Copyright & Photography: Photographer's Stock Agency Can Sue For Infringement - Ninth Circuit



Minden Pictures - Stock Photography

 In Minden Pictures,Inc. v. John Wiley & Sons, Inc., 795 F.3d 997 (Ninth Circuit July 29, 2015), the U.S. Court of Appeals for the Ninth Circuit reversed a lower court's dismissal of a photographer's agent's copyright infringement claim for lack of standing.



Minden Pictures is a stock photo agency specializing in wildlife photography.  Minden enters into agreement with photographers appointing Minden as the exclusive agent to license photographs.  Photographers retain ownership of the copyrights in the images, retain certain usage rights, and sometimes retain rights to grant individual licenses.   However, Minden is the only agent permitted under the agreements and Minden did not need to obtain further permission to grant licenses to third parties (with some minor exceptions).



The dispute with Wiley arose because Minden granted a license permitting photographs to be reproduced in 20,000 textbooks and Wiley instead printed 100,000 without seeking an additional license.  Minden sued in federal court for copyright infringement.



Under Section 501(b) of the Copyright, "only the legal or beneficial owner of an exclusive right under a copyright" is entitled "to institute an action for infringement of that particular right committed while he or she is the owner of it."  17 U.S.C. 501(b).   Nonexclusive licensees do not have standing to bring copyright infringement actions.

The question was whether Minden's exclusive right to act as a licensing agent was sufficient to confer standing.   The Ninth Circuit held in the affirmative, analyzing the Copyright Act's divisibility doctrine, that is the principle that an owner of a copyright may sell off one or more of the exclusive rights guaranteed to a copyright owner by Section 106 of the Copyright Act, yet retain ownership of the copyright.  Prior to the passage of the Copyright Act in 1976, copyright was seen as "an indivisible bundle of rights" which were "incapable of assignment in parts".

Because Minden was granted the right to reproduce the images and to authorize third parties such as Wiley to distribute and display the photographs in its textbooks, the Ninth Circuit held that Minden had standing to sue.

Standing is a tricky issue that I cover in my book Copyright Litigation Handbook (Thomson Reuters West 2015-2016).   The first chapters of Copyright Litigation Handbook covers the issues that should be addressed before filing suit, including investigations, obtaining documents from the Copyright Office, and assessing the merits of a case.  The full table of contents can be found here and the entire book can be accessed through Westlaw or available as a Pro-View Ebook.


To read the Ninth Circuit's full opinion, visit here.

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 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd