to follow Sohm and Muench in this respect. Both decisions rely primarily on BroadVision for the rule that whether a defendant's conduct exceeds the scope of a license depends on whether such conduct breaches a condition of the license. But BroadVision did not involve a restricted license. Rather, the licensing agreement at issue in BroadVision permitted unlimited use of the copyrighted work so long as payment for that use was made. See 2010 WL 5158129, at *2. In that respect, BroadVision's facts were analogous to Graham's—that is, the core of the parties' dispute was the alleged failure to pay monies due under a contract. The present case is distinguishable because Pelaez alleges that the licenses that authorized McGraw-Hill to copy his work were limited in scope, not simply that McGraw-Hill did not pay money it owed to Corbis under the licensing agreements.
To the extent McGraw-Hill contends that its overuse was within the scope of the license because of what the parties refer to as the "ten-times payment clause," (McGraw-Hill Mem. 14), the Court disagrees. Under that provision, "in the event of unauthorized use," Corbis was entitled to bill McGraw-Hill "ten (10) times the normal license fee for any unauthorized use, or any other fees, damages, or penalties Corbis may be entitled to under this Agreement or applicable law." (2003 PPA, at 6; see also 2006 PPA, at 7.) The provision also states that "[u]nauthorized use of these Images constitutes copyright infringement," and that "[t]he foregoing is not a limiting statement of Corbis' rights or remedies in connection with any unauthorized use." (2003 PPA, at 6; see also 2006 PPA, at 7.) The existence of a potential contractual remedy, enforceable by Corbis, does not negate the express limitations imposed on the licenses granted to McGraw-Hill.
For the reasons above, McGraw-Hill's motion for summary judgment is DENIED to the extent it relies on the argument that, to prove infringement, Pelaez must show that the limitations on the licenses were conditions rather than covenants.
B. Statutory Damages
McGraw-Hill next moves for summary judgment on the issue of Pelaez's eligibility for statutory damages.
A copyright infringer "is liable for either — (1) the copyright owner's actual damages and any additional profits of the infringer, ...; or (2) statutory damages." 17 U.S.C. § 504(a). "The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the
Under 17 U.S.C. § 412, to be eligible for an award of statutory damages, a copyright owner must have registered his work prior to the date on which infringement commenced. "Statutory damages may not be awarded even if infringement, commenced before registration, continues after [the effective date of] registration." Ushodaya Enters., Ltd. v. V.R.S. Int'l, Inc., 64 F.Supp.2d 352, 353 (S.D.N.Y. 1999) (Cedarbaum, J.), aff'd, 2 F. App'x 128 (2d Cir. 2001).
McGraw-Hill argues that, with respect to 477 of his 573 claims, Pelaez has failed to identify when McGraw-Hill's alleged infringement "commenced" and therefore cannot carry his burden to show his entitlement to statutory damages. (McGraw-Hill Mem. 16.) Pelaez acknowledges he will bear the burden of proving statutory damages at trial, but nevertheless contends that McGraw-Hill is not entitled to summary judgment unless it comes forward with evidence demonstrating that the infringements did not occur prior to the registration of the photographs' copyrights. (Pelaez Opp'n 10.)
Pelaez is incorrect. "A defendant does not have to introduce evidence that would negate the possibility of damages in order to move for summary judgment." Vaughn v. Consumer Home Mortg. Co., 297 F. App'x 23, 27 (2d Cir. 2008). "When the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go to the trier of fact on an essential element of the nonmovant's claim." Simsbury-Avon Pres. Soc'y, 575 F.3d at 204 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). "In that event, the nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment." Id. (citing Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548).
These standards "appl[y] to damages the same as [they] appl[y] to liability." Seoul Broad. Sys. Int'l, Inc. v. Sang, 754 F.Supp.2d 562, 567 (E.D.N.Y. 2010). Although, as Pelaez points out, 17 U.S.C. § 504 permits a copyright owner to elect to recover statutory damages in lieu of actual damages "at any time before final judgment," this does not bar McGraw-Hill from litigating Pelaez's entitlement to statutory damages at the summary judgment stage. See, e.g., Papazian v. Sony Music Entm't, No. 16-CV-07911 (RJS), 2017 WL 4339662, at *6 (S.D.N.Y. Sept. 28, 2017) (Sullivan, J.) (holding that defendant was entitled to summary judgment where "plaintiff provide[d] absolutely no evidence `from which a reasonable inference in [his] favor may be drawn'" on the issue of his entitlement to statutory damages, (quoting Binder & Binder PC v. Barnhart, 481 F.3d 141, 148 (2d Cir. 2007))); Granger v. Gill Abstract Corp., 566 F.Supp.2d 323, 326 (S.D.N.Y. 2008) (Castel, J.) (granting defendants' motion for summary judgment "to the extent that plaintiff may not recover statutory damages").
McGraw-Hill has "point[ed] to a lack of evidence" regarding Pelaez's eligibility for statutory damages. In response, Pelaez has not come forward with any evidence. Instead, Pelaez contends only that "there is not sufficient evidence in the record to determine whether [the] infringements occurred before the applicable registrations
For the foregoing reasons, summary judgment is GRANTED in favor of McGraw-Hill to the extent that Pelaez may not seek statutory damages for the claims listed in paragraph 20 of Pelaez's 56.1 Response, with the exception of the claims described in Rows 341 and 473 of Exhibit 1 to the TAC.
C. Registration
McGraw-Hill next argues that the copyright registrations applicable to Pelaez's remaining ninety-seven claims (the "Corbis Registrations") are invalid for failure to comply with 17 U.S.C. § 409, and therefore those claims must be dismissed.
Under 17 U.S.C. § 411(a), "no civil action for infringement ... shall be instituted until ... registration of the copyright claim has been made in accordance with [the Act]." Section 411's registration requirement is a "precondition to filing a claim." Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 166, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010). For this reason, "[t]he absence of a valid copyright registration... bar[s] a plaintiff from bringing a viable copyright infringement action.'" Sohm, 2018 WL 1605214, at *3 (second alteration in Sohm) (quoting L.A. Printex Indus., Inc. v. Le Chateau, Inc., No. 11-CV-4248, 2012 WL 987590, at *3 (S.D.N.Y. Mar. 23, 2012) (Swain, J.)).
"[R]egistration ... has been made within the meaning of 17 U.S.C. § 411(a)
The Corbis Registrations were obtained beginning in 2002 as part of a program in which Pelaez transferred his copyright in the photographs to Corbis for the express purpose of allowing Corbis to register the photographs' copyrights.
Courts in this district disagree on whether this type of bulk registration validly registers the individual works in the databases for the purposes of an infringement suit. Pelaez urges the Court to follow Sohm, 2018 WL 1605214, at *5, which held that, where a registrant owns the copyright to the components in a database at the time of registration, the registration of that database is valid as to its component works. The Fourth and Ninth Circuits have reached the same conclusion. See Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., 747 F.3d 673, 682 (9th Cir. 2014); Metro. Reg'l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 597 (4th Cir. 2013). McGraw-Hill urges the Court to follow Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F.Supp.2d 84, 95 (S.D.N.Y. 2010) (Preska, J.), reconsidered on other grounds, No. 09-CV-2669 (LAP), 2010 WL 3958841 (S.D.N.Y. Sept. 27, 2010), which held precisely the opposite.
In Sohm, the Court explained that the key word in § 409 is "work," not author," and that under 17 U.S.C. § 101, a collective work—such as the databases registered by Corbis—is a type of "work." 2018 WL 1605214, at *4 (citing Alaska Stock, 747 F.3d at 681); see also 17 U.S.C. § 101 ("A `collective work' is a work ... in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole."). Therefore, the "author" and "title" required to be named under 17 U.S.C. § 409(2) and (6) are those of the collective work, not of each component work. Sohm, 2018 WL 1605214 at *4 (citing Alaska Stock, 747 F.3d at 681).
