Case 1:12-cv-00668-WYD-DW Document 111 Filed 02/11/15 USDC Colorado Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`Senior Judge Wiley Y. Daniel
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`Civil Action No. 12-cv-00668-WYD-DW
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`VIESTI ASSOCIATES, INC.
`
`Plaintiff,
`
`v.
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`
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`McGRAW-HILL GLOBAL EDUCATION HOLDINGS, LLC and
`McGRAW-HILL SCHOOL EDUCATION HOLDINGS, LLC,
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`Defendants.
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`ORDER ON SUMMARY JUDGMENT
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`I.
`
`INTRODUCTION
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`THIS MATTER is before the Court on Defendants’ Motion for Summary
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`Judgment (ECF No. 89), filed by defendants McGraw-Hill Global Education Holdings,
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`LLC and McGraw-Hill School Education Holdings, LLC (“McGraw-Hill”).
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`In this action, Plaintiff Viesti Associates, Inc. (“Viesti”), a stock photography
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`agency, brings suit against McGraw-Hill, an educational publisher, alleging that
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`McGraw-Hill has exceeded usage restrictions in photograph licencing agreements and
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`engaged in copyright infringement. I note that Viesti filed two other actions in this Court
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`on similar (if not identical) grounds against a different educational publisher, and United
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`States District Judge Philip Brimmer recently granted summary judgment in both cases,
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`finding that Viesti lacked standing to sue under the Copyright Act because it did not
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`have the necessary ownership interest in the allegedly infringed photographs. See
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`Viesti Assocs., Inc. v. Pearson Educ., Inc. (“Pearson I”), No. 11-cv-01687-PAB-DW,
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`Case 1:12-cv-00668-WYD-DW Document 111 Filed 02/11/15 USDC Colorado Page 2 of 18
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`2014 WL 1053772 (D. Colo. March 19, 2014); see Viesti Assocs., Inc. v. Pearson Educ.,
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`Inc. (“Pearson II”), No. 12-cv-01431-PAB-DW, 2014 WL 1055975 (D. Colo. March 19,
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`2014).1 Thus, here, McGraw-Hill contends that given the overlap of copyright ownership
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`issues and Viesti’s full and fair opportunity to litigate those issues in both Pearson I and
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`II, Judge Brimmer’s decisions have collateral estoppel effect on the issue of whether
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`Vesti has standing to bring suit in this case. In response, Viesti argues that the
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`existence of new law and facts prelude the application of collateral estoppel. After
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`carefully considering the parties’ briefs and applicable legal authorities, I grant the
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`motion.
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`II.
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`BACKGROUND
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`Viesti is a stock photography agency based in Durango, Colorado that licenses
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`photographs to publishers. Between 1990 and 2006, McGraw-Hill was granted limited
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`licenses by various stock photo agencies to reproduce certain photographs (the
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`“McGraw-Hill Photographs”). (ECF No. 34 at 3-8). Viesti’s claims arise out of
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`allegations that Viesti owns the copyright to these photographs and that McGraw-Hill
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`“exceeded the applicable license limitations” by using the photographs in “unlicensed,
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`unauthorized and uncompensated ways.” (ECF No. 34 at 8-9).
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`The McGraw-Hill Photographs consist of images authored by various
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`1 A third case filed by Viesti against Pearson involving identical claims was also
`pending before Judge Brimmer until the parties voluntarily agreed to dismiss the case
`on August 5, 2014. See Viesti Assocs., Inc. v. Pearson Educ., Inc. (Pearson III), No.
`12-cv-02240-PAB-DW (D. Colo. 2014).
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`photographers that were licensed to McGraw-Hill by numerous entities.2 (ECF No. 34 at
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`408). Viesti claims that it acquired an ownership interest in the McGraw-Hill
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`Photographs by virtue of written agreements entered into between Viesti and the
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`various photographers referenced in Exhibit 20 to the Amended Complaint.
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`A.
