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Auscape International v. National Geographic Society

November 7, 2006


The opinion of the court was delivered by: Lewis A. Kaplan, District Judge


Freelance photographers and writers who created images or wrote text that appeared in the National Geographic Magazine (the " Magazine ") bring this action against the National Geographic Society ("NGS") and a number of its licensees, including ProQuest Information and Learning Company and ProQuest Company (collectively, the "ProQuest Defendants"). Plaintiffs claim that reproduction of their works as parts of CD-ROM collections of images of past issues of the Magazine violates their rights under the Copyright Act of 1976,*fn1 the Lanham Act,*fn2 and state statutory and common law.

In Auscape International v. National Geographic Society (" Auscape I ")*fn3 this Court granted summary judgment dismissing plaintiffs' copyright infringement claims, to the extent they were based upon the electronic and microform reproductions of plaintiffs' works,*fn4 and their Lanham Act claims. The Court denied dispositive motions by both sides with respect to plaintiffs' state law claims without prejudice to renewal following appellate review of the copyright issue in a parallel case, Faulkner v. National Geographic Society (" Faulkner II ").*fn5 The Second Circuit subsequently affirmed Faulkner II 's holding that defendants' CD-ROM archives of digital images of the Magazine, known as The Complete National Geographic (the "CNG"), were "revisions" of the print publications within the meaning of Section 201(c) of the Copyright Act of 1976*fn6 and therefore did not infringe any copyrights held by freelance photographers and writers whose works first were published, with their consent, in the Magazine*fn7.

The parties now renew their motions for summary judgment as to the state law claims.*fn8 Plaintiffs assert three state law claims against NGS alone: (1) breach of contract, (2) breach of fiduciary duty, and (3) conversion. They assert six state law claims against all defendants: (1) unfair competition, (2) unfair trade practices in violation of California Business and Professions Code § 17200, (3) unjust enrichment, (4) involuntary trust pursuant to California Civil Code §2224, (5) commercial misappropriation in violation of the common law right of privacy, and (6) violation of the right of publicity under California Civil Code §§ 3344 and 3344.1.


Much of the background is set forth in Auscape I and Faulkner II, familiarity with which is assumed. A few words are necessary, however, about the agreements NGS signed with plaintiffs.

Twenty plaintiffs remain in this case,*fn9 some of whom licensed numerous works to NGS and signed numerous agreements. As a result, a plethora of contracts, not all of which contain the same relevant provisions, is at issue. Almost all the agreements, however, fall into two groups: stock photography and assignment agreements.

A. Stock Photography Agreements

The form of contract that governs a particular work depends on how the work was submitted to NGS. In many instances, photographers submitted pre-existing photographs to NGS, which either returned the images or, if it chose to publish them, sent payment. To memorialize such a transaction, NGS wrote a letter acknowledging its purchase of "one-time reproduction rights"*fn10 to the purchased photographs. These letters are referred to as "stock photography agreements."

B. Assignment Agreements

In other instances, NGS commissioned works for the Magazine . In such cases it signed contracts under which freelancers took photographs of (or wrote articles about) specified subject matter.*fn11 The agreements stated that the works produced would be considered "as specially commissioned for use by NGS" and that all the rights, including copyright, were to be "deemed transferred exclusively and indefinitely to NGS."*fn12 These contracts are referred to as "assignment agreements."

