Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 1 of 32
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`Judge Philip A. Brimmer
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`Civil Action No. 11-cv-01687-PAB-DW
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`VIESTI ASSOCIATES, INC.,
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`Plaintiff,
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`v.
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`PEARSON EDUCATION, INC.,
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`Defendant.
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`ORDER
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`This matter is before the Court on Defendant’s Motion for Summary Judgment
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`[Docket No. 100] filed by defendant Pearson Education, Inc. (“Pearson”). This Court
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`has subject matter jurisdiction to decide this motion pursuant to 28 U.S.C. § 1331.
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`I. BACKGROUND1
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`Viesti Associates, Inc. (“Viesti”) is a stock photograph agency based in Durango,
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`Colorado that licenses photographs to publishers. Docket No. 109 at 5, ¶ 1. Pearson
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`publishes educational textbooks and is incorporated in Delaware. Docket No. 96 at 2,
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`¶ 3. Between 1995 and 2010, Pearson was granted limited licenses to reproduce
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`certain photographs (the “Pearson Photographs”). Id. at 6, ¶ 19; see also Docket Nos.
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`96-1, 96-2, 96-3, 96-4. Viesti’s claims arise out of allegations that Viesti owns the
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`copyright to these photographs and that Pearson exceeded the scope of its limited
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`licenses. Docket No. 96 at 6, ¶ 20.
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`1
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`The following facts are undisputed unless otherwise indicated.
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`Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 2 of 32
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`The Pearson Photographs consist of images authored by various photographers
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`and which were licensed to Pearson by four entities. Docket No. 96 at 2-3, ¶ 7. The
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`photographs listed in Exhibit A to the Second Amended Complaint were authored by
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`Peter Bennett, Martha Cooper, Joseph Englander, Nadine Frank, Joe Gillespie, G.
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`William Gleasner, Alan Kearney, Craig Lovell, Dan Peha, Kevin Vandivier, Joseph
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`Viesti, and Robert Winslow (collectively, the “Exhibit A Photographers”). See Docket
`2
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`No. 96-1. Viesti licensed to Pearson the photographs listed in Exhibit A. Docket No.
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`109 at 5, ¶ 2. Daniel J. Cox, owner of Natural Exposures, Inc., authored the
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`photographs listed in Exhibit B to the Second Amended Complaint. See Docket No. 96-
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`2. Mr. Cox licensed to Pearson the photographs listed in Exhibit B. Docket No. 109 at
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`7, ¶ 7. Bryan and Cherry Alexander, owners of Arctic Photo, authored the photographs
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`listed in Exhibit C to the Second Amended Complaint. See Docket No. 96-3. Bryan
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`and Cherry Alexander licensed to Pearson the photographs listed in Exhibit C. Docket
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`No. 109 at 8, ¶ 12. Various photographers authored the photographs listed in Exhibit D
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`to the Second Amended Complaint. See Docket No. 96-4. Art Directors & Trip Photo
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`Library (“Trip”), owned by Helene Rogers and Robert Turner, licensed to Pearson the
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`photographs listed in Exhibit D. Docket No. 109 at 10, ¶ 17. Viesti did not author any
`3
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`Claudia Dhimitri is listed as authoring one photo in Exhibit A. Docket No. 96-1
`2
`at 2. Viesti fails to submit evidence of written agreements purporting to transfer
`ownership of that image from Ms. Dhimitri to Viesti or a declaration to that effect from
`Ms. Dhimitri herself. As such, the Court finds no basis upon which to conclude that
`Viesti has standing to assert copyright infringement claims for Ms. Dhimitri’s photograph
`and will dismiss Viesti’s claim for copyright infringement that is based on Ms. Dhimitri’s
`photograph.
