Case 2:16-cv-06178-GAM Document 87 Filed 12/02/19 Page 1 of 22
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`CIVIL ACTION
`No. 16-6178
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`DECEMBER 2, 2019
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`BOB KRIST,
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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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`McHUGH, J.
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`MEMORANDUM
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`This is an action for copyright infringement. Plaintiff Bob Krist is a professional
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`photographer who licenses the use of his photographs through an agency, Corbis, under
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`agreements allowing Corbis to sublicense those photographs to third parties. Pearson Education,
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`Inc. is a long-time Corbis customer, and is one of the third-parties to whom Corbis has
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`sublicensed Krist’s work. Krist contends that Pearson made use of the photographs at issue here
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`in ways that exceeded the scope of its agreements with Corbis.
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`Krist filed suit against Pearson for one count of copyright infringement embracing 359
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`separate claims. Of the 359 claims Krist asserts, 352 of them arise from the licenses granted to
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`Pearson through Corbis. The remaining seven claims involve licenses Krist issued directly to
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`Pearson.
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`The parties now each move for summary judgment. For the reasons that follow, I will
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`deny summary judgment to both parties. Rather than provide a detailed recitation of the facts
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`involved at the outset, I will instead address the facts relevant to each issue below.
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`1
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`Case 2:16-cv-06178-GAM Document 87 Filed 12/02/19 Page 2 of 22
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`I.
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`STANDARD OF REVIEW
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` Summary Judgment Motions
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`The parties’ Motions are governed by the well-established standard for summary
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`judgment set forth in Fed. R. Civ. P. 56(a), as amplified by Celotex Corporation v. Catrett, 477
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`U.S. 317, 322-23 (1986). That standard does not change when the parties cross-move for
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`summary judgment. Auto-Owners Ins. Co. v. Stevens & Ricci Inc., 835 F.3d 388, 402 (3d Cir.
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`2016). When both parties move for summary judgment, “‘[t]he court must rule on each party’s
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`motion on an individual and separate basis, determining, for each side, whether a judgment may
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`be entered in accordance with the Rule 56 standard.’” Id. (quoting 10A Charles Alan Wright et
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`al., Federal Practice & Procedure § 2720 (3d ed. 2016)).
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` Copyright Infringement
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`Preliminarily, it is necessary to address the controlling standard because the parties
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`appear to dispute it. To establish copyright infringement, a plaintiff must prove by a
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`preponderance of the evidence: “(1) ownership of a valid copyright, and (2) copying of
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`constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Tel. Serv.
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`Co., 499 U.S. 340, 361 (1991) (citing Harper & Row Publishers, Inc. v. Nation Enterprises, 471
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`U.S. 539, 548 (1985)); see also Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1231
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`(3d Cir. 1986). A valid license is a defense to a claim of copyright infringement. MacLean
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`Assocs., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 778-79 (3d Cir. 1991).
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`Pearson cites the Third Circuit’s decision in Kay Berry, Inc. v. Taylor Gifts, Inc., 421
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`F.3d 199, 203 (3d Cir. 2005) for the proposition that under the second element of the
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`infringement analysis, a plaintiff must prove that the defendant’s copying was “unauthorized.”
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`Def. Mot. for Summ. J., ECF 59-1, at 21. But the Third Circuit recently repudiated this
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`formulation. See In re McGraw-Hill Glob. Educ. Holdings LLC, 909 F.3d 48, 66 (3d Cir. 2018).
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`2
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`Of particular note here, the Third Circuit observed that the inclusion of the word “unauthorized”
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`was at odds with the Supreme Court’s explication of the elements in Feist. Id. Bearing the Third
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`Circuit’s analysis in mind, I employ the Supreme Court’s formula as expressed in Feist to decide
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`the dispute between the parties here, leaving Pearson to assert that it was authorized to use the
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`works as an affirmative defense.1
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`II.