The Court finds Sohm's reasoning persuasive, and therefore holds that the Corbis Registrations are valid. The Court
Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001), clarified on denial of reh'g, 283 F.3d 502 (2d Cir. 2002), abrogated on other grounds, Reed Elsevier, 559 U.S. 154, 130 S.Ct. 1237, on which McGraw-Hill relies, is not to the contrary. The issue in Morris was whether a collective work registration could extend to component works where the copyright registrant of the collective work did not own the copyright in the component works. Id. Here, by contrast, Pelaez transferred ownership of the copyright in his works to Corbis prior to registration. Thus, at the time Corbis applied for registration, it owned the component works now at issue. "Under the law of this Circuit, where the owner of a copyright for a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action under § 411(a) for the constituent part." Id. at 68 (citing Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998)).
McGraw-Hill's motion for summary judgment is therefore DENIED insofar as it relates to the invalidity of the Corbis Registrations.
D. Damages
McGraw-Hill next moves for summary judgment in its favor on the issue of whether Pelaez may recover damages for infringement that occurred prior to July 7, 2013, three years before he filed the initial complaint in this case. (McGraw-Hill Mem. 25.)
Under 17 U.S.C. § 507(b), "[n]o civil action shall be maintained under the provisions of this [Act] unless it is commenced within three years after the claim accrued." This Circuit follows a discovery rule, pursuant to which "copyright infringement claims do not accrue until actual or constructive discovery of the relevant infringement." Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014). Pelaez argues that, under the discovery rule, damages are recoverable "for all infringements, regardless of when they occur, as long as a complaint is timely filed." (Pelaez Opp'n 25.) McGraw-Hill disagrees and contends that timely claims are subject to the additional limitation that damages may not be recovered for infringement that occurred more than three years before the filing of the complaint. McGraw-Hill relies on Petrella, 572 U.S. 663, 134 S.Ct. 1962, to support this argument.
In Petrella, the Supreme Court held that the equitable defense of laches cannot bar relief on an infringement claim brought within three years of the occurrence of the allegedly infringing conduct. 572 U.S. at 667, 134 S.Ct. 1962. The plaintiff in Petrella was aware that the defendant was infringing her copyright as early as nine years before she brought suit. Id. at 674, 134 S.Ct. 1962. When she finally took legal action, she sought relief only for discrete acts of infringement that occurred within the three-year period before she filed suit. Id. at 674-75, 134 S.Ct. 1962.
In concluding that laches could not be asserted as a defense to infringement in this instance, the Supreme Court repeatedly stressed that under 17 U.S.C. § 507(b), "a successful plaintiff can gain retrospective relief only three years back from the time of suit. No recovery may be had for infringement in earlier years." Id. at 677, 134 S.Ct. 1962; see also id. at 672, 134 S.Ct. 1962 ("§ 507(b)'s limitations period[]... allows plaintiffs during that lengthy term to gain retrospective relief running only three years back from the
In the wake of Petrella, courts in this district have applied one of two contradictory, bright-line rules. Some courts have held that, even if a plaintiffs complaint is timely under the discovery rule, he or she nonetheless may not recover damages for infringements that occurred more than three years prior to the commencement of his or her suit. See Craig v. UMG Recordings, Inc., 380 F.Supp.3d 324, 333 (S.D.N.Y. 2019) (Oetken, J.) ("After a plaintiff has established the timeliness of his or her claim with respect to any one particular act, ... [he or she may] recover damages for only those infringing acts that occurred within three years of the filing of the complaint."); Papazian, 2017 WL 4339662, at *3 (holding that when infringing acts occur over time, damages are only recoverable for infringements that occurred within the three years prior to the filing of the complaint); Wu v. John Wiley & Sons, Inc., No. 14-CV-6746 (AKH) (AJP), 2015 WL 5254885, at *7 (S.D.N.Y. Sept. 10, 2015) (Peck, M.J.) (holding that, "[f]ollowing Petrella, [the copyright owner] can recover damages only for any ... infringing acts that occurred on or after" three years before he filed suit).
Other courts have held that, notwithstanding Petrella, so long as a plaintiffs complaint is timely under the discovery rule, he or she may collect damages on the underlying claims. See PK Music Performance, Inc. v. Timberlake, No. 16-CV-1215 (VSB), 2018 WL 4759737, at *10 (S.D.N.Y. Sept. 30, 2018) (Broderick, J.) ("[I]t would be inconsistent with the discovery rule to apply the three-year lookback."); Sohm, 2018 WL 1605214, at *11 (refusing to limit damages to three years before filing); Energy Intelligence Grp., Inc. v. Scotia Capital (USA) Inc., No. 16-CV-0617, 2017 WL 432805, at *2 (S.D.N.Y. Jan. 30, 2017) (Castel, J.) ("Under no reasonable reading of Petrella could the opinion be interpreted to establish a time limit on the recovery of damages separate and apart from the statute of limitations.").
This Court agrees with those courts that have held that a plaintiff may not reach back to recover damages for infringement that occurred more than three years before filing suit. See Papazian, 2017 WL 4339662, at *4-5. "When infringing acts occur over time," the determination of when a plaintiffs claim accrues is a separate inquiry from the question of "which, if any, of the multiple infringing acts trigger actual or statutory damages under the Copyright Act." Id. at *4. To make the damages determination, "[t]he Second Circuit has always applied [a] rolling approach," under which damages may be recovered only for infringing acts that occurred up to three years before the filing of the complaint, "such that the passage of each additional day forecloses one more day of past damages." Id.
As courts in this district have pointed out, there is "doctrinal tension" in applying both a three-year damages lookback and the discovery rule. Id. at *5 n.5; see also PK Music Performance, 2018 WL 4759737, at *10 ("Applying the three-year lookback ... would effectively impose the
Pelaez does not dispute McGraw-Hill's assertion that it "did not print or distribute the titles implicated in 94 of the claims in the TAC between July 3, 2013, and July 3, 2016." (McGraw-Hill Mem. 25.) Accordingly, McGraw-Hill's motion for summary judgment is GRANTED to the extent that Pelaez may not recover damages—actual or statutory—for the ninety-four claims in the TAC that are based on conduct that occurred entirely prior to July 6, 2013.
IV. Pelaez's Motion
Pelaez moves for summary judgment on 129 of his claims.
A. Registration
McGraw-Hill first contends that Pelaez is not entitled to summary judgment on the claims at issue because the Corbis Registrations are invalid with respect to Pelaez's photographs. The Court disagrees. The Corbis Registrations are valid as to Pelaez's photographs for the reasons explained supra in Section I.C.
B. Statute of Limitations
McGraw-Hill next contends that Pelaez is not entitled to summary judgment on any of his claims because he knew, or had reason to know, of McGraw-Hill's unauthorized use of his photographs, if any, prior to July 6, 2013. If McGraw-Hill were correct on this point, Pelaez's claims would be time-barred under 17 U.S.C. § 507(b).
McGraw-Hill does not dispute that Pelaez became aware of the infringements he alleges in late 2014 (McGraw-Hill 56.1 Counter ¶ 97), but nevertheless contends that Pelaez's claims are untimely, for two reasons. First, McGraw-Hill argues that Pelaez's experience in the stock photography industry—which includes more than thirty years of experience as a professional photographer, nearly 20 years as a stock photography business owner, and unspecified dealings with publishing clients—should have put him on "inquiry notice" to investigate any potential misuse of his work prior to July 3, 2013. (McGraw-Hill Opp'n 17-18.) Second, McGraw-Hill argues that Corbis's knowledge should be imputed to Pelaez for purposes of 17 U.S.C. § 507, and that Corbis was aware of potential claims of infringement as early as May 2009. (Id.)
