Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`JOSEPH SOHM and VISIONS OF AMERICA, LLC,
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`SCHOLASTIC INC.,
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`JOHN P. CRONAN, United States District Judge:
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`Plaintiffs,
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`Defendant.
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`16 Civ. 7098 (JPC)
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`OPINION AND ORDER
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`Joseph Sohm, a professional photographer, has licensed his photographs for decades. In
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`May 2016, Sohm and his company Visions of America LLC (“VOA”) commenced this litigation
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`against Scholastic, Inc., alleging copyright infringement in connection with Scholastic’s alleged
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`unauthorized use of many of Sohm’s photographs. On March 28, 2018, the Honorable J. Paul
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`Oetken, to whom this case was previously assigned, granted partial summary judgment in favor of
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`Plaintiffs on certain claims and in favor of Sohm on others. Sohm v. Scholastic Inc., No. 16 Civ.
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`7098 (JPO), 2018 WL 1605214 (S.D.N.Y. Mar. 29, 2018). Following remand from the Second
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`Circuit, Sohm v. Scholastic, Inc., 959 F.3d 39 (2d Cir. 2020), Plaintiffs have now moved for partial
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`summary judgment as to Scholastic’s liability with respect to five photographs. See Dkt. 41 (“Am.
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`Compl.”), Exh. 1, Rows 26-27, 29, 50, 53 (the “Photographs”). For reasons that follow, the Court
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`grants Plaintiffs’ motion.
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 2 of 9
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`I. Background1
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`A.
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`Scholastic’s Alleged Infringing Conduct as to the Photographs
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`The Court assumes the parties’ familiarity with the facts of this case, which are set out in
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`Sohm, 2018 WL 1605214, at *1-2, and Sohm, 959 F.3d at 42, and only briefly summarizes the
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`facts as relevant to Plaintiffs’ motion.
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`Sohm and VOA contracted with stock photography agencies, authorizing those agencies
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`to grant third-party licenses for the use of Sohm’s copyrighted photographs. See Sohm, 959 F.3d
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`at 42. One of those agencies was Continuum Productions Corporation, a predecessor in interest to
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`Corbis Corporation (“Corbis”). Pls. 56.1 Stmt. ¶ 4. In April 1994, Sohm, acting through a
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`predecessor to VOA, entered into a representation agreement with Corbis, which was later renewed
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`in 2001, 2006, and 2011. Id. That agreement authorized Corbis to issue limited licenses to third
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`parties for the use of Sohm’s photographs, in exchange for Corbis receiving a percentage of the
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`license fee. Id. Pursuant to this representation agreement, between 2006 and 2009, Corbis issued
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`limited licenses for the use of Sohm’s photographs to Scholastic, the world’s largest publisher and
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`distributor of children’s books, Dkt. 31 ¶ 3, including limited licenses for the Photographs. Pls.
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`56.1 Stmt. ¶¶ 5-6.
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`1 The following facts are drawn from Judge Oetken’s summary judgment opinion, see
`Sohm, 2018 WL 1605214, at *1-2, the Second Circuit’s decision on appeal, see Sohm, 959 F.3d at
`42, and the parties’ statements of material facts pursuant to Local Civil Rule 56.1 in connection
`with Plaintiffs’ instant motion for partial summary judgment, see Dkt. 128 (“Pls. 56.1 Stmt.”);
`Dkt. 130 (“Def. Counter 56.1 Stmt.”). Unless otherwise noted, the Court cites to only one party’s
`Rule 56.1 or Counter Rule 56.1 Statement where the parties do not dispute the fact, the adverse
`party has offered no admissible evidence to refute that fact, or the adverse party simply seeks to
`add its own “spin” on the fact or otherwise dispute the inferences from the stated fact. Scholastic
`does not dispute various statements in Plaintiff’s Rule 56.1 Statement in light of the prior decisions
`in this case, “but preserves its defenses summarized in Scholastic’s accompanying opposition to
`Plaintiffs’ renewed motion for summary judgment solely for the purpose of any further appeals in
`this action.” Def. Counter 56.1 Stmt. ¶¶ 2, 7, 14.
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`2
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 3 of 9
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`These licenses limited the number of copies of the Photographs that Scholastic was
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`authorized to make. Id. ¶ 7.2 Scholastic, however, printed publications containing the Photographs
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`in quantities that exceeded the quantity restrictions in the licenses. Id. ¶¶ 13-14, Exh. A.
