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Same Old Story: Copyright Discovery Rule Still Applies

By on Apr 27, 2023
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The US Court of Appeals for the Fifth Circuit affirmed a district court’s infringement determination, finding that the copyright owner’s claims were timely since they were brought within three years of discovering the infringement. Martinelli v. Hearst Newspapers LLC, Case No. 22-20333 (5th Cir. Apr. 13, 2023) (Barksdale, Southwick, Higginson, JJ.)

In 2015, Sotheby’s International Realty commissioned Antonio Martinelli to photograph an Irish estate owned by the Guinness family. Martinelli took seven photographs of the property, and the property was subsequently listed for sale. On March 7, 2017, Hearst Newspapers used those commissioned photographs in news articles discussing the sale in various Hearst publications. Over the next few years, Martinelli learned about Hearst’s use of the photographs. For instance, on November 17, 2018, Martinelli learned about the use of the photographs in the Houston Chronicle, and between September 2019 and May 2020, Martinelli learned about further use of the photographs in the San Francisco Chronicle, the Times Union, the Greenwich Time, the Middletown Press and the Elle Décor website. Based on these uses, Martinelli sued for copyright infringement on October 18, 2021—more than three years after the initial publication but less than three years after Martinelli discovered the publication.

Hearst stipulated both to infringement and that Martinelli could not have discovered the use of the copyrighted photographs at an earlier time. Instead, Hearst argued that Martinelli was too slow in bringing his infringement action since, under 17 U.S.C. § 507(b), the action must be brought within three years of the infringement, regardless of a plaintiff’s knowledge or diligence. The district court disagreed, holding that § 507(b) follows the discovery rule, which means the limitations period only begins when the plaintiff knows or has reason to know of the injury. Hearst appealed.

Hearst argued that the district court’s decision ran afoul of the Supreme Court’s 2019 decisions in Petrella v. MGM and Rotkiske v. Klemm. According to Hearst, under Petrella and Rotkiske, the discovery rule cannot apply to § 507(b) and the limitations period starts “when the plaintiff has a complete and present cause of action.” The Fifth Circuit disagreed.

The Fifth Circuit began by explaining that unless unequivocally overruled by a Supreme Court decision, an en banc court or a change in law, it was bound by its 2014 decision in Graper v. Mid-Continent Casualty, which held that the limitations period starts running “once the plaintiff knows or has reason to know of the injury upon which the claim is based.” Since neither party asserted that there had been an en banc decision or a change in the law, the only question was whether Petrella or Rotkiske overruled Granger.

Since the Supreme Court explicitly refused to address whether the discovery rule applied to § 507(b) in Petrella, the Fifth Circuit refused to read Petrella as overruling Graper. Turning to Rotkiske, the Fifth Circuit noted the Supreme Court’s statement that “[i]f there are two plausible constructions of a statute of limitations, we generally adopt the construction that starts the time limit running when the [...]

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Not Today, HAL: Copyright Still Requires Human Input

By on Mar 23, 2023
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The US Copyright Office (USCO) issued a policy statement on March 16, 2023, clarifying its position on the use of artificial intelligence (AI) in copyrighted materials. This statement came in the wake of the USCO’s recent decision to revoke partial copyright protection over AI-generated images in a graphic novel.

The USCO had previously issued copyright registration to Kris Kashtanova for a graphic novel. Upon learning that the images had been generated using Midjourney, an AI that produces images based on text prompts, the USCO revoked copyright protection over the images consisting of mixed text and images. Zarya of the Dawn, Registration No. VAu001480196 (USCO, Feb. 21, 2023) (Kasunic, Asso. Register of Copr.)

The USCO explained that the images lacked the requisite “minimum creative spark” required to make the images copyrightable. The USCO further emphasized that a human author with ultimate creative control is necessary for copyright protection and that providing an AI with word prompts is insufficient to qualify. Therefore, the copyright registration for the images in Kashtanova’s novel was revoked. However, because the work consisted of images and text and the text was all written by Kashtanova, that aspect of the work did satisfy the requirements for copyright protection and retained its registration. The USCO did allow that if Kashtanova could exhibit “substantive edits” to an AI-generated image, those edits could prove human authorship and therefore qualify the image for copyright protection.

