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Lefkowitz v. John Wiley & Sons, Inc.

United States District Court, S.D. New York

June 2, 2014

JOHN WILEY & SONS, INC., Defendant.



Plaintiff Lester Lefkowitz claims copyright infringement, contributory copyright infringement, and breach of contract against Defendant John Wiley & Sons, Inc., based on Defendant's alleged use of Plaintiff's photographs beyond the scope of Defendant's licenses and without Plaintiff's authorization.[1] Defendant has moved, pursuant to Federal Rule of Civil Procedure 12(c), to dismiss all of Plaintiff's claims for failure to state a claim; to dismiss Plaintiff's infringement claims to the extent those claims are barred by the statute of limitations; and to dismiss Plaintiff's breach of contract claim for lack of standing.

For the reasons set forth in the remainder of this Opinion, Defendant's motion is granted in part and denied in part. Specifically, because there are insufficient facts before the Court to determine whether Plaintiff's infringement claims are barred by the statute of limitations, Defendant's motion in this regard is denied. Defendant's motion to dismiss Plaintiff's copyright infringement claim is likewise denied because Plaintiff has sufficiently pleaded this cause of action. Conversely, because Plaintiff has failed adequately to plead a claim for contributory copyright infringement, Defendant's motion to dismiss that claim is granted. Finally, Plaintiff is estopped from asserting his breach of contract claim in the instant case because a United Stated District Court in the District of Massachusetts has already held that Plaintiff lacks standing to assert this claim.


A. Plaintiff's Photographs and Licensing Relationships

Plaintiff Lefkowitz is an independent professional photographer residing in New York. (FAC ¶ 2). Plaintiff is the owner of an exclusive right under the copyright laws in the photographs displayed in Exhibit 1 to Plaintiff's FAC (the "Lefkowitz Images"). ( Id. at ¶ 8, Ex. 1). The Lefkowitz Images have been registered with the United States Copyright Office. ( Id. at ¶ 9).

On or about June 23, 1997, and July 27, 2000, Plaintiff entered into agreements (the "TSM Agreements") with The Stock Market ("TSM"), a stock-photograph licensing agency. (FAC ¶ 10). The TSM Agreements authorized TSM to issue limited licenses for use of the Lefkowitz Images by third parties, in exchange for "reasonable license fees." ( Id. ). The TSM Agreements also appointed TSM as Plaintiff's "exclusive agent... with respect to the licensing of [his] stock images[, ]" and specified that TSM would not license any images "on a buy-out or exclusive basis" without prior consent. ( Id. at ¶ 11, Ex. 2 ¶ 1(d), Ex. 3 ¶ 1(d)).

On March 23, 2000, the TSM Agreements were assigned to Corbis Corporation ("Corbis"), another company that licenses the rights to photographs and other media. (FAC ¶ 12, Ex. 4). Plaintiff acceded to that assignment "with the understanding that all the terms and conditions of [his] current contract with [TSM would] remain in full force and effect." ( Id. ). Under the relevant agreements, both TSM and Corbis were required to pay to Plaintiff a portion of the fees that they received for licensing Plaintiff's images. ( Id. at ¶ 43).

Plaintiff also subsequently entered into a Photographer Representation Agreement with Corbis dated February 12, 2003 (the "Representation Agreement"), pursuant to which Corbis was authorized to grant third parties limited-use licenses for Plaintiff's photographs. (FAC ¶ 13, Ex. 5). The Representation Agreement also provided:

Corbis, in its sole discretion and without obligation to do so, shall have full and complete authority to make and settle claims or to institute proceedings in Corbis' or your name but at Corbis' expense to recover damages for Accepted Images lost or damaged by customers or other parties and for the unauthorized use of Accepted Images.... Any recovery, after payment of all costs and expenses including outside attorneys' fees, shall be treated as Revenue and you shall receive the appropriate royalty, or 100% in the case of lost/damages images. Following your notification, if Corbis declines to bring such a claim within sixty (60) days, we shall notify you, and you may bring actions in your own name at your own expense and retain all recoveries.

( Id., Ex. 5).

B. Defendant's Alleged Use of the Lefkowitz Images

Defendant John Wiley & Sons, Inc., is a global publisher of, among other things, educational materials, including textbooks for undergraduate and graduate students. (FAC ¶ 6). Many of Defendant's publications contain contributions from other sources, including photographs licensed to Defendant by third parties. ( Id. at ¶ 7).