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`DISCUSSION
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` Pearson’s Motion for Summary Judgment
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`Pearson’s Motion raises four grounds on which it seeks summary judgment. First, it
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`argues Krist’s claims are barred by the Copyright Act’s three-year statute of limitations, and that
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`the “discovery rule” fails to save them, because Krist discussed his claims with an attorney more
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`than three years before filing suit. Second, Pearson contends Krist abandoned or waived more
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`than half of his claims when he failed to include them in a discovery response and then ratified
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`that abandonment during his deposition testimony. Third, Pearson asserts that Krist has sought
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`the incorrect remedy by filing an action for copyright infringement when in fact his claims sound
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`in breach of contract. Finally, Pearson contends that twenty-one of the claims are barred because
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`the underlying registrations are invalid.
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`1. Statute of Limitations
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`The Copyright Act provides that “[n]o civil action shall be maintained under the
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`provisions of this title unless it is commenced within three years after the claim accrued.” 17
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`U.S.C. § 507(b). A copyright claim accrues “at the moment at which each of its component
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`elements has come into being as a matter of objective reality, such that an attorney with
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`1 Judge Rufe of our Court recently considered this issue, and she also concluded that Feist controls. Krist v.
`Scholastic, Inc., 2019 WL 6133861, at *10-11 (E.D. Pa., Nov. 18, 2019).
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`3
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`knowledge of all the facts could get it past a motion to dismiss for failure to state a claim.”
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`William A. Graham Co. v. Haughey, 646 F.3d 138, 150 (3d Cir. 2011) (Graham II); see also
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`Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 670 (2014) (“A claim ordinarily accrues
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`‘when [a] plaintiff has a complete and present cause of action.’” (internal citation omitted)).
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`Thus, if Krist’s claim accrued more than three years before he brought suit, as Pearson contends,
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`it would be barred by the statute of limitations.
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`The controlling question is when the three-year period started to run. That is because
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`nine courts of appeals, including the Third Circuit, have adopted “a ‘discovery rule,’ which starts
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`the limitations period when ‘the plaintiff discovers, or with due diligence should have
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`discovered, the injury that forms the basis for the claim.’” Petrella, 572 U.S. at 671 n.4 (2014)
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`(citing and quoting William A. Graham Co. v. Haughey, 568 F.3d 425, 433 (3d Cir. 2009)
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`(Graham I)). 2 A court’s first step in applying the discovery rule is to determine when the act
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`constituting the alleged injury actually occurred. Graham I, 568 F.3d at 438. Next, the court
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`must ascertain whether that injury could have been discovered immediately or whether the
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`statute of limitations must be tolled until the time that it reasonably could have been discovered.
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`Id.
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`In evaluating whether Krist’s injury could have been discovered, the initial inquiry is
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`whether Krist “should have known of the basis for [his] claims,” and that, in turn, requires me to
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`determine when Krist “had sufficient information of possible wrongdoing [to be placed] on
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`inquiry notice or to excite storm warnings of culpable activity.” Id. (citing Benak ex rel. Alliance
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`Premier Growth Fund v. Alliance Capital Mgmt. L.P., 435 F.3d 396, 400 (3d Cir. 2006))
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`2 For clarity’s sake, I refer to the Third Circuit’s two opinions addressing the discovery rule as “Graham I” and
`“Graham II” to distinguish them from each other and from the Second Circuit’s decision in Graham v. James, 144
`F.3d 229, 236 (2d Cir. 1998), discussed infra. I will refer to the Second Circuit’s opinion as “Graham.”
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`4
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`(internal quotation marks omitted). Pearson bears the initial burden to show the presence of
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`storm warnings; if Pearson succeeds, the burden shifts to Krist to show that despite the exercise
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`of reasonable diligence, he was unable to discover the injury. Id. (citing Mathews v. Kidder,
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`Peabody & Co., 260 F.3d 239, 252 (3d Cir. 2001)).
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`The parties do not dispute that the claims asserted here arose more than three years before
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`Krist filed suit. Thus, as Graham I requires, I turn to the question of Krist’s ability to discover
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`his injury. To do so, I must first examine whether Pearson has put forward evidence to show
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`Krist “had sufficient information of possible wrongdoing [to be placed] on inquiry notice or to
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`excite storm warnings of culpable activity.” Graham I, 568 F.3d at 438.