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`Copyright Assignments
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`Prior to filing suit in this case, in 2009 and 2010, Joseph Viesti, Viesti’s principal,
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`emailed various photographers and third party stock photo agencies and requested that
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`they join Viesti’s copyright lawsuit against educational publisher Houghton Mifflin
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`Harcourt (“HMH”) by signing an “Assignment of Copyright.” The majority of these
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`assignments nominally titled “Copyright Assignment and Accrued Causes of Action
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`Agreement,” are identical and read:
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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 in actions, choses in action
`or lawsuits, as if it were the undersigned.
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`(ECF No. 90-3). The photographers did not sign any separate assignment agreements
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`for this litigation against McGraw-Hill prior to the filing of the Complaint.
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`2 Viesti attaches to the Amended Complaint copies of hundreds of photographs
`that it alleges were the subject of McGraw-Hill’s infringement.
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`B.
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`Addenda to Assignment of Copyright
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`In or around January 2012, Mr. Viesti also requested that the photographers
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`execute an Addendum to the Assignment of Copyright, (collectively “Addenda”), in order
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`to “strengthen [Viesti’s] Assignment form” after “[a]nother company’s case was thrown
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`out and forced to pay the defendant’s legal fees, because their assignment form was
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`not strong enough.” (See generally ECF No. 90-7). The Addenda agreements read:
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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
`back 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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`(ECF No. 90-6).
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`C.
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`Agency Agreements
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`Between 1990 and 2006, the photographers also entered into “Photographers
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`Non-Exclusive Agency Agreements” (the “Agency Agreements”) with Viesti. (See
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`generally ECF No. 90-1). The Agency Agreements state, in relevant part:
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`1.
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`I, the undersigned certify and warrant that I am the sole and
`exclusive owner of all digital files 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.
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`The compensation for your services (VIESTI ASSOCIATES, INC.)
`(VA) shall be fifty percent (50%) of the total sum billed and
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`collected by you for the duration of our working relationship . . . .
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`3.
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`In the event of . . . the unauthorized use of images 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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`(ECF No. 90-1). The Agency Agreements further state that each agreement shall run
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`for five years with automatic renewal. Id.
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`D.
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`2013 Agreements
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`After Viesti filed this case, in March of 2013, the following 2013 Agreement was
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`executed by Viesti and the photographers:
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`This agreement memorializes the relationship between the undersigned
`parties and governs all photographic images authored by Photographer
`that have been included in the Viesti Associates, Inc.’s (“Viesti”) collection,
`including those to which Photographer holds the copyrights and those
`which were previously assigned to Viesti (“the Images”).
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`Photographer hereby assigns to Viesti co-ownership of the copyrights in
`the Images not previously assigned to Viesti. Viesti hereby assigns to
`Photographer co-ownership of the copyrights in the Images previously
`assigned to Viesti. These assignments are intended to vest in both parties
`a co-ownership interest in the copyrights to the Images. These
`assignments include the right of both parties to authorize the reproduction
`of the Images in copies and the right to authorize the distribution and
`display of copies of the Images to the public.
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`Photographer assigns to Viesti all rights, 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. This assignment authorizes Viesti, in its sole discretion, to
`present, litigate and settle any claims relating to unauthorized uses of the
`Images.
`
`Viesti agrees to reassign all copyrights back to Photographer upon
`resolution of claims brought by Viesti relating to the Images.
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`(See generally ECF No. 90-10). The 2013 Agreements were presumably drafted for
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`purposes of clarifying the earlier assignments and curing any defects related to Viesti’s
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`standing to bring copyright infringement claims in this case.
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`All of the above-referenced agreements were executed solely for the purpose of
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`bringing copyright infringement lawsuits, and Viesti’s only interest is the possibility of
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`financial gain through an award from litigation.
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`III.
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`DISCUSSION
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`In the pending motion, McGraw-Hill seeks summary judgment arguing that Viesti
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`does not have an exclusive copyright interest in the McGraw-Hill Photographs and
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`therefore lacks standing to bring copyright infringement claims. McGraw-Hill also claims
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`that Viesti is collaterally estopped from arguing that it has standing because the
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`identical issue was recently litigated in this Court in both Pearson I and Pearson II.
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`A.
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`Legal Standard
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`Summary judgment is appropriate if there is no genuine dispute as to any
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`material fact and the movant is entitled to judgment as a matter of law. Adamson v.
