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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
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` Civ. No. 2:18-cv-16678-KM-MAH
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` OPINION
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`STOCKFOOD AMERICA, INC.,
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`ADAGIO TEAS, INC.,
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`MCNULTY, U.S.D.J.:
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`Plaintiff,
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`v.
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`Defendant.
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`The plaintiff, Stockfood America, Inc. (“Stockfood”) alleges that the defendant,
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`Adagio Teas, Inc. (“Adagio”) infringed its copyrights in two photographic images by
`posting the images to its website. Stockfood seeks summary judgment as to the two
`essential elements of a copyright infringement claim (ownership of a valid copyright
`and infringement by defendant), and also as to whether Adagio’s alleged
`infringement was willful. Adagio opposes each aspect of the motion. For the reasons
`stated herein, Stockfood’s motion will be granted as to ownership and infringement,
`but denied as to willfulness, which poses issues of fact.
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`1
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`I. Background1
`Defendant Adagio operates a website that provides news and other content
`related to tea. (PSMF ¶ 5).2 Plaintiff Stockfood is a photographic agency which
`maintains a database of stock food images, videos, and other features that it
`licenses to third parties. (PSMF ¶ 1).
`A. Agency Agreement and Addendum
`As relevant here, Stockfood acts as a licensing agent for multiple
`photographers. Stockfood obtains the images that are its stock in trade from
`photographers, with whom it enters into standard agreements, entitled
`“Photographer’s Image–Exclusive Agency Agreement” (the “Agency Agreement”). I
`here summarize one of two relevant agreements, the one between Stockfood (as
`“Agency”) and Pete Eising (as “Photographer”). (DE 20-2 at 1–9).3 It begins with a
`statement of purpose:
`The Photographer is in the business of creating Photographs. The
`Agency is in the business of licensing Photographs. The Photographer
`and the Agency have determined that it is in their mutual interest to
`enter into this Agreement in order to appoint the Agency to represent
`the Photographer for the licensing of the Photographer's Photographs
`
`
`1
`For purposes of this motion, I consider the parties’ statements of material facts, as
`well as the deposition testimony and documentary evidence. Facts not contested are
`assumed to be true.
`Certain record items will be cited as follows:
`PSMF = Plaintiff Stockfood’s statement of material facts (DE 18-2)
`DRSMF = Defendant Adagio’s responsive statement of material facts (DE 21)
`Pl. Br. = Plaintiff Stockfood’s brief in support of summary judgment (DE 19-1)
`Def. Br. = Defendant Adagio’s brief in opposition to summary judgment (DE 20).
`
`Reply Br. = Plaintiff Stockfood’s reply brief (DE 24)
`
`Plaintiff claims that this website was used to promote Adagio’s tea business. (PSMF ¶
`2
`7). Adagio disputes this, claiming that the website in question, teamuse.com, does not
`generate revenue, and does not feature any products sold by Adagio. (DRSMF ¶ 7). That
`dispute is not material to this motion.
`3
`The other relevant agreement, with photographer Rita Maas, is substantially
`identical. (DE 20-2 at 10–14).
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`2
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`upon such reasonable terms and conditions that the Agency can
`arrange and in accordance with, as set forth in this document.
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`(Agency Agreement, DE 20-2 at 1).
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`The next section specifies the categories of authority that are granted to the
`Agency. The most pertinent categories are these:
`1. GRANT OF AUTHORITY:
`(a) Appointment: The Photographer hereby appoints the Agency,
`and the Agency hereby accepts such appointment, as the
`Photographer's exclusive agent worldwide with respect to licensing the
`Photographs submitted to the Agency by the Photographer. . . .
`(c) Restriction on Competition: The Photographer shall be
`entitled to engage in assignment photography for his own account, but
`Photographer agrees, as a material condition of this agreement, not to
`sell or license any Photographs directly to any clients introduced either
`to the Photographer, or to his Photographs, by the Agency. . . .
`(d) Discretion As to Prices: The Photographer grants the Agency
`the right to determine, in its complete and sole discretion, the terms,
`conditions and pricing of Photographs licensed to its clients, except in
`the event of an outright purchase, in which case the Agency agrees to
`consult with the Photographer prior to completing such transaction.