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`Several of the photographs listed in Exhibit D were authored by Helene Rogers
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`and Robert Turner. See Docket No. 96-4. As to how Trip acquired the rights to the
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`2
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`Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 3 of 32
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`of the Pearson Photographs. See Docket Nos. 96-1, 96-2, 96-3, and 96-4. Viesti
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`claims that it acquired an ownership interest in the Pearson Photographs by virtue of
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`multiple written agreements between Viesti and the Exhibit A Photographers, Mr. Cox,
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`Bryan and Cherry Alexander, and Trip.
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`Between 2009 and 2011, the Exhibit A Photographers, as well as Mr. Cox, Bryan
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`and Cherry Alexander, and Trip, each executed a Copyright Assignment and Accrued
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`Causes of Action Agreement (the “First Assignments”) with Viesti. See generally
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`Docket No. 100-7. The First Assignments state:
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`The undersigned photographer, the sole owner of the copyrights in the
`undersigned’s images (“the Images”) selected by Viesti Associates, Inc.
`(“Viesti”) and now included in Viesti’s collection, hereby grants to Viesti all
`copyrights and complete legal title in the Images. Viesti agrees to reassign
`all copyrights and complete legal title back to the undersigned immediately
`upon resolution of infringement claims brought by Viesti relating to the
`Images.
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`The undersigned agrees and fully transfers all right, title and interest in any
`accrued or later accrued claims, causes of action, choses in action – which
`is the personal right to bring a case – or lawsuits, brought to enforce
`copyrights in the Images, appointing and permitting Viesti to prosecute said
`accrued or later accrued claims, causes of actions, choses in action or
`lawsuits, as if it were the undersigned.
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`remainder of the Exhibit D photographs, Mr. Viesti explains: “It is my understanding that
`prior to the commencement of this action, the photographers who authored the
`photographs identified in Exhibit D to the Second Amended Complaint transferred legal
`or beneficial ownership of all pertinent copyrights to Trip by written assignments.”
`Docket No. 109-1 at 5, ¶ 18. Viesti does not produce additional evidence of
`agreements between Trip and the remaining Exhibit D photographers.
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`Exhibit A lists Joe Viesti as the creator of several photographs. See Docket No.
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`94-1. Mr. Viesti states that he executed agreements with Viesti Associates, Inc., which
`Viesti argues transfer ownership of Mr. Viesti’s photographs. Docket No. 109-8 at 1-2.
`The effect of these agreements is analyzed below.
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`3
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`Id. at 3. With two exceptions, the First Assignments contain identical terms. The First
`5
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`Assignment is silent as to which individual photographs it applies to; however, the
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`parties agree that the First Assignment was executed so that Viesti could pursue claims
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`against Houghton Mifflin Harcourt Publishing Company (“Houghton”). Docket No. 109,
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`at 6, 7, 9, 11, ¶¶ 5, 10, 15, 21. Specifically, the photographers state, “I intended to
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`assign to Viesti copyrights and accrued causes of action for certain photographs in
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`The language of the First Assignments is substantively similar with two
`5
`exceptions. On February 26, 2009, Ms. Rogers and Mr. Turner, on behalf of Trip,
`executed a First Assignment with the above-quoted language. Docket No. 100-7 at 35.
`However, on February 10, 2010, Mr. Turner executed a First Assignment that states:
`Art Directors & Trip Photo Library (“Art Directors”) hereby grants to its
`representative and agent in the United States, Viesti Associates, Inc.
`(“Viesti”), all copyrights and complete legal title in the photographic images
`in its collection (“the Images”), including all interest in any claims, causes of
`action, or choses in action brought to enforce copyrights in the Images.
`Viesti agrees to reassign all copyrights and complete legal title in the Images
`back to Art Directors immediately upon resolution of infringement claims
`brought by Viesti relating to the Images.
`Docket No. 100-7 at 33.
`The First Assignment that relates to Mr. Viesti’s photographs is between Viesti
`Associates, Inc. and Viesti Collection, Inc., a now inactive stock photography agency
`that Mr. Viesti claims had the right to license his photographs. Docket No. 109-8 at 2,
`¶ 9; id. at 9. The agreement was executed by Viesti Collection, Inc. on February 13,
`2009 and it states:
`In consideration of the mutual covenants, undertakings and promises set
`forth herein, and for other good and valuable consideration, receipt and
`sufficiency of which is expressly acknowledged, the parties agree as follows:
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`The Viesti Collection, Inc. hereby grants, transfers and assigns to
`1.
