United States District Court, D. Arizona
[Copyrighted Material Omitted]
For Tom Bean, Dennis Kunkel Microscopy Incorporated, Plaintiffs: Amanda L Bruss, LEAD ATTORNEY, Harmon & Seidman LLC - Denver, CO, Denver, CO; Robert William Crockett, LEAD ATTORNEY, Harmon & Seidman LLC - Corte Madera, CA, Corte Madera, CA; Christopher Seidman, Maurice James Harmon, Harmon & Seidman LLC, Northampton, PA.
For Pearson Education Incorporated, Defendant: Christine Alison Hammerle, Philip R Higdon, Perkins Coie LLP, Phoenix, AZ; Dana E Becker, David W Marston, Jr, Morgan Lewis & Bockius LLP, Philadelphia, PA.
Paul G. Rosenblatt, United States District Judge.
Before the Court are Plaintiffs' Motion for Partial Summary Judgment (Doc. 165) and Defendant's Cross-Motion for Summary Judgment (Doc. 170). The motions are fully briefed. For the reasons set herein, the Court will grant Plaintiffs' motion and deny Defendant's cross-motion.
Plaintiffs Tom Bean and Dennis Kunkel are professional photographers. Defendant Pearson is a publisher of educational materials, including textbooks. Between 1992 and 2007, Plaintiffs sold limited, non-exclusive licenses authorizing Pearson to print Plaintiffs' photographs.  Plaintiffs allege that Pearson committed copyright infringement and fraud by printing the photographs in excess of the license terms. (Doc. 126.)
Plaintiffs move for summary judgment " as to Pearson's liability for copyright infringement through overprinting, unlicensed geographic distribution, and reproduction in unlicensed media formats of the photographs identified in Exhibits A and B to this motion." (Doc. 165 at 3.) Exhibit A documents 378 uses of photographs by Pearson for which Plaintiff Bean owns copyrights. (Doc. 167, Ex. A.) Exhibit B consists of 40 uses of photographs as to which Plaintiff Kunkel owns copyrights. ( Id., Ex. B.)
Pearson opposes Plaintiffs' motion for partial summary judgment and moves for summary judgment with respect to Plaintiffs' fraud claims. (Doc. 170.)
Summary Judgment Standard
Under Federal Rule of Civil Procedure 56(a), " the court shall grant summary judgment 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." Material facts are those that may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is " genuine" if the evidence is such that " a reasonable jury could return a verdict for the nonmoving party." Id.
The moving party bears the initial responsibility for informing the district court of the basis for its motion and identifying the portions of the pleadings, depositions, interrogatory answers, admissions, and affidavits that demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A party opposing a motion for summary judgment " may not rest upon the mere allegations or denials of [that] party's pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248--49. All that is necessary is the submission of sufficient evidence to create a material factual dispute, requiring a jury or judge to resolve the parties' differing versions of the truth at trial. Id. ; see First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 288--89, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968). " [A]ll justifiable inferences must be drawn in [the nonmovant's] favor." United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at 255).
Plaintiffs' Motion for Partial Summary Judgment
To prevail on a copyright infringement claim, Plaintiff must establish " (1) ownership of a valid copyright and (2) copying by the defendant of protect[i]ble elements of the work." Bean v. John Wiley & Sons, Inc., No. CV-11-8028-PCT-FJM, 2012 WL 1078662, at *2 (D.Ariz. March 30, 2012) (quoting CDN Inc. v. Kapes, 197 F.3d 1256, 1258 (9th Cir. 1999)). A licensee can infringe a copyright by exceeding the scope of a license. Id. (citing S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir.1989)).
It is undisputed that Plaintiffs own valid copyrights for the photographs that are the subject of their motion. Pearson does not dispute the accuracy of the information set forth in Exhibits A and B, which details print runs and geographic distribution outside the scope of the applicable licenses. Instead, Pearson argues summary judgment is inappropriate because genuine issues of material fact exist and because additional discovery is required under Rule 56(d). 
Pearson contends that summary judgment is precluded because a factual dispute exists as to whether Pearson had an implied license to use the photographs in excess of the limitations in the licenses. " A copyright owner may grant a nonexclusive license expressly or impliedly through conduct." Field v. Google, Inc., 412 F.Supp.2d 1106, 1115 (D.Nev. 2006) (citing Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558-59
(9th Cir. 1990)). " [A]n implied license is granted when (1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute his work." Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748, 754--55 (9th Cir. 2008) (citations omitted); see Field, 412 F.Supp.2d at 1116 (stating that implied license may be found " where the copyright holder engages in conduct from which [the] other [party] may properly infer that the owner consents to his use" ).
Pearson asserts that the parties' course of conduct since 1986 " evidences the existence of an implied license to reproduce and distribute Plaintiffs' photographs." (Doc. 171 at 11.) According to Pearson, " there is substantial evidence that Plaintiffs granted Pearson a nonexclusive implied license to use their stock photographs in excess of the distribution parameters in the parties' original licenses for an additional fee." ( Id. at 9--10.) Pearson notes, for example, Plaintiff Kunkel's deposition testimony that during his 15-year business relationship with Pearson, he never denied a request by Pearson for a license. ( See Doc. 174, ¶ 27; Doc. 173, Ex. E at 19:21--24.) Similarly, Plaintiff Bean testified that he could recall only one instance in the 27 years he did business with Pearson in which he denied a license request from Pearson. ( Id., Ex. ¶ 28; Ex. G at 11:21--25.) Plaintiffs also routinely granted extension requests from Pearson when a publication had a greater-than-anticipated demand. ( Id., ¶ ¶ 23--24, 27; Ex. E, at 50:11--17.) Finally, Pearson notes that Plaintiffs never objected to Pearson's inclusion of their photographs in its digital archive. ( Id., ¶ 26; see Ex. E, at 51:4--7, 15:24--18:13; Ex. G at 113:19--114:15).
Pearson cites Falcon Enters., Inc. v. Publishers Serv., Inc., 438 Fed.Appx. 579 (9th Cir. 2011), in support of its argument that the regular provision of content to a publisher over time will support an implied license to a particular image. In Falcon, the plaintiff owned photographs which it sent to the defendant Publishers, who regularly published the images. Id. at 581. When it learned that Publishers had used some of its images without securing permission, Falcon sued for breach of contract and copyright infringement. After a bench trial, the court entered judgment against Falcon with regard to the copyright infringement claims, finding that Publishers had an implied license to publish the photos. The Ninth Circuit ...