`(e) Discretion As to Lawsuits: The Agency shall have the sole
`authority to determine if, and when, any legal action shall be pursued
`in regard to the Photographs, whether for copyright infringement, loss,
`damage or any other reason, and shall have complete discretion
`regarding its choice of attorney. Settlements shall be not subject to the
`Photographer's prior approval. After deduction of legal expenses, all
`funds recovered shall be divided in the same manner as set forth in
`Paragraph 6.
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`(Id. § 1).
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`Stockfood obligates itself to use best efforts to exploit the photographs by
`licensing them and collecting licensing fees:
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`5. OBLIGATIONS OF AGENCY:
`(a) Licensing: [Agency] shall use its best efforts to license the
`Photographer's Photographs and to charge and receive reasonable fees
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`3
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`for such licensing. Agency will use its best efforts to collect all fees
`charged for licensing the Photographer's Photographs, including the
`retention of an attorney for collection, if it deems it appropriate.
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`(Id. § 5).
`Additional miscellaneous provisions are as follows:
`• Stockfood and the photographer agree to split the net licensing fees 50-
`50. (Id. § 6(a)).
`• Stockfood will have the status of independent contractor. (Id. § 11).
`• The agreement is governed by the law of the State of Maine. (Id. §
`12(d)).
`Each Agency Agreement has the following Addendum, reproduced here in full:
`Stockfood Contract Copyright Addendum
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`As a photographer, under current U.S. law you own the copyright to your
`photographs from the moment you create them. Though registration is not
`required for copyright protection it is a prerequisite before United States
`authors can bring an action for infringement in federal court. If your
`photographs are not registered prior to an act of infringement, you are
`only entitled to seek actual damages, and cannot ask the court for
`statutory damages or attorney's fees. This is significant as actual damages
`may be limited to a license fee where statutory damages, while
`discretionary with the court, range from $750 to $30,000 and can be
`increased if the infringement is considered willful, up to a maximum of
`$150,000.
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`If you have not already registered your photographs with the copyright
`office, StockFood can include these photographs as part of the registration
`of its database of photographs if you agree in writing to assign copyright to
`StockFood. This is solely for the purposes of registration. StockFood must
`have your permission in writing in order to proceed. The copyright will be
`assigned back upon termination or upon request. This will permit
`StockFood to enforce your rights in court, and seek statutory damages and
`attorney's fees. You will not lose any rights. The U.S. Copyright Office,
`together with the Picture Archive Agency of America (PACA) evolved this
`strategy to make the registration of photographs easier for stock
`photography libraries.
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`Please acknowledge your acceptance by signing below:
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`In order to protect photographs offered for license by StockFood, if
`Photographer has not previously registered photographs selected by
`4
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`StockFood, Photographer assigns the copyright to StockFood in all accepted
`Photographs, solely for the purposes of copyright registration. Such
`registration shall be reassigned to Photographer upon request or termination
`of the Agreement. This assignment applies to all previously submitted and
`all Photographs to be submitted under the Agency Agreement.
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`(signed)
`Pete A. Eising
`Photographer
`(Agency Agreement (addendum), DE 20-2 at 9 (italics in original)).
`B. This Dispute
`This litigation concerns two photographs that were allegedly displayed on
`Adagio’s website. Stockfood says it owns the copyright to these images, referred to
`as image 00133615 and image 00645460 (the “Images”). (PSMF ¶ 2). The Images
`are allegedly registered with the United States Copyright Office (“USCO”) under
`Registration Numbers VA 1-341-953 and VA 1-652-320.4 (PSMF ¶ 3; DE 1-2).
`Stockfood further claims that the Images are original works as to which it has
`rights of authorship. (PSMF ¶ 3). Adagio disputes that Stockfood created the
`Images, and disputes that Stockfood holds a valid copyright to them. (DRSMF ¶ 3).
`According to Adagio, Stockfood’s agreements with its photographers do not grant
`Stockfood an ownership interest or exclusive license to any photographs, including
`the Images. (Id.).