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`This suit was filed on November 23, 2016. Ordinarily therefore, any of Krist’s claims
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`that accrued before November 23, 2013 would be barred by the statute of limitations. To support
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`its statute defense, Pearson cites two meetings between Krist and his attorney, Maurice Harmon,
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`that took place on November 14, 2013 and November 22, 2013 respectively, as well as email
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`communications between Krist and Harmon about the same matter. ECF 59-1, at 12-13 (citing
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`Def. Ex. 2 to Decl. of Karl Schweitzer, ECF 59-5). Pearson also points me to Krist’s deposition
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`testimony that he was aware Pearson had a “track record” of infringement. Krist Dep. Tr., at
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`76:1-77:14; 113:13-114:15; 320:12-321:22. Krist further testified in his deposition that Harmon
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`informed him that Krist’s “name kept coming up” in searches Harmon conducted and that Krist
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`might have “a goodly number of infringements[.]” Id. at 257:10-17. Pearson would therefore
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`have me find that the statute of limitations began to run on November 23, 2013, the day after
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`Krist’s second conversation with Harmon.
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`In considering Pearson’s argument, I must bear in mind the Third Circuit’s admonition
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`that “inquiry notice demands more than evidence that a person is a bad actor in some general
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`sense before a court can conclude that a storm warning exists as to a specific cause of action.”
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`Graham I, 568 F.3d at 440. The context here has significance. The initial meetings between
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`Krist and Harmon took place at Harmon’s instigation, which a reasonable jury could conclude
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`was Harmon essentially marketing his services as a copyright lawyer. Krist Dep. Tr., at 76:16-
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`22; 82:8-9. Krist did not in the first instance seek the services of a copyright lawyer based on his
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`intuition that his rights were being violated; counsel approached him.
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`Even assuming Harmon told Krist he suspected Pearson was infringing his copyrights,
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`because that alerted him to the fact that Pearson was a “bad actor in some general sense,”
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`Graham I, 568 F.3d at 440, a jury could find it reasonable for Krist to absorb Harmon’s
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`information and conduct his own inquiry. Krist puts forth evidence showing he did just that by
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`gathering relevant documents and speaking to fellow photographers about their own experiences
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`with infringement claims generally and with Harmon in particular, before ultimately retaining
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`counsel.3 I therefore find that there is a jury issue as to both prongs of the test: whether
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`counsel’s solicitation by itself sufficed to provide Krist with “sufficient information of possible
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`3 In December of 2013, and less than a month after his conversation with Harmon, Krist began compiling
`information about the licensing and registration status of his photographs. Pl.’s Sur-Reply to Def. Mot. for Summ.
`J., ECF 75, at 10 (citing Pl.’s Revised Resps. to Def.’s First Set of Interrogs., ECF 59-4, at 5). In January 2014,
`Krist requested that Corbis send him documents substantiating the history of the images Corbis had licensed to
`Pearson. Id. (citing Krist Dep. Tr., at 24:10-25:11, 48:22-50:15, 124:18-20). Later, in April 2014, Krist and his
`business partner, Peggy Krist, made inquiries to photographer colleagues Tom Bean and Michael Yamashita to seek
`their input about Harmon and about pursuing copyright infringement claims in light of their experiences. Id. (citing
`Krist Dep. Tr., at 168:13-169:12, 255:4-21, 292:15-295:19). Later that same month, Krist entered into a
`representation agreement with Harmon’s firm. Id. (citing ECF 59-4, at 5). Krist’s evidence therefore demonstrates
`that significant issues of material fact remain and that Krist did not simply bide his time until the lawsuit was filed.
`Krist’s evidence may also demonstrate to a jury that he did not obtain sufficient information to excite storm
`warnings in November 2013.
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`wrongdoing [to be placed] on inquiry notice or to excite storm warnings of culpable activity,”
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`Graham I, 568 F.3d at 438, and whether Krist acted with reasonable diligence thereafter.
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`Pearson argues that the discovery rule is inapplicable if a plaintiff learns enough “to
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`assert or investigate” their claim but fails to do so for more than three years. ECF 59-1, at 16
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`(citing Am. Bd. of Internal Med. v. Rushford, 2017 WL 1024267 (D.N.J. Mar. 16, 2017)). Its
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`reliance upon Rushford is misplaced. The court there granted the defendant’s motion for
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`judgment on the pleadings because the complaint on its face pled facts demonstrating the
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`plaintiff’s actual knowledge of its injury before the statute of limitations expired. 4 Rushford,
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`2017 WL 1024267, at *3.
