FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

MINDEN PICTURES, INC.,

Plaintiff-Appellant,

v.

JOHN WILEY & SONS, INC.,

Defendant-Appellee.

No. 14-15267

D.C. No.

3:12-cv-04601-EMC

OPINION

Appeal from the United States District Court

for the Northern District of California

Edward M. Chen, District Judge, Presiding

Argued and Submitted

March 13, 2015—San Francisco California

Filed July 29, 2015

Before: John T. Noonan, William A. Fletcher,

and Morgan Christen, Circuit Judges.

Opinion by Judge W. Fletcher
2 MINDEN PICTURES V. JOHN WILEY & SONS

SUMMARY*

Copyright

Reversing the district court’s judgment, the panel held

that Minden Pictures, Inc., a licensing agent for

photographers, had statutory standing under the Copyright

Act to bring an infringement suit based on alleged violations

of the terms of its licenses to John Wiley & Sons, Inc., a

textbook publisher.

The panel held that agency agreements between Minden

and individual photographers conveyed an ownership interest

in the photographers’ copyrights sufficient to permit Minden

to sue for infringement. The agency agreements transferred

legally cognizable rights to reproduce the copyrighted

photographs and to authorize the distribution and the display

of the photographs by granting licenses to third parties. The

panel held that even though the photographers also retained

the right to issue licenses themselves, Minden held an

“exclusive license” to grant licenses to others, and therefore

had standing to sue.

COUNSEL

Maurice Harmon (argued), Christopher Seidman, Gregory N.

Albright, and Alex Rice Kerr, Harmon & Seidman, LLC,

Grand Junction, Colorado, for Plaintiff-Appellant.

* This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
MINDEN PICTURES V. JOHN WILEY & SONS 3

Steven David Zansberg (argued), Michael Beylkin, and

Christopher Beall, Levine Sullivan Koch & Schulz, LLP,

Denver, Colorado, for Defendant-Appellee.

OPINION

W. FLETCHER, Circuit Judge:

Minden Pictures, Inc., is a stock photography company

that serves as the licensing agent for dozens of photographers,

authorizing third parties to use copyrighted photographs. 

Under the terms of its contracts with the photographers,

Minden has the exclusive right to act as their licensing agent,

but the photographers reserve their rights to use the

photographs themselves and to license them to others.

Minden brought an infringement suit under the Copyright

Act against John Wiley & Sons, Inc., a textbook publisher,

alleging that Wiley had substantially exceeded the scope of

the licenses granted by Minden by publishing far more copies

of books containing the photographs than permitted under the

licenses. The question in this appeal is whether Minden, as

a licensing agent, has statutory standing under the Copyright

Act to bring an infringement suit based on alleged violations

of the terms of its licenses to Wiley. The district court held

that Minden does not have standing under the Act. We

disagree and reverse.

I. Background

Minden Pictures, Inc., (“Minden”) is a 26-year-old stock

photography company based in Watsonville, California. 

According to Richard Minden, its founder and CEO, Minden
4 MINDEN PICTURES V. JOHN WILEY & SONS

is “one of the world’s premium providers of wildlife and

nature photos.” Minden acts as a licensing agent for

individual photographers, displaying copyrighted

photographs on its website and granting licenses to end users,

including textbook publishers, for the limited use of the

photographs. Minden receives a commission, as much as 50

percent, of the fees that end users pay to reproduce the

photographs.

Until recently, Minden entered into “Agency

Agreements” with the individual photographers for whom it

serves as a licensing agent. The Agency Agreements at the

heart of this case were executed between 1993 and 2008. The

Agreements vary somewhat from photographer to

photographer, but they share similar features. Each

Agreement contains an “authorization” clause in which the

photographers agree to “appoint[] [Minden] as sole and

exclusive agent and representative with respect to the

Licensing of any and all uses of Images” in the relevant

territory. The Agreements also confer upon Minden “the

unrestricted, exclusive right to distribute, License, and / or

exploit the Images . . . without seeking special permission to

do so.” The Agreements define “Licensing” as “the

marketing, grant, lease, sale, use or other exploitation of

reproduction rights to an Image.”