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`Multicommunity Diversified Servs., Inc., 514 F.3d 1136, 1145 (10th Cir. 2008); see Fed.
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`R. Civ. P. 56(c). A fact is material if, under the governing law, it could affect the
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`outcome of the suit. Id. A dispute is genuine if a rational jury could find for the
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`nonmoving party on the issue. See id. In applying the standard, the court considers the
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`factual record in the light most favorable to the nonmoving party without weighing the
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`evidence. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S. Ct. 2505, 91 L.
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`Ed. 2d 202 (1986). A mere scintilla of evidence in support of the nonmovant's position
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`is insufficient to create a genuine dispute of fact. Lawmaster v. Ward, 125 F.3d 1341,
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`1347 (10th Cir. 1997). Nor do unsupported conclusory allegations create a genuine
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`dispute of fact. See Mackenzie v. City and County of Denver, 414 F.3d 1266, 1273
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`(10th Cir. 2005). In particular, when the nonmoving party will bear the burden of proof
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`at trial, that party must designate specific facts in order to establish the existence of a
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`material issue of fact and survive summary judgment. McKnight v. Kimberly Clark
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`Corp., 149 F.3d 1125, 1128 (10th Cir. 1998) (quoting Celotex Corp. v. Catrett, 477 U.S.
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`317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986)).
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`“To prevail at summary judgment on standing grounds, the defendant must show
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`that the record is devoid of evidence raising a genuine issue of material fact that would
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`support the plaintiff's ultimate burden of proving standing.” Day v. Bond, 500 F.3d 1127,
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`1132 (10th Cir. 2007). Likewise, “to prevail on such a motion a plaintiff must establish
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`that there exists no genuine issue of material facts as to justiciability.” Essence, Inc. v.
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`City of Federal Heights, 285 F.3d 1272, 1280 (10th Cir. 2002) (internal citations
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`omitted).
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`B.
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`Standing Under the Copyright Act
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`Under the Copyright Act of 1976, only the “legal or beneficial owner of an
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`exclusive right under a copyright is entitled,” subject to the requirements of section 411,
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`to bring an action for copyright infringement. 17 U.S.C. § 501(b). Section 106 provides
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`the following exhaustive list of six “exclusive rights” held by copyright owners:
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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; see also Silvers v. Sony Pictures Entertainment Inc., 402 F.3d 881,
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`887 (9th Cir. 2005) (recognizing that this list is exhaustive meaning “[i]f a right is not
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`‘specified,’ then it is not one of the exclusive rights granted by Congress.”).
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`“Although the Tenth Circuit has not decided this specific issue, the weight of
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`authority interprets § 501(b) [of the Copyright Act of 1976] as authorizing suit only by
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`legal or beneficial owners.” Pearson I, No. 11-cv-01687-PAB-DW, 2014 WL 1053772,
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`at *5 (D. Colo. March 19, 2014); see 17 U.S.C. § 501(b). “Legal owners are those with
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`legal title to at least one exclusive right” and “[b]eneficial owners are those without legal
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`title, but with an interest in royalties or licensing fees flowing from an exclusive right.”
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`Id. at *6 (internal citations omitted). Thus, in order to assert a claim, “both legal and
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`beneficial owners must show that they are the owners of at least one exclusive right set
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`forth in § 106.” Id. “Conversely, the holder of a nonexclusive license has no standing to
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`bring an infringement claim.” Id. Furthermore, it is well-settled that when a plaintiff’s
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`sole legal interest in a copyright is to bring an infringement claim, “courts have strictly
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`applied the standing requirements set forth in § 501(b).” Id. at *7. “Therefore, the bare
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`assignment of an accrued cause of action does not meet the standing requirement of §
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`501(b).” Id. (internal citations omitted); see ABKO Music, Inc. v. Harrisongs Music, Ltd.,
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`944 F.2d 971, 980 (2d Cir. 1991) (“the Copyright Act does not permit copyright holders
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`to choose third parties to bring suits on their behalf.”); see Silvers, 402 F.3d at 890.
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`C.