`In the spring of 2018, Stockfood contacted Adagio regarding what it perceived
`to be the unauthorized use of the Images on one of Adagio’s websites. (PSMF ¶ 7).
`The initial infringement had occurred ten years before, in 2008.5 (DRSMF ¶ 9).
`Stockfood claims that it did not grant Adagio permission to use the Images. (PSMF ¶
`
`4
`Attached to Stockfood’s complaint are two certificates from the USCO. They both
`describe the “nature of the work” as “database” and the “[n]ew material included in claim”
`as “compilation of photographs.” (DE 1-2 at 2, 4, 5). Stockfood asserts that these two
`Images are included in the database compilations. Adagio disputes that the Images were
`included in the registered “database[s].” (DRSMF ¶ 2).
`5
`Adagio does not directly admit that it was using the Images, but states that, to the
`extent it did use them, it did not do so in connection with generating revenue or promoting
`its products. (DRSMF ¶ 8). Elsewhere it states that after being notified of potential
`infringement, it removed the Images from its website. (DRSMF ¶ 12) I take these statements
`as implying a concession that the Images were on Adagio’s website.
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`5
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`9). While Adagio does not affirmatively claim that it was granted permission, it
`suggests that it would routinely seek such permission. (DRSMF ¶ 9). Its policy, says
`Adagio, has always been to use only licensed images on its websites. Although
`Adagio no longer has records dating back to 2008, it has provided records showing
`that it has followed this policy in other instances. (DRSMF ¶ 9).
`Stockfood notified Adagio of this perceived infringement and attempted to
`charge Adagio licensing fees for the Images. (PSMF ¶12). Adagio claims that it then
`immediately removed the Images from its website and tried to pay the fees, but was
`unable to do so because it received multiple conflicting requests. (DRSMF ¶ 12).
`On November 30, 2018, Stockfood filed a complaint in this Court against
`Adagio, asserting copyright infringement pursuant to 17 U.S.C. § 101, et seq. (DE
`1). On December 13, 2019, it filed the current motion for partial summary judgment
`on the issues of liability and willfulness. (DE 19). Adagio responded on January 6,
`2020 (DE 20). Stockfood replied on January 14, 2020. (DE 24).
`For the reasons below, that motion for summary judgment is granted in part
`and denied in part.
`Legal Standard
`II.
`Federal Rule of Civil Procedure 56(a) provides that summary judgment should
`be granted “if the movant shows that there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
`56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
`Kreschollek v. S. Stevedoring Co., 223 F.3d 202, 204 (3d Cir. 2000). In deciding a
`motion for summary judgment, a court must construe all facts and inferences in
`the light most favorable to the nonmoving party. See Boyle v. Cty. of Allegheny Pa.,
`139 F.3d 386, 393 (3d Cir. 1998). The moving party bears the burden of
`establishing that no genuine issue of material fact remains. See Celotex Corp. v.
`Catrett, 477 U.S. 317, 322–23 (1986). “[W]ith respect to an issue on which the
`nonmoving party bears the burden of proof . . . the burden on the moving party may
`be discharged by ‘showing’—that is, pointing out to the district court—that there is
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`an absence of evidence to support the nonmoving party’s case.” Celotex, 477 U.S. at
`325.
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`Once the moving party has met the threshold burden, the non-moving party
`“must do more than simply show that there is some metaphysical doubt as to
`material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
`586 (1986). The opposing party must present actual evidence that creates a genuine
`issue as to a material fact for trial. Anderson, 477 U.S. at 248; see also Fed. R. Civ.
`P. 56(c) (setting forth types of evidence on which the nonmoving party must rely to
`support its assertion that genuine issues of material fact exist). In deciding a
`motion for summary judgment, the court’s role is not to evaluate and decide the
`truth of the matter, but to determine whether there is a genuine issue for
`trial. Anderson, 477 U.S. at 249. Credibility determinations are the province of the
`fact finder. Big Apple BMW, Inc. v. BMW of N. Am., Inc., 974 F.2d 1358, 1363 (3d
`Cir. 1992).