In its March 16 policy statement, the USCO reiterated that non-humans are firmly excluded from authorship and, therefore, solely AI generated works are ineligible for copyright registration. Applicants should not list AIs as authors, but authors do have a duty to disclose the use of AI in their work and provide an explanation of their own human contribution compared to that of the AI. The USCO explained that the use of AI tools does not necessarily exclude a work from copyright registration. The salient issue in such cases would be the extent of creative control that the human author had over the work and its creative expression. As long as the human-made modifications to the AI-generated work meet the “minimum creative spark” requirement, such works could be subject to copyright protection.



Out of Tune: Eleventh Circuit Permits Retrospective Relief for Timely Copyright Claims under Discovery Rule

By on Mar 9, 2023
Posted In

The US Court of Appeals for the Eleventh Circuit furthered a circuit split in holding that, as a matter of first impression, a copyright plaintiff’s timely claim under the discovery rule is subject to retrospective relief for infringement occurring more than three years before the suit was filed. Nealy v. Warner Chappell Music, Inc., Case No. 21-13232 (11th Cir. Feb. 27, 2023) (Wilson, Jordan, Brasher, JJ.)

Section 507(b) of the Copyright Act includes a three-year statute of limitations that runs from the time the claim accrues, and a claim may only accrue one time under the discovery rule. In 2014, the US Supreme Court held in Petrella v. Metro-Goldwyn-Mayer, Inc., that the equitable doctrine of laches does not bar copyright claims that are otherwise timely under the three-year limitations period set forth in § 507(b). The circuits are split on Petrella’s application—the Second Circuit strictly limits damages from copyright infringement to the three-year period before a complaint is filed, whereas the Ninth Circuit permits retrospective relief for infringement occurring more than three years before the lawsuit’s filing as long as the plaintiff’s claim is timely under the discovery rule.

Music Specialist and Sherman Nealy (collectively, Music Specialist) filed a copyright infringement suit against Warner alleging that Warner was using Music Specialist’s musical works based on invalid third-party licenses and in violation of 17 U.S.C. § 501. The alleged copyright infringement occurred as early as 10 years before Music Specialist filed the present lawsuit. The district court denied Warner’s motion for summary judgment on statute of limitation grounds, finding that there was a genuine dispute of material fact regarding when Music Specialist’s claim accrual occurred. In a separate order, the district court certified for interlocutory appeal whether “damages in this copyright action are limited to the three-year lookback period as calculated from the date of the filing of the Complaint pursuant to the Copyright Act and Petrella.” Music Specialist appealed.

The Eleventh Circuit concluded that where a copyright plaintiff has a timely claim for infringement occurring more than three years before the filing of the lawsuit, the plaintiff may obtain retrospective relief for that infringement. The Court found that Petrella focused on the application of 17 U.S.C. § 507(b) to claim accrual under the injury rule, not the discovery rule, and was therefore inapplicable. The injury rule precludes recovery for harms occurring earlier than three years before the plaintiff files suit. On the other hand, the discovery rule permits damages recovery for infringing acts that copyright owners reasonably become aware of years later. Therefore, the discovery rule permits timely claims for infringement that occurred more than three years before the suit. The Eleventh Circuit found that the Supreme Court expressly reserved application of the discovery rule’s propriety for a future case and that, in the Eleventh Circuit’s opinion, the plain text of the Copyright Act does not place a time limit on remedies for an otherwise timely claim.

Practice Note: The Eleventh Circuit disagreed with the Second Circuit’s [...]

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Nothing Lasts for Everly, Not Even Copyright Co-Authorship Rights

By on Feb 23, 2023
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Addressing a novel issue, the US Court of Appeals for the Sixth Circuit ruled that a statute of limitations can time-bar a defense in narrow circumstances where a defendant uses it to seek affirmative relief. Garza v. Everly, Case No. 21-5530 (6th Cir. Feb. 10, 2023) (Bush, Guy, JJ.) (Murphy, J., concurring).

After successful careers writing and recording music as the Everly Brothers, Don and Phil Everly disputed copyright ownership of certain songs. Don sued Phil’s estate, seeking declaratory judgment that Don was the sole author of “Cathy’s Clown.” After a bench trial, the district court held that Don repudiated Phil’s co-authorship of “Cathy’s Clown” and Phil failed to reassert his co-authorship rights within the three-year timeframe provided by the Copyright Act. The trial court also ruled that Phil’s estate was “time-barred from asserting he was a co-author as a defense,” since the Copyright Act time-barred him from asserting the same as a claim. Don died in the interim, and Phil’s estate appealed.