Both of McGraw-Hill's arguments regarding notice are unpersuasive. First, general knowledge of an industry, or experience in an industry, does not trigger the running of the statute of limitations in 17 U.S.C. § 507. See Wu v. John Wiley, 2015 WL 5254885, at *6 (collecting cases). Pelaez's understanding of the stock photography industry, without more, does not demonstrate that a reasonable person exercising due diligence would have discovered the infringement alleged.
Second, an agent's knowledge is properly imputed to his or her principal for statute of limitations purposes only where the "agent is employed to represent [the] principal with respect to a given matter and acquires knowledge material to that representation." Veal v. Geraci, 23 F.3d 722, 725 (2d Cir. 1994). This rule has been applied where a party's lawyer acquires knowledge about his or her claim. See, e.g., id. at 725 (holding that a claim "may have accrued as early as" the date on which claimant's counsel became aware of facts underlying claim); L.I. Head Start Child Dev. Servs., Inc. v. Econ. Opportunity Comm'n of Nassau Cty., Inc., 558 F.Supp.2d 378, 396 (E.D.N.Y. 2008), aff'd, 710 F.3d 57 (2d Cir. 2013) (holding that the statute of limitations began to run when plaintiff's counsel knew of facts giving rise to claim). To the extent it applies in situations where the agency relationship is something other than that of lawyer-client, its application is narrower than McGraw-Hill suggests. For example, in Weiss v. La Suisse, Societe D'Assurances Sur La Vie, 381 F.Supp.2d 334, 339 (S.D.N.Y. 2005) (McMahon, J.), on which McGraw-Hill relies, the agents (1) had been "formally appointed" by the plaintiffs to receive all communications from the defendant concerning the actions which formed the bases of plaintiffs' claims; (2) had "threaten[ed the defendant] with litigation"; and (3) had attempted to effect a global settlement on behalf of the plaintiffs.
The record here demonstrates that the scope of Corbis's agency was limited to representing Pelaez in the sublicensing of his photographs. (See Pelaez Decl., Exs. 6-10.) McGraw-Hill does not offer any evidence to show that Corbis was authorized to represent Pelaez in connection with the legal claims now before the Court. Cf. Pub. Emps.' Ret. Sys. of Miss. v. Goldman Sachs Grp., Inc., 280 F.R.D. 130, 141 (S.D.N.Y. 2012) (Baer, J.) (holding that, where attorney had not yet
In sum, because McGraw-Hill is incorrect that Corbis's knowledge may be imputed to Pelaez for statute of limitations purposes, it has not identified any dispute of material fact regarding the date on which Pelaez's claims accrued.
C. License
McGraw-Hill lastly contends that Pelaez is not entitled to summary judgment on the claims at issue because it had permission, either express or implied, from Corbis to use Pelaez's photographs in the manner alleged in the TAC. The Court addresses each argument in turn.
1. Express License
a. Legal Standard
"Copyright disputes involving only the scope of the alleged infringer's license present the court with a question that essentially is one of contract: whether the... license agreement encompasses the defendant's activities." Bourne, 68 F.3d at 631; see also Great Minds v. Fedex Office & Print Servs., Inc., 886 F.3d 91, 94 (2d Cir. 2018) ("Copyright licenses are generally construed according to principles of contract law.").
"In a dispute over the meaning of a contract, the threshold question is whether the contract is ambiguous, which is a question of law for the court." Great Minds, 886 F.3d at 94 (internal citations and quotation marks omitted). "Under New York law," which the parties agree applies to the interpretation of the agreements entered into by McGraw-Hill and Corbis, "courts must consider how the contract would be understood `by a reasonably intelligent person who has examined the context of the entire integrated agreement and who is cognizant of the customs ... and terminology as generally understood in the particular trade or business.'" Id. (omission in Great Minds) (quoting Orchard Hill Master Fund Ltd. v. SBA Commc'ns Corp., 830 F.3d 152, 156-57 (2d Cir. 2016)). "Where the parties dispute the meaning of particular contract clauses, the task of the court `is to determine whether such clauses are ambiguous when read in the context of the entire agreement' ...." Law Debenture Tr., 595 F.3d at 467 (quoting Sayers v. Rochester Tel. Corp. Supplemental Mgmt. Pension Plan, 7 F.3d 1091, 1095 (2d Cir. 1993)).
"[I]f [the agreement] is straightforward and unambiguous, its interpretation presents a question of law for the court to be made without resort to extrinsic evidence." Spinelli, 903 F.3d at 200 (quoting Postlewaite v. McGraw-Hill, Inc., 411 F.3d 63, 67 (2d Cir. 2005)). "If `specific [contract] language is susceptible of two reasonable interpretations,'" however, "the contract is ambiguous as a matter of law." Great Minds, 886 F.3d at 94 (alteration in Great Minds) (quoting Ellington v. EMI Music, Inc., 24 N.Y.3d 239, 244, 997 N.Y.S.2d 339, 21 N.E.3d 1000 (2014)). Only then may extrinsic evidence of the parties' intent be considered. Law Debenture Tr., 595 F.3d at 465.
b. Application
During the relevant time period, the licenses granted to McGraw-Hill were governed by two sets of documents: the PPAs entered into by Corbis and McGraw-Hill and invoices issued by Corbis to McGraw-Hill.
The parties disagree, however, as what effect to give the terms of each set of documents. Pelaez contends that the terms included in the invoices limited the scope of McGraw-Hill's licenses, whereas McGraw-Hill contends that it was entitled to make additional uses beyond those described in the invoices.
For the reasons that follow, the Court agrees with Pelaez that McGraw-Hill has failed to show that there is a dispute of material fact as to whether it had an express license to use Pelaez's photographs.
(i) Usage Prior to 2003
The PPAs relied on by McGraw-Hill in support of its express license argument date back to January 1, 2003. (See id. at 13.) Pelaez alleges infringement dating back to 1994. (Pelaez 56.1 Counterresp. ¶ 10.) Because there was no PPA in effect when the pre-2003 invoices were issued, the PPAs are not probative of the scope of any express license issued by Corbis prior to 2003. The scope of any express license granted by Corbis to McGraw-Hill prior to January 1, 2003, is therefore properly determined by the relevant invoices alone, if any.
(ii) The 2003 and 2006 PPAs
As relevant here, the 2003 and 2006 PPA are substantively identical. (See Beall Decl., Ex. 6 ("2003 PPA"); id., Ex. 7 ("2006 PPA").) Both PPAs unambiguously provide that the licenses granted by Corbis to McGraw-Hill are limited by the terms of the invoices.
As relevant here, the 2003 and 2006 PPAs each state:
(2003 PPA, at 6 (emphasis added); 2006 PPA at 6 (emphasis added).). Both PPAs further provide that McGraw-Hill's "ability to access an Image does not in itself entitle [it] to use that Image," and that, "[u]nless otherwise specified in a separate writing signed by Corbis, [McGraw-Hill's] reproduction of Images is limited to (i) internal evaluation or comps, or (ii) the specific use described in your invoice, which together with these terms shall constitute the full license granted." (2003 PPA, at 6; id., 2006 PPA, at 6.)
McGraw-Hill does not offer any competing interpretation of the above-quoted portions of the PPAs, and the Court is not aware of one.