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`Pearson further argues that consulting an attorney necessarily starts the clock running on
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`the statute of limitations. ECF 59-1, at 17-18 (citing AQC v. United States, 656 F.3d 135 (2d Cir.
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`2011)). In AQC, the plaintiff’s infant daughter suffered injuries that were obvious to the plaintiff
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`just after the daughter’s birth. 656 F.3d at 140. An early intervention counselor had already told
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`the plaintiff she believed the daughter’s injuries were the result of malpractice, and the plaintiff
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`sought out a law firm specializing in such matters after seeing its television advertisement. Id. at
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`143. The Second Circuit held the discovery rule did not rescue the plaintiff’s late-filed claim
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`4 Significantly, the Rushford plaintiff had already filed a lawsuit against other alleged infringers involved in the
`same conduct, and it learned of the defendant’s involvement while pursuing that first action. Rushford, 2017 WL
`1024267, at *3. The plaintiff’s previous lawsuit therefore provided clear evidence that it was aware of the injury
`that occurred when the defendants put their scheme into action. Id. In addition, the plaintiff did not file the action
`until two years after the statute of limitations expired. Id. at *2. The facts of Rushford—together with its procedural
`posture—differ from the situation here where the parties vigorously dispute when Krist learned enough details about
`the suspected infringement to trigger the statute of limitations to begin running. Further, Krist filed his lawsuit two
`weeks after the date Pearson alleges the statute of limitations to have expired—a far cry from filing an action two
`years later.
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`because her consultation with the attorney showed she knew enough about the cause of her
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`daughter’s injuries at that time to trigger the statute of limitations.5 Id.
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`Here, in contrast, Harmon approached Krist and, at that time, Harmon was the only
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`source of information as to the possibility Krist had suffered injury. In that regard, I would be
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`reluctant to hold that an overture from an attorney triggers the statute as a matter of law, lest a
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`prudent litigant be penalized for pausing to consider the merits and wisdom of filing suit.
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`Pearson further cites Judge Rufe’s recent decision in Krist v. Scholastic, 2019 WL
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`6133861 (E.D. Pa. Nov. 18, 2019), barring many of Krist’s claims on the basis of the statute of
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`limitations, but the facts there were materially different because the relevant events took place
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`after Krist and Harmon forged the relationship that gave rise to this litigation.
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`In refusing to enter summary judgment based on the statute of limitations, I reject
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`Plaintiff’s analysis as well. First, Krist cites a single district court decision, Frerck v. John Wiley
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`& Sons, Inc., et al., 2014 WL 3512991, at *6 (N.D. Ill. July 14, 2014), to argue that Pearson
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`cannot assert a statute of limitations defense without also putting forth evidence showing when
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`the infringements of his work started and stopped. I find no support for such a standard in any
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`appellate decision, and I decline to adopt it here.
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`Krist also urges me to find that the statute of limitations does not begin to run until after a
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`plaintiff discovers the specific facts constituting the violation, on the strength of Pension Tr.
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`5 Pearson also cites a series of administrative law cases where courts have found that equitable tolling is unavailable
`once the plaintiff consults an attorney, even when the applicable statute of limitations is much shorter than under
`Copyright Act. ECF 59-1, at 18-19. These cases are similarly unhelpful to Pearson because they merely reinforce
`the point of AQC that plaintiffs usually seek out an attorney only after they possess sufficient knowledge of the
`underlying injury to do so. See, e.g., Reifinger v. Nuclear Research Corp., 1992 WL 368347, at *4 (E.D. Pa. Dec. 4,
`1992) (“In the case sub judice, plaintiff admits he knew of his right to bring suit against the defendant for age
`discrimination. Indeed, that is why he contacted his original attorney in the first place.”). In addition, the case law
`developed under those statutes specifically permits tolling the limitations period until the plaintiff consults with an
`attorney.
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`Fund for Operating Engineers v. Mortg. Asset Securitization Transactions, Inc., 730 F.3d 263,
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`276 (3d Cir. 2013). In Pension Trust, the Third Circuit was construing the Securities Act, and its
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`analysis of the discovery rule was rooted in the framework of that statute, the case law that had
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`developed in the securities context, and the peculiar facts of the case before it. 730 F.3d at 277-
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`78. I am not persuaded that the analysis in Pension Trust applies with any force to the Copyright
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`Act, particularly when the Third Circuit established a prevailing standard in Graham I.