`Viesti Associates, Inc. the complete legal title to, and all copyrights in, any
`and all photographic images created or owned by The Viesti Collection, Inc.
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`The Viesti Collection, Inc. expressly grants, transfers and assigns to
`2.
`Viesti Associates, Inc. all right, title and interest in any accrued or later
`accrued claims, causes of action and choses in action related to the
`photographic images assigned herein, including claims for copyright
`infringements, past, present and future.
`Docket No. 109-8 at 9.
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`4
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`order for Viesti to pursue claims related to those photographs against [Houghton].”
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`See, e.g., Docket No. 109-13 at 2, ¶ 7. The photographers also state that “[i]t was my
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`understanding that the First Assignment . . . would apply to the Pearson Photographs.”
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`Id. at 2, ¶ 8. Pearson disputes that the First Assignment was applicable to the Pearson
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`Photographs. Viesti’s litigation against Houghton involved three different cases; two of
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`them were closed on October 27, 2010. Docket No. 100 at 9 n.3.
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`Between 1988 and 2010, the Exhibit A Photographers, Mr. Cox, Bryan and
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`Cherry Alexander, and Trip each executed a Photographers Non-Exclusive Agency
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`Agreement (the “Agency Agreements”) with Viesti. See generally Docket No. 100-2.
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`The Agency Agreements state, in relevant part:
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`1. I, the undersigned certify and warrant that I am the sole and exclusive
`owner of all negatives, prints, positives, original color transparencies,
`duplicates, stories, motion picture films, text information, and other
`photographic materials delivered to you, now and in the future. I appoint you
`as a non-exclusive Agent and representative in respect of the leasing and
`sale of said materials throughout the world. All negotiations shall be at your
`discretion without prior consultation with me, except when outright purchase
`of originals is to be negotiated.
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`2. The compensation for your services (VIESTI ASSOCIATES, INC.) (VA)
`shall be fifty percent (50%) of the total sum billed and collected by you for the
`duration of our working relationship . . . .
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`3. In the event of . . . the unauthorized use of original color transparencies,
`negatives, prints, or motion pictures films by your client, I give you full and
`complete authority to make claims or institute suit, in your name if necessary,
`without further permission from me.
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`Docket No. 100-2 at 8. The Agency Agreements further state that each agreement
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`shall run for five years with automatic renewal. Id. at 10, ¶ 15. The language of the
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`Agency Agreements executed by the Exhibit A Photographers, Mr. Cox, Bryan and
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`5
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`Cherry Alexander, and Trip is substantively similar. 6
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`On December 3, 2010, Mr. Cox’ representative emailed to Viesti a spreadsheet
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`containing the photographs Mr. Cox licensed to Pearson. Docket No. 134-7 at 2. On
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`January 17, 2011, Mr. Turner, on behalf of Trip, emailed to Viesti a similar spreadsheet.
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`Docket No. 134-11 at 2. On January 19, 2011, Cherry Alexander also emailed to Viesti
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`a spreadsheet pertaining to the Pearson Photographs. Docket No. 134-10 at 2. Viesti
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`claims that, by emailing Viesti a spreadsheet identifying specific photographs licensed
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`to Pearson, Mr. Cox, Bryan and Cherry Alexander, and Trip assigned to Viesti
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`copyrights in the Pearson Photographs. Docket No. 109 at 7-11, ¶¶ 10, 15, 21.
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`Pearson disputes that the act of emailing a spreadsheet was sufficient to transfer to
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`Viesti any interest in the Pearson Photographs.