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`Specifically, for the five Photographs, Scholastic printed books that exceeded the license
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`limitations in the following manner:
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`• For the photographs with Registration Number VA 1-074-964 and Registration Number
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`VA 1-113-639, Corbis issued Scholastic a license (License Number 7063891) in the
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`quantity of 25,000 copies of each photograph. Scholastic’s book, The American Flag,
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`contained both photographs, yet had a print quantity of 30,408, resulting in an infringing
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`print quantity of 5,408 for each photograph. Id., Exh. A.
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`• For the photograph with Registration Number VA 1-074-964, Corbis issued Scholastic a
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`license (License Number 7063915) in the quantity of 25,000 copies of the photograph.
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`Scholastic’s book, The Presidency, contained this photograph, yet had a print quantity of
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`62,093, resulting in an infringing print quantity of 37,093. Id., Exh. A.
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`• For the photograph with Registration Number VA 863-783, Corbis issued Scholastic a
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`license (License Number 8078698) in the quantity of 25,000 copies of the photograph.
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`Scholastic’s book, Population 1.3 Billion, contained this photograph, yet had a print
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`quantity of 34,794, resulting in an infringing print quantity of 9,794. Id., Exh. A.
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`• For the photograph with Registration Number VA 863-785, Corbis issued Scholastic a
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`license (License Number 1000029727) in the quantity of 50,000 copies of the photograph.
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`2 As previewed in the preceding footnote, Scholastic acknowledges the Second Circuit
`decision on this issue, but preserves its objection. In particular, while Scholastic concedes that the
`invoices issued in connection with the Corbis licenses for the Photographs included the number of
`copies that Scholastic anticipated making, Scholastic contends that those numbers did not reflect
`a limitation of Scholastic’s use of the Photographs. Def. Counter 56.1 Stmt. ¶ 7; see also id. ¶ 14.
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`3
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 4 of 9
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`Scholastic’s book, The American Flag, contained this photograph, yet had a print quantity
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`of 195,713, resulting in an infringing print quantity of 145,713. Id., Exh. A.
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`B.
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`Procedural History
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`In an Amended Complaint filed on October 25, 2016, Plaintiffs pleaded a count of
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`copyright infringement against Scholastic, in violation of 17 U.S.C. §§ 501 et seq., alleging 117
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`infringing uses of 89 photographs. Am. Compl. ¶¶ 17-19, Exh. 1. In June and July 2017, after the
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`close of discovery, the parties each moved for partial summary judgment. See Dkts. 66-69, 73-80.
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`1. Judge Oetken’s Summary Judgment Opinion
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`Judge Oetken granted each side partial summary judgment with respect to certain disputed
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`photographs. First, Judge Oetken addressed Scholastic’s challenge to the validity of some of
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`Plaintiffs’ copyright registrations. Sohm, 2018 WL 1605214, at *3-6. Judge Oetken found that,
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`under the plain language of 17 U.S.C. § 409(2), Corbis validly used group registrations. Id. at *4.
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`Judge Oetken also rejected Scholastic’s challenge to four registrations for inaccurately
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`representing that certain published photographs were “unpublished,” explaining that Scholastic
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`failed to show an absence of a genuine factual dispute as to Sohm’s knowledge of those
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`inaccuracies. Id. at *6-7; see 7 U.S.C. § 411(b)(1)(A). Judge Oetken then denied summary
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`judgment on Scholastic’s argument that the registration of eight photographs was flawed because
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`the photographs were created after the registration’s first publication date, finding a genuine
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`factual dispute as to these photographs’ creation dates. Sohm, 2018 WL 1605214, at *7-9.
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`Judge Oetken next addressed Scholastic’s argument for summary judgment on the grounds
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`that no “unauthorized copying” occurred. Id. at *8-9. Judge Oetken granted summary judgment
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`in favor of Scholastic for twelve uses involving ten photographs where the undisputed facts
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`confirm that Scholastic did not exceed its print limitation under the relevant licenses. Id. at *8.
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 5 of 9
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`Judge Oetken also dismissed claims as to seven uses where Plaintiffs “ha[d] not come forth with
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`any evidence that a use occurred at all,” and as to another thirty-six uses where Plaintiffs did not
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`present sufficient evidence of infringement. Id. at *9.
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`Judge Oetken then turned to Plaintiffs’ motion for partial summary judgment as to thirteen
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`uses where Scholastic “exceeded the print runs in the relevant invoices and licenses.” Id. at *10.