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`In conclusion, I find that the question of when the limitation period began to run must be
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`resolved by a jury. I also deny Pearson’s request for summary judgment as to any claims that
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`accrued before November 23, 2013 because that would have the same functional effect as
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`granting its original request.
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`2. Alleged Abandonment of Claims
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`Pearson also contends that it is entitled to summary judgment on 191 of the 356 claims
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`referenced in Krist’s complaint because Krist has purportedly conceded there is no evidence to
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`support those claims. Pearson bases this argument on the fact that Krist served supplemental
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`disclosures during discovery that contained a “Claims Report” purporting to identify which of
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`the claims in the Complaint he was continuing to pursue, and that Report omitted 191 of the
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`original claims. ECF 59-1, at 22 (citing Decl. of Karl Schweitzer, ECF 59-3, at ¶ 3.)
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`Though hard to conceptualize, I take Pearson to argue that Krist’s failure to include the
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`191 claims in the report and his supposed ratification of that omission means he has abandoned
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`or waived those claims. Pearson cites no authority to support the proposition that a plaintiff’s
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`incomplete discovery submission can serve to abandon the claims asserted in that plaintiff’s
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`complaint. Moreover, a plaintiff seeking to withdraw specific claims can do so by moving to
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`amend its pleading under Federal Rule of Civil Procedure 15, which Krist plainly has not done.
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`I decline Pearson’s invitation to invent a doctrine of waiver or abandonment and deny its
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`request for summary judgment on that basis.
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`3. Copyright Infringement vs. Breach of Contract
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`Pearson next asserts that it is entitled to summary judgment on 165 of the 168 remaining
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`claims because those claims sound in contract, rather than copyright. Alternatively, Pearson
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`argues it is entitled to summary judgment on those claims where it paid for an allegedly
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`excessive use of Krist’s work under the terms of the applicable Preferred Vendor Agreements
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`(PVAs) between itself and Corbis. Neither argument is persuasive.
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`Krist licensed 352 of the 359 photos at issue here to Pearson through Corbis, and he
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`licensed the remaining seven photos to Pearson directly. See Krist Dep. Tr., at 14:7-15:9. The
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`parties disagree about the scope of the license Corbis conveyed to Pearson. Pearson asserts that
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`the series of PVAs between itself and Corbis constituted master licensing agreements that
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`allowed it to use Krist’s photographs in any way it chose so long as it was willing to pay the
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`price for that use set forth in the applicable PVA. Krist counters the use of each photo was
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`governed by separate invoice and licensing agreements, each of which incorporated a separate
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`set of terms and conditions. Accordingly, Krist argues, any use that exceeded the scope of the
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`license set forth in those documents constituted copyright infringement.
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`In Pearson’s view, Krist’s contention that it exceeded the scope of its licenses with
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`Corbis sounds in contract, rather than copyright, because Pearson’s allegedly infringing uses of
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`the photos violated covenants, rather than conditions, of the licenses. In support of this view,
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`Pearson directs me to the Second Circuit’s decision in Graham v. James, 144 F.3d 229, 236 (2d
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`Cir. 1998), for the proposition that “[a] copyright owner who grants a nonexclusive license to use
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`his copyrighted material waives his right to sue the licensee for copyright infringement.” Under
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`Graham, Pearson contends, disputes over a licensee’s alleged acts exceeding the scope of the
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`license are governed by a covenant-condition distinction.
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`Pearson embraces Graham in support of an elaborate argument that Krist has no potential
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`remedies. Pearson concedes that Krist is not a party to any of the agreements between itself and
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`Corbis. ECF 59-1, at 26. In denying an earlier motion to transfer, I have already found that
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`Krist is not a party to those agreements. Krist v. Pearson Educ., Inc., 263 F. Supp. 3d. 509, 511-
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`14 (E.D. Pa. 2017) (McHugh, J.) (holding as a nonparty Krist cannot be bound by the forum
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`selection clause contained in agreements between Corbis and Pearson). By Pearson’s logic,
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`Krist has no recourse: he cannot assert a copyright infringement claim because the agreements
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`between Pearson and Corbis authorized use, and he cannot assert a breach of contract claim
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`because he is neither a party to nor a third-party beneficiary of those same agreements.