`III. Discussion
`The Copyright Act of 1976 (the “Act”) provides that “[t]he legal or beneficial
`owner of an exclusive right under a copyright is entitled, . . . to institute an action
`for any infringement of that particular right committed while he or she is the owner
`of it.” 17 U.S.C. § 501. The Act enumerates six activities, including reproduction,
`transfer, and public display of the copyrighted work, that the copyright owner has
`the exclusive right “to do” and “to authorize.” 17 U.S.C. § 106.6 “Anyone who
`
`
`6
` Subject to sections 107 through 122, the owner of copyright under this title has the
`exclusive rights to do and to authorize any of the following:
`(1) to reproduce the copyrighted work in copies or phonorecords;
`(2) to prepare derivative works based upon the copyrighted work;
`(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;
`(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;
`(5) in the case of literary, musical, dramatic, and choreographic works,
`pantomimes, and pictorial, graphic, or sculptural works, including the
`7
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`violates any of the exclusive rights of the copyright owner, that is, anyone who
`trespasses into [the owner’s] exclusive domain by using or authorizing the use of
`the copyrighted work . . . is an infringer of the copyright.” Sony Corp. of Am. v.
`Universal City Studios, Inc., 464 U.S. 417, 433, 104 S. Ct. 774 (1984) (quotation and
`citation omitted).
`A claim for copyright infringement involves two “essential elements:
`ownership of copyright, and copying by the defendant.” Dam Things from Denmark,
`a/k/a Troll Company ApS v. Russ Berrie & Company, Inc., 290 F.3d 548, 561 (3d
`Cir. 2002) (citing Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222,
`1231 (3d Cir. 1986)); see also Winstead v. Jackson, 509 Fed. App’x 139, 143 (3d Cir.
`2013) (stating that “[t]o establish a claim of copyright infringement, the plaintiff
`must establish ownership of a valid copyright, and unauthorized copying of
`protectable elements of the plaintiff’s work.”).
`Adagio challenges both elements. Part III.A addresses whether Stockfood
`possesses an ownership interest in the Images sufficient to confer standing to sue
`for copyright infringement. Part III.B addresses whether Adagio copied the Images.
`As to these issues, there seem to be few facts in dispute; the parties disagree
`primarily about the legal implications of the Agency Agreements, and I resolve those
`legal issues in Stockfood’s favor.
`Part III.C considers a third issue: whether the infringement was “willful,”
`which would allow for enhanced statutory damages. As to this issue, I find that
`issues of fact stand in the way of summary judgment.
`A. Ownership of Copyright/Standing to Assert Infringement
`I first consider the element of ownership, in which I include the closely
`related issue of standing to sue for infringement. Stockfood points to the Agency
`Agreements and the USCO certificates of registration as prima facie evidence that it
`
`individual images of a motion picture or other audiovisual work, to display
`the copyrighted work publicly; and
`(6) in the case of sound recordings, to perform the copyrighted work publicly
`by means of a digital audio transmission.
`17 U.S.C. § 106.
`
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`owns a valid copyright to the Images.7 Adagio responds that only holders of
`exclusive copyright-law-based rights to the Images may bring an infringement suit,
`and that Stockfood’s rights are not exclusive.
`A multi-hued word, “exclusive”; in and around copyrights, it is used in at
`least two senses. Sense # 1: When I say I possess “exclusive” rights in Ms.
`Copyright Owner’s copyright, I may mean that I have the right to exclude others
`from using the copyrighted material (unless, of course, they pay for the privilege).
`Sense # 2: When I say I am Ms. Owner’s “exclusive” agent, I may mean that I am
`the only person in the world occupying that status. Both interrelated senses, often
`conflated, are involved here.
`1. Whether the Agency Agreements conveyed § 106 rights or just a “bare
`right to sue”
`Adagio’s most fundamental argument is that these Agency Agreements do not
`convey any of the statutory rights associated with a copyright at all. What Stockfood
`possesses, on this theory, is no more than a bare right to sue on the photographer’s
`behalf. (Def. Br. at 8). The issue is essentially one of contract interpretation.