(iii) The 2009 PPA
As with the 2003 and 2006 PPAs, there is no language in the 2009 PPA that abrogates the print run limitations specified in the invoices. (See Beall Decl., Ex. 8 ("2009 PPA").) To the contrary, the 2009 PPA explicitly incorporates the terms of the invoices, stating that Corbis grants McGraw-Hill "a limited, non-exclusive right to use the Rights Managed Content licensed hereunder to create and exploit the End Use solely as specified in the PPA, as modified by the Invoice, and expressly as limited in the Specific Content Web Pages and the terms and conditions herein." (Id. at 10 (emphasis added).) The 2009 PPA continues:
As stated in the Invoice, the license granted hereunder for the applicable Rights Managed Content allows You to use the Rights Managed Content obtained hereunder for ten years from the date the applicable Invoice is Issued. Except where specifically permitted in the Agreement, You may not distribute, publish, display or otherwise use in any way, the Rights Managed Content, including without limitation the End Use after the end of the applicable License Term for that Image.
(Id. (emphasis added).)
In support of its argument that, under the 2009 PPA, the terms contained in the invoices did not limit McGraw-Hill's use of Pelaez's photographs, McGraw-Hill points to the 2009 PPA's "Increased Use" provision. That provision sets forth the fees applicable to an image in the event "McGraw-Hill desires to increase the total number of Unique Users after the initial license for such Image is granted." (Id. at 4.) It provides:
(Id.) McGraw-Hill argues that this language "reflects the parties' mutual understanding of the preexisting circumstance of permission to use Corbis images." (McGraw-Hill Opp'n 12.)
McGraw-Hill's reliance on this provision is misplaced. By its plain text, the above-quoted language speaks to the price McGraw-Hill will pay in the event it
(iv) The 2014 PPA
None of the photographs on which Pelaez's claims are based were invoiced after the effective date of the 2014 PPA. The Court thus does not see any reason to consider whether the 2014 PPA expressly granted McGraw-Hill a license to use Pelaez's photographs.
c. Conclusion
The PPAs and the invoices unambiguously limit the licenses granted to McGraw-Hill. Each PPA must be considered together with the relevant invoices, and there are not any terms in the PPAs that purport to abrogate the limitations contained in the invoices. Because the PPAs and the invoices are "straightforward and unambiguous, [their] interpretation presents a question of law for the court to be made without resort to extrinsic evidence." Spinelli, 903 F.3d at 200 (quoting Postlewaite, 411 F.3d at 67). McGraw-Hill thus may not rely on the Spelman and Beacher Declarations, or any other extrinsic evidence, to create a dispute of fact as to the meaning of these documents. McGraw-Hill's express license argument must be rejected.
2. Implied License
McGraw-Hill also argues that, even if it did not have an express license to exploit Pelaez's photographs beyond the usage specified in the invoices, it had an implied license to do so.
a. Legal Standard
It is well-established that, like other contracts, a nonexclusive license to use copyrighted work may be implied from conduct. See Melville B. Nimmer & David Nimmer, 3 NIMMER ON COPYRIGHT § 10.03[7] (2019). Although the Second Circuit has not ruled on the precise circumstances under which an implied license may be found, the parties appear to agree that the correct test is whether "the totality of the parties' conduct" indicates an intent to grant permission to use the copyrighted work.
Because "an implied license to use a copyrighted work `cannot arise out of the unilateral expectations of one party,'" Design Options, Inc. v. BellePointe, Inc., 940 F.Supp. 86, 92 (S.D.N.Y. 1996) (Sweet, J.) (quoting Allen-Myland v. International Business Machines Corp., 746 F.Supp. 520, 549 (E.D. Pa. 1990)), "the question [of implied license] comes down to whether there was a `meeting of the minds' between the parties to permit the particular usage at issue," Pearson, 855 F. Supp. 2d at 124. The focus is on "the licensor's objective intent at the time of creation and delivery of the [copyrighted work] as manifested by the parties' conduct." Corbello, 777 F.3d at 1067 (quoting Asset Marketing Sys., Inc. v. Gagnon, 542 F.3d 748, 756 (9th Cir. 2008)). The parties here agree that, although Pelaez created the photographs at issue, the relevant intent for the purposes of whether an implied license was granted is that of Corbis, not Pelaez.
b. Application
McGraw-Hill points to the following circumstances as raising an issue of fact as to its implied license defense: (1) the 2009 PPA contained a term describing how to calculate amounts owed by McGraw-Hill for the use of a photograph in excess of an initial invoice; (2) beginning by at least 2004, Corbis provided McGraw-Hill with unrestricted access to its archive of high-resolution images, prior to Corbis requesting payment for usage of the images; and (3) Corbis never refused a request by McGraw-Hill for a license. (McGraw-Hill Opp'n 11-12.) McGraw-Hill also relies on selective quotations from the declaration of Steve Spelman, who was employed by Corbis from May 2005 to May 2014, and worked on licensing issues.
The individual strands of evidence identified by McGraw-Hill must be considered in light of the record as a whole. For clarity, the Court divides the record evidence in three categories: (1) the parties' written agreements; (2) evidence of Corbis's conduct; and (3) the Spelman declaration. For the reasons that follow, McGraw-Hill has not established a triable issue of fact as to whether it had an implied license to use Pelaez's photographs.
The Written Agreements
As a threshold matter, Pelaez contends that any implied agreement allowing McGraw-Hill to exceed the print limitations contained in the invoices would impermissibly contradict the express written agreements. (Pelaez Reply 2-3.) This is incorrect. Pelaez's theory of infringement is that the licenses Corbis expressly granted to McGraw-Hill authorized McGraw-Hill to make a limited number of copies of his photographs; after McGraw-Hill "exhausted" the quota provided for by the license, that license effectively expired. (Id. at 6.) Under Pelaez's theory, there is no contradiction between the express written agreements, that covered only the usage provided for therein, and an implied agreement, if any, that would cover reproduction beyond what was provided for by the express agreements.
Although the written agreements do not, standing alone, preclude an implied license, they are probative of the parties' intent. See, e.g., Pearson, 855 F. Supp. 2d at 126 (holding that written agreements provided "compelling evidence of [the parties'] expectations" regarding whether a license to use copyrighted photographs had been granted). Several terms contained in the written agreements entered into by Corbis and McGraw-Hill are inconsistent with there being an implied license. As explained supra in Section IV.C.1, the written agreements provided, in various terms, that: McGraw-Hill's use of photographs obtained from Corbis was limited to the usage provided for in the invoices; McGraw-Hill's ability to access an image did not entitle it to use that image; and, reproduction of Corbis's images by McGraw-Hill was limited to internal use and "comps" and/or to the use specified in the invoice, unless otherwise specified in a writing signed by Corbis. (See Pelaez Reply 2-5.) The existence of repeated warnings regarding unauthorized use negate the interpretation that Corbis intended to grant McGraw-Hill a license to use Pelaez's photographs in excess of the quantities provided for in the invoices.
McGraw-Hill's argument to the contrary is unconvincing. McGraw-Hill contends that the 2009 PPA "reflects the parties' mutual understanding" that it had ongoing authorization to use Corbis's images, even in the absence of an invoice. (McGraw-Hill Opp'n 12.) In support of this argument, McGraw-Hill points to what it refers to as the "Increased Use" provision. That provision states, in relevant part:
(2009 PPA, at 4.) "Unique User" means "a discrete individual who receives access to a Component." (Id. at 5.) "Component" is, in turn, defined as "an editorial work of intellectual property published by McGraw-Hill... including but not limited to a textbook, trade, retail, custom or reference book, a compendium, study guide, test bank, instructor manual, student edition, teacher edition, quiz book, answer book, and other types such as overhead transparencies, slide sets, PowerPoint of supplementary material." (Id.)
