Frerck v. John Wiley & Sons, Inc.

850 F. Supp. 2d 889, 102 U.S.P.Q. 2d (BNA) 1137, 2012 U.S. Dist. LEXIS 14386, 2012 WL 386713
CourtDistrict Court, N.D. Illinois
DecidedFebruary 7, 2012
DocketCase No. 11-cv-2727
StatusPublished
Cited by2 cases

This text of 850 F. Supp. 2d 889 (Frerck v. John Wiley & Sons, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Frerck v. John Wiley & Sons, Inc., 850 F. Supp. 2d 889, 102 U.S.P.Q. 2d (BNA) 1137, 2012 U.S. Dist. LEXIS 14386, 2012 WL 386713 (N.D. Ill. 2012).

Opinion

MEMORANDUM OPINION AND ORDER

ROBERT M. DOW, JR., District Judge.

This matter is before the Court on Plaintiff Robert Frerck’s motion for a preliminary injunction [11] and Defendant John Wiley and Son’s partial motion to dismiss [20]. Plaintiff seeks an injunction to prevent Wiley from future infringements of his copyrighted products. Defendant Wiley seeks dismissal of Plaintiffs fraud count. For the reasons set forth below, the Court denies Plaintiffs motion for a preliminary injunction [11] and denies Defendant’s partial motion to dismiss [20].1

I. Background

Plaintiff Robert Frerck is a professional photographer who resides in Chicago, Illinois. Odyssey Productions, Inc. acts as licensing agent for Frerck’s photographs. Defendant John Wiley and Sons, Inc. is a textbook publisher, located in Hoboken, New Jersey. Between approximately 1992 and 2010, Plaintiff sold Defendant limited licenses to use a number of Plaintiffs photographs in Defendant’s publications. Plaintiff maintains that Odyssey expressly defined the number of permissible copies, image size, distribution area, form of media, and duration for each publication. Plaintiff alleges that Wiley’s use of Plaintiffs photographs exceeded the use permitted by the terms of the licenses, or in some cases, used photographs without first seeking permission. Plaintiff asserts claims against Defendant Wiley for fraud and copyright infringement in violation of 17 U.S.C. § 501, et seq.

II. Preliminary Injunction

Like all forms of injunctive relief, a preliminary injunction is “an extraordinary remedy that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.” Mazurek v. Armstrong, 520 U.S. 968, 972, 117 S.Ct. 1865, 138 L.Ed.2d 162 (1997) (emphasis in original); see also Goodman v. Ill. Dep’t of Financial & Professional Reg., 430 F.3d 432, 437 (7th Cir.2005) (same). A party seeking a preliminary injunction must demonstrate as a threshold matter that (1) its case has some likelihood of succeeding on the merits; (2) no adequate [892]*892remedy at law exists; and (3) it will suffer irreparable harm if preliminary relief is denied. Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir.1992). If the moving party meets its initial burden, then the court must consider the irreparable harm that the nonmoving party will suffer if preliminary relief is granted, balancing such harm against the irreparable harm the moving party will suffer if relief is denied. Storck USA, L.P. v. Farley Candy Co., 14 F.3d 311, 314 (7th Cir.1994). The court also considers the public interest served by granting or denying the relief, including the effects of the relief on non-parties. Id.

The Copyright Act provides that courts may grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). The Supreme Court has made clear that an injunction does not automatically follow a determination that a copyright has been infringed. See eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 392-93, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006) (“Like the Patent Act, the Copyright Act provides that courts ‘may’ grant injunctive relief ‘on such terms as it may deem reasonable to prevent or restrain infringement of a copyright’ * * * * And as in our decision today, this Court has consistently rejected invitations to replace traditional equitable considerations with a rule that an injunction automatically follows a determination that a copyright has been infringed.”) (internal citation omitted); see also Salinger v. Colting, 607 F.3d 68, 80 (2d Cir.2010) (noting that “the court must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular' attention to whether the ‘remedies available at law, such as monetary damages, are inadequate to compensate for that injury’ ”) (quoting MercExchange, 547 U.S. at 391, 126 S.Ct. 1837). The Court also cautioned district courts against presuming that money damages always will be appropriate. MercExchange, 547 U.S. at 393-94, 126 S.Ct. 1837 (criticizing district court’s categorical rule that a plaintiffs willingness to license its patents “would be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue”).

A. Likelihood of Success on the Merits

A party seeking a preliminary injunction must demonstrate “that it has a ‘better than negligible’ chance of success on the merits of at least one of its claims.” Girl Scouts of Manitou Council, Inc. v. Girl Scouts of U.S.A., 549 F.3d 1079, 1096 (7th Cir.2008). This is an “admittedly low requirement.” Id. However, if a plaintiff fails to demonstrate any likelihood of success on the merits, the motion for preliminary injunction must be denied. See, e.g., Cox v. City of Chicago, 868 F.2d 217, 223 (7th Cir.1989).

To establish copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) the infringer’s unauthorized copying of protected elements of the copyrighted material. JCW Invs., Inc. v. Novelty, Inc., 482 F.3d 910, 914 (7th Cir.2007). Plaintiff has submitted evidence that he owns the copyrights to the photographs that he licensed to Wiley. He also has presented evidence that he licensed only a limited right to copy the photographs, or did not license them at all. Finally, Plaintiff has presented evidence that Defendant printed some of his photographs without any license and maintains that Defendant printed beyond specified limits in other licenses. See Wood v. Houghton Mifflin Harcourt Pub. Co., 589 F.Supp.2d 1230, 1238-42 (D.Colo.2008) (“Wood has also produced probative evidence that HMH exceeded the scope of the [893]*893licenses issued for [four textbooks, by introducing HMH’s admissions and inventory records' demonstrating print quantities in excess of the licensed quantities] * * * * Therefore, for these four publications, Wood has met his burden of establishing that HMH exceeded the scope of its license and thus violated his copyright.”). Based on the foregoing, Plaintiff has a significant chance of success on the merits. See WPIX, Inc. v. ivi, Inc., 765 F.Supp.2d 594, 617 (S.D.N.Y.2011) (“finding that the plaintiffs “easily” met their burden of likelihood of success on the merits where plaintiffs demonstrated that they owned valid copyrights and that defendant was using their works without their consent and in the absence of any statutory exception”).

B. Irreparable Harm/Absence of Adequate Remedy at Law

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850 F. Supp. 2d 889, 102 U.S.P.Q. 2d (BNA) 1137, 2012 U.S. Dist. LEXIS 14386, 2012 WL 386713, Counsel Stack Legal Research, https://law.counselstack.com/opinion/frerck-v-john-wiley-sons-inc-ilnd-2012.