The Agency Agreements limit in some aspects, but

preserve in others, the photographers’ ability to make use of

their photographs themselves. The Agreements specify that

the photographers “shall not issue any Licenses to any

Images, except as provided under this Agreement.” But they

reserve some authority for personal and, in some cases,

commercial use. All of the Agreements permit the

photographers to use the images “for personal promotion.” 
MINDEN PICTURES V. JOHN WILEY & SONS 5

Some permit the photographers to issue licenses for the

“editorial use of images in books and magazines.” A small

number permit the photographers to license images for

“commercial” uses, or for “advertising.” In other words, the

Agreements generallypermit the photographers to issue some

licenses themselves, subject to the terms of the individual

Agreements, but prohibit them from hiring a licensing agent

other than Minden.

Finally, each Agency Agreement contains a “copyright”

clause. That clause states that “[a]ll images shall at all times

remain the sole and exclusive property of the Photographer,

including the copyright.” Many also state that the copyright

“shall be held by [Minden] solely for Licensing purposes

described herein.” The Agreements provide that they shall

remain in force for five years. At the end of that period, the

Agreements automatically renew unless either party provides

notice of termination.

One company to which Minden granted licenses is an

educational publisher, John Wiley & Sons. According to its

brief, Wiley is “a 206-year-old publisher of textbooks,

professional and trade books, as well as other publications.” 

Minden alleges that Wiley substantially exceeded the scope

of the limited licenses it granted Wiley — for example, by

printing hundreds of thousands of copies of textbooks

containing photographs licensed by Minden despite having

acquired a license to print only 20,000 copies of such

photographs. Minden attaches to its complaint 228

copyrighted photographs taken by 36 photographers that it

alleges it licensed to Wiley. Minden alleges that Wiley has

engaged in a longstanding practice of copyright infringement,

citing eleven other cases brought against Wiley “alleging

copyright infringement claims nearly identical to those
6 MINDEN PICTURES V. JOHN WILEY & SONS

asserted by Plaintiffs in this action.” The merits of Minden’s

allegations are not before us. This appeal concerns only

whether Minden is permitted by the Copyright Act to bring an

infringement suit against Wiley for exceeding the scope of its

licenses.

Minden began to contemplate infringement litigation

against Wiley in or around 2010. In March 2010, many of

Minden’s affiliated photographers executed an additional set

of agreements (the “2010 Assignments”) that purported to

convey an ownership interest in the copyrights to Minden. 

Under the 2010 Assignments, Minden was authorized “to

present, litigate, and settle any accrued or later accruing

claims, causes of action, . . . or lawsuits” over “unauthorized

uses of the Images.” But Minden “agree[d] to reassign its

ownership of the Images back to the [photographers]

immediately upon the conclusion of any such litigation.”

In November 2011, Minden brought an infringement

action against another publishing company, Pearson

Education, Inc., alleging, as in the case now before us, that

“the licenses it sold to Pearson were limited, and that Pearson

exceeded those limitations by printing tens, and in some

instances, hundreds of thousands of unauthorized copies of

the licensed photographs.” Minden Pictures, Inc. v. Pearson

Educ., Inc., 929 F. Supp. 2d 962, 964 (N.D. Cal. 2013). 

Minden based its claim to standing under the Copyright Act

on both the Agency Agreements and the 2010 Assignments. 

The district court struck all Minden’s allegations based on the

Agency Agreements as a discovery sanction, and rejected its

claims based on the 2010 Assignments, concluding that they

conveyed no more than a “bare right to sue.” Id. at 968. 

Minden appealed, but the parties later stipulated to a

dismissal of the appeal with prejudice.
MINDEN PICTURES V. JOHN WILEY & SONS 7

Minden brought the current infringement action against

Wiley in September 2012. As in Pearson, Minden alleged

that both the Agency Agreements and the 2010 Assignments

gave it sufficient ownership interest in the photographs to

allow it to bring an infringement suit. After the complaint

was filed, Minden and the photographers executed an

additional set of assignments (the “2013 Assignments”). 

These assignments conveyed to Minden “co-ownership of the

copyrights in the Images not previously assigned to Minden.” 