There were three issues on appeal:

  • Whether the lower court improperly applied the Copyright Act’s scheme for authorship claims
  • Whether the finding of Don’s repudiation was erroneous
  • Whether the court erred in applying the statute of limitation to Phil’s defense.

Regarding the authorship issue, the Sixth Circuit explained that the Copyright Act allows authors to transfer ownership of works while retaining certain rights, including a termination right that lets authors later reclaim copyright ownership. Phil’s estate argued that because termination rights are inalienable, the trial court erred in finding that Phil was not a co-author since he should have had the opportunity to reclaim his rights. The estate also argued that any statute of limitations regarding Phil reclaiming co-authorship should not have started tolling until all of Phil’s descendants learned of these rights. The Sixth Circuit disagreed, explaining that the lower court properly applied the Copyright Act. Because Phil did not dispute repudiation within the statutory period, the trial court correctly denied his co-ownership. Furthermore, the statute of limitations does not “refresh itself” when an owner dies, because descendants cannot obtain rights a decedent had forfeit.

Addressing the repudiation issue, the Sixth Circuit found ample trial evidence supporting the trial court’s conclusion. The evidence included 1980s vintage letters, phone calls, and a “Release and Assignment” Phil signed containing language relinquishing his co-authorship rights in “Cathy’s Clown.” There was also credible testimony that Don “plainly and expressly repudiated Phil’s authorship” decades prior.

Finally, addressing the statute of limitations defense, the Sixth Circuit affirmed the trial court. In doing so, it noted that Phil’s estate originally argued that Phil remained a co-author of “Cathy’s Clown” as a counterclaim to Don’s suit. It was only after Don successfully argued that the claim was time-barred that Phil’s estate “reframed the counterclaim into a defense.” The Court explained the general policies underpinning statutes of limitation and noted that they typically do not bear on defenses because plaintiffs could otherwise wait out the statutory periods for defenses before suing. However, this [...]

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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

By , , , , , , , , , , , , , and on Feb 7, 2023
Posted In , , , , ,

Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit affecting innovators and brand owners.

McDermott’s 2023 IP Outlook examines the top trends and decisions in IP law from the past year and shares what you and your business should look out for in the year ahead.

The Latest in SEP Licensing

Amol Parikh

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory (FRAND) terms. Because there is no formal definition of FRAND terms, however, legal decisions involving FRAND have historically been determined by courts and non-governmental standard-setting organizations (SSOs). Disputes are frequent—especially between patent owners and technology implementers—and are becoming even more so as advanced wireless technologies such as 5G and WiFi 6 proliferate. Read more.

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Improper Inventorship in US Patent Litigations

Mandy H. Kim | Cecilia Choy, Ph.D.

Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take steps to minimize risks related to improper inventorship challenges. Read more.

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Patent Decisions Affecting Pharma and Biotech Companies

Douglas H. Carsten | Anisa Noorassa

The past year brought many developments in the life sciences patent legal space. Three decisions in particular hold potential ramifications for drug makers and patent holders in 2023. This year, the Supreme Court of the United States is also expected to consider standards patents claiming a genus must meet to withstand a validity challenge under Section 112—a ruling that could have a significant impact on patent holders in the biotech industry. Read more. 

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Trends in the Western District of Texas

Syed K. Fareed | Alexander Piala, Ph.D. | Christian Tatum

Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX.
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PTO and Copyright Office Seek Public Comments on Non-Fungible Tokens

By on Dec 8, 2022
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On November 23, 2022, the US Patent & Trademark Office and the US Copyright Office announced that they are seeking public input on intellectual property (IP) considerations related to non-fungible tokens (NFTs). The agencies will hold three public roundtables directed to patents, trademarks and copyrights, respectively, scheduled as follows:

  • January 10, 2023 – Patents and NFTs
  • January 12, 2023 – Trademarks and NFTs
  • January 18, 2023 – Copyrights and NFTs.

The roundtables will be livestreamed, and the agencies will post instructions for registration to view them live. Requests to participate as a panelist in any of the roundtables must be received by December 21, 2022, to be considered.