`Adagio says the language in these Agency Agreements is too vague to have
`conveyed any right under § 106 of the Act; “While the agreements use the term
`‘exclusive,’ they do not specifically enumerate any of Plaintiff’s exclusive rights to
`the photographs. The agreement is wholly silent as to what Plaintiff has the
`exclusive right to do as the ‘agent’ of the photographers . . . .” (Id. at 7). It is true
`that the Agency Agreements do not cite 17 U.S.C. § 106 or the rights thereunder,
`and surely it would have been better if they had done so. Neither, however, is it fair
`to say that the Agency Agreements are “wholly silent” as to what is being conveyed.
`
`
`7
`Adagio tangentially suggests in its statement of facts that the two Images at issue
`were not necessarily in the database of images that Stockfood submitted to the USCO for
`registration, as described at p. 5 and n. 5, supra. See DRSMF ¶ 2 (“Stockfood has provided
`no evidence that the two photographs were included in the registration of the database or
`compilation listed on Plaintiff’s Copyright Registration Certificates.”). Adagio does not press
`that argument in its brief, however, and it makes little or no difference to the analysis,
`which does not turn on the presumption.
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`The Agreements appoint Stockfood as the photographer’s “exclusive agent
`worldwide with respect to licensing the Photographs.” (Agency Agreement § 1, DE
`20-2 at 2–3, 10). Stockfood agrees to “use its best efforts to license the
`Photographer's Photographs and to charge and receive reasonable fees for such
`licensing.” (Id. § 5(a)). It is authorized to collect such fees from the third-party
`licensees, by legal action if necessary. (Id.). Net fees are split 50-50 between
`Stockfood and the photographer. (Id. § 6(a)).
`Like many agents, Stockfood protects itself against circumvention; if it
`identifies and introduces a customer, the photographer may not then directly
`license to that customer. (Id. § 1(c)). Stockfood has “complete and sole discretion” as
`to the “terms, conditions and pricing of Photographs licensed to its clients.” (Id. §
`1(d)). Indeed, Stockfood may sell the photo outright, subject only to “consultation”
`with the photographer. (Id.) Stockfood has “sole authority” to determine whether to
`take legal action, “whether for copyright infringement, loss, damage or any other
`reason”; to choose an attorney for that purpose; and to enter into settlements,
`which “shall not be subject to the Photographer's prior approval.” (Id. § 1(e)).
`Missing, as I say, are some magic words—i.e., a verbatim recitation of some
`right or rights under § 106 that are being conveyed.8 Most pertinent, in the case of
`photographs, those would be the rights to “reproduce” the work, “to distribute
`copies . . . to the public,” or “to display the copyrighted work publicly.” 17 U.S.C. §
`106(1), (3), (5) (quoted in full at pp. 7–8 & n. 6, supra). Those rights are defined as
`the right “to do” those enumerated actions, and also as the right “to authorize”
`another to do them. 17 U.S.C. § 106. I find that by granting the right to license the
`photographs, the Agency Agreement did clearly, if impliedly, convey rights under
`Section 106 of the Act.
`
`
`8
`Stockfood, perhaps a bit defensively, states that Adagio neglected to conduct
`depositions, but that if it had done so, it could have “explored and understood the
`relationship between the photographers and Plaintiff.” (Reply Br. at 3). By the same token, I
`suppose, Stockfood could have filed an affidavit attesting to such facts, if it believed they
`were important. On this motion, however, the Court is confined to the record the parties
`made.
`
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`When interpreting an agreement purporting to assign copyrights, courts look
`to state contract law. Where, as here, the parties agreed to a choice-of-law clause,
`the courts will construe the agreement under the contract law of the chosen state.9
`The Agency Agreement will therefore be interpreted according to Maine contract law.
`(Agency Agreement § 12(d)).