Unlike the 2010 Assignments, however, the 2013

Assignments did not provide for their own termination upon

the conclusion of litigation.

Wiley moved to dismiss the action under Federal Rule of

Civil Procedure 12(b)(1), arguing that because Minden did

not have an ownership interest in the copyrighted

photographs it had licensed to Wiley, Minden lacked standing

under the Copyright Act to bring an infringement suit. Wiley

subsequently brought a motion for summary judgment under

Rule 56 on substantially the same ground.

We note that Wiley’s Rule 12 motion to dismiss should

have been brought under Rule 12(b)(6) for failure to state a

claim rather than under Rule 12(b)(1) for lack of jurisdiction,

for the issue is statutory rather than Article III standing. See

Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S.

Ct. 1377, 1387 (2014); Cetacean Cmty. v. Bush, 386 F.3d

1169, 1172–73 (9th Cir. 2004). That is, the issue is whether

Minden has a statutory right to sue for infringement under the

Copyright Act, which is properly addressed in a motion under

Rule 12(b)(6), not whether Minden has satisfied the

requirements of Article III, which is properly addressed in a

motion under Rule 12(b)(1). See Cetacean Cmty., 386 F.3d
8 MINDEN PICTURES V. JOHN WILEY & SONS

at 1173. Wiley’s incorrect reliance on Rule 12(b)(1),

however, does not materially affect the appeal now before us.

The district court ruled for Wiley in all respects. First, the

court concluded that the Agency Agreements did not confer

standing under the Copyright Act to bring an infringement

suit. Minden Pictures, Inc. v. John Wiley & Sons, Inc., 10 F.

Supp. 3d 1117, 1120 (N.D. Cal. 2014). The district court

reasoned that, rather than transferring ownership of the

copyrights to Minden, the Agency Agreements “appear to

expressly disavow any such intent.” Id. at 1125. In the

court’s view, the fact that Minden was authorized, as the

exclusive licensing agent for the photographers, to issue

licenses to use the copyrighted photographs did not give it a

sufficient property interest in the photographs to permit it to

bring an infringement suit. Id. at 1129. Second, the court

held that Minden could not rely on the 2010 Assignments as

a basis for its cause of action because it was issue-precluded

by the judgment in Pearson. Third, invoking the general rule

that standing is evaluated by looking to “the facts as they

exist when the complaint is filed,” Lujan v. Defenders of

Wildlife, 504 U.S. 555, 569 n.4 (1992) (emphasis in original),

the court held that Minden could not rely on the laterexecuted 2013 Assignments.

Minden appeals. For the reasons that follow, we reverse.

II. Standard of Review

We review de novo whether a party has standing under

the Copyright Act to sue for infringement. Righthaven LLC

v. Hoehn, 716 F.3d 1166, 1169 (9th Cir. 2013).
MINDEN PICTURES V. JOHN WILEY & SONS 9

III. Discussion

Minden makes three arguments on appeal. First, it argues

that the Agency Agreements conveyed an ownership interest

in the copyrights sufficient to permit Minden to sue for

infringement. Second, it argues that the district court erred in

concluding that the judgment in Pearson had issue-preclusive

effect in its action against Wiley. Third, it argues that the

district court erred in declining to consider the 2013

Agreements on the ground that they were executed after

Minden filed its complaint. Because we agree with Minden

that the Agency Agreements conveyed a sufficient property

interest in the photographs to permit it to bring an

infringement suit, we do not reach its second and third

arguments.

Under § 501(b) of the Copyright Act, only “[t]he legal or

beneficial owner of an exclusive right under a copyright is

entitled . . . to institute an action for any infringement of that

particular right committed while he or she is the owner of it.” 

17 U.S.C. § 501(b). The “exclusive rights” in a copyright are

enumerated at § 106 of the Act. They are the rights “to do

and to authorize” others to do six things with the copyrighted

work: to reproduce the work, to prepare derivative works

based upon the work, to distribute copies of the work, to

perform the work publicly, to display the work publicly, and

to record and perform the work by means of an audio

transmission. See id. § 106. We have held that this list of

“exclusive rights” is exhaustive. Silvers v. Sony Pictures

Entm’t, Inc., 402 F.3d 881, 883–84 (9th Cir. 2005) (en banc).