Plaintiff alleges that between 1999 and 2011, TSM and Corbis sold Defendant limited licenses to use copies of the Lefkowitz Images in numerous educational publications. (FAC ¶ 16). Although Plaintiff alleges that these licenses were "expressly limited by number of copies, distribution area, image size, language, duration and/or media (print or electronic)" ( id. at ¶ 17), neither party has provided the Court with the relevant licenses for the images at issue. Instead, Plaintiff attaches to the FAC two standard Corbis license agreements - dated November 19, 2011, and June 2005 (the "Corbis Agreements") - that Plaintiff alleges were incorporated into the specific Corbis-Defendant licensing agreements, and thus govern the Corbis-Defendant licensing arrangement. (FAC ¶ 45, Ex. 7). Under the Corbis Agreements, among other things:

Corbis in its sole discretion reserves the right to bill [the customer] (and [the customer] hereby agrees to pay) ten (10) times the normal license fee for any unauthorized use, in addition to any other fees, damages, or penalties Corbis may be entitled to under this agreement or applicable law.

( Id. at Ex. 7, Nov. 19, 2001 agreement (the "Ten Times Provision")).

1. Defendant's Direct Copyright Infringement

As relevant here, Plaintiff identifies 66 instances of alleged infringement by Defendant in a chart included as Exhibit 1 to the FAC (the "Lefkowitz Chart"). (FAC, Ex. 1).[3] The Lefkowitz Chart is a summary of information that Plaintiff derived from Plaintiff's royalty statements from TSM and Corbis. ( Id. at ¶ 16). The summary includes a copy of the image, the author and description of the image, the image identification number, the copyright registration number and date, an invoice date, and the particular imprint of Defendant's that licensed Plaintiff's image. ( Id. at Ex. 1).

Plaintiff alleges, upon information and belief, that Defendant exceeded the permitted uses under the terms of its licenses with TSM and Corbis for the Lefkowitz Images, in publications both of which Plaintiff is aware and others "yet to be discovered." (FAC ¶ 19). Specifically, Plaintiff contends that Defendant

copied the [the Lefkowitz Images] in numbers exceeding the limited print quantities in the licenses, displayed [the Lefkowitz Images] online or in digital media without permission to do so, distributed the [the Lefkowitz Images] in geographic territories that were not authorized, and copied [the Lefkowitz Images] in custom, statespecific, language, or international editions without permission to do so.

( Id. at ¶ 34).

Plaintiff attests that the infringing conduct occurred after the invoice date for each instance on the Lefkowitz Chart. (FAC ¶ 34). As for the particular publications in which the alleged infringement occurred, Plaintiff identifies nine of Defendant's publications in which he alleges his photographs appear, although Plaintiff neither limits the instances of infringement to these publications, nor identifies which photographs in these publications were allegedly infringed. ( Id. at ¶ 28). Plaintiff alleges that he does not have this specific information, inasmuch as the royalty statements did not specify the publication title in which his photographs would appear or the license limits for the image to which the invoice pertained. ( Id. at ¶ 32). Instead, Plaintiff maintains that Defendant has custody of this information because it is identified in Defendant's licenses with TSM and Corbis. ( Id. at ¶ 33).[4]

2. Defendant's Contributory Copyright Infringement

The FAC also includes allegations concerning Defendant's purported contributory infringement. In this regard, Plaintiff asserts that Defendant facilitated the international distribution of its publications and, in the course of so doing, Defendant reproduced and distributed Plaintiff's images without his permission to "other entities, subsidiary companies, divisions, affiliates and/or third parties (Third Parties')." (FAC ¶ 37). Without Plaintiff's permission, the allegations continue, the Third Parties included Plaintiff's photographs in publications that had been translated into additional languages or published in local adaptations or reprints. ( Id. at ¶ 38).

Plaintiff alleges that "[b]y transmitting [the Lefkowitz Images] to the Third Parties, Wiley enabled, induced, caused, facilitated, or materially contributed to the Third Parties' unauthorized reproduction and distribution of [the Lefkowitz Images]." (FAC ¶ 38). Plaintiff does not, however, identify any of the Third Parties who engaged in this alleged conduct.

3. Defendant's Pattern of Infringement

Finally, the FAC devotes an entire section to allegations regarding Defendant's pattern of infringement. In particular, Plaintiff alleges that Defendant has a general practice of infringing copyrights on the photographs it licenses for inclusion in its publications by exceeding the terms of the individual license agreements. (FAC ¶ 23). Plaintiff also identified numerous lawsuits in which Defendant has been sued for copyright ...

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