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Sohm v. Scholastic Inc.

United States Court of Appeals for the Second Circuit

June 14, 2019, Argued; May 12, 2020, Decided

Nos. 18-2110, 18-2245

Opinion

Joseph Sohm and Visions of America, LLC sued Scholastic Inc. for copyright infringement on photographs Sohm had authored. The district court (J. Paul Oetken, J.) granted in part and denied in part the parties' motions for partial summary judgment, determining that Scholastic had infringed Sohm's copyright for six of the photographs, while dismissing all other claims. We affirm in part and reverse in part, holding that (1) the district court properly recited the elements of a copyright infringement claim and placed the burden of proof on Sohm to demonstrate that Scholastic's use [*2]  of his images was outside the scope of the license; (2) Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 134 S. Ct. 1962, 188 L. Ed. 2d 979 (2014) did not abrogate this Circuit's adoption of the "discovery rule" for copyright infringement claim accrual in Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014); (3) the Copyright Act limits damages to the three years prior to when a copyright infringement action is filed; and (4) the registration of a compilation of photographs under 17 U.S.C. § 409 by an applicant who holds the rights to the component works is valid and effectively registers the underlying individual photos, even if the compilation does not list the individual authors of the individual photos.

Affirmed In Part, Reversed In Part.

Richard J. Sullivan, Circuit Judge:

Plaintiffs-Appellants-Cross-Appellees Joseph Sohm and Visions of America, LLC (together, "Sohm") bring this action against Defendant-Appellee-Cross-Appellant Scholastic Inc. for copyright infringement with respect to 89 photographs authored by Sohm. The district court (Oetken, J.) granted in part and denied in part the parties' cross motions for partial summary judgment, determining that Scholastic had infringed Sohm's copyright for six of the photographs. On appeal, Sohm contends that the district court (1) erred in finding that Scholastic's use of Sohm's copyrighted [*3]  work sounded in breach of contract and not copyright infringement; (2) improperly shifted the burden of proof to Sohm to demonstrate that Scholastic exceeded the scope of its license; and (3) incorrectly dismissed Sohm's claim corresponding to a certain photo. Scholastic cross appeals, arguing that the district court erred in (1) holding that the discovery rule applies for statute of limitations purposes in determining when Sohm's claims accrued; (2) allowing damages for more than the three years prior to when the copyright infringement action was brought; and (3) finding that certain group registrations were valid under the Copyright Act for Sohm's individual photographs. We AFFIRM IN PART and REVERSE IN PART.

I. Background

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2020 U.S. App. LEXIS 15103 *; 2020 U.S.P.Q.2D (BNA) 10517

JOSEPH SOHM, VISIONS OF AMERICA, LLC, Plaintiffs-Appellants-Cross-Appellees, v. SCHOLASTIC INC., Defendant-Appellee-Cross-Appellant.

Prior History:  [*1] Appeal from the United States District Court for the Southern District of New York. No. 16-cv-7098, J. Paul Oetken, Judge.

Sohm v. Scholastic Inc., 2018 U.S. Dist. LEXIS 53490 (S.D.N.Y., Mar. 28, 2018)

Disposition: AFFIRMED IN PART, REVERSED IN PART.

CORE TERMS

license, copyright infringement, district court, registration, three year, photographs, infringement, damages, discovery rule, invoices, unauthorized, registered, exceeded, copying, limitations, accrued, images, statute of limitations, condition precedent, breach of contract, Copyright Act, conditioned, authors, summary judgment, print-run, terms, partial summary judgment, license agreement, covenant, pleaded

Civil Procedure, Appeals, Standards of Review, De Novo Review, Summary Judgment Review, Standards of Review, Business & Corporate Compliance, Contracts Law, Breach, Breach of Contract Actions, Copyright Law, Scope of Copyright Protection, Assignments & Transfers, Licenses, Types of Contracts, Covenants, Contract Conditions & Provisions, Conditions Precedent, Copyright Law, Copyright Infringement Actions, Civil Infringement Actions, Civil Infringement Actions, Elements, Copying by Defendants, Ownership, Defenses, Statute of Limitations, Governments, Courts, Judicial Precedent, Remedies, Damages, Deposit & Registration Requirements, Registration, Application Requirements, Registration Certificates