Until the passage of the Copyright Act of 1976, a

copyright was seen as “an indivisible ‘bundle of rights,’

which were ‘incapable of assignment in parts.’” See Gardner
10 MINDEN PICTURES V. JOHN WILEY & SONS

v. Nike, Inc., 279 F.3d 774, 778 (9th Cir. 2002) (quoting

3 Melville B. Nimmer & David Nimmer, Nimmer on

Copyright § 10.01[A] (“Nimmer”)). The Copyright Act,

however, “eradicated much of the doctrine of indivisibility,”

id., by permitting a copyright owner to transfer “[a]ny of the

exclusive rights comprised in a copyright, including any

subdivision of any of the[se] rights,” to someone else. 

17 U.S.C. § 201(d)(2). Thus, an author of a novel might

convey the right to publish a hardcover edition of the novel

to one person and the right to create a movie based upon the

novel to another. See HyperQuest, Inc. v. N’Site Solutions,

Inc., 632 F.3d 377, 383 (7th Cir. 2011); Nimmer, supra, at

§ 10.02[A].

Further, the Copyright Act permits the copyright owner

to subdivide his or her interest in what otherwise would be a

wholly owned “exclusive right” by authorizing the owner to

transfer his or her share, “in whole or in part,” to someone

else. 17 U.S.C. § 201(d)(1). It specifies that the owner can

transfer a right, or a share of such a right, via “an assignment,

. . . exclusive license, or any other conveyance, . . . whether

or not it is limited in time or place of effect.” Id. § 101. That

is, either an assignment (which transfers legal title to the

transferee) or an exclusive license (which transfers an

exclusive permission to use to the transferee) qualifies as a

“transfer” of a right in a copyright for the purposes of the Act. 

See Corbello v. DeVito, 777 F.3d 1058, 1064 (9th Cir. 2015);

HyperQuest, 632 F.3d at 383; Nimmer, supra, at § 10.02[A].

It is established law under the 1976 Act that any party to

whom such a right has been transferred — whether via an

assignment or an exclusive license — has standing to bring an

infringement action based on that right. See Sybersound

Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir.
MINDEN PICTURES V. JOHN WILEY & SONS 11

2008); Nimmer, supra, at § 12.02[B][1]. Thus a party granted

an exclusive license to display a work may bring an

infringement action challenging the unauthorized display of

that work by another party, even though the licensee does not

hold legal title to the work. Nimmer, supra, at § 12.02[B][1]

(“As the owner of ‘an exclusive right under a copyright,’ an

exclusive licensee is ‘entitled . . . to institute an action for any

infringement . . . .’” (quoting 17 U.S.C. § 501(b))).

However, a party granted a mere “nonexclusive license”

— as, in this case, Wiley’s license to reprint a copyrighted

photograph in a textbook — cannot bring an infringement

suit. See 17 U.S.C. § 101; Eden Toys, Inc. v. Florelee

Undergarment Co., Inc., 697 F.2d 27, 32 (2d Cir. 1982). 

Wiley argues that Minden cannot bring an infringement suit

because Minden has been granted, at most, a “nonexclusive

license” to authorize the reproduction, distribution, and

display of the photographs. We disagree.

First, we have no doubt — indeed, we do not understand

Wiley to contest — that the Agency Agreements transferred

an interest in a legally cognizable right in the photographers’

copyrights. The Agency Agreements explicitly permit

Minden to reproduce, and to authorize the reproduction of,

the copyrighted photographs. Reproduction is one of the six

“exclusive rights” described in the Act. 17 U.S.C. § 106(1)

(listing, inter alia, the right “to reproduce the copyrighted

work in copies or phonorecords” as an exclusive right). 

Further, Wiley does not appear to dispute that, as the

photographers’ licensing agent, Minden had the right “to

authorize” both the distribution and the display of the

photographs by granting licenses to third parties such as

Wiley. The right “to authorize” these acts is also an

“exclusive right” under the Act. See id. § 106(3), (5). 
12 MINDEN PICTURES V. JOHN WILEY & SONS

Minden thus had an interest in a legally cognizable right

under the copyrights. The only question is what kind of

interest Minden possessed.