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`I see no basis to apply the covenant-condition distinction here because, as Pearson
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`concedes in its briefing, the Third Circuit has never addressed, let alone adopted, the covenant-
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`condition framework. ECF 59-1, at 24. Reduced to its essence, Graham involved a dispute
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`between a licensor and licensee over the failure to pay royalties, not a dispute about the use of
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`protected works outside the scope of the license. See 144 F.3d at 236 (rejecting plaintiff’s
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`arguments that the failure to pay royalties breached license conditions and voided the license,
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`and that breaches terminated agreement). In practical terms, Graham was a collection action.
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`In fact, panels of the Second Circuit both before and after Graham have evaluated
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`infringement claims turning on the scope of a license without applying the covenant-condition
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`framework. See, e.g., Universal Instruments Corp. v. Micro Sys. Eng’g, Inc., 924 F.3d 32, 48
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`(2d Cir. 2019); Spinelli v. NFL, 903 F.3d 185, 203 (2d Cir. 2018); Marshall v. New Kids On The
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`Block P’ship, 780 F. Supp. 1005, 1008-09 (2d Cir. 1991); Kamakazi Music Corp. v. Robbins
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`Music Corp., 684 F.2d 228, 230 (2d Cir. 1982). One later panel specifically distinguished
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`Graham, noting that the rule there “holds true only where the defendant licensee ‘uses the
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`copyright as agreed with the licensor.’” Spinelli, 903 F.3d at 202 (citing Davis v. Blige, 505 F.3d
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`90, 100 (2d Cir. 2007)) (noting the separation between the questions of “whether AP simply
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`violated a contractual promise to pay royalties (a claim for breach of contract) or whether its
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`complimentary license to NFL exceeded the scope of its sublicensing authority (a claim for
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`copyright infringement).”); see also Marshall, 780 F. Supp. at 1008 (observing that a licensee
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`who fails to use the work as agreed “effectively makes himself a ‘stranger’ to the copyright
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`owner [and] the action arises under the copyright laws just as if the claim were against any other
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`infringer who is a stranger to the plaintiff”).
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`The Federal Circuit provides a sensible framework for determining when a claim arises
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`under the Copyright Act. In Storage Tech. Corp. v. Custom Hardware Eng’g & Consulting, Inc.,
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`421 F.3d 1307 (Fed. Cir. 2005), the Federal Circuit held that courts should look to the nature of
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`the right injured by the defendant’s conduct to determine the appropriate remedy.6 Under the
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`Federal Circuit’s approach, for an infringement claim to be actionable, the copyright owner must
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`show that the defendant exceeded the scope of the license and “the source of the copyright
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`owner’s complaint must be grounded in a right protected by the Copyright Act, such as unlawful
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`6 The Federal Circuit uses an unusual but effective illustration to crystalize the distinction between copyright and
`contract claims where a licensee exceeds the scope of the license:
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`As an example, consider a license in which the copyright owner grants a person the right to make
`one and only one copy of a book with the caveat that the licensee may not read the last ten pages.
`Obviously, a licensee who made a hundred copies of the book would be liable for copyright
`infringement because the copying would violate the Copyright Act’s prohibition on reproduction
`and would exceed the scope of the license. Alternatively, if the licensee made a single copy of the
`book, but read the last ten pages, the only cause of action would be for breach of contract, because
`reading a work does not violate any right protected by copyright law.
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`Storage Tech., 421 F.3d at 1316.
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`reproduction or distribution.” 7 Storage Tech, 421 F.3d at 1316 (citing 17 U.S.C. § 106). Stated
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`differently, “[u]ses that violate a license agreement constitute copyright infringement only when
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`those uses would infringe in the absence of any license agreement at all.” Id. Courts evaluating
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`whether the Act applies should therefore ask whether the defendant’s actions would constitute
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`copyright infringement if the defendant committed the same act in the absence of a licensing
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`agreement. If the answer is yes, copyright law is the proper vehicle for the plaintiff’s claim.