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`Pearson I and Pearson II3
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`In both Pearson I and Pearson II, Viesti asserted copyright infringement claims
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`against the educational publisher Pearson Education, Inc. Pearson filed motions for
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`summary judgment in both cases on the issue of standing. In response, Viesti argued
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`that “the various agreements [executed by the photographers] transferred to Viesti
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`beneficial co-ownership of copyrights to the Pearson Photographs” and “assigned to
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`Viesti all accrued causes of action with respect to the Pearson Photographs, giving
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`Viesti standing to bring infringement claims that arose prior to the execution of the
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`various agreements.” Pearson I, No. 11-cv-01687-PAB-DW, 2014 WL 1053772, at *4
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`(D. Colo. March 19, 2014). In both Pearson I and II, District Judge Brimmer considered
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`and rejected each of the bases for standing asserted by Viesti. After a thorough and
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`detailed analysis, Judge Brimmer found that Viesti did not acquire any exclusive
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`copyright interest in the non-party created and owned images. Judge Brimmer carefully
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`analyzed Assignment of Copyright Agreements, Addenda, and Agency Agreements that
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`are at issue in this case and reasoned that the agreements did not confer standing on
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`Viesti. Specifically, Judge Brimmer found that while the Assignment Agreements
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`“purport to grant Viesti copyrights and complete legal title,” they “are silent as to any
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`compensation or royalties the photographer will receive for such an assignment in the
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`3 Viesti’s claims in Pearson I involved photographs licensed by Viesti, Daniel J.
`Cox of Natural Exposures, Inc., Arctic Photo, and Art Directors and Trip Photo Library.
`Pearson I, 2014 WL 1053772, at *1. Viesti’s claims in Pearson II involved photographs
`licensed by Wolfgang Kaehler. Pearson II, No. 12-cv-01431-PAB-DW, 2014 WL
`1055975, at *1.
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`Image.” Pearson I, No. 11-cv-01687-PAB-DW, 2014 WL 1053772, at *11 (D. Colo.
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`March 19, 2014). “If the parties genuinely intended to transfer complete ownership,
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`then Viesti would retain that ownership in perpetuity if it failed to bring suit.” Id. Citing
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`an abundance of authority, Judge Brimmer found that the Assignment Agreements “fail
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`to confer on Viesti legal or beneficial ownership of an exclusive right.” Id., at *12; see
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`Pearson II, No. 12-cv-01431-PAB-DW, 2014 WL 1055975, at *6 (D. Colo. March 19,
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`2014).
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`Considering the agreement’s language, Judge Brimmer also found that the
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`“Agency Agreement does not transfer to Viesti legal or beneficial ownership of an
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`exclusive right.” Id. at *13. “The agreements’ first paragraph contains the only
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`reference to ownership and clearly states that sole and exclusive ownership in the
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`images is vested with the photographer.” Id. at *12. Judge Brimmer went on to explain
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`that a “beneficial owner for this purpose would include, for example, an author who had
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`parted with legal title to the copyright in exchange for percentage royalties based on a
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`sales or license fees.” Id. In contrast, “Viesti has no claim, under the Agency
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`Agreement, to royalties from the photographers’ use of the copyrights. Because Viesti’s
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`economic interests are derived solely from its own use of the copyright and from the use
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`of the copyright by its legal owners, the photographers, Viesti is not a beneficial owner
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`pursuant to § 501(b).” Id. Accordingly, Judge Brimmer concluded that Viesti did not
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`acquire any exclusive copyright interest in the third party images and therefore lacked
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`standing under the Copyright Act to assert infringement claims. He then dismissed both
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`cases in their entirety. A final judgment was entered in both Pearson I and Pearson II,
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`and while Viesti filed a notice of appeal in both cases, the appeals were voluntarily
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`dismissed by the parties. I note that the identical agreements are at issue in this case.
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`D.
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`Collateral Estoppel
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` Here, McGraw-Hill contends that Viesti is estopped from raising the standing
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`arguments that it previously litigated and lost in both Pearson I and Pearson II.
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`Since this case is grounded in federal question jurisdiction, I must apply the
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`federal law of collateral estoppel. See Blonder-Tongue Lab., Inc. v. University of Ill.
