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

United States District Court, D. Colorado

March 19, 2014



PHILIP A. BRIMMER, District Judge.

This matter is before the Court on a Motion for Summary Judgment filed by defendant Pearson Education, Inc. ("Pearson") [Docket No. 52]. This Court has subject matter jurisdiction to decide this motion pursuant to 28 U.S.C. § 1331.


Viesti Associates, Inc. ("Viesti") is a stock photograph agency based in Durango, Colorado that licenses photographs to publishers. Docket No. 58 at 4, ¶ A. Pearson publishes educational textbooks and is incorporated in Delaware. Docket No. 50 at 1-2, ¶ 3. Between 1990 and 2009, photographer Wolfgang Kaehler granted Pearson limited licenses to reproduce his photographs in various educational publications. Docket No. 58 at 4, ¶ B. Pearson's compliance with the terms of those licenses forms the basis of this suit. Docket No. 1.

Viesti became involved in copyright litigation against Houghton Mifflin Harcourt Publishing ("Houghton"). After noticing that Mr. Kaehler licenced photographs to Houghton, Viesti contacted Mr. Kaehler about the possibility of joining the case. Docket No. 52 at 3, ¶ 4; Docket No. 52-4 at 5, 89:2-18.

On January 15, 2010, Mr. Kaehler signed the Copyright Assignment and Accrued Causes of Action Agreement (the "First Assignment") which stated:

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.

Docket No. 52-6. The sole purpose of this assignment was to allow Viesti to represent Mr. Kaehler in a lawsuit against Houghton. Docket No. 52 at 4, ¶ 7; Docket No. 58 at 3, ¶ 7. The Assignment covered only those photographs that Mr. Kaehler licensed to Houghton. Docket No. 58 at 4, ¶ D.[2]

On March 15, 2010 Mr. Kaehler and Viesti entered into the Photographers Non-Exclusive Agency Agreement (the "Agency Agreement"), which provided Viesti with the right to license and sell Mr. Kaehler's digital files and to initiate and settle lawsuits related to Viesti's use of the files. Docket No. 58 at 5, ¶ E. The agreement stated that Mr. Kaehler was the "sole and exclusive owner of all digital files delivered to [Viesti], now and in the future." Docket No. 52-8 at 2, ¶ 1.

Viesti claims that, upon realizing that Pearson may have infringed on Mr. Kaehler's copyrights to the photographs at issue in this case (the "Pearson Photographs"), Mr. Kaehler transferred the applicable copyrights to Viesti. Docket No. 58 at 5, ¶ G. Viesti claims that this was done in a November 26 and 27, 2010 email exchange (the "email exchange") wherein Mr. Kaehler sent Viesti a spreadsheet identifying the Pearson Photographs. Docket No. 58 at 5, ¶ H; see Docket No. 58-3 at 15-35. Mr. Viesti and Mr. Kaehler stated that they believed that the Pearson Photographs would be subject to the First Assignment and Agency Agreement without the need for additional documentation and that it was their intent to assign to Viesti copyrights to the Pearson Photographs. Docket No. 58-1 at 2, ¶ 5; Docket No. 58-3 at 2, ¶ 8.

Pearson disputes that the November 2010 email exchange effectuated a transfer of rights and argues that Mr. Kaehler's statements to that effect are contradicted by his deposition testimony. Docket No. 72 at 3, ¶¶ G, I.[3] Pearson asserts that the November 2010 spreadsheet was part of the process of creating Exhibit 1 to the Complaint [Docket No. 1-1] as evidenced by the fact that the email and spreadsheet were originally withheld as work product. Id.

On January 6, 2012, Mr. Kaehler signed an "Addendum to Copyright Assignment and Accrued Causes of Action Agreement" (the "Addendum") which reiterated an intention to convey "the copyrights and claims so that Viesti has legal standing to enforce copyrights in the Images." Docket No. 52-11. The parties disagree as to the purpose of the Addendum. Mr. Kaehler's affidavits state that his intent throughout was to "transfer the necessary copyrights and claims to Viesti... and give Viesti legal standing to bring copyright infringement claims, relating to the [Pearson Photographs]." Docket No. 58-3 at 2, ¶ 8. However, in his deposition, Mr. Kaehler stated that he understood the Addendum to clarify, but not expand, already existing rights. Docket No. 52-2 at 16-17, 125:14-126:10.

