Great Bowery Inc. v. Consequence Sound LLC

In copyright infringement action over unauthorized use of photographs of Star Wars cast, Eleventh Circuit vacates district court’s summary judgment ruling that licensing agent for renowned photographer Annie Leibovitz lacked statutory standing to sue, concluding that Leibovitz’s reservation of right to license images to certain third parties did not “doom” licensing agent’s status as exclusive licensee.

Annie Leibovitz is a photographer renowned for her portraits of celebrities. In 2014, Leibovitz entered into an Artist Agreement with Great Bowery that granted Great Bowery the “exclusive worldwide right to license, market, and promote” certain licensed images. The Artist Agreement also provided that “nothing contained herein shall restrict [Leibovitz’s] right to collaborate with or deliver any Licensed Images to Robert Pledge and/or Contract Press Images[.]” In 2018, Leibovitz signed a letter authorizing Great Bowery “to act on my behalf in all matters relating to copyright infringement of my work.”

Over the next several years, at the invitation of Condé Nast, Leibovitz photographed the cast and crew on the set of three new Star Wars movies. In 2022, Great Bowery discovered that certain of the Star Wars photographs appeared in articles on a website operated by Consequence Sound LLC and Consequence Media. Great Bowery filed suit against Consequence for copyright infringement.

Consequence moved for summary judgment arguing that Great Bowery lacked statutory standing to sue for copyright infringement under the Copyright Act because it is not a “legal or beneficial owner of an exclusive right under a copyright.” The district court granted summary judgment in favor of Consequence, ruling that because Leibovitz “retained for herself the right to use the photographs in collaborations with Robert Pledge and Contact Press Images, she did not grant Great Bowery an ‘exclusive license.” Because Great Bowery was not the owner of an exclusive license, it lacked statutory standing to sue for infringement.

On appeal, the Eleventh Circuit vacated the district court’s grant of summary judgement and remanded for further proceedings.

The Eleventh Circuit rejected Great Bowery’s argument that Consequence could not challenge its statutory standing because Leibovitz—the licensor—did not dispute Great Bowery’s standing. Under Section 501(b) of the Copyright Act, only a plaintiff with statutory standing may file suit for copyright infringement. A plaintiff who lacks standing to sue cannot proceed with the suit “simply because [a licensor] has not challenged the validity of the copyright.” To hold otherwise would lead to the “anomalous result” of permitting someone without standing to sue and would disregard the plain language of the statute “simply because [a licensor] has not challenged the validity of their copyright.”

While Consequence could challenge Great Bowery’s standing, the court ruled that the district court erred in concluding that Great Bowery lacked standing as a result of the reservation of rights contained in the Artist Agreement. Section 106 of the Copyright Act lists certain exclusive rights, but “a plaintiff does not need to be the owner of all the exclusive rights comprised in a copyright; it only needs to be the owner of ‘that particular right’ which the defendant has allegedly infringed.” Further, each particular right granted by Section 106 “is divisible” and may be transferred and owned separately.

Because of this principle of divisibility, Leibovitz’s “retention of certain rights does not automatically doom Great Bowery’s asserted status as an exclusive licensee.” So long as Leibovitz granted to Great Bowery at least some exclusive rights in the photographs, her retention of other exclusive rights would not deprive Great Bowery of standing to sue. “When one person owns some exclusive rights under a copyright and another person owns other exclusive rights, each is entitled to sue for infringement of its particular right.”

Consequence also argued that Great Bowery lacked standing to sue because Leibovitz granted Condé Nast a nonexclusive license to publish her photographs in its publications. The court rejected this argument as well because “when the owner grants a nonexclusive license, she is merely giving the licensee permission to exercise one of her rights in a nonexclusive manner.” Granting such nonexclusive permission “does not change the fact that the copyright holder remains the owner of the § 106 rights in question.”

The court remanded the case to the district court for further proceedings consistent with its opinion.

Summary prepared by Todd Densen and Keane Barger