The agencies also issued a request for comments, soliciting answers to 13 questions of particular interest:

  1. Describe current and potential future uses of NFTs in your field or industry.
  2. Describe any IP-related challenges or opportunities associated with NFTs or NFT markets.
  3. Describe how NFT markets affect the production of materials subject to IP protection.
  4. Describe whether, how and to what extent NFTs are used by or could be used by IP rights holders to
    1. Document the authenticity of an asset
    2. Document the seller’s ownership of or authority to sell an asset
    3. Document the seller’s authority to transfer any relevant or necessary IP rights associated with an asset
    4. Document any limitations related to IP rights surrounding the sale, or the purchaser’s use, of an asset.
  5. Describe whether, how and to what extent NFTs present challenges for IP rights holders, or those who sell assets using NFTs, with respect to the activities described in question 4.
  6. Describe whether, how and to what extent NFTs are used by, could be used by, or present challenges or opportunities for IP rights holders to
    1. Obtain their IP rights
    2. Transfer or license their IP rights
    3. Exercise overall control and management of their IP rights
    4. Enforce their IP rights.
  7. Describe how and to what extent copyrights, trademarks and patents are relied on, or anticipated to be relied on, in your field or industry to
    1. Protect assets that are associated with NFTs
    2. Combat infringement associated with NFT-related assets offered by third parties
    3. Ensure the availability of appropriate reuse of NFT-related assets.
  8. Are current IP laws adequate to address the protection and enforcement of IP in the context of NFTs? If not, explain why and describe any legislation you believe should be considered to address these issues.
  9. Describe any IP-related impacts those in your field or industry have experienced in connection with actual or intended uses of NFTs. Describe any legal disputes that have arisen in the following contexts, and the outcome of such disputes, including citations to any relevant judicial proceedings:
    1. The relationship between the transfer of an NFT and the ownership of IP rights in the associated asset
    2. The licensing of IP rights in the asset associated with an NFT
    3. Infringement claims when either (i) an NFT is associated with an asset in which another party [...]

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After Supreme Court Remand, Copyright Infringement Claims Upheld in View of Registrant’s Unknown Inaccuracies

By on Nov 17, 2022
Posted In

In February 2022, the Supreme Court of the United States held in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., that lack of either factual or legal knowledge on the part of a copyright holder can excuse an inaccuracy in the holder’s registration under the Copyright Act’s safe-harbor provision, 17 U.S.C. §411(b)(1), which governs the effect of inaccurate information in a copyright application. In light of this decision, the Supreme Court remanded the copyright dispute between textile design company Unicolors and global fast-fashion retail giant H&M Hennes & Mauritz to the US Court of Appeals for the Ninth Circuit for further proceedings on the issue of whether Unicolors held a valid copyright in a 2011 textile design asserted in its copyright infringement claim against H&M. On remand, the Ninth Circuit concluded that under the correct standard confirmed by the Supreme Court, Unicolors held a valid copyright registration because the factual inaccuracies in its application were excused by the safe-harbor provision. The Ninth Circuit affirmed the prior jury verdict against H&M for copyright infringement and remanded with respect to the issue of damages only. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., Case Nos. 18-56253; -56548 (9th Cir. Nov. 10, 2022) (Bea, Bade, McCalla, JJ.)

The Copyright Act safe-harbor provision saves a copyright registration from invalidity when the application contains errors, except when the copyright registrant knowingly transmitted inaccurate material facts to the US Copyright Office. After the Supreme Court made it clear that “[l]ack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration,” the Ninth Circuit was charged with determining whether Unicolors submitted its copyright application with knowledge that the information therein was factually inaccurate and with knowledge that the application failed to comply with the specific governing legal requirements. The Court first analyzed the validity of Unicolors’s asserted copyright registration, then addressed the remaining issues raised by H&M on appeal.

The Ninth Circuit’s first step in the validity assessment was to determine whether Unicolors’s application did, in fact, contain an inaccuracy. As in its prior decision, the Court concluded that the application was inaccurate because Unicolors registered a collection of 31 separate fabric designs as a single-unit publication when those 31 works were not initially published as a singular bundled collection, as required under the Copyright Act.