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`On June 28, 2011, Viesti filed this case, bringing claims against Pearson for
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`copyright infringement, common law fraud, and fraudulent concealment. Docket No. 1
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`at 8-10. Viesti later dropped its claims for common law fraud and fraudulent
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`concealment. See Docket No. 63.
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`Between January and March 2012, the Exhibit A Photographers, Mr. Cox, Bryan
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`and Cherry Alexander, and Trip each executed an Addendum to Copyright Assignment
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`and Accrued Causes of Action Agreement (the “Addenda”). See generally Docket No.
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`100-13. The Addenda state:
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`Some of the Agency Agreements make reference to “digital files,” split licensing
`6
`fees 60/40, and restrict Viesti’s leasing and sale of photographs to the United States.
`See, e.g., Docket No. 100-2 at 3, 71, 78. The parties do not argue that the slight
`variation in the Agency Agreements’ terms carries any significance in determining
`whether Viesti has standing to bring this action.
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`6
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`The undersigned previously assigned copyrights and accrued claims in the
`undersigned’s images (“the Images”) to Viesti Associates, Inc. (“Viesti”).
`Viesti agreed to reassign all copyrights and complete legal title back to the
`undersigned immediately upon resolution of infringement claims relating to
`the Images.
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`For avoidance of doubt, it was and is the intention of the undersigned to
`convey to Viesti, fully and without reservation, the copyrights and claims so
`that Viesti has legal standing to enforce copyrights in the Images. If any
`provision of the previous assignment is deemed to be inconsistent with
`Viesti’s standing to bring claims, such provision is void and shall have no
`effect.
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`Id. at 3.
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`Pearson filed a Motion to Dismiss, arguing that Viesti lacked standing to sue for
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`copyright infringement. Docket No. 70. On March 26, 2013, the Court denied
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`Pearson’s Motion to Dismiss, refusing to consider documents attached to Pearson’s
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`motion, but granting Pearson leave to file a motion for summary judgment on the issue
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`of standing. Docket No. 92. The Court directed Viesti to file an amended complaint
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`identifying each photograph with the document assigning Viesti the exclusive right of
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`ownership to the particular photograph and the date of such assignment. Id. at 9.
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`In March 2013, the Exhibit A Photographers, Mr. Cox, Bryan and Cherry
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`Alexander, and Trip each executed a Copyright and Accrued Causes of Action
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`Assignment (“Third Assignments”). Docket No. 100-15. The Third Assignments purport
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`to assign “Viesti co-ownership of the copyrights in the Images not previously assigned
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`to Viesti [and] copyrights in the Images previously assigned to Viesti.” Id. at 3. The
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`Third Assignments also state: “Viesti agrees to reassign all copyrights back to
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`Photographer upon resolution of claims brought by Viesti relating to the Images.” Id.
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`Around the time the Third Assignments were executed, the Exhibit A Photographers,
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`Mr. Cox, Bryan and Cherry Alexander, and Trip each signed declarations (the
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`“declarations”). See, e.g., Docket No. 109-13 at 1. The declarations state, in identical
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`language, that the declarants’ intention “was and is to transfer the necessary copyrights
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`and claims to Viesti, give Viesti licensing rights . . . , and give Viesti legal standing to
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`bring copyright infringement claims.” See, e.g., id. at 2, ¶ 9. With the exception of Mr.
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`Viesti’s declaration [Docket No. 109-8], the declarations’ language varies only as to the
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`date each declarant executed agreements at issue. Cf. Docket No. 109-14.
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`On April 16, 2013, Viesti filed a Second Amended Complaint. Docket No. 96. In
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`addition to attaching Exhibits A, B, C, and D listing each photograph by copyright
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`registration number and photographer, Viesti attached the declarations, the First
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`Assignments, Agency Agreements, Addenda, and Third Assignments executed by
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`Viesti and the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip.
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`See Docket Nos. 96-1 through 96-17. Viesti’s Second Amended Complaint does not
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`otherwise identify each photograph with date of assignment or the document assigning
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`Viesti the exclusive right of ownership to the particular photograph.