The above-quoted provision demonstrates the parties' shared understanding that, if McGraw-Hill sought to use an image
(ii) Corbis's Conduct
McGraw-Hill points to the fact that Corbis never refused a request for an express license as evidence of an implied license, relying on Falcon Enter., Inc. v. Pubs. Serv., Inc., 438 F. App'x 579, 581 (9th Cir. 2011). The record in Falcon established that the parties had "frequent and informal interactions," which "contradicted" the plaintiff-copyright owner's "claim that [defendant-]Publishers needed an express license for each image [they] published." Id. In contrast to Falcon, the record here establishes that the parties engaged in a structured process for licensing images, which included memorializing their agreements in writing. (See, e.g., Spelman Decl. ¶ 15 (characterizing use absent an invoice as an "oversight" which "could occasionally happen").) Falcon is thus distinguishable. See, e.g., Frerck v. Pearson Educ., Inc., 63 F.Supp.3d 882, 889 (N.D. Ill. 2014) ("In contrast to ... Falcon, plaintiff and defendant abided by a formal protocol ..."); Bean v. Pearson Educ., Inc., 949 F.Supp.2d 941, 946-47 (D. Ariz. 2013) ("In contrast to the informal course of conduct described in Falcon ... here the parties engaged in a structured process....").
Moreover, McGraw-Hill fails to offer any evidence that Corbis knew McGraw-Hill was reproducing Pelaez's photographs in quantities beyond those specified in the invoices. Cf. Keane Dealer Servs., Inc. v. Harts, 968 F.Supp. 944, 947 (S.D.N.Y. 1997) (Baer, J.) (holding that copyright owner granted implied license where it knew of, and failed to object to, licensee's use of licensor's copyrighted work). The failure to provide evidence of Corbis's knowledge of McGraw-Hill's use distinguishes the present case from Pearson, on which McGraw-Hill relies.
The sole fact in this record that supports McGraw-Hill's implied license argument is that, beginning by at least 2004, Corbis provided McGraw-Hill with unrestricted access to its archive of high-resolution images, prior to Corbis requesting payment for usage of the images. But under § 202 of the Copyright Act, "[t]ransfer of ownership of any material object ... does not of itself convey any rights in the copyrighted work embodied in the object." 17 U.S.C. § 202. For that reason, mere delivery of copyrighted work to a putative licensee, standing alone, is not sufficient to give rise to an implied license. See Corbello, 777 F.3d at 1067.
(iii) The Spelman Declaration
As a threshold matter, Pelaez argues that the Spelman Declaration is inadmissible because it contradicts the testimony of Daniel Feduff, who Corbis designated as its Fed. R. Civ. P. 30(b)(6) witness. This contention—for which Pelaez fails to cite any authority—is incorrect. "[A]s with any other party statement [statements made in a 30(b)(6) deposition] are not `binding' in the sense that the corporate party is forbidden to call the same or another witness to offer different testimony at trial." Wright & Miller, FED. PRAC. & PROC. CIV. § 2103 (3d ed.). That is particularly true where, as here, the 30(b)(6) testimony is from a non-party. McGraw-Hill is free to attempt to contradict or otherwise call into question Feduff's testimony with admissible evidence.
Although not inadmissible under Fed. R. Civ. P. 30(b)(6), the Spelman Declaration does not raise a material issue of fact regarding Corbis's intent to grant an implied license. Spelman's description of the relationship between Corbis and McGraw-Hill relied on formal, written agreements. He explains that under the PPAs and the parties' course of dealing, McGraw-Hill would select and download the images it wished to use, notify Corbis of the anticipated usage of the selected images, and request an invoice, which Corbis would then issue. (See Spelman Decl. ¶ 8.) To the extent Spelman addresses use outside the scope of an invoice, he characterizes such an occurrence as an "oversight," which "could occasionally happen." (Id. ¶ 15; see also id. ¶ 10 (noting that "on occasion ... a Corbis invoice would sometimes not include a reference to certain kinds of use of the Corbis photos, such as in an electronic version of [McGraw-Hill]'s book").)
The Spelman Declaration at best establishes that Corbis "essentially looked the other way in the face of infringement." See Palmer/Kane LLC, 204 F. Supp. 3d at 575.
3. Conclusion
McGraw-Hill has not raised a triable issue of fact as to whether it was granted a license—express or implied—to use Pelaez's photographs. Because Pelaez has demonstrated that there is no material issue of fact as to McGraw-Hill's liability on any of the claims identified in Exhibit 1 to the Kerr Declaration, Pelaez's motion for summary judgment is GRANTED as to these claims. As explained supra in Section III.D, however, Pelaez cannot recover actual or statutory damages on many of these claims.
D. Willfulness
Pelaez also requests summary judgment on the issue of whether McGraw-Hill's infringement of its copyright was willful.
1. Legal Standard
Where a plaintiff proves infringement, he or she "may, in lieu of an award of actual damages and profits, request that statutory damages under 17 U.S.C. § 504(c) be awarded." Island Software & Comp. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 262-63 (2d Cir. 2005). "If a plaintiff so elects, the district court will grant anywhere between $750 and $30,000 for each copyright infringed." Id. (citing 17 U.S.C. § 504(c)(1)). If the defendant's infringement was willful, then "the district court may also, at its discretion, enhance the statutory damages award to as much as $150,000 per infringed work." Id. at 263 (citing 17 U.S.C. § 504(c)(2)).
"To prove `willfulness' under the Copyright Act, the plaintiff must show (1) that the defendant was actually aware of the infringing activity, or (2) that the defendant's actions were the result of `reckless disregard' for, or `willful blindness' to, the copyright holder's rights." Island Software, 413 F.3d at 263. Willfulness may be proven on summary judgment, so long as the court draws all reasonable inferences in the defendant's favor. See, e.g., Fendi Adele, S.R.L. v. Ashley Reed Trading, Inc., 507 F. App'x 26, 31 (2d Cir. 2013); see also Island Software, 413 F.3d at 263-64.
2. Application
Pelaez proceeds on a willful blindness theory. He contends that he is entitled to summary judgment on the willfulness issue because McGraw-Hill (1) knew that the photographs were copyrighted, and that licenses were required in order to lawfully exploit copyrighted material; (2) did not track its use of Pelaez's Photographs; (3) did not notify Corbis of its total use; and (4) has been defending against infringement suits involving the publications at issue in this case since as early as 2012.
McGraw-Hill does not dispute Pelaez's factual assertions. Instead, McGraw-Hill contends, first, that to prove willfulness Pelaez must demonstrate that a "specific... decision-maker" willfully "caused the infringement to occur." (McGraw-Hill Opp'n 25.) To the extent McGraw-Hill suggests that Pelaez cannot rely on the collective knowledge and actions of employees at McGraw-Hill to prove willfulness, the Court disagrees. The general rule in this Circuit, developed in the securities fraud context, is that "[a] corporation is considered
McGraw-Hill also contends, however, that its employees held the "reasonable belief" that, to the extent it reproduced photographs in quantities beyond those stated in Corbis's invoices, this "was simply a matter for additional billing and not copyright infringement." (McGraw-Hill Opp'n 24 (citing Beall Opp. Decl. ¶ 8).) In support of this contention, McGraw-Hill points to the course of dealing between itself and Corbis, Drawing all reasonable inferences in favor of McGraw-Hill, a jury could conclude that McGraw-Hill did not believe it was engaging in copyright infringement when it used Pelaez's photographs in quantities beyond those provided for by the Corbis Invoices. For this reason, Pelaez's motion for summary judgment on willfulness is DENIED.