`Under Maine law, “a contract is to be interpreted to give effect to the intention
`of the parties as reflected in the written instrument, construed in respect to the
`subject matter, motive and purpose of making the agreement, and the object to be
`accomplished.” Coastal Ventures v. Alsham Plaza, LLC, 2010 ME 63, 1 A.3d 416,
`424 (Me. 2010). Whether a contract is ambiguous or unambiguous is a question of
`law; if ambiguous however, its interpretation becomes a question of fact for the
`factfinder. Acadia Ins. Co. v. Buck Constr. Co., 2000 ME 154, 756 A. 2d 515, 517
`(Me. 2000). “Language is considered to be ambiguous if it is reasonably susceptible
`to different interpretations.” Id. (citing Guilford Transp. Indus. V. Pub. Util. Comm’n,
`2000 ME 31, 746 A. 2d 910, 914 (Me. 2000)). Maine courts “interpret language in a
`contract by its ‘generally prevailing meaning.’” Guilford, 746 A.2d 910 at 914
`(quoting Restatement (Second) of Contracts § 202(3)(A) (1981)). Additionally, Maine
`courts “look at the entirety of the contract to see if [an] apparent ambiguity is
`resolved elsewhere in the document.” Id. at 915. Extrinsic “parol” evidence, such as
`an understanding between parties not expressly included in the contract, will be
`barred when the contract is found to be unambiguous. See Rogers v. Jackson,
`2002, ME 140, 804 A.2d 379, 381 (Me. 2002) (“The parol evidence rule operates to
`exclude from judicial consideration extrinsic evidence offered to alter or vary
`unambiguous contractual language.”) (quoting Astor v. Boulos Co., 451 A.2d 903,
`905 (Me. 1982)). Even if some ambiguity is present, a fully integrated agreement
`can operate to bar the consideration of extrinsic evidence. Astor, 451 A.2d at 905.
`
` No argument is made that this Agency Agreement is not fully integrated.
`Indeed, it contains an explicit “Entire Agreement” clause. (§ 12(c)). That Stockfood is
`
`See TD Bank N.A. v. Hill, 928 F. 3d 259, 273-274 (3d Cir. 2019). Although federal
`9
`copyright law creates the rights at stake, state law still controls issues of contract
`interpretation. See John Wiley & Sons, Inc., v. DRK Photo, 882 F.3d 394, 412 (2d Cir. 2018).
`
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`given the right to “authorize” the exercise of rights to reproduce, distribute, or
`display the photos—rights arising from the Copyright Act—is the clear sense of the
`Agency Agreement. Indeed, it is difficult to imagine what else the Agreement could
`mean. The licensing of photographs surely signifies that and nothing else. (See 2
`MILGRIM ON LICENSING § 15.00 (“The copyright grant, usually . . . gives some right to
`‘copy, distribute and prepare derivative works . . . .”)). One can conjure absurd
`alternative interpretations; Stockfood could, I suppose, license the photographs to
`make papier-mache or prop up the short leg of a wobbly table. Such an
`interpretation does not accord with any reasonable interpretation of the parties’
`expressed intent. Licensing of photographs means the licensing of the reproduction,
`distribution, and display of photographs.
`No court has interpreted “photograph licensing” to mean anything else. It
`stands to reason that many copyright holders, such as photographers and
`musicians, are not interested in the day-to-day business of drafting licenses, and
`would rather outsource those functions to another. Courts presuppose, without
`much analysis, that such copyright holders may appoint an “exclusive licensing
`agent.” An oft-cited treatise on copyright law assumes the existence and prevalence
`of “exclusive licensing agents” without declaring that appellation to be a term of art.
`See 3 NIMMER ON COPYRIGHT § 10.03(A)(4) (“[A] license duly executed by the copyright
`owner’s exclusive licensing agent can be treated as the owner’s contract as much as
`if he had executed it in person.”) (quotation omitted). Indeed, Nimmer’s treatise calls
`into question whether the appointment of this agent need even be in writing. See id.
`In sum, courts routinely incorporate the concept of an “exclusive licensing agent”
`which exercises some or all of the principal’s Section 106 rights. When a dispute
`arises, courts generally do not dispute that rights have been conveyed; the issue is
`usually whether, under the relevant agreement, such rights are exclusive.
`Usually, but not always. Adagio provides a counterexample in the form of a
`case, involving an agreement between a photographer and agent, in which the U.S.