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`After rejecting certain arguments raised by Scholastic, including that some claims were barred by
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`the statute of limitations and that damages should be limited to the three years prior to
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`commencement of this action, Judge Oetken addressed whether Scholastic’s overuse of the
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`Photographs it licensed from Corbis could generate copyright claims. See Sohm, 2018 WL
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`1605214, at *12-14. Breaches of publication limits in licenses only give rise to copyright claims
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`if the limits are conditions precedent. Id. at *12. If the limits are instead covenants, a plaintiff has
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`a potential contract claim, but not a copyright claim. See id. Applying New York law, Judge
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`Oetken concluded that the print run limitations in Corbis’s vendor agreements with Scholastic “are
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`best characterized as covenants, rather than conditions,” because “Scholastic’s license was
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`conditional on full payment as invoiced” and Plaintiffs did not allege that Scholastic failed to pay
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`as invoiced. Id. at *13. Judge Oetken thus concluded that any claims must sound in contract
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`(which was not pleaded), rather than copyright, and granted summary judgment against Plaintiffs’
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`copyright claims. Id. at *14. Judge Oetken, however, found that the problem did not afflict
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`Plaintiffs’ claims based on Scholastic’s licenses with two other agencies and granted Plaintiffs
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`summary judgment on those claims. Id.
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`Thus, Judge Oetken granted Plaintiff summary judgment as to the claims corresponding to
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`Rows 8, 9, and 13-16 of Docket Number 69-1, and granted Scholastic summary judgment as to
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`claims corresponding to Rows 1-67, 72-84, 97, 105, and 109-114 of Docket Number 74-1.
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 6 of 9
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`2. The Second Circuit’s Decision
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`Plaintiffs appealed Judge Oetken’s March 29, 2018 Order and Scholastic filed a cross-
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`appeal. The Second Circuit reversed in part, affirmed in part, and remanded to this Court for
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`further proceedings.
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`Most relevant for the instant motion is the Second Circuit’s holding as to whether
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`Plaintiffs’ claims with respect to the Photographs sound in contract or in copyright. See Sohm,
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`959 F.3d at 45-48. The Second Circuit departed from Judge Oetken’s analysis by holding that the
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`quantity limits in Scholastic’s licenses from Corbis were conditions precedent rather than
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`covenants. Id. Focusing on language in the Terms and Conditions incorporated in the relevant
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`agreements, the Second Circuit explained that “[t]hese license agreements granting Scholastic the
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`right to copy Sohm’s photos contain unmistakable language of conditions precedent, and therefore
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`Sohm properly pleaded claims of copyright infringement.” Id. at 46. The Second Circuit therefore
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`reversed the grant of partial summary judgment on this basis. Id. at 48, 54.
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`The Second Circuit also affirmed Judge Oetken’s application of the elements of a copyright
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`claim and allocation of the burdens of proof, id. at 48-49, and concluded that Plaintiffs offered
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`sufficient proof of infringement to survive summary judgment as to a particular photograph of a
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`steam engine, id. at 49. With respect to Scholastic’s cross-appeal, the Second Circuit held that that
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`the “discovery rule” rather than the “injury rule” applied for assessing when Plaintiffs’
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`infringement claims accrued for statute of limitations purposes, id. at 49-51, that Plaintiffs’
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`damages are limited to the three years prior to the commencement of this action, id. at 51-52, and
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`that Corbis validly registered each of the photographs in its group registrations, id. at 52-53.
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 7 of 9
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`3. Plaintiffs’ Instant Motion for Partial Summary Judgment
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`On October 20, 2020, following remand from the Second Circuit, this case was reassigned
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`to the undersigned. See Dkt. 114. Plaintiffs have now moved for partial summary judgment,
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`seeking a judgment of liability against Scholastic for Plaintiffs’ claims of copyright infringement
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`with respect to the Photographs. Dkts. 127 (“Motion”), 128; see Am. Compl., Exh. A, Rows 26-
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`27, 29, 50, 53. Scholastic concedes that, under the Second Circuit’s decision, Plaintiffs are entitled
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`to summary judgment on Scholastic’s liability as to the Photographs. See Dkt. 129 (“Response”)
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`at 1 (“Given the decisions issued in this case by this Court on the prior motion for summary
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`judgment . . . and the Second Circuit on appeal of the prior summary judgment order . . . ,
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`Scholastic does not dispute Plaintiffs’ request for a finding of liability as to the five claims at
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`issue . . . .”).3
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`II. Discussion
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`To prove copyright infringement, Plaintiffs must show “ownership of a valid copyright”
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`and “unauthorized copying of the copyrighted work.” Sohm, 959 F.3d at 48 (quoting Jorgenson
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`v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003)). Where, as here, a plaintiff admits the
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`existence of a license, a plaintiff also must prove that the defendant’s use exceeded that license.