Wiley makes two arguments regarding why the Agency

Agreements did not convey a sufficient interest to Minden to

permit it to bring an infringement action. First, Wiley argues

that the photographers did not assign their copyrights (or a

right under their copyrights) to Minden under the

Agreements. We agree that the Agency Agreements did not

assign the copyrights themselves. The Agreements explicitly

state that the photographs shall “remain the sole and

exclusive property of the Photographer, including the

copyright.” The Agreements also impose certain limitations

on Minden not generally associated with legal title. For

instance, Minden must seek the photographers’ approval

before issuing certain kinds of licenses. Further, the

Agreements permit either party to end the licensing

relationship at specified intervals. We thus agree with Wiley

that the Agreements do not make Minden the legal owner of

the copyrights.

Wiley argues, second, that, read as licenses, the Agency

Agreements are no more than “nonexclusive licenses” that are

insufficient to permit Minden to bring suit. We disagree. 

The thrust of Wiley’s argument is that the Agency

Agreements do not grant “exclusive licenses” to Minden to

grant licenses to third parties, because the photographers

retain the right to issue licenses themselves. That is, Wiley

argues, because Minden was not the sole party authorized to

issue licenses to the photographs, it cannot have held an

“exclusive license” that would permit it to bring suit under

the Act. This argument runs contrary to the divisibility

principle embodied by the 1976 Act, and to the bulk of the
MINDEN PICTURES V. JOHN WILEY & SONS 13

caselaw and commentary in this field. Wiley’s argument is

inconsistent with the notion that, under the 1976 Act, a single

copyright, or right thereunder, may be divided between

parties, with each co-owner entitled to sue to protect his or

her interest in the right. As we recently explained in the

context of copyright ownership, “the word ‘exclusive’ in [the

Act] cannot mean that only sole owners possess ‘exclusive’

rights.” Corbello, 777 F.3d at 1065. “If an ‘exclusive right’

could only be possessed by a sole owner of a copyright, a coowner would be unable to bring an infringement action to

protect his interest.” Id.

We see no reason why the divisibility principle should not

apply with equal force when the interest granted is an

exclusive license to grant licenses to others. The reason the

Act prevents a holder of a “nonexclusive license” to use a

copyrighted photograph from bringing an infringement action

against others who use the same photograph is that such a

licensee has no more than “a privilege that protects him from

a claim of infringement by the owner” of the copyright. W.

Elec. Co. v. Pacent Reproducer Corp., 42 F.2d 116, 119 (2d

Cir. 1930); see Roger D. Blair & Thomas F. Cotter, The

Elusive Logic of Standing Doctrine in Intellectual Property

Law, 74 Tul. L. Rev. 1323, 1347 (2000). That is, because

such a licensee has been granted rights only vis-à-vis the

licensor, not vis-à-vis the world, he or she has no legal right

to exclude others from using the copyrighted work, and thus

no standing to bring an infringement suit. See Hyperquest,

632 F.3d at 385; Blair & Cotter, supra, at 1347. But when a

licensee has been granted rights vis-à-vis the world — even

if he or she shares those rights with another party, including

the owner of the copyright — we see nothing in the

Copyright Act that requires us to deem such an arrangement
14 MINDEN PICTURES V. JOHN WILEY & SONS

a mere “nonexclusive license” insufficient to give rise to

standing to sue.

Patent law, which has long recognized the distinction

between exclusive and nonexclusive licenses, follows the rule

we observe here. As early as 1930, the Second Circuit

rejected the argument that the existence of a residual interest

in another party turns an exclusive license into a nonexclusive

one:

The definition of an exclusive license . . .

might be thought to imply that an ‘exclusive

licensee’ is a sole licensee. But we do not so

understand it. A bare license might be

outstanding in one when the patent owner

grants a license to another accompanied by

the promise that the grantor will give no

further licenses. In such a case, the second

licensee needs the protection of the right of

joinder in a suit against infringers as much as

though he were sole licensee. We see no

reason why he should not have it, and we

think the authorities recognize his right.

