David Walker

A five-year-old copyright infringement claim against the Copyright Clearance Center, a Massachusetts-based clearinghouse for magazine article reprint rights, has been dismissed because the photographers who filed the suit failed to prove their claims, according to the federal judge handling the case. Her decision, dated March 16, also suggests that the photographers overlooked a stronger legal argument than the one they made.

Seth Resnick, Paula Lerner and Michael Grecco sued the CCC in 2001, alleging contributory infringement on the grounds that the CCC facilitates and encourages third parties to copy and distribute magazine articles containing the photographers' images without their consent.

The CCC is authorized by magazine publishers to license the article reprint rights, and according to the photographers, reaps significant profits by doing so.

The photographers were also suing the CCC for false advertising because it told potential customers they could "legally make unlimited copies . . . from nearly two million registered titles without the administrative hassle and expense of individual permissions" if they obtained licenses from the CCC.

In rejecting the copyright claims, US District Judge Rya W. Zobel said that granting a third party rights to copyrighted works without authorization doesn't amount to contributory infringement unless the third party ends up committing a direct infringement.

Citing a recent decision by the First Circuit Court of Appeals, the Zobel wrote, "'wrongful authorization alone' cannot constitute infringement under the [copyright] statute."

That legal principle undermined the photographers' arguments that they didn't need to show infringement of their images by CCC licensees. But they tried to prove third party infringement anyway, without success.

For instance, the photographers hired an investigator to obtain copies of their images through the CCC. He succeeded, but since he was authorized by the photographers to obtain the images, his actions did not constitute direct infringement by a third party, Judge Zobel said.

The judge's ruling suggests that arguments the photographers made in support of their contributory infringement claims raised the possibility that the CCC might be liable for direct infringement, since the CCC made copies of the photographers' works available for licensing without permission.

The photographers originally claimed direct infringement, but voluntarily abandoned that claim back in 2002 when they amended their lawsuit. Since they never renewed the direct infringement claim, however, the judge couldn't rule on it.

Meanwhile, the judge tossed the false advertising claims because the photographers "presented no evidence of actual infringement by third parties. If no infringement occurred [as a result of licenses obtained through the CCC], then the [advertising] statements were not false or misleading, and the false advertising claim must be dismissed."

Resnick, Lerner, and Grecco were not immediately available for comment.
Boston attorney Jonathan Feigenbaum, who represented the photographers, said he did not want to discuss the ruling "at this time."