The second step of the Ninth Circuit’s inquiry looked at whether Unicolors submitted its copyright application knowing that it contained errors. This is where the Court departed from its prior decision and affirmed the district court’s decision regarding the validity of the registration. Specifically, the Court found that the single-unit registration issue was an unsettled question of law at the time of Unicolors’s application, such that Unicolors did not know that it submitted an application containing false information because it lacked the requisite knowledge of inaccuracy and lacked an intent to defraud the Copyright Office. Finding Unicolors’s copyright registration valid, the Court determined that Unicolors could maintain its copyright infringement claim against H&M.

[...]

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When Are Compulsory Copyright Licenses Compulsory?

By on Oct 20, 2022
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The US Court of Appeals for the Second Circuit partially affirmed a district court’s summary judgment order holding that audiovisual recordings of live concerts do not fall within the scope of the Copyright Act’s compulsory license provision while purchasers of audio-only recordings obtain a compulsory license in the copyright of the work fixed by their predecessors/sellers. ABKCO Music, Inc. et al. v. Sagan et al., Case No. 20-3816 (2d Cir. Oct. 6, 2022) (Jacobs, Wesley, Menashi, JJ.)

In 2002, William Sagan purchased, through Norton, a collection of audio and audiovisual live concert recordings from Bill Graham Archives. All three parties are named defendants in this case. The agreement conveyed all intellectual property that the Archives held (from a transaction with Sagan) and included a disclaimer stating that record company and artist approval was required to exploit the recordings. The defendants’ subsequent purchases of other recordings contained similar limited assurance language regarding intellectual property rights. In 2006, the defendants made the entire collection publicly available online for a streaming and downloading fee. A year later, the defendants began using a third-party licensing agent to obtain compulsory licenses under 17 USC § 115 and negotiated licenses from plaintiff music publishers in the audio and audiovisual live concert recordings.

Section 115 of the Copyright Act requires persons seeking to make and distribute phonorecords of a previously published musical work to obtain a compulsory license by providing notice to the copyright owner before distribution and paying government-prescribed royalties. (§ 115(a)(1), (b), (c).) The Copyright Act defines phonorecords as “[m]aterial objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed.” (§ 101.) Section 115’s substantive requirements for duplications of audio/sound recordings fixed by another include requirements that the sound be fixed lawfully, and that duplication be authorized by the copyright owner. (§ 115(a)(1).)

In 2015, the music publishers sued defendants for copyright infringement of 197 musical works posted online without valid compulsory licenses. The music publishers alleged that the defendants did not obtain compulsory licenses for audiovisual works as required by § 115 and that the defendants failed to comply with § 115 substantive compulsory licensing requirements for audio-only works. Defendants argued implied license and equitable estoppel as affirmative defenses. The publishers sought damages and a permanent injunction pursuant to the Copyright Act.

The district court, on summary judgment, ruled that the defendants had no valid license authorizing the reproduction and distribution of the musical works in either audio or audiovisual format, that the defendants had neither an implied license nor any basis for estoppel, and that Sagan (a principal in several of the defendant streaming services) was liable for direct infringement. The district court denied the publishers’ request for an injunction but granted the publishers an award of attorneys’ fees. The defendants appealed from the summary judgment order and the order granting fees and costs. The plaintiffs cross-appealed denial of an injunction.

The Second Circuit affirmed the district court’s holding that the defendants infringed each musical work [...]

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Don’t Throw in the Towel: Retroactive Copyright Protects Fight Live Stream

By on Oct 6, 2022
Posted In

The US Court of Appeals for the Sixth Circuit reversed a district court’s summary judgment of noninfringement in a copyright dispute, finding that the transfer of ownership prior to the display of the copyrighted work conferred standing to sue for any alleged infringement. Joe Hand Promotions, Inc. v. Griffith, Case No. 21-6088 (6th Cir. Sept. 21, 2022) (Clay, Rogers, Stranch, JJ.)

On August 26, 2017, world-famous boxer Floyd Mayweather Jr. and famous mixed martial arts fighter Conor McGregor engaged in what became one of the most legendary fights of all time (Fight). Showtime produced the Fight, charging a $99.99 personal use license and more expensive commercial streaming licenses for public viewing in a commercial setting. Two months prior to the event, on June 20, 2017, Showtime entered into a distribution agreement with Mayweather Promotions granting an exclusive license “to exhibit and distribute, and authorize the exhibition and distribution” of the Fight in a defined territory via the internet. On August 1, 2017, Mayweather in turn entered into a Commercial Licensing Agreement with Joe Hand Promotions (JHP), a smaller distributor. The agreement granted “the sole and exclusive third party license … to distribute … and authorize the public exhibition of the [Fight]” in a designated area. JHP then promoted the event and sold commercial licenses authorizing live broadcast at bars and restaurants.