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`See Sohm, 959 F.3d at 48-49.
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`There is no dispute that Corbis validly registered Sohm’s copyrights in the Photographs
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`and that Corbis sold Scholastic limited licenses to use the Photographs. Pls. 56.1 Stmt. ¶¶ 2, 6-7;
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`see Sohm, 959 F.3d at 52-53. Nor is there a dispute that Scholastic printed more quantities of its
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`books containing the Photographs than those limited licenses allowed. Pls. 56.1 Stmt. ¶¶ 13-14,
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`3 Scholastic explains that it filed its brief “in an abundance of caution and in order to
`preserve its defenses for any further appeal of this action.” Response at 1.
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 8 of 9
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`Exh. 1. As Judge Oetken concluded with respect to other photographs at issue in this litigation,
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`exceeding such print run limitations constitutes unauthorized copying. See Sohm, 2018 WL
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`1605214, at *14 (citing John Wiley & Sons, Inc. v. DRK Photo, 998 F. Supp. 2d 262, 288 (S.D.N.Y.
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`2014)). Plaintiffs thus seek partial summary judgment on Scholastic’s copyright infringement
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`liability as to these Photographs, citing the absence of any “genuine issue of material fact . . .
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`regarding the validity of Sohm’s copyrights or Scholastic’s use of the Photographs beyond the
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`terms of the limited licenses.” Motion at 4.
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`In response to Plaintiffs’ motion, Scholastic asserts three defenses. First, it argues that
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`Sohm has only a contract claim, not a copyright claim, but “acknowledges that the Second Circuit
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`disagreed with its position on this issue.” Response at 1-3 (citing Sohm, 959 F.3d at 45-48).
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`Second, Scholastic argues that Plaintiffs’ claims are barred by the statute of limitations for
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`copyright actions because the “injury rule,” not the “discovery rule,” should apply, but
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`acknowledges that the Second Circuit continues to apply the “discovery rule.” Id. at 3-4 (citing
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`Sohm, 959 F.3d at 50, 51). And third, Scholastic claims that the copyright registrations for the
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`Photographs are not valid because they were part of Corbis’s group registrations, citing district
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`court decisions that predated the Second Circuit’s decision in this case. Id. at 4-5 (citing Sohm,
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`959 F.3d at 52-53). Here too, Scholastic acknowledges that the Second Circuit has ruled otherwise
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`on appeal but raises the argument to preserve its right to further appeal. Id. at 5.
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`This Court is of course bound to follow the holdings of the Second Circuit and does so here
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`on remand. See Standard Inv. Chartered v. Fin. Regul. Auth., 684 F. Supp. 2d 407, 408 (S.D.N.Y.
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`2010) (describing the doctrine of “vertical precedent”). Further, “[t]he law of the case doctrine
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`commands that ‘when a court has ruled on an issue, that decision should generally be adhered to
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`by that court in subsequent stages in the same case’ unless ‘cogent and compelling reasons militate
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`Case 1:16-cv-07098-JPC Document 132 Filed 09/14/21 Page 9 of 9
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`otherwise.’” Johnson v. Holder, 564 F.3d 95, 99 (2d Cir. 2009) (quoting United States v. Quintieri,
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`306 F.3d 1217, 1225 (2d Cir. 2002)). The Court therefore grants Plaintiffs’ motion for summary
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`judgment and holds that Scholastic is liable for copyright infringement as to the Photographs.
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`III. Conclusion
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`Accordingly, the Court grants Plaintiffs partial summary judgment with respect to
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`Scholastic’s liability as to the Photographs. The Clerk of Court is respectfully directed to close
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`the motion pending at Docket Number 127.
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`The parties are further ordered to appear at a status conference at 10:00 a.m. on September
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`22, 2021. At the scheduled time, counsel for all parties should call (866) 434-5269, access code
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`9176261.
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`SO ORDERED.
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`Dated: September 14, 2021
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`New York, New York
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` __________________________________
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` JOHN P. CRONAN
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` United States District Judge
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