Western Elec. Co., 42 F.2d at 119. More recently, the Federal

Circuit has adopted the same position. See WiAV Solutions

LLC v. Motorola, Inc., 631 F.3d 1257, 1266 (Fed. Cir. 2010)

(rejecting the argument that “that for a licensee to be an

exclusive licensee of a patent, the licensee must be the only

party with the ability to license the patent”); Intellectual

Prop. Dev., Inc. v. TCI Cablevision of California, Inc.,

248 F.3d 1333, 1347 (Fed. Cir. 2001). In the words of one

prominent treatise, “one who takes an ‘exclusive’ license

subject to a preexisting license may lack true exclusivity, but
MINDEN PICTURES V. JOHN WILEY & SONS 15

nonetheless possesses the legal right to exclude third parties

(other than the existing licensee) . . . and, thus, has . . .

standing to sue for infringement.” 2 Roger M. Milgram,

Milgram on Licensing § 15.08. Put more simply, we agree

with the Seventh Circuit that the essence of an “exclusive”

license under the Act is that “the copyright holder permits the

licensee to use the protected material for a specific use and

further promises that the same permission will not be given

to others.” I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir.

1996).

Minden has been given just such a promise. Under the

AgencyAgreements, Minden is the “sole and exclusive agent

and representative with respect to the Licensing of any and all

uses” of the photographs. That is, the photographers have

promised that Minden, and onlyMinden, will have the power,

as the photographers’ licensing agent, to authorize third

parties to reproduce, distribute, and display the photographs. 

That the photographers have retained some limited degree of

authority to grant licenses themselves does not eliminate

Minden’s interest in the copyright as the sole entity to act as

the photographers’ licensing agent. It merelymeans that both

Minden and the photographers, under the terms of the

Agreements, can prevent those third parties who have

not received permission to use the photographs from using

them. To hold otherwise would be inconsistent with the

divisibility principle embodied by the 1976 Act.

To hold otherwise would also be inconsistent with

common sense. If the photographers had never entered into

the Agency Agreements, but instead had issued licenses

directly to Wiley, there would be no doubt that they could

bring infringement actions over the violations Minden alleges

in its complaint. We see no reason why, having appointed
16 MINDEN PICTURES V. JOHN WILEY & SONS

Minden to manage the commercial use of their photographs

in the first instance as their licensing agent, the photographers

should not also be able to rely on Minden to protect and

defend the licenses that it has issued on their behalf. Nothing

in the text of the Copyright Act, nor in the Agency

Agreements, compels a contrary conclusion.

Byhonoring the parties’ contracting expectations, we also

remove what would otherwise be a significant practical

disadvantage in seeking to protect a copyrighted work. If

Minden could not bring an infringement suit on behalf of the

photographers for whom it serves as a licensing agent, those

photographers would have to bring suit individually, either in

individual actions or in a single suit under Federal Rule of

Civil Procedure 20. Both procedural alternatives have

significant disadvantages. In a suit against Wiley brought by

an individual photographer, alleging infringement only as to

his or her own photographs, the expenses of litigation would

very likely dwarf any potential recovery. And in a suit under

Rule 20, both the total cost of litigation and the burdens of

coordination would be significant, given the complexities of

litigating on behalf of thirty-some named plaintiffs. The

practical disadvantages of these two alternatives compared

with the prospect of licensing agents bringing suit as sole

plaintiffs are likely obvious to defendants such as Wiley, and

it is not implausible that Minden’s inability to bring an

infringement suit would be an incentive to engage in

infringing behavior.

Because we conclude that the AgencyAgreements convey

the rights to reproduce, distribute, and display the

photographs to Minden via an “exclusive license” to grant

licenses to third parties, we hold that Minden may bring an

infringement action to remedythe unauthorized reproduction,
MINDEN PICTURES V. JOHN WILEY & SONS 17

distribution, and display of the photographs by those to whom

it has granted licenses. We do not reach Minden’s remaining

arguments.

Conclusion

We hold that Minden has standing to bring an

infringement action under the Copyright Act. We therefore

reverse the judgment of the district court.

REVERSED.