Who owns the copyright of stock photos?

April 12, 2018
Patterson Thuente IP

Thanks in part to the proliferation of websites over the past couple of decades, the use of stock photography is more widespread than ever. And the posting of photos online—as well as in print—has created a copyright infringement bonanza. But who has the right to enforce copyright claims involving use of stock photographs? The Ninth Circuit Court of Appeals recently tackled this question.

 

Taking pictures

DRK Photo is a stock photo agency that markets and licenses images created by others for use by publishers. From 1992 to 2009, McGraw-Hill Global Education Holdings, LLC, licensed photos from DRK for use in its textbooks.

DRK has historically entered into “representation agreements” with the photographers whose photos make up its collection. The agreements appoint DRK as a nonexclusive agent to license and sell the covered photographs.

In 2008, DRK sought copyright registration for the photographs in its collection and asked various photographers to execute “assignment agreements.” Those agreements granted DRK all copyright in the works and complete legal title. DRK agreed to reassign these rights and legal title back to the photographers on completion of registration and resolution of infringement claims DRK had filed related to the images. The photographers also transferred the right to any accrued or subsequent claims or lawsuits to enforce copyrights, and permitted DRK to prosecute such claims as if it were the photographers.

DRK sued McGraw-Hill for infringement, asserting that the publisher had exceeded the scope of its license by printing more books with licensed photos than authorized. The trial court dismissed the case, finding DRK lacked standing to pursue the infringement claims, and DRK appealed to the Ninth Circuit Court of Appeals.

Finding ownership

Under the U.S. Copyright Act, the legal or beneficial owner of an exclusive right under a copyright (for example, the right to distribute copies of the copyrighted work) can sue for infringements of that right committed while he or she owns it. The Ninth Circuit found that DRK was neither the legal nor the beneficial owner of the stock photos at issue.

DRK contended that the representation and assignment agreements gave it the legal ownership necessary to have standing. However, the representation agreements didn’t give DRK an exclusive license to authorize use of the photographs. Because a nonexclusive license doesn’t constitute a transfer of ownership of a copyright in a work, it can’t be used to confer standing to bring an infringement suit. The court further found that the assignment agreements transferred only “the bare right to sue” over accrued infringement claims, not legal ownership.

DRK also claimed beneficial ownership based on the representation and assignment agreements. The Ninth Circuit quickly dismissed this claim, though, reiterating that the agreements made DRK a nonexclusive licensing agent and an assignee of accrued infringement claims. It refused to hold that the agency was a beneficial owner on the same grounds it held in deciding that it couldn’t support a finding of legal ownership.

A clearer picture

The Ninth Circuit’s ruling clarifies the issue of whether a stock photography agency could bring copyright infringement claims involving photos from its collection. As the court made clear, an agency can sue only if it has an assignment or exclusive license transferring a copyright right—an assignment of the right to sue over accrued claims or a nonexclusive license isn’t enough for standing purposes. 

DRK Photo v. McGraw-Hill Global Education Holdings, LLC, No. 15-15106, Sept. 12, 2017, 9th Cir.

 

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