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`Found., 402 U.S. 313, 324 n.12 (1971). Under federal law, collateral estoppel
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`“preclude[s] relitigation of both issues of law and issues of fact if those issues were
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`conclusively determined in a prior action.” United States v. Stauffer Chem. Co., 464
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`U.S. 165, 170-71 (1984). In the Tenth Circuit, collateral estoppel requires that the
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`following four requirements be met:
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`(1) the issue previously decided is identical with the one presented in the
`action in question, (2) the prior action has been finally adjudicated on the
`merits, (3) the party against whom the doctrine is invoked was a party or in
`privity with a party to the prior adjudication, and (4) the party against
`whom the doctrine is raised had a full and fair opportunity to litigate the
`issue in the prior action.
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`United States v. Rogers, 960 F.2d 1501, 1508 (10th Cir. 1992). “Collateral Estoppel . . .
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`does not always require that the parties be the same. Instead, collateral estoppel
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`requires an identity of issues raised in the successive proceedings and the
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`determination of these issues by a valid final judgment to which such determination was
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`essential.” Frandsen v. Westinghouse Corp., 46 F.3d 975, 978 (10th Cir. 1995).
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`Here, there is no question that elements (2), (3), and (4) are met. The prior
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`cases were litigated and Judge Brimmer entered summary judgment finding that Viesti
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`lacked standing to bring the copyright infringement actions. A final judgment was
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`issued in both Pearson I and Pearson II, and the appeals were voluntarily dismissed by
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`the parties, therefore, they were fully adjudicated on the merits. The party against who
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`collateral estoppel is being invoked, Viesti, was a party in the prior cases. Additionally,
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`there is no indication that Viesti did not have a full and fair opportunity to litigate the
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`standing issue in the prior cases.
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`The remaining question I must address is whether the issues decided in the
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`Pearson cases are identical to the ones presented in this litigation. Thus, I first turn to
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`the Copyright Assignments executed in this case. Viesti does not appear to contest the
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`collateral estoppel effect of the Pearson decisions as to the interpretation of the
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`Copyright Assignments. Even if there was a challenge, I find that all of the
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`requirements of collateral estoppel have been met. Viesti was a party in both Pearson I
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`and Pearson II, and it had a full and fair opportunity to litigate the effect of the Copyright
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`Assignments. Viesti did present arguments in support of its contention that the
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`Copyright Assignments transferred to Viesti legal or beneficial ownership in copyrights
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`to the McGraw-Hill Photographs. Further, Judge Brimmer’s orders granting summary
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`judgment were final judgments on the merits.
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`Finally, I note that while Viesti does not raise this issue, there are several
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`photographers whose work is the subject of the alleged infringement in this case who
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`were not involved in either Pearson I or Pearson II. However, since these
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`photographers executed Copyright Assignments that are one and the same as the
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`assignments that were at issue in both Pearson cases, I find that the issue is identical
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`and collateral estoppel applies. Alternatively, even if collateral estoppel does not apply
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`to these photographers, I agree with Judge Brimmer’s well-reasoned conclusion that
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`these Copyright Assignments cannot be the basis for standing under the Copyright Act
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`as they simply convey a bare right to sue. See Minden Pictures, Inc. v. John Wiley &
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`Sons, Inc. (Minden II), 10 F. Supp. 3d 1117(N.D. Cal. 2014); Minden Pictures, Inc. v.
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`Pearson Edu. (Minden I), Inc., 929 F. Supp. 2d 962 (N.D. Cal. 2013).
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`Second, I turn the Agency Agreements. I note that “[t]he Copyright Act
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`authorizes only two types of claimants to sue for copyright infringement: (1) owners of
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`copyrights, and (2) persons who have been granted exclusive licenses by owners of
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`copyrights.” Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27, 32 (2d
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`Cir. 1982). “A non-exclusive licensee does not have standing to commence a copyright
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`infringement action.” Id. Viesti argues that Judge Brimmer did not address the question
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`of whether Viesti has standing as an exclusive licensor. I disagree. For purposes of
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`collateral estoppel, the Agency Agreements at issue in this case use the same or
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`substantially similar language to those Judge Brimmer analyzed in the Pearson cases.
