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Viesti Associates, Inc. v. Pearson Education, Inc.

United States District Court, D. Colorado

March 19, 2014

VIESTI ASSOCIATES, INC., Plaintiff,
v.
PEARSON EDUCATION, INC., Defendant.

ORDER

PHILIP A. BRIMMER, District Judge.

This matter is before the Court on Defendant's Motion for Summary Judgment [Docket No. 100] filed by defendant Pearson Education, Inc. ("Pearson"). This Court has subject matter jurisdiction to decide this motion pursuant to 28 U.S.C. § 1331.

I. BACKGROUND[1]

Viesti Associates, Inc. ("Viesti") is a stock photograph agency based in Durango, Colorado that licenses photographs to publishers. Docket No. 109 at 5, ¶ 1. Pearson publishes educational textbooks and is incorporated in Delaware. Docket No. 96 at 2, ¶ 3. Between 1995 and 2010, Pearson was granted limited licenses to reproduce certain photographs (the "Pearson Photographs"). Id. at 6, ¶ 19; see also Docket Nos. 96-1, 96-2, 96-3, 96-4. Viesti's claims arise out of allegations that Viesti owns the copyright to these photographs and that Pearson exceeded the scope of its limited licenses. Docket No. 96 at 6, ¶ 20.

The Pearson Photographs consist of images authored by various photographers and which were licensed to Pearson by four entities. Docket No. 96 at 2-3, ¶ 7. The photographs listed in Exhibit A to the Second Amended Complaint were authored by Peter Bennett, Martha Cooper, Joseph Englander, Nadine Frank, Joe Gillespie, G. William Gleasner, Alan Kearney, Craig Lovell, Dan Peha, Kevin Vandivier, Joseph Viesti, and Robert Winslow (collectively, the "Exhibit A Photographers").[2] See Docket No. 96-1. Viesti licensed to Pearson the photographs listed in Exhibit A. Docket No. 109 at 5, ¶ 2. Daniel J. Cox, owner of Natural Exposures, Inc., authored the photographs listed in Exhibit B to the Second Amended Complaint. See Docket No. 96-2. Mr. Cox licensed to Pearson the photographs listed in Exhibit B. Docket No. 109 at 7, ¶ 7. Bryan and Cherry Alexander, owners of Arctic Photo, authored the photographs listed in Exhibit C to the Second Amended Complaint. See Docket No. 96-3. Bryan and Cherry Alexander licensed to Pearson the photographs listed in Exhibit C. Docket No. 109 at 8, ¶ 12. Various photographers authored the photographs listed in Exhibit D to the Second Amended Complaint. See Docket No. 96-4. Art Directors & Trip Photo Library ("Trip"), owned by Helene Rogers and Robert Turner, licensed to Pearson the photographs listed in Exhibit D.[3] Docket No. 109 at 10, ¶ 17. Viesti did not author any of the Pearson Photographs.[4] See Docket Nos. 96-1, 96-2, 96-3, and 96-4. Viesti claims that it acquired an ownership interest in the Pearson Photographs by virtue of multiple written agreements between Viesti and the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip.

Between 2009 and 2011, the Exhibit A Photographers, as well as Mr. Cox, Bryan and Cherry Alexander, and Trip, each executed a Copyright Assignment and Accrued Causes of Action Agreement (the "First Assignments") with Viesti. See generally Docket No. 100-7. The First Assignments state:

The undersigned photographer, the sole owner of the copyrights in the undersigned's images ("the Images") selected by Viesti Associates, Inc. ("Viesti") and now included in Viesti's collection, hereby grants to Viesti all copyrights and complete legal title in the Images. Viesti agrees to reassign all copyrights and complete legal title back to the undersigned immediately upon resolution of infringement claims brought by Viesti relating to the Images.
The undersigned agrees and fully transfers all right, title and interest in any accrued or later accrued claims, causes of action, choses in action - which is the personal right to bring a case - or lawsuits, brought to enforce copyrights in the Images, appointing and permitting Viesti to prosecute said accrued or later accrued claims, causes of actions, choses in action or lawsuits, as if it were the undersigned.

Id. at 3. With two exceptions, [5] the First Assignments contain identical terms. The First Assignment is silent as to which individual photographs it applies to; however, the parties agree that the First Assignment was executed so that Viesti could pursue claims against Houghton Mifflin Harcourt Publishing Company ("Houghton"). Docket No. 109, at 6, 7, 9, 11, ¶¶ 5, 10, 15, 21. Specifically, the photographers state, "I intended to assign to Viesti copyrights and accrued causes of action for certain photographs in order for Viesti to pursue claims related to those photographs against [Houghton]." See, e.g., Docket No. 109-13 at 2, ¶ 7. The photographers also state that "[i]t was my understanding that the First Assignment... would apply to the Pearson Photographs." Id. at 2, ¶ 8. Pearson disputes that the First Assignment was applicable to the Pearson Photographs. Viesti's litigation against Houghton involved three different cases; two of them were closed on October 27, 2010. Docket No. 100 at 9 n.3.

Between 1988 and 2010, the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip each executed a Photographers Non-Exclusive Agency Agreement (the "Agency Agreements") with Viesti. See generally Docket No. 100-2. The Agency Agreements state, in relevant part:

1. I, the undersigned certify and warrant that I am the sole and exclusive owner of all negatives, prints, positives, original color transparencies, duplicates, stories, motion picture films, text information, and other photographic materials delivered to you, now and in the future. I appoint you as a non-exclusive Agent and representative in respect of the leasing and sale of said materials throughout the world. All negotiations shall be at your discretion without prior consultation with me, except when outright purchase of originals is to be negotiated.
2. The compensation for your services (VIESTI ASSOCIATES, INC.) (VA) shall be fifty percent (50%) of the total sum billed and collected by you for the duration of our working relationship....
3. In the event of... the unauthorized use of original color transparencies, negatives, prints, or motion pictures films by your client, I give you full and complete authority to make claims or institute suit, in your name if necessary, without further permission from me.