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`On May 20, 2013, Pearson filed a Motion for Summary Judgment on the issue of
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`standing [Docket No. 100], which is the motion now before the Court. Pearson claims
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`that Viesti lacks standing for several reasons. First, Pearson argues that the First
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`Assignments pertained only to photographs licensed to Houghton and not to the
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`Pearson Photographs. Docket No. 100 at 9. Second, Pearson argues that the
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`Addenda and Third Assignments were executed after this case was filed and, as such,
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`are insufficient to confer standing on Viesti. Id. at 10. Third, Pearson argues that the
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`Agency Agreements only transferred to Viesti a non-exclusive right to license
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`photographs. Id. at 14. Viesti responds that the various agreements transferred to
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`Viesti beneficial co-ownership of copyrights to the Pearson Photographs. Docket No.
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`109 at 14. Viesti also argues that the various agreements assigned to Viesti all accrued
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`causes of action with respect to the Pearson Photographs, giving Viesti standing to
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`bring infringement claims that arose prior to the execution of the various agreements.
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`Id. at 17.
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`II. STANDARD OF REVIEW
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`Summary judgment is warranted under Federal Rule of Civil Procedure 56 when
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`the “movant shows that there is no genuine dispute as to any material fact and the
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`movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see Anderson
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`v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986). A disputed fact is “material” if
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`under the relevant substantive law it is essential to proper disposition of the claim.
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`Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001). Only disputes
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`over material facts can create a genuine issue for trial and preclude summary
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`judgment. Faustin v. City & Cnty. of Denver, 423 F.3d 1192, 1198 (10th Cir. 2005). An
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`issue is “genuine” if the evidence is such that it might lead a reasonable jury to return a
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`verdict for the nonmoving party. Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir.
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`1997).
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`However, “[w]hen, as in this case, the moving party does not bear the ultimate
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`burden of persuasion at trial, it may satisfy its burden at the summary judgment stage
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`by identifying a lack of evidence for the nonmovant on an essential element of the
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`nonmovant's claim.” Bausman v. Interstate Brands Corp., 252 F.3d 1111, 1115 (10th
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`9
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`Cir. 2001) (quoting Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 671 (10th Cir. 1998))
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`(internal quotation marks omitted). “To prevail at summary judgment on standing
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`grounds, the defendant must show that the record is devoid of evidence raising a
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`genuine issue of material fact that would support the plaintiff’s ultimate burden of
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`proving standing.” Day v. Bond, 500 F.3d 1127, 1132 (10th Cir. 2007). “Once the
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`moving party meets this burden, the burden shifts to the nonmoving party to
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`demonstrate a genuine issue for trial on a material matter.” Concrete Works of Colo.,
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`Inc. v. City & Cnty. of Denver, 36 F.3d 1513, 1518 (10th Cir. 1994) (citing Celotex Corp.
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`v. Catrett, 477 U.S. 317, 325 (1986)). The nonmoving party may not rest solely on the
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`allegations in the pleadings, but instead must designate “specific facts showing that
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`there is a genuine issue for trial.” Celotex, 477 U.S. at 324; see Fed. R. Civ. P. 56(e).
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`“To avoid summary judgment, the nonmovant must establish, at a minimum, an
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`inference of the presence of each element essential to the case.” Bausman, 252 F.3d
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`at 1115 (citing Hulsey v. Kmart, Inc., 43 F.3d 555, 557 (10th Cir.1994)). “In applying
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`this standard, we view all facts and any reasonable inferences that might be drawn from
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`them in the light most favorable to the nonmoving party.” Henderson v. Inter-Chem
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`Coal Co., Inc., 41 F.3d 567, 569 (10th Cir. 1994).
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`Where, as here, the issue of standing is raised on a motion for summary
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`judgment, “to prevail on such a motion ‘a plaintiff must establish that there exists no
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`genuine issue of material facts as to justiciability.’” Essence, Inc. v. City of Federal
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`Heights, 285 F.3d 1272, 1280 (10th Cir. 2002) (quoting Dep’t of Commerce v. U.S.