V. Pelaez's Concession as to 61 Claims
Pelaez concedes that it has not alleged damages for sixty-one of its claims and does not oppose entry of judgment as to those claims. (Pelaez Opp'n 9.) Accordingly, summary judgment is GRANTED in favor of McGraw-Hill on those claims.
CONCLUSION
McGraw-Hill's motion for summary judgment is DENIED insofar as it contends that (1) it is entitled to summary judgment on all of Pelaez's claims because Pelaez cannot show that it violated a condition of its licenses; and (2) that the Corbis Registrations are invalid.
McGraw-Hill's motion for summary judgment is GRANTED insofar as it contends that (1) Pelaez may not seek statutory damages for the claims listed in paragraph 20 of Pelaez's 56.1 Response, with the exception of the claims listed in Rows 341 and 473 of Exhibit 1 to the TAC; and (2) Pelaez may not recover damages—actual or statutory—for the ninety-four claims in the TAC that are based on conduct which occurred entirely prior to July 6, 2013.
Pelaez's motion for summary judgment on the 129 claims listed in Exhibit 1 to the Kerr Declaration is GRANTED as to McGraw-Hill's liability on these claims; however, because of the Court's rulings regarding damages, Pelaez will not be able to recover statutory and/or actual damages on all of these claims.
Pelaez's motion for summary judgment on the issue of willfulness is DENIED.
The Court has attached, as an appendix to this Opinion and Order, a chart summarizing its rulings as applied to each of Pelaez's claims.
By August 9, 2019, the parties are directed to submit to the Court a joint letter indicating (1) the steps, if any, that must be taken before this case is Ready for
By August 23, 2019, the parties must submit to the Court a joint pretrial order. The joint pretrial order must comply with this Court's Individual Rules, which are available at http://nysd.uscourts.gov/judge/Wood. On that same date, this case will be deemed Ready for Trial.
The Clerk of Court is respectfully directed to terminate the motions at ECF Nos. 120 and 148.
SO ORDERED.
Appendix: Summary of Claims and Rulings
Summary Summary
Ineligible for Judgment Granted Judgment Granted
Ineligible for Statutory and/or in McGraw-Hill's in Pelaez's favor on
Statutory Damages Actual Damages Favor Liability
Exhibit 1-Row 1 X X
Exhibit 1-Row 2 X X
Exhibit 1-Row 3 X X X
Exhibit 1-Row 4 X X
Exhibit 1-Row 5 X X
Exhibit 1-Row 6 X X
Exhibit 1-Row 7 X X
Exhibit 1-Row 8 X X
Exhibit 1-Row 9 X
Exhibit 1-Row 10 X X
Exhibit 1-Row 11 X
Exhibit 1-Row 12 X X
Exhibit 1-Row 13 X X
Exhibit 1-Row 14 X X
Exhibit 1-Row 15 X X
Exhibit 1-Row 16 X
Exhibit 1-Row 17 X
Exhibit 1-Row 18 X
Exhibit 1-Row 19 X
Exhibit 1-Row 20 X
Exhibit 1-Row 21 X
Exhibit 1-Row 22 X
Exhibit 1-Row 23 X
Exhibit 1-Row 24 X
Exhibit 1-Row 25 X
Exhibit 1-Row 26 X
Exhibit 1-Row 27 X
Exhibit 1-Row 28 X X
Exhibit 1-Row 29 X
Exhibit 1-Row 30 X X
Exhibit 1-Row 31 X X
Exhibit 1-Row 32 X
Exhibit 1-Row 33 X
Exhibit 1-Row 34 X
Exhibit 1-Row 35 X
Exhibit 1-Row 36 X
Exhibit 1-Row 37 X
Exhibit 1-Row 38 X
Exhibit 1-Row 39 X
Exhibit 1-Row 40 X
Exhibit 1-Row 41 X X
Exhibit 1-Row 42 X X
Exhibit 1-Row 43 X
Exhibit 1-Row 44 X X
Exhibit 1-Row 45 X X Exhibit 1-Row 46 X X Exhibit 1-Row 47 X Exhibit 1-Row 48 X X Exhibit 1-Row 49 X Exhibit 1-Row 50 X X Exhibit 1-Row 51 X Exhibit 1-Row 52 X Exhibit 1-Row 53 X Exhibit 1-Row 54 X Exhibit 1-Row 55 X Exhibit 1-Row 56 X Exhibit 1-Row 57 X Exhibit 1-Row 58 X Exhibit 1-Row 59 X Exhibit 1-Row 60 X Exhibit 1-Row 61 X Exhibit 1-Row 62 X Exhibit 1-Row 63 Exhibit 1-Row 64 X X Exhibit 1-Row 65 X Exhibit 1-Row 66 X X Exhibit 1-Row 67 X X Exhibit 1-Row 68 X X Exhibit 1-Row 69 X X Exhibit 1-Row 70 X X Exhibit 1-Row 71 X X Exhibit 1-Row 72 X X Exhibit 1-Row 73 X X Exhibit 1-Row 74 X Exhibit 1-Row 75 X X Exhibit 1-Row 76 X X Exhibit 1-Row 77 X Exhibit 1-Row 78 X X Exhibit 1-Row 79 X X Exhibit 1-Row 80 X X Exhibit 1-Row 81 X X Exhibit 1-Row 82 X X Exhibit 1-Row 83 X X Exhibit 1-Row 84 X X X Exhibit 1-Row 85 X X X Exhibit 1-Row 86 X X X Exhibit 1-Row 87 X X X Exhibit 1-Row 88 X X X
Exhibit 1-Row 89 X X X Exhibit 1-Row 90 X Exhibit 1-Row 91 X X X Exhibit 1-Row 92 X Exhibit 1-Row 93 X Exhibit 1-Row 94 X X Exhibit 1-Row 95 X X Exhibit 1-Row 96 X X Exhibit 1-Row 97 X X Exhibit 1-Row 98 X Exhibit 1-Row 99 X Exhibit 1-Row 100 X Exhibit 1-Row 101 X X Exhibit 1-Row 102 X X Exhibit 1-Row 103 X X Exhibit 1-Row 104 X X Exhibit 1-Row 105 Exhibit 1-Row 106 X X Exhibit 1-Row 107 X X Exhibit 1-Row 108 X X Exhibit 1-Row 109 X X Exhibit 1-Row 110 X X Exhibit 1-Row 111 X X Exhibit 1-Row 112 X X Exhibit 1-Row 113 X X Exhibit 1-Row 114 X X Exhibit 1-Row 115 X X Exhibit 1-Row 116 X X Exhibit 1-Row 117 X Exhibit 1-Row 118 X X Exhibit 1-Row 119 X X Exhibit 1-Row 120 X X Exhibit 1-Row 121 X X Exhibit 1-Row 122 X Exhibit 1-Row 123 X X Exhibit 1-Row 124 X X Exhibit 1-Row 125 X X X Exhibit 1-Row 126 X X Exhibit 1-Row 127 X X Exhibit 1-Row 128 X Exhibit 1-Row 129 Exhibit 1-Row 130 X Exhibit 1-Row 131 X X Exhibit 1-Row 132 X X