Docket No. 100-2 at 8. The Agency Agreements further state that each agreement shall run for five years with automatic renewal. Id. at 10, ¶ 15. The language of the Agency Agreements executed by the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip is substantively similar.[6]

On December 3, 2010, Mr. Cox' representative emailed to Viesti a spreadsheet containing the photographs Mr. Cox licensed to Pearson. Docket No. 134-7 at 2. On January 17, 2011, Mr. Turner, on behalf of Trip, emailed to Viesti a similar spreadsheet. Docket No. 134-11 at 2. On January 19, 2011, Cherry Alexander also emailed to Viesti a spreadsheet pertaining to the Pearson Photographs. Docket No. 134-10 at 2. Viesti claims that, by emailing Viesti a spreadsheet identifying specific photographs licensed to Pearson, Mr. Cox, Bryan and Cherry Alexander, and Trip assigned to Viesti copyrights in the Pearson Photographs. Docket No. 109 at 7-11, ¶¶ 10, 15, 21. Pearson disputes that the act of emailing a spreadsheet was sufficient to transfer to Viesti any interest in the Pearson Photographs.

On June 28, 2011, Viesti filed this case, bringing claims against Pearson for copyright infringement, common law fraud, and fraudulent concealment. Docket No. 1 at 8-10. Viesti later dropped its claims for common law fraud and fraudulent concealment. See Docket No. 63.

Between January and March 2012, the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip each executed an Addendum to Copyright Assignment and Accrued Causes of Action Agreement (the "Addenda"). See generally Docket No. 100-13. The Addenda state:

The undersigned previously assigned copyrights and accrued claims in the undersigned's images ("the Images") to Viesti Associates, Inc. ("Viesti"). Viesti agreed to reassign all copyrights and complete legal title back to the undersigned immediately upon resolution of infringement claims relating to the Images.
For avoidance of doubt, it was and is the intention of the undersigned to convey to Viesti, fully and without reservation, the copyrights and claims so that Viesti has legal standing to enforce copyrights in the Images. If any provision of the previous assignment is deemed to be inconsistent with Viesti's standing to bring claims, such provision is void and shall have no effect.

Id. at 3.

Pearson filed a Motion to Dismiss, arguing that Viesti lacked standing to sue for copyright infringement. Docket No. 70. On March 26, 2013, the Court denied Pearson's Motion to Dismiss, refusing to consider documents attached to Pearson's motion, but granting Pearson leave to file a motion for summary judgment on the issue of standing. Docket No. 92. The Court directed Viesti to file an amended complaint identifying each photograph with the document assigning Viesti the exclusive right of ownership to the particular photograph and the date of such assignment. Id. at 9.

In March 2013, the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip each executed a Copyright and Accrued Causes of Action Assignment ("Third Assignments"). Docket No. 100-15. The Third Assignments purport to assign "Viesti co-ownership of the copyrights in the Images not previously assigned to Viesti [and] copyrights in the Images previously assigned to Viesti." Id. at 3. The Third Assignments also state: "Viesti agrees to reassign all copyrights back to Photographer upon resolution of claims brought by Viesti relating to the Images." Id. Around the time the Third Assignments were executed, the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip each signed declarations (the "declarations"). See, e.g., Docket No. 109-13 at 1. The declarations state, in identical language, that the declarants' intention "was and is to transfer the necessary copyrights and claims to Viesti, give Viesti licensing rights..., and give Viesti legal standing to bring copyright infringement claims." See, e.g., id. at 2, ¶ 9. With the exception of Mr. Viesti's declaration [Docket No. 109-8], the declarations' language varies only as to the date each declarant executed agreements at issue. Cf. Docket No. 109-14.

On April 16, 2013, Viesti filed a Second Amended Complaint. Docket No. 96. In addition to attaching Exhibits A, B, C, and D listing each photograph by copyright registration number and photographer, Viesti attached the declarations, the First Assignments, Agency Agreements, Addenda, and Third Assignments executed by Viesti and the Exhibit A Photographers, Mr. Cox, Bryan and Cherry Alexander, and Trip. See Docket Nos. 96-1 through 96-17. Viesti's Second Amended Complaint does not otherwise identify each photograph with date of assignment or the document assigning Viesti the exclusive right of ownership to the particular photograph.

On May 20, 2013, Pearson filed a Motion for Summary Judgment on the issue of standing [Docket No. 100], which is the motion now before the Court. Pearson claims that Viesti lacks standing for several reasons. First, Pearson argues that the First Assignments pertained only to photographs licensed to Houghton and not to the Pearson Photographs. Docket No. 100 at 9. Second, Pearson argues that the Addenda and Third Assignments were executed after this case was filed and, as such, are insufficient to confer standing on Viesti. Id. at 10. Third, Pearson argues that the Agency Agreements only transferred to Viesti a non-exclusive right to license photographs. Id. at 14. Viesti responds that the various agreements transferred to Viesti beneficial co-ownership of copyrights to the Pearson Photographs. Docket No. 109 at 14. Viesti also argues that the various ...


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