`Court of Appeals for the Second Circuit held that the assignment agreements did
`not convey § 106 rights. John Wiley & Sons, Inc., v. DRK Photo, 882 F.3d 394 (2d
`
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`Cir. 2018). Those agreements, however, differed fundamentally from the Agency
`Agreements here; they purported to convey the “right to sue” via a transfer of
`“accrued or later accrued claims, causes of action, choses in action . . . or lawsuits,
`brought to enforce copyrights in the images.” Id. at 402. An agreement assigning a
`bare right to sue, John Wiley held, fails to satisfy the requirement of the Copyright
`Act, which grants standing only to the “legal or beneficial owner of an exclusive
`right under a copyright.” Id. at 404–05 (citing 17 U.S.C. § 501(b)). Rights other than
`those listed in Section 106 of the Act, the court held, are excluded by implication.
`Id. at 405. State law cannot, and federal common law does not, see id. at 407–10,
`operate to the contrary. Because a person who is assigned a mere chose in action,
`or right to sue, has not received any of the six exclusive rights enumerated in
`Section 106, that person lacks standing under the Copyright Act to sue for
`infringement. See 17 U.S.C. § 106 (quoted at pp. 7–8 & n. 6, supra). John Wiley
`thus held that “the Act does not permit a plaintiff assignee to bring a claim for
`infringement without also having or having had a legal or beneficial ownership in
`some exclusive right under part of the allegedly infringed copyright.” Id. at 411.
`The John Wiley court’s analysis demonstrates that those agreements are
`different from the Agency Agreements here. The court discussed two separate sets
`of agreements: the “Representation Agreements” and the “Assignment Agreements.”
`It first held that the Representation Agreements did not convey legal or beneficial
`ownership of an exclusive right under the Copyright Act. The Representation
`Agreements appointed DRK as the photographer’s “agent with respect to the sale or
`leasing of the photographs . . . .” Id. But, critically, “[n]othing in the agreements
`purport[ed] to establish an exclusive principal-agent relationship with respect to
`either photographer or image.” Id. (emphasis added). This, the court noted, was in
`contrast with other agreements DRK had entered into, not at issue in the case,
`which expressly made DRK the “sole and exclusive agent” of the photographers. Id.
`Unlike those Representation Agreements, the Agency Agreements between
`Stockfood and its photographers do expressly provide that the relationship is an
`exclusive one. Stockfood was appointed “as the Photographer’s exclusive agent
`
`
`
`13
`
`

`

`Case 2:18-cv-16678-KM-MAH Document 26 Filed 07/31/20 Page 14 of 27 PageID: 896
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`worldwide with respect to licensing the Photographs submitted to [Stockfood] by the
`Photographer.” (Agency Agreement § 1(a), DE 20-2 at 1).
`John Wiley next considered the Assignment Agreements. While the plain
`language of those agreements stated that all copyrights and legal title were being
`transferred to DRK, they also provided that the copyright would be reassigned back
`to the photographers immediately following resolution of infringement actions. John
`Wiley, 882 F. 3d at 411. The court, applying Arizona contract law, also looked to
`extrinsic evidence regarding the intent of the parties.10 Id. at 413. That extrinsic
`evidence, the court held, showed that the agreements were intended to “convey only
`(1) an interest in the images for [USCO] registration purposes, and (2) the bare right
`to sue for infringement.” Id. The court noted that “[n]either of [those] rights is
`among the exclusive rights set forth in Section 106,” and accordingly, “their transfer
`did not render DRK the owner of an exclusive right.” Id. at 413-414.
`Adagio points to a document that is similar to DRK’s Assignment Agreement
`— the Addendum to the Stockfood Agency Agreement. (DE 20-2 at 9, quoted in full
`at pp. 4–5, supra). The Addendum purports to convey ownership of the copyright to
`Stockfood for purposes of registration, frankly for the purpose of advantage in
`litigation.11 The Addendum assures the photographer, however, that the transfer is
`
`
`10
`Unlike Maine and other states, which allow consideration of extrinsic evidence only
`where there is facial ambiguity, see p. 12, supra, Arizona incorporates a “modified” version
`of the parol evidence rule. That modified rule, applied by Wiley, allows the court to
`“consider extrinsic evidence as a preliminary matter to determine whether ‘the contract
`language is reasonably susceptible to the interpretation asserted by its proponent.’” Id. at
`413 (quoting Taylor v. State Farm M