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`Judge Brimmer thoroughly discussed the meaning of the Agency Agreements in both
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`Pearson I and Pearson II and determined that they did not transfer to Viesti legal or
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`beneficial ownership of an exclusive right. In fact, Judge Brimmer specifically found “no
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`basis upon which to conclude that the Agency Agreements convey to Viesti an exclusive
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`license to the Pearson Photographs.” Pearson I, No. 11-cv-01687-PAB-DW, 2014 WL
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`1053772, at *12 n.19. Alternatively, even if collateral estoppel does not apply to this
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`issue, I find these Agency Agreements merely appoint Viesti “an exclusive agent and
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`representative” and fail to transfer any exclusive licenses. (See ECF Nos. 94-2, 94-6,
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`94-7, 94-13). There is nothing in these agreements that restricts the photographers
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`from licensing the same images on their own behalf or prosecuting all other
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`infringements, thus, Viesti has not demonstrated that it received an exclusive license.
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`See HyperQuest, Inc. v. N’Site Solutions, Inc., 632 F.3d 377, 385 (7th Cir. 2011).
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`Consistent with Judge Brimmer’s reasoning and the case authority, I find that the
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`Agency Agreements confer a non-exclusive license to Viesti, which confers no standing
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`to bring a copyright infringement claim.
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`Finally, I turn to the Addenda and 2013 Agreements. Judge Brimmer considered
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`the same or substantially similar Addenda and “Third Assignments” in both Pearson I
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`and Pearson II, which were executed in order to “cure any defects in Viesti’s standing
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`and bring claims related to the Pearson Photographs.” Pearson I, No. 11-cv-01687-
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`PAB-DW, 2014 WL 1053772, at *15. Judge Brimmer noted that “federal jurisdiction is
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`determined based on facts as they existed at the time the complaint was filed” and “[a]
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`party cannot attempt to amend defective jurisdictional facts once litigation has
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`commenced.” Id. Thus, without determining whether the Addenda and Third
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`Assignments properly modified any existing agreements, Judge Brimmer found that
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`since the “Addenda and Third Assignments were executed after [the actions were] filed,
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`they cannot be the mechanism through which Viesti acquired the necessary rights.” Id.
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`Here, I now address the Addenda. While the Addenda in this case were
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`executed prior to suit, after carefully considering the language of the Addenda, I still find
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`it to be insufficient to confer standing to Viesti. While the Addenda purport to grant
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`Viesti “copyrights and complete legal title,” the Addenda go on to state that “it was and
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`is the intention of the undersigned to convey to Viesti, fully and without reservation, the
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`copyrights and claims so that Viesti has legal standing to enforce copyrights in the
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`Images.” (See generally ECF No. 90-6). I find that this language clearly indicates that
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`Case 1:12-cv-00668-WYD-DW Document 111 Filed 02/11/15 USDC Colorado Page 15 of 18
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`the Addenda were executed solely for the purposes of bring suit. Just like the Copyright
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`Assignments, I find that the Addenda fail to transfer any exclusive 17 U.S.C. § 106
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`rights in the McGraw-Hill Photographs and were executed solely for the purpose of
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`bringing suit, which does not meet the standing requirement in § 501(b). See Silvers,
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`402 F.3d at 884.
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`Next, I turn to the 2013 Agreements, which were executed by Viesti and the
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`photographers to presumably strengthen the original Copyright Assignments and
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`Addenda. Even if collateral estoppel does not apply to the 2013 Agreements in this
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`case, I find that the weight of case authority rejects Viesti’s argument that subsequent
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`assignments “of copyright can confer standing when the assignment of rights in place at
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`the time the suit was filed had conferred only a bare right to sue.” Minden Pictures, Inc.
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`v. John Wiley & Sons, Inc., No. C–12–4601 EMC, 2013 WL 1995208, at *8 (N.D. Cal.
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`May 13, 2013); Lujan v. Defenders of Wildlife, 504 U.S. 555, 571 n.4 (1992); Pearson I,
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`No. 11-cv-01687-PAB-DW, 2014 WL 1053772, at *15; Righthaven LLC v. Allec,
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`2:11–CV–00532–KJD, 2012 WL 909832 (D. Nev. Mar.16, 2012); Righthaven, LLC v.