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`Graham’s utility is further limited by the Second Circuit’s conclusion that the Copyright
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`Act preempts breach of contract claims for conduct injuring a plaintiff’s exercise of the exclusive
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`rights conferred by the Act. Universal Instruments, 924 F.3d at 48. Thus, a breach of contract
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`claim for conduct exceeding the scope of a license would be preempted unless it contains an
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`extra element—such as a promise to pay. Id. Pearson urges me to characterize the essence of
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`Krist’s claim as Pearson’s failure to pay invoices governing the use of particular photos. I
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`disagree and find instead that Krist’s claim asserts unlicensed uses of his work violating his
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`rights as a copyright holder.
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`Pearson alternatively requests summary judgment for any uses where it tendered
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`payments to Corbis under the PVAs sufficient to cover any alleged infringement. Pearson argues
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`that the PVAs allow it to make essentially unlimited use of any photographs so long as it pays
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`the price required by the agreement for the way in which it uses each one. ECF 59-1, at 31-35.
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`Krist disagrees, contending that the PVAs do nothing more than set the pricing terms for licenses
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`that Pearson will request from Corbis in the future. ECF 65, at 20.
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`7 In Universal Instruments, the Second Circuit articulated a similar formulation. 924 F.3d at 48. There, the court
`concluded “[t]he Copyright Act exclusively governs a claim when (1) the particular work to which the claim is
`being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103, and (2)
`the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights
`already protected by copyright law under 17 U.S.C. § 106.” Id.
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`Case 2:16-cv-06178-GAM Document 87 Filed 12/02/19 Page 14 of 22
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`Neither party is convincing as to how the PVAs operate in the context of this dispute.
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`Pearson and Corbis have enjoyed a business relationship since at least 1997 during which they
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`entered a series of PVAs—in 2001, 2004, and 2007—which Pearson contends are “master
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`licensing agreements that governed Pearson’s use of images obtained from Corbis.” Decl. of
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`Elaine Soares-Ferreira, ECF 59-20, ¶ 6. Importantly, each PVA attaches and incorporates a set
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`of terms and conditions that set forth particular limits on Pearson’s uses of the photographs it
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`obtains from Corbis, which would certainly support a conclusion that use beyond authorized
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`limits constitutes copyright infringement. See, e.g., Ex. A to Decl. of Elaine Soares-Ferreira,
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`ECF 59-21, at 3. Although the PVAs provide a schedule of prices tied to certain levels of usage,
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`the language of the agreements is insufficient to show, as a matter of law, that they permit the
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`kind of unlimited, pay-as-you-go usage that Pearson claims they do. In fact, to the extent they
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`clearly require anything, it is that Pearson request and license a certain dollar amount worth of
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`images and services from Corbis in exchange for favorable pricing on those transactions. See,
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`e.g., Ex. A to Decl. of Elaine Soares-Ferreira, ECF 59-21, at 3. Moreover, the presence of the
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`terms and conditions attached to the PVAs as well as the license terms incorporated into each
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`invoice cast further doubt on Pearson’s position.
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`In support of its position, Pearson cites to a recent district court decision, Pelaez v.
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`Pearson Education, 2019 WL 6211261 (D.N.J. Nov. 21, 2019), holding that the PVAs
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`unambiguously gave Pearson licenses to use Corbis photos without prior authorization so long as
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`they paid the requisite fee. I do not find similar clarity on the record before me.
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`As the moving party Pearson bears the burden of showing the absence of any disputed
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`issue of fact and an entitlement to judgment as a matter of law. It has not succeeded in doing so.
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`Case 2:16-cv-06178-GAM Document 87 Filed 12/02/19 Page 15 of 22
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`4. Validity of Copyright Registrations
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`Pearson contends that it is entitled to summary judgment on 21 claims as to which the
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`underlying registrations are facially defective because they (1) fail to specify that Krist is an
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`author; and (2) fail to identify the title of the photos being submitted. The undisputed facts show
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`that Krist entered an agreement with Corbis in which he agreed to assign to Corbis his copyright
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`in the photos for the express purpose of having Corbis register them, after which Corbis would
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`assign the rights back to Krist. See Krist Decl. to Pl. Mot. for Summ. J., ECF 57, at ¶ 5; 001896.
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`When Corbis registered the photos, it listed itself as the author without also providing Krist’s
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`name, and it failed to provide titles for each