There was no copyright registration at the time the Fight aired. However, the Copyright Act allows registration of live events within three months, and Showtime applied for a copyright within two months. On November 21, 2017, Showtime signed a Copyright Agreement with JHP, granting JHP “the exclusive right to distribute and publicly perform the [Fight] live on August 26, 2017,” “the exclusive right … to take enforcement actions,” and “the right and standing, as exclusive assignee, to assert independent claims, solely in the name of [JHP], for copyright infringement.” Mayweather Promotions, although a nonparty, also signed.

JHP then sued several restaurants, including Griffith, which livestreamed the Fight in a public setting without paying the commercial license fee. Griffith had paid for a personal use license, but then used an HDMI cable to connect a personal device to a TV and broadcast the live show in the restaurant. Griffith also promoted the Fight on the restaurant’s Facebook page and charged a $6 entry fee for patrons to watch the Fight. Both parties filed cross-motions for summary judgment. The district court granted Griffith’s motion, finding no evidence of copyright ownership on the day of the Fight. The court found that because the Copyright Agreement granted rights retroactively, JHP was granted a mere right to sue, which was insufficient for ownership. JHP appealed.

Griffith argued on appeal that because there was no copyright registration at the time of the event, any exclusive rights granted by the Copyright Agreement were illusory and insufficient to establish ownership. In response, JHP argued that Showtime intended such retroactive grant of rights, as evidenced by the Commercial Licensing Agreement with Mayweather Promotions. The Sixth Circuit agreed with [...]

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Implied Copyright License to Photographs of Artist Formerly Known as Prince

By on Sep 15, 2022
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The US Court of Appeals for the Eighth Circuit upheld a ruling that a marketer had an implied copyright license to distribute marketing materials containing digital copies of photographs of the late musical artist Prince. Beaulieu v. Stockwell, Case No. 21-3833 (8th Cir. Aug. 30, 2022) (Gruender, Benton, Grasz, JJ.)

Allen Beaulieu was Prince’s personal photographer for five years, taking thousands of photos during multiple world tours. Beaulieu registered a copyright for these photos in 1984. In 2014, Beaulieu decided to publish a book of his photos. He hired (and entered into contracts with) Thomas Crouse to write and publish the book and Clint Stockwell to assist in scanning and storing digital copies of the photos. There was significant interest in the book after Prince’s death in 2016. In May 2016, Beaulieu gave Stockwell an unknown number of uncatalogued photos to be digitized. At about the same time, Stockwell sent a press packet containing a digital photo slideshow and press release to potential investors, including Charles Sanvik.

The collaboration with Stockwell and the others eventually fell apart, and Beaulieu demanded his photos back. Beaulieu’s lawyer retrieved some of the photos from Stockwell’s home, but Beaulieu did not make an inventory of the photos that were returned. Beaulieu sued Stockwell, Crouse and Sanvik for copyright infringement (among various other property torts). The district court granted summary judgment to the defendants on all claims and found that Stockwell had an implied license to create and distribute the press release containing Beaulieu’s photos. Beaulieu appealed.

Addressing Beaulieu’s copyright claim, the Eighth Circuit focused on the district court’s finding of an implied license. An implied license is an affirmative defense to a copyright infringement claim. The Court explained that a nonexclusive implied license may be found where a person requests the creation of a work, the creator makes the particular work and delivers it to the person who requested it, and the licensor intends that the licensee-requestor copy and distribute the work. The Court also explained that such an implied license could be implied from conduct. The Court recounted the details of the contract between Beaulieu and Stockwell, which included provisions permitting the use of the digital photos for “promotional and marketing” purposes. The Court also noted that Beaulieu was informed of the marketing plans and was sent drafts of the marketing emails, including the digital photo slideshow, to which Beaulieu did not object. The Court found that Beaulieu’s receipt of these materials, along with his continuing interactions with the collaborators thereafter, implied his approval of the marketing plan and demonstrated an implied license to the photographs.



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