On June 1, 2012, Viesti filed this action bringing claims against Pearson for copyright infringement, contributory copyright infringement, and a claim for copyright infringement against John Doe Printers 1-10. Docket No. 1. Viesti claims that Pearson had only limited licenses for Mr. Kaehler's photographs, and that Pearson exceeded the terms of the limited licenses. Docket No. 58 at 1.

On March 6, 2013, Viesti and Mr. Kaehler signed a document entitled "Copyright and Accrued Causes of Action Assignment" (the "Second Assignment") which stated, in relevant part, that Mr. Kaehler was assigning to Viesti "co-ownership of the copyrights in the Images not previously assigned to Viesti." Docket No. 52-12.

On June 25, 2012, Pearson filed a Motion to Dismiss, arguing that Viesti lacked standing to sue for copyright infringement. Docket No. 12. 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. 45. Pearson filed a Motion for Summary Judgment on the issue of standing [Docket No. 52], which is the motion now before the Court.


Summary judgment is warranted under Federal Rule of Civil Procedure 56 when 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 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986). A disputed fact is "material" if under the relevant substantive law it is essential to proper disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001). Only disputes over material facts can create a genuine issue for trial and preclude summary judgment. Faustin v. City & Cnty. of Denver, 423 F.3d 1192, 1198 (10th Cir. 2005). An issue is "genuine" if the evidence is such that it might lead a reasonable jury to return a verdict for the nonmoving party. Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir. 1997).

However, "[w]hen, as in this case, the moving party does not bear the ultimate burden of persuasion at trial, it may satisfy its burden at the summary judgment stage by identifying a lack of evidence for the nonmovant on an essential element of the nonmovant's claim." Bausman v. Interstate Brands Corp., 252 F.3d 1111, 1115 (10th Cir. 2001) (quoting Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 671 (10th Cir. 1998)) (internal quotation marks omitted). "To prevail at summary judgment on standing grounds, the defendant must show that the record is devoid of evidence raising a genuine issue of material fact that would support the plaintiff's ultimate burden of proving standing." Day v. Bond, 500 F.3d 1127, 1132 (10th Cir. 2007). "Once the moving party meets this burden, the burden shifts to the nonmoving party to demonstrate a genuine issue for trial on a material matter." Concrete Works of Colo., Inc. v. City & Cnty. of Denver, 36 F.3d 1513, 1518 (10th Cir. 1994) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986)). The nonmoving party may not rest solely on the allegations in the pleadings, but instead must designate "specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324; see Fed.R.Civ.P. 56(e). "To avoid summary judgment, the nonmovant must establish, at a minimum, an inference of the presence of each element essential to the case." Bausman, 252 F.3d at 1115 (citing Hulsey v. Kmart, Inc., 43 F.3d 555, 557 (10th Cir.1994)). "In applying this standard, we view all facts and any reasonable inferences that might be drawn from them in the light most favorable to the nonmoving party." Henderson v. Inter-Chem Coal Co., Inc., 41 F.3d 567, 569 (10th Cir. 1994).

Where, as here, the issue of standing is raised on a motion for summary judgment, "to prevail on such a motion a plaintiff must establish that there exists no genuine issue of material facts as to justiciability.'" Essence, Inc. v. City of Federal Heights, 285 F.3d 1272, 1280 (10th Cir. 2002) (quoting Dep't of Commerce v. U.S. House of Representatives, 525 U.S. 316, 329 (1999)). Plaintiff must support its allegations "with the manner and degree of evidence required at the [summary judgment] stage[] of the litigation." Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992).


A. The Copyright Act

Under the Copyright Act of 1976, Congress granted copyright owners the ...

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