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`House of Representatives, 525 U.S. 316, 329 (1999)). Plaintiff must support its
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`10
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`allegations “with the manner and degree of evidence required at the [summary
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`judgment] stage[] of the litigation.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 561
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`(1992).
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`III. ANALYSIS
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`A. The Copyright Act
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`Under the Copyright Act of 1976, Congress granted copyright owners the specific
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`and exclusive rights:
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`(1) to reproduce the copyrighted work in copies or phonorecords;
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`(2) to prepare derivative works based upon the copyrighted work;
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`(3) to distribute copies or phonorecords of the copyrighted work to the public
`by sale or other transfer of ownership, or by rental, lease, or lending;
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`(4) in the case of literary, musical, dramatic, and choreographic works,
`pantomimes, and motion pictures and other audiovisual works, to perform
`the copyrighted work publicly;
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`(5) in the case of literary, musical, dramatic, and choreographic works,
`pantomimes, and pictorial, graphic, or sculptural works, including the
`individual images of a motion picture or other audiovisual work, to display the
`copyrighted work publicly; and
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`(6) in the case of sound recordings, to perform the copyrighted work publicly
`by means of a digital audio transmission.
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`17 U.S.C. § 106. The list of exclusive rights is exhaustive – “[i]f a right is not ‘specified,’
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`then it is not one of the exclusive rights granted by Congress.” Silvers v. Sony Pictures
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`Entm’t, Inc., 402 F.3d 881, 886-87 (9th Cir. 2005). However, “exclusive rights may be
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`chopped up and owned separately, and each separate owner of a subdivided exclusive
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`right may sue to enforce that owned portion of an exclusive right, no matter how small.”
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`Id.
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`Section 501(b) of the Act defines under what circumstances copyright owners
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`have standing to bring a suit against infringing parties. For a plaintiff to assert a claim
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`for copyright infringement, it must be (1) the “legal or beneficial owner of an exclusive
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`right under a copyright” and (2) entitled “to institute an action for any infringement of
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`that particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b). 7
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`Although the Tenth Circuit has not decided this specific issue, the weight of authority
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`interprets § 501(b) as authorizing suit only by legal or beneficial owners. See
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`HyperQuest, Inc. v. N’Site Solutions, Inc., 632 F.3d 377, 381 (7th Cir. 2011) (“the
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`Copyright Act spells out who has enforceable rights under the statute; someone who
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`does may sue, and someone who does not has failed to state a claim upon which relief
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`may be granted”); see also Silvers, 402 F.3d at 885 (“Congress’ explicit listing of who
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`may sue for copyright infringement should be understood as an exclusion of others
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`from suing for infringement.” (emphasis original)); Bourne Co. v. Hunter Country Club,
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`Inc., 990 F.2d 934, 938 (7th Cir. 1993) (prohibiting licensing agent from joining
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`copyright infringement suit pursuant to § 501(b)).
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`Legal owners are those with legal title to at least one exclusive right. Silvers, 402
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`F.3d at 886. Beneficial owners are those without legal title, but with an interest in
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`Any copyright owner bringing suit is subject to the requirements of § 411, which
`7
`provides, among other things, that “no civil action for infringement of the copyright in
`any United States work shall be instituted until preregistration or registration of the
`copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a). In
`Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010), the Supreme Court held that
`§ 411(a) imposed a non-jurisdictional precondition – copyright registration – that
`plaintiffs ordinarily must satisfy before filing copyright infringement claims. Id. at 157.
`Pearson has filed a Motion for Summary Judgment [Docket No. 116] challenging
`Viesti’s compliance with the registration requirement.
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`royalties or licensing fees flowing from an exclusive right. Id.; see also Moran v.