Exhibit 1-Row 133 X X Exhibit 1-Row 134 X Exhibit 1-Row 135 X Exhibit 1-Row 136 X Exhibit 1-Row 137 X Exhibit 1-Row 138 X X X Exhibit 1-Row 139 X X Exhibit 1-Row 140 X X Exhibit 1-Row 141 X Exhibit 1-Row 142 X X Exhibit 1-Row 143 X X Exhibit 1-Row 144 X Exhibit 1-Row 145 X X Exhibit 1-Row 146 X X Exhibit 1-Row 147 X Exhibit 1-Row 148 X Exhibit 1-Row 149 X X Exhibit 1-Row 150 X X Exhibit 1-Row 151 X X Exhibit 1-Row 152 X Exhibit 1-Row 153 X X Exhibit 1-Row 154 X X Exhibit 1-Row 155 X Exhibit 1-Row 156 X Exhibit 1-Row 157 X Exhibit 1-Row 158 X Exhibit 1-Row 159 X Exhibit 1-Row 160 X X Exhibit 1-Row 161 X Exhibit 1-Row 162 X X Exhibit 1-Row 163 X X Exhibit 1-Row 164 X X Exhibit 1-Row 165 X Exhibit 1-Row 166 X X X Exhibit 1-Row 167 X X Exhibit 1-Row 168 X Exhibit 1-Row 169 X Exhibit 1-Row 170 X Exhibit 1-Row 171 X X Exhibit 1-Row 172 X X Exhibit 1-Row 173 X X Exhibit 1-Row 174 X Exhibit 1-Row 175 Exhibit 1-Row 176 X X
Exhibit 1-Row 177 X X Exhibit 1-Row 178 X Exhibit 1-Row 179 X X Exhibit 1-Row 180 X Exhibit 1-Row 181 X Exhibit 1-Row 182 X X X Exhibit 1-Row 183 X X Exhibit 1-Row 184 X X Exhibit 1-Row 185 X X Exhibit 1-Row 186 X X Exhibit 1-Row 187 X X Exhibit 1-Row 188 X Exhibit 1-Row 189 X X Exhibit 1-Row 190 X Exhibit 1-Row 191 X Exhibit 1-Row 192 X Exhibit 1-Row 193 X X Exhibit 1-Row 194 X X Exhibit 1-Row 195 X X Exhibit 1-Row 196 X X Exhibit 1-Row 197 X X Exhibit 1-Row 198 X Exhibit 1-Row 199 X Exhibit 1-Row 200 X X Exhibit 1-Row 201 X X Exhibit 1-Row 202 X X Exhibit 1-Row 203 X X Exhibit 1-Row 204 X X Exhibit 1-Row 205 X Exhibit 1-Row 206 X Exhibit 1-Row 207 X Exhibit 1-Row 208 X Exhibit 1-Row 209 X Exhibit 1-Row 210 X X Exhibit 1-Row 211 X X Exhibit 1-Row 212 X Exhibit 1-Row 213 X Exhibit 1-Row 214 X Exhibit 1-Row 215 X Exhibit 1-Row 216 X Exhibit 1-Row 217 X X Exhibit 1-Row 218 X X Exhibit 1-Row 219 X X Exhibit 1-Row 220 X X
Exhibit 1-Row 221 X Exhibit 1-Row 222 X X Exhibit 1-Row 223 X X Exhibit 1-Row 224 X X Exhibit 1-Row 225 X Exhibit 1-Row 226 Exhibit 1-Row 227 X Exhibit 1-Row 228 X Exhibit 1-Row 229 X Exhibit 1-Row 230 X Exhibit 1-Row 231 X Exhibit 1-Row 232 X Exhibit 1-Row 233 X X Exhibit 1-Row 234 X X Exhibit 1-Row 235 X X Exhibit 1-Row 236 X X Exhibit 1-Row 237 X Exhibit 1-Row 238 X X Exhibit 1-Row 239 Exhibit 1-Row 240 X Exhibit 1-Row 241 X Exhibit 1-Row 242 X X X Exhibit 1-Row 243 X Exhibit 1-Row 244 X X Exhibit 1-Row 245 X Exhibit 1-Row 246 X Exhibit 1-Row 247 X Exhibit 1-Row 248 X Exhibit 1-Row 249 Exhibit 1-Row 250 X Exhibit 1-Row 251 X X Exhibit 1-Row 252 X X Exhibit 1-Row 253 X X Exhibit 1-Row 254 X X Exhibit 1-Row 255 X Exhibit 1-Row 256 X X Exhibit 1-Row 257 X X Exhibit 1-Row 258 X Exhibit 1-Row 259 X Exhibit 1-Row 260 Exhibit 1-Row 261 X X Exhibit 1-Row 262 X Exhibit 1-Row 263 X Exhibit 1-Row 264 X
Exhibit 1-Row 265 X X Exhibit 1-Row 266 X X Exhibit 1-Row 267 X X Exhibit 1-Row 268 X X Exhibit 1-Row 269 X X Exhibit 1-Row 270 X X Exhibit 1-Row 271 X X X Exhibit 1-Row 272 X X Exhibit 1-Row 273 X Exhibit 1-Row 274 X X Exhibit 1-Row 275 X X Exhibit 1-Row 276 X Exhibit 1-Row 277 X Exhibit 1-Row 278 X Exhibit 1-Row 279 Exhibit 1-Row 280 X Exhibit 1-Row 281 X Exhibit 1-Row 282 X Exhibit 1-Row 283 X Exhibit 1-Row 284 X Exhibit 1-Row 285 X X Exhibit 1-Row 286 X Exhibit 1-Row 287 X Exhibit 1-Row 288 X Exhibit 1-Row 289 X Exhibit 1-Row 290 X Exhibit 1-Row 291 X X Exhibit 1-Row 292 X X Exhibit 1-Row 293 X X Exhibit 1-Row 294 X Exhibit 1-Row 295 X Exhibit 1-Row 296 X Exhibit 1-Row 297 X X Exhibit 1-Row 298 X Exhibit 1-Row 299 X Exhibit 1-Row 300 X Exhibit 1-Row 301 Exhibit 1-Row 302 X X Exhibit 1-Row 303 X X Exhibit 1-Row 304 X X Exhibit 1-Row 305 X Exhibit 1-Row 306 Exhibit 1-Row 307 X Exhibit 1-Row 308 X X
Exhibit 1-Row 309 X Exhibit 1-Row 310 X Exhibit 1-Row 311 Exhibit 1-Row 312 X Exhibit 1-Row 313 X Exhibit 1-Row 314 X Exhibit 1-Row 315 X X X Exhibit 1-Row 316 X X Exhibit 1-Row 317 X Exhibit 1-Row 318 X X Exhibit 1-Row 319 Exhibit 1-Row 320 X Exhibit 1-Row 321 X X Exhibit 1-Row 322 X Exhibit 1-Row 323 X Exhibit 1-Row 324 X X Exhibit 1-Row 325 X X Exhibit 1-Row 326 X Exhibit 1-Row 327 X Exhibit 1-Row 328 X X Exhibit 1-Row 329 X Exhibit 1-Row 330 X Exhibit 1-Row 331 X Exhibit 1-Row 332 X Exhibit 1-Row 333 X Exhibit 1-Row 334 Exhibit 1-Row 335 X Exhibit 1-Row 336 X Exhibit 1-Row 337 X Exhibit 1-Row 338 Exhibit 1-Row 339 Exhibit 1-Row 340 Exhibit 1-Row 341 Exhibit 1-Row 342 X Exhibit 1-Row 343 X Exhibit 1-Row 344 X Exhibit 1-Row 345 X Exhibit 1-Row 346 X X Exhibit 1-Row 347 X Exhibit 1-Row 348 X Exhibit 1-Row 349 X Exhibit 1-Row 350 X Exhibit 1-Row 351 X Exhibit 1-Row 352 X
