Grant Heilman Photography, Inc. v. John Wiley & Sons, Inc.

864 F. Supp. 2d 316, 2012 U.S. Dist. LEXIS 47022, 2012 WL 1080144
CourtDistrict Court, E.D. Pennsylvania
DecidedMarch 30, 2012
DocketCivil Action No. 11-cv-01665
StatusPublished
Cited by9 cases

This text of 864 F. Supp. 2d 316 (Grant Heilman Photography, Inc. v. John Wiley & Sons, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Grant Heilman Photography, Inc. v. John Wiley & Sons, Inc., 864 F. Supp. 2d 316, 2012 U.S. Dist. LEXIS 47022, 2012 WL 1080144 (E.D. Pa. 2012).

Opinion

OPINION

JAMES KNOLL GARDNER, District Judge.

This matter is before the court on Plaintiffs’ Motion for Preliminary Injunction to Stop Defendant John Wiley & Sons, Inc. from Continuing to Infringe Copyrights, filed March 8, 2011 (“Motion for Preliminary Injunction”).1 For the following reasons, I deny plaintiffs’ Motion for Preliminary Injunction.

JURISDICTION

The court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1831, 1338 and 1367.

VENUE

Venue is proper pursuant to 28 U.S.C. § 1391(b)(1) and (c)(2), and pursuant to 28 U.S.C. § 1400(a).

BACKGROUND

According to the averments in plaintiffs’ Complaint, and testimony presented at an injunction hearing, held before me on May 16, 17, 20, 31, and June 1, 2011, plaintiff Grant Heilman Photography, Inc. (“Heilman Photography”) is a stock photography agency which licences photographs on behalf of a number of photographers, including plaintiff Grant Heilman, a well-known professional photographer. Heilman Photography maintains its principle place of business in Lititz, Pennsylvania.

Acting on behalf of the photographers it represents, Heilman Photography, in return for a fee, issues limited licenses to publishers to permit the reproduction of its photographs in their publications. In turn, Heilman Photography compensates the photographers for the use of the photographs with a fee, royalty, or other payment in accordance with the agreement between Heilman Photography and the photographers whose photographs are being published.

Defendant John Wiley and Sons, Inc. (“Wiley”) is a publisher of mainly college-level educational textbooks, with its primary office in Hoboken, New Jersey. Wiley sells and distributes textbooks in Pennsylvania, throughout the United States, and in other countries.

COMPLAINT

On March 8, 2011, plaintiffs filed a three-count Complaint, which includes a [320]*320demand for jury trial. Specifically, Count I is a claim for copyright infringement against defendant Wiley, in violation of 17 U.S.C. § 501. Count II is a claim for common-law fraud against defendant Wiley. Count III is a claim for copyright infringement against defendant John Doe Printers 1-10, in violation of 17 U.S.C. § 501. Plaintiffs allege that the identity of these printers is known to defendant, but unknown to plaintiffs.

Plaintiffs’ prayer for relief seeks a preliminary and permanent injunction against defendants and anyone acting in concert with them from copying, displaying, distributing, selling or offering to sell plaintiffs’ photographs, some described in the Complaint and others not included in this suit. Injunctive relief is authorized by 17 U.S.C. § 502.

Plaintiffs also seek impoundment of all copies of photographs used in violation of their copyrights as well as all related records, and destruction or other reasonable disposition of the photos upon final judgment, pursuant to 17 U.S.C. § 503.

Plaintiffs additionally seek actual damages and all profits derived from unauthorized use of their photographs, or statutory damages if they so elect. Finally, plaintiffs seek reasonable attorney’s fees, costs, punitive damages against defendant Wiley, and other relief as the court deems proper.

Plaintiffs’ request for a preliminary injunction arises out of defendants’ alleged infringement of certain of plaintiffs’ copyrighted photographs. Specifically, plaintiffs allege that they are the owners and exclusive copyright holders of certain photographs. Plaintiffs allege that between 1995 and 2009 they sold defendant Wiley limited licenses to use the photographs in numerous educational publications. The licenses were limited by number of copies, distribution area, language, duration, and media.

Plaintiffs aver that defendant Wiley exceeded the permitted uses under the terms of the limited licenses in certain identified publications. Plaintiffs further assert that defendant Wiley used other identified photographs without any permission.

Plaintiffs also allege that when requesting to use the photos, defendant Wiley represented that it needed only limited permission, knowing that Wiley’s actual use would exceed the permission it was requesting and paying for. Plaintiffs allege that Wiley made these misrepresentations to obtain the photographs at a lower cost, and that plaintiffs relied to their detriment on the misrepresentations when establishing their licensing fees.

PROCEDURAL HISTORY

On March 8, 2011, plaintiffs also filed the within Motion for Preliminary Injunction.2 Plaintiffs seek a preliminary injunction prohibiting future unlicensed printing of plaintiffs’ copyrighted photographic images. Plaintiffs do not seek an order mandating retrieval of textbooks which have already been distributed to schools or prohibiting the sale of any textbooks which have already been printed.3

[321]*321On April 11, 2011, Wiley filed Defendants’ Opposition to Plaintiffs’ Motion for a Preliminary Injunction.

A hearing on plaintiffs’ was held over the course of five days — May 16,17, 20, 31, and June 1, 2011.4

FINDINGS OF FACT

Based upon the pleadings, record papers, affidavits, depositions, exhibits, stipulations of counsel and the evidence presented at the hearing held May 16, 17, 20, 31, and June 1, 2011, the pertinent facts are as follows.

Between 1995 and 2009, Heilman Photography regularly granted licenses to Wiley for the use of Grant Heilman’s photographs in Wiley’s textbooks in exchange for a licensing fee paid by Wiley. These licenses expressly limited the number of reproductions permitted, the geographic distribution area, the language in which the book was printed, the duration of the license, and additional media in which the image could be displayed.

Printings in Excess of Licensed Quantities

Invoices sent to Wiley by Heilman Photography contained the license limitations for the images included in the invoice. Plaintiffs introduced numerous invoices into evidence during the preliminary injunction hearing.5 Plaintiffs also introduced purchase orders for textbooks published by Wiley and subject to Heilman Photography’s licenses.6

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Bluebook (online)
864 F. Supp. 2d 316, 2012 U.S. Dist. LEXIS 47022, 2012 WL 1080144, Counsel Stack Legal Research, https://law.counselstack.com/opinion/grant-heilman-photography-inc-v-john-wiley-sons-inc-paed-2012.