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`London Records, Ltd., 827 F.2d 180, 183 (7th Cir. 1987) (defining beneficial owner as
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`one who has “the right to receive royalties from the copyright’s exploitation”) (citations
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`and quotations omitted). In order to bring a claim, both legal and beneficial owners
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`must show that they are the owners of at least one exclusive right set forth in § 106.
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`Hyperquest, 632 F.3d at 382. Conversely, the holder of a nonexclusive license has no
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`standing to bring an infringement claim. Id.; see also Granite Music Corp. v. Center St.
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`Smoke House, Inc., 786 F. Supp. 2d 716, 724 (W.D.N.Y. 2011) (“A non-exclusive
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`licensee does not have standing to commence a copyright infringement action.”);
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`Swarovski Am. Ltd. v. Silver Deer Ltd., 537 F. Supp. 1201, 1204 (D. Colo. 1982)
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`(same).
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`Where a plaintiff’s only legal interest in a copyright is the right to bring an
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`accrued claim, courts have strictly applied the standing requirements set forth in
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`§ 501(b). “The right to sue for an accrued claim for infringement is not an exclusive
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`right under § 106.” Silvers, 402 F.3d at 884. Therefore, “[t]he bare assignment of an
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`accrued cause of action” does not meet the standing requirement of § 501(b). Id. at
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`890. One rationale for the strict application of § 501(b), adopted in both the Second
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`and Ninth Circuits, is that “the Copyright Act does not permit copyright holders to
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`choose third parties to bring suits on their behalf.” ABKCO Music, Inc. v. Harrisongs
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`Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991); see also Silvers, 402 F.3d at 890 (citing
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`ABKCO).8
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`In resolving this motion, the Court need not decide under what circumstances, if
`8
`any, the assignment of accrued claims is permissible. The Tenth Circuit has not
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`Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 14 of 32
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`Because Pearson challenges Viesti’s standing to bring claims related to the
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`Pearson Photographs, the primary question before the Court is whether the agreements
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`between Viesti and the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander,
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`and Trip transferred to Viesti legal or beneficial ownership of one of the exclusive rights
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`contemplated by § 106. 9
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`B. Challenges to Standing Pursuant to § 501(b)
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`Viesti argues that Pearson should not be permitted to challenge the assignments
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`between Viesti and the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander,
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`and Trip. Docket No. 109 at 20. Viesti cites to Eden Toys, Inc. v. Florelee
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`Undergarment Co., Inc., 697 F.2d 27 (2d Cir. 1982), superseded by statute on other
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`grounds, 15 U.S.C. § 1125(a), for the proposition that, where a copyright holder and
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`licensee have no dispute over the formality of an assignment, “it would be anomalous to
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`permit a third party infringer to invoke this provision against the licensee.” Id. at 36.
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`However, the Second Circuit’s holding in Eden Toys was limited to the issue of whether
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`decided this question; however, the Second and Ninth Circuits have held that the
`transferee of accrued claims may bring an infringement action provided the transferee
`is an owner of “both the copyright and [the] accrued claims.” Silvers, 402 F.3d at 890
`(citing ABKCO, 944 F.2d at 980). Under those circumstances, accrued claims may only
`be assigned if expressly included in the assignment. ABKCO, 944 F.2d at 980.
`
`As noted above, Viesti was directed to file a Second Amended Complaint
`9
`identifying each photograph with the document assigning Viesti the exclusive right of
`ownership to the particular photograph and the date of such assignment. Viesti did not
`comply with this request. Rather, Viesti appears to argue that any single agreement,
`and/or the various agreements collectively, had the effect of transferring to Viesti the
`necessary rights to the Pearson Photographs. Viesti is similarly vague as to dates upon
`which these transfers were accomplished. Thus, where Viesti does not indicate the
`specific document and date that pertain to the transfer of each Pearson Photograph,
`the Court must analyze the effect of all of the various agreements to which Viesti refers.
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`Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 15 of 32
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`the copyright owner and defendant engaged in the necessary procedural formalities
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`under 17 U.S.C. § 204(a). The Second Circuit remanded to the district court for a
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`determination of whether the copyright owner actually conveyed an exclusive license.
