Are you ready for some litigation on remand? Seven professional photographers who create images of National Football League events most certainly are. They had previously sued the NFL for exploiting their photography beyond the scope of the applicable license, only to have the case punted out of district court on a Federal Rule of Civil Procedure 12(b)(6) motion. On appeal, the Second Circuit issued a thoughtful and well-reasoned opinion reversing the district court and finding that much of said court’s reasoning was out-of-bounds.
The lensmen sought damages against the NFL for exploiting thousands of their photographs without consent or any sort of compensation. The case involves multiple tranches of photographs created by the plaintiffs and distributed to the NFL by the Associated Press, who are also defendants in the suit.
The NFL’s defense against the claims was that the AP had granted it a valid license, which “immunizes the licensee from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with the licensor.” And, it was not disputed that the AP granted a license to the NFL. The questions at the heart of the case were whether the photographers authorized the AP to grant that license and if so what were the contours of same.
Opus 2 Steps Up Its AI Game With Acquisition Of A Legal Tech Startup
With the addition of Uncover’s technology, the litigation software is delivering rapid innovation.
If the AP was authorized, as the district court found, the photographers’ claims would fail. But, the Second Circuit found otherwise, noting that the agreement that the AP reached with the NFL in 2012 did not properly authorize the NFL to exploit the plaintiffs’ photographs before or after the date of that agreement.
First, the Second Circuit found that the NFL’s use of the photographs before the date of the 2012 AP-NFL agreement was not properly authorized because, as set forth in its Davis v. Blige (yes, that Mary J. Blige) ruling, the law does not allow for retroactive licenses that defeat accrued claims of infringement. As the photographers’ claims would have accrued before the date of 2012 AP-NFL agreement’s execution, that agreement cannot extinguish those claims. On that basis, the Second Circuit reversed the district court’s dismissal of the claims for the pre-2012 NFL uses.
The second tranche of uses — those that took place after the 2012 AP-NFL agreement — presented a somewhat more thorny question. The Second Circuit reviewed the agreements between the photographers and the AP, which the AP argued required royalty payments to the photographers only when there were “sale[s] of licenses for individual photos for which a per-image price [wa]s established.” Since the AP was gratuitously providing the photographers’ work to the NFL, the AP argued, there was no “per-image price” and thus no need to pay the photographers royalties.
But, the Second Circuit applied the canon of construction that requires contracts to be interpreted in such a way as to give “effect and meaning . . . to every term” and then “to harmonize all of its terms.” In doing so, it noted that two other provisions in the contract address other gratuitous uses of the photographers’ work and holds that these clauses would be superfluous if royalties were due only for paid per-image uses.
Product Spotlight: Lexis® Verdict & Settlement Analyzer
Put away the guesswork—Lexis® Verdict & Settlement Analyzer helps legal professionals assess case potential with confidence by using data-driven insights from the industry’s largest collection of verdicts and settlements.
The court went on to underscore the absurdity that would result if the AP’s argument was taken at face value: “Defendants’ interpretation would permit AP to license all of Plaintiffs’ photographs to anyone, not just the NFL, and avoid paying royalties to Plaintiffs, so long as the third party compensated AP on something other than a per-image basis.” In other words, an organization that purports to represent creative organizations in bringing truth and light to the populace while eschewing bias and distortion was arguing for an interpretation of their agreement with the photographers that would allow the AP to hand out gratis licenses to use the photographers’ work to any person or organization on earth. This, the court found, was jiggery-pokery of the highest order, especially given that AP was compensated by the NFL for use of the photographs at issue. It reversed the district court and reinstated the claims as to these uses as well.
The Second Circuit then turned its gaze to an issue of great interest to copyright practitioners, that of the covenant versus condition dichotomy. In essence, if the transgressive act that breaches a license is a violation of a covenant in the license, then the resultant claim would sound in contract. But, if it is a condition of the license that is violated, the claim would be for copyright infringement. As the latter is most often a stronger claim, it would be in the photographers’ interests here for the breach at issue to be of a condition.
With that in mind, the photographers’ argue that the scope of the license was a condition and that AP’s gratuitous distribution of the photographs was outside of that scope. And the Second Circuit agrees, adding the kicker that the AP’s sub-license of the photographers’ work to the NFL with the gratuitous use term may invalidate the agreement to the extent it purports to convey rights that the AP did not have to convey. This would render both the AP and the NFL liable for infringement.
The photographers’ copyright claims are thus resurrected and the case remanded for further proceedings. There are a number of other fun bits and bobs in the opinion, including the rather savage reinstatement of the photographers’ fraud claim against the AP, which opens the case up to punitive damages (which are not available under the Copyright Act). Should the case not settle, there will be ample additional opportunities for the courts to tackle these hard-hitting copyright issues.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.