Under most of the assignment agreements, NGS collected all the photographs taken on a particular assignment and selected some for publication. Photographs not selected for publication were returned to the photographer and, with the rights in them, became his or her property.*fn13 Under others, NGS agreed to reconvey copyright in assignment photographs to the photographer, but retained the right to "reproduce any photographs from the assignments whether published or unpublished for NGS use or for NGS products."*fn14 Most of the assignment agreements reserved to NGS the right to use the licensed work for "further use," such as "promotional, advertising, or another editorial use," for which the photographer or writer would be paid additional compensation.*fn15

C. The Schofield Agreement

A few Agreements are not Easily Categorized

One is that between NGS and plaintiff Phil Schofield, dated October 20, 1999 (the "October 1999 Agreement"), pertaining to photographs by Schofield that appeared in the May 2000 Magazine (the "May 2000 Works").*fn16 That contract contains a clause permitting NGS to use Schofield's "name and likeness" in connection with the publication of the commissioned works.*fn17

It makes no mention of "further use" but distinguishes between "primary use," for which Schofield would not be compensated further, and "secondary use," for which he would. Primary use under the agreement is limited mainly to original publication in the Magazine and other uses made within ninety days thereof. Secondary use is defined to include use in "anthologies or other collections and compilations of NGM [the Magazine ] or any form in which NGM . . . may be recast, transformed or adapted, in any medium known or hereinafter developed, discovered or created, including but not limited to any form of electronic media."*fn18 Despite the distinctions between primary and secondary use, however, the contract includes the following clause:

"Nothing herein shall be deemed to limit or impair NGS' copyright in any issue of NGM . . . as a collected work in which the Photographs produced under this Agreement appear, and NGS shall have the right to reprint and republish such issue of NGM . . . without further compensation, in any medium now known or hereinafter developed, discovered or created, either singly or in an indexed anthology or in any other type of compilation of issue(s) of NGM."*fn19

The contract provides also that NGS shall not, without Schofield's consent, license the rights in the May 2000 Works to third parties for use in a product that is not made by "NGS, a corporate subsidiary, or licensee of NGS . . . which carries an NGS trademark and over which NGS has final . . . right to review, formulate standards for, or to exercise a veto over the appearance, text, Use or promotion."*fn20 Finally, the contract states that "[t]he original transparencies of all published Photographs will remain at NGS, and NGS will return to you the original transparencies of unpublished photographs."*fn21


Summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.*fn22 Where the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go to the trier of fact on an essential element of the non-movant's claim.*fn23 In that event, the nonmoving party must come forward with admissible evidence*fn24 sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment.*fn25

A court faced with cross-motions for summary judgment need not "grant judgment as a matter of law for one side or the other," but "must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration."*fn26

A. Preemption

Count III of the complaint is a claim for unfair competition. It alleges that defendants are liable for false designation of origin in that defendants' placement of copyright notice on the CNG was an effort to "palm off" plaintiffs' works as their own.*fn27 Count VII alleges unjust enrichment on the theory that defendants were enriched solely by their infringement of plaintiffs' copyrights.*fn28 These claims are identical to claims made in the Faulkner case. This Court there held that such claims are preempted by Section 301 of the Copyright Act because they ultimately reduce to claims of copyright infringement.*fn29 Plaintiffs' claims, therefore, are preempted as well.

B. Statutes of Limitations

Defendants argue that statutes of limitations have run as to all claims save those pertaining to the May 2000 Works.*fn30 The first question is which statutes of limitations apply.

1. Choice of Law

A federal court adjudicating state law claims ordinarily applies the substantive law of the forum state.*fn31 If a case is transferred pursuant to 28 U.S.C. § 1404(a),*fn32 however, the law of the transferor court applies.*fn33 This action was filed in the Central District of California*fn34 before being transferred to this Court pursuant to Section 1404(a). Accordingly, this Court applies California law.

California applies the governmental interest approach to conflict of law issues.*fn35 Choice of law depends on "an analysis of the respective interests of the states involved."*fn36 Where the conflict concerns a statute of limitations, the governmental interest approach generally leads California courts to apply California law.*fn37 "An action will not be maintained if it is barred by the statute of limitations of the forum"*fn38 because a "state has a substantial interest in preventing the prosecution in its courts of claims which it deems to be 'stale.'"*fn39 This led the Ninth Circuit to conclude, subject to rare exceptions not relevant here, that California courts will dismiss a ...

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