Exhibit 1-Row 353 X Exhibit 1-Row 354 X Exhibit 1-Row 355 X Exhibit 1-Row 356 X Exhibit 1-Row 357 X Exhibit 1-Row 358 X Exhibit 1-Row 359 Exhibit 1-Row 360 X Exhibit 1-Row 361 Exhibit 1-Row 362 X Exhibit 1-Row 363 Exhibit 1-Row 364 Exhibit 1-Row 365 X Exhibit 1-Row 366 X X Exhibit 1-Row 367 X Exhibit 1-Row 368 Exhibit 1-Row 369 X Exhibit 1-Row 370 X Exhibit 1-Row 371 X Exhibit 1-Row 372 X Exhibit 1-Row 373 X Exhibit 1-Row 374 X Exhibit 1-Row 375 X Exhibit 1-Row 376 X X Exhibit 1-Row 377 X X Exhibit 1-Row 378 X X Exhibit 1-Row 379 X X Exhibit 1-Row 380 X X Exhibit 1-Row 381 Exhibit 1-Row 382 X Exhibit 1-Row 383 X Exhibit 1-Row 384 X Exhibit 1-Row 385 X Exhibit 1-Row 386 X X Exhibit 1-Row 387 X Exhibit 1-Row 388 X X Exhibit 1-Row 389 X X Exhibit 1-Row 390 X X Exhibit 1-Row 391 X X Exhibit 1-Row 392 Exhibit 1-Row 393 X X Exhibit 1-Row 394 Exhibit 1-Row 395 X Exhibit 1-Row 396 X
Exhibit 1-Row 397 X X Exhibit 1-Row 398 X X Exhibit 1-Row 399 X X Exhibit 1-Row 400 X X Exhibit 1-Row 401 X X Exhibit 1-Row 402 X X Exhibit 1-Row 403 X Exhibit 1-Row 404 X X Exhibit 1-Row 405 X X Exhibit 1-Row 406 X X Exhibit 1-Row 407 X X Exhibit 1-Row 408 X X Exhibit 1-Row 409 X Exhibit 1-Row 410 Exhibit 1-Row 411 X Exhibit 1-Row 412 X X Exhibit 1-Row 413 X X Exhibit 1-Row 414 Exhibit 1-Row 415 Exhibit 1-Row 416 Exhibit 1-Row 417 X Exhibit 1-Row 418 X Exhibit 1-Row 419 Exhibit 1-Row 420 X X Exhibit 1-Row 421 X X Exhibit 1-Row 422 X Exhibit 1-Row 423 X Exhibit 1-Row 424 X X Exhibit 1-Row 425 X Exhibit 1-Row 426 X Exhibit 1-Row 427 X X Exhibit 1-Row 428 X X Exhibit 1-Row 429 X X Exhibit 1-Row 430 X X Exhibit 1-Row 431 X Exhibit 1-Row 432 Exhibit 1-Row 433 X X Exhibit 1-Row 434 X Exhibit 1-Row 435 X Exhibit 1-Row 436 X Exhibit 1-Row 437 X Exhibit 1-Row 438 X Exhibit 1-Row 439 X Exhibit 1-Row 440 X
Exhibit 1-Row 441 X Exhibit 1-Row 442 X Exhibit 1-Row 443 X X Exhibit 1-Row 444 X Exhibit 1-Row 445 X Exhibit 1-Row 446 X X Exhibit 1-Row 447 X Exhibit 1-Row 448 X Exhibit 1-Row 449 X Exhibit 1-Row 450 Exhibit 1-Row 451 X Exhibit 1-Row 452 X Exhibit 1-Row 453 X X Exhibit 1-Row 454 X Exhibit 1-Row 455 X X X Exhibit 1-Row 456 X X Exhibit 1-Row 457 X X Exhibit 1-Row 458 X X Exhibit 1-Row 459 X X Exhibit 1-Row 460 X Exhibit 1-Row 461 X X Exhibit 1-Row 462 X Exhibit 1-Row 463 X X Exhibit 1-Row 464 X Exhibit 1-Row 465 X Exhibit 1-Row 466 X X Exhibit 1-Row 467 X X Exhibit 1-Row 468 X Exhibit 1-Row 469 X Exhibit 1-Row 470 X Exhibit 1-Row 471 X X Exhibit 1-Row 472 X X Exhibit 1-Row 473 Exhibit 1-Row 474 X Exhibit 1-Row 475 X X Exhibit 1-Row 476 X Exhibit 1-Row 477 X X Exhibit 1-Row 478 X X Exhibit 1-Row 479 X Exhibit 1-Row 480 X Exhibit 1-Row 481 X Exhibit 1-Row 482 X X X Exhibit 1-Row 483 X Exhibit 1-Row 484 X
Exhibit 1-Row 485 Exhibit 1-Row 486 X X Exhibit 1-Row 487 X X Exhibit 1-Row 488 X X Exhibit 1-Row 489 X Exhibit 1-Row 490 X Exhibit 1-Row 491 X Exhibit 1-Row 492 X Exhibit 1-Row 493 X Exhibit 1-Row 494 X X Exhibit 1-Row 495 X Exhibit 1-Row 496 X Exhibit 1-Row 497 X Exhibit 2-Row 1 Exhibit 2-Row 2 Exhibit 2-Row 3 Exhibit 2-Row 4 Exhibit 2-Row 5 X Exhibit 2-Row 6 Exhibit 2-Row 7 Exhibit 2-Row 8 Exhibit 2-Row 9 Exhibit 2-Row 10 Exhibit 2-Row 11 X Exhibit 2-Row 12 X Exhibit 2-Row 13 X Exhibit 2-Row 14 X Exhibit 2-Row 15 X Exhibit 2-Row 16 X Exhibit 2-Row 17 Exhibit 2-Row 18 X Exhibit 2-Row 19 X Exhibit 3-Row 1 X Exhibit 3-Row 2 Exhibit 3-Row 3 Exhibit 3-Row 4 Exhibit 3-Row 5 Exhibit 3-Row 6 X Exhibit 3-Row 7 X X Exhibit 3-Row 8 X Exhibit 3-Row 9 X Exhibit 3-Row 10 X Exhibit 3-Row 11 Exhibit 3-Row 12
Exhibit 3-Row 13 Exhibit 3-Row 14 Exhibit 3-Row 15 X X Exhibit 3-Row 16 X X Exhibit 3-Row 17 X Exhibit 3-Row 18 X Exhibit 3-Row 19 X Exhibit 3-Row 20 X X Exhibit 3-Row 21 X Exhibit 3-Row 22 X Exhibit 3-Row 23 X X Exhibit 3-Row 24 X Exhibit 3-Row 25 X Exhibit 3-Row 26 X Exhibit 3-Row 27 X Exhibit 3-Row 28 Exhibit 3-Row 29 Exhibit 3-Row 30 X Exhibit 3-Row 31 Exhibit 3-Row 32 X Exhibit 3-Row 33 X Exhibit 3-Row 34 X X Exhibit 3-Row 35 X Exhibit 3-Row 36 X Exhibit 3-Row 37 X Exhibit 3-Row 38 X Exhibit 3-Row 39 X Exhibit 3-Row 40 X Exhibit 3-Row 41 X Exhibit 3-Row 42 X Exhibit 3-Row 43 X Exhibit 3-Row 44 Exhibit 3-Row 45 X X Exhibit 3-Row 46 Exhibit 3-Row 47 X Exhibit 3-Row 48 X Exhibit 3-Row 49 X Exhibit 3-Row 50 X Exhibit 3-Row 51 X Exhibit 3-Row 52 Exhibit 3-Row 53 X Exhibit 3-Row 54 Exhibit 3-Row 55 X Exhibit 3-Row 56
Summary Summary
Ineligible for Judgment Granted Judgment Granted
Ineligible for Statutory and/or in McGraw-Hill's in Pelaez's favor on
Statutory Damages Actual Damages Favor Liability
Exhibit 3-Row 57 X
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