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`Hyatt, 2:10–CV–01736–KJD, 2011 WL 3652532 (D. Nev. Aug. 19, 2011). Here, the
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`2013 Agreements were executed after Viesti brought suit in this matter, and consistent
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`with Judge Brimmer’s reasoning, Viesti “cannot attempt to amend jurisdictional facts
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`once litigation has commenced.” Pearson I, No. 11-cv-01687-PAB-DW, 2014 WL
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`1053772, at *15. Thus, I need not decide whether the language of the 2013
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`Agreements transfers to Viesti the necessary copyright ownership to confer standing
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`because Viesti did not have a legal or beneficial ownership in the McGraw-Hill
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`Photographs prior to the filing of this action. Id.
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`Case 1:12-cv-00668-WYD-DW Document 111 Filed 02/11/15 USDC Colorado Page 16 of 18
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`I find that collateral estoppel applies to bar the majority of Viesti’s standing
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`arguments. However, to the extent that the doctrine does not apply to the remainder of
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`Viesti’s arguments, after my careful review, I find that McGraw-Hill has shown that the
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`record is devoid of evidence raising a genuine issue of material fact that would support
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`Viesti’s ultimate burden of proving standing. See Day, 500 F.3d at 1132. Moreover,
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`Viesti has failed to establish that there exists no genuine issue of material facts as to
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`justiciability in this case. See Essence, Inc., 285 F.3d at 1280.
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`E.
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`The Effect of the Lexmark Decision
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`Finally, Viesti contends that the United State Supreme Court’s recent ruling in
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`Lexmark Int’l, Inc. v. Static Control Components, Inc., ___ U.S. ___, 134 S.Ct. 1377,
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`1391 (March 25, 2014)4 alters the standing analysis in copyright infringement cases
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`such as this. I disagree and find Lexmark distinguishable to the issues present in this
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`case. Importantly, the holding in Lexmark does not address the test for standing under
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`The Copyright Act, 17 U.S.C. § 501(b). Instead, Lexmark addressed the framework
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`within which to analyze standing under The Lanham Act, 15 U.S.C. § 1125(a). See id.
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`at 1385 n.2 (stating that “[o]ther aspects of the parties' sprawling litigation, including
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`Lexmark's claims under federal copyright and patent law and Static Control's claims
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`under federal antitrust and North Carolina unfair-competition law, are not before us.
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`Our review pertains only to Static Control's Lanham Act claim.).
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`In Lexmark, the Supreme Court considered only the “straightforward question” of
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`4 I note that the Lexmark decision was decided on March 25, 2014, six days after
`Judge Brimmer issued his orders granting summary judgment in favor of Pearson in
`both Pearson I and Pearson II.
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`Case 1:12-cv-00668-WYD-DW Document 111 Filed 02/11/15 USDC Colorado Page 17 of 18
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`whether the respondent “fell within the class of plaintiffs who, Congress has authorized
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`to sue” for false advertising under the Lanham Act Id. at 1378. In doing so, the Court
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`set out to interpret the broad statutory language set forth in 15 U.S.C. § 1125(a), which
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`authorizes suit by “any person who believes that he or she is likely to be damaged” by a
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`party’s false advertising. Id. at 1388. The Court concluded that standing is determined
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`by a two-step process involving a zone of interest inquiry and a proximate cause
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`analysis. Id. at 1391. The Court’s analysis was limited to the Lanham Act and does
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`nothing to expand the parameters for standing set forth in The Copyright Act, 15 U.S.C.
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`§ 501(b). After my careful review of the Lexmark opinion, I find Lexmark’s zone of
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`interest and proximate cause tests inapplicable to the standing issue in this case and
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`reject Viesti’s arguments to the contrary. Since Viesti has no legal or beneficial
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`copyright ownership interests in the McGraw-Hill Photographs, it does not have legal
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`standing to bring suit under 15 U.S.C. § 501(b). Summary judgment is properly granted
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`in favor of McGraw-Hill.
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`IV.
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`CONCL