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`Id. at 36-37; see also Minden Pictures, Inc. v. Pearson Educ., Inc., 929 F. Supp. 2d
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`962, 970 (N.D. Cal. 2013) (rejecting argument that defendant cannot challenge the
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`validity of copyright assignments between plaintiff and copyright owner). Moreover, the
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`Court “must raise the standing issue sua sponte, if necessary, in order to determine if it
`
`has jurisdiction.” United States v. Colo. Supreme Ct., 87 F.3d 1161, 1166 (10th Cir.
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`1996) (citing Orr v. Orr, 440 U.S. 268, 271 (1979)). Accordingly it is proper for the
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`Court to consider Pearson’s arguments on the issue of standing.
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`C. Contract Interpretation
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`The Court turns to the interpretation of the various agreements. See Nafal v.
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`Carter, 540 F. Supp. 2d 1128, 1140-41 (C.D. Cal. 2007) (“the Court must examine the
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`interstices of the various agreements, and consider their combined effect”). “It is the
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`substance of the agreement, not the labels that it uses, that controls our analysis.”
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`HyperQuest, 632 F.3d at 383. When construing copyright agreements, traditional rules
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`of contract interpretation apply. Kennedy v. National Juvenile Detention Ass’n, 187
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`F.3d 690, 694 (7th Cir. 1999) (applying Wisconsin law to construe copyright
`
`agreement); see also SCO Group, Inc. v. Novell, Inc., 578 F.3d 1201, 1209-10 (10th
`
`Cir. 2009) (applying California law and holding that agreements transferring copyrights
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`must be read as a whole); Righthaven LLC v. Wolf, 813 F. Supp. 2d 1265, 1272 n.6 (D.
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`Colo. 2011) (applying Colorado law). Pearson’s brief indicates that Colorado law
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`Case 1:11-cv-01687-PAB-DW Document 202 Filed 03/19/14 USDC Colorado Page 16 of 32
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`controls the interpretation of the agreements in this case [Docket No. 100 at 12], while
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`Viesti’s briefs are silent on the issue. Finding no compelling reason to apply the law of
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`another state, the Court will apply Colorado law in interpreting the agreements at
`
`
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`issue. 10
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`Under Colorado law, “[i]nterpretation of a written contract is a question of law for
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`the court.” In re Marriage of Thomason, 802 P.2d 1189, 1190 (Colo. App. 1990) (citing
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`Pepcol Mfg. Co. v. Denver Union Corp., 687 P.2d 1310 (Colo. 1984)). The primary goal
`
`of contract construction is to determine and effectuate the intent and reasonable
`
`expectations of the parties. Copper Mountain Inc. v. Industrial Sys., Inc., 208 P.3d 692,
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`The First Assignments, the Addenda, and the Third Assignments do not
`10
`contain a choice of law provision. Viesti is currently based in Colorado, appears to be
`the party responsible for drafting the agreements, and the relationship between the
`parties appears to be centered in Colorado; thus, where Viesti is silent on the issue, the
`Court concurs with Pearson’s assessment that Colorado law applies to the First
`Assignments, Addenda, and Third Assignments. See In re AE, Inc. v. Goodyear Tire &
`Rubber Co., 168 P.3d 507, 509 (Colo. 2007) (holding that, under Colorado’s choice of
`law analysis, the state with the most significant relationship to the occurrence and the
`parties for any particular issue supplies the relevant substantive law).
`The Agency Agreements present a slightly different issue. The vast majority of
`the Agency Agreements contain a choice of law provision indicating that Colorado law
`applies. See, e.g., Docket No. 100-2 at 11, 31, 36, 41, 46, 51, 55, 59, 64, 68, 73. Two
`Agency Agreements contain a “United States” choice of law provision [id. at 77, 80] and
`the Court finds that the application of Colorado law to those Agency Agreements is
`appropriate. Three Agency Agreements co