Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 1 of 18
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` 08 Civ. 8034 (DAB) (AJP)
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` REPORT AND RECOMMENDATION
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`x : : : : : : x
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`PEARSON EDUCATION, INC. & CENGAGE
`LEARNING INC.
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`Plaintiffs,
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`-against-
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`HENRY NUGROHO, d/b/a SBOOKS4SALE, d/b/a
`MR. SBOOKS 4 SALE, d/b/a SURYANET,
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`Defendant.
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`ANDREW J. PECK, United States Magistrate Judge:
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`To the Honorable Deborah A. Batts, United States District Judge:
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`Plaintiffs Pearson Education, Inc. and Cengage Learning Inc.1/ bring this action
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`alleging that defendant Henry Nugroho has infringed the copyrights to their textbooks by selling,
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`without their permission, "electronic copies of instructors' solutions manuals" that provide answers
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`to the questions posed in their copyrighted textbooks. (Dkt. No. 1: Compl. ¶¶ 1, 21, 28.)
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`Presently before the Court is plaintiffs' summary judgment motion. (Dkt. No. 28: Pls.
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`Notice of Motion; see also Dkt. No. 29: Pls. Br.; Dkt. No. 30: Essig Aff.; Dkt. No. 31: Sampson Aff.;
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`Dkt. No. 32: Scileppi Aff.; Dkt. No. 33: Siewert Aff.; Dkt. No. 34: Pls. Rule 56.1 Stmt.)
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`1/
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`On May 22, 2009, plaintiffs The McGraw-Hill Companies, Inc. and John Wiley & Sons, Inc.
`dismissed their claims without prejudice. (See Dkt. No. 20: Notice of Voluntary Dismissal.)
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 2 of 18
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`For the reasons set forth below, plaintiffs' summary judgment motion should be
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`GRANTED.
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`FACTS
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`Pearson owns the copyright and has United States Copyright Registrations for 130
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`textbooks at issue in this litigation and Cengage owns the copyright and has United States Copyright
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`Registrations for fifty-seven textbooks at issue in this litigation. (See Dkt. No. 34: Pls. Rule 56.1
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`Stmt. ¶¶ 1-2; Dkt. No. 30: Essig Aff. ¶¶ 3-4 & Ex. A: Certificates of Registration; Dkt. No. 31:
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`Sampson Aff. ¶¶ 3-4 & Ex. B: Certificates of Registration.) Plaintiffs also have published
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`"Instructor's Solutions Manuals", which "contain only the answers to the problems in the textbook."
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`(Essig Aff. ¶ 5; Sampson Aff. ¶ 5.) Plaintiffs' "Instructor's Solutions Manuals" are "unregistered."
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`(Dkt. No. 39: Pls. Reply Br. at 4; Dkt. No. 37: Nugroho Aff. ¶ 3(a).)
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`In July 2008, Jennifer Siewert, a paralegal at plaintiffs' counsel's firm, purchased from
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`Nugroho through PayPal electronic copies of instructor's solutions manuals for Pearson's Advanced
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`Accounting textbook and Cengage's Advanced Engineering Mathematics textbook. (Siewert Aff.
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`¶¶ 2-3 & Ex. J: Advanced Accounting Instructor's Solutions Manual, & Ex. K: Advanced
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`Engineering Mathematics Instructor's Solutions Manual; see Nugroho Aff. ¶ 2(a)-(b).) The
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`instructor's solutions manuals purchased from Nugroho are "identical" to the instructor's solutions
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`manuals that Pearson and Cengage publish and sell. (Sampson Aff. ¶ 6; Essig Aff. ¶ 6.)
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`By subpoenaing PayPal, plaintiffs obtained evidence that Nugroho sold 130 different
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`works with the "same title" as Pearson's copyrighted textbooks and fifty-seven different works with
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 3 of 18
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`the "same title" as Cengage's copyrighted textbooks. (Scileppi Aff. ¶¶ 9-11 & Exs. H-I.) Nugroho
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`"has come forward with no written evidence concerning the content of the solutions manuals that
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`he sold" (Scileppi Aff. ¶ 12), but has admitted that he "sold copies of solutions manuals in electronic
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`format to people over the Internet," which contained "answers to problems and exercises in plaintiffs
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`textbooks" (Nugroho Aff. ¶ 2(a)-(b)). Nugroho maintains that he is "not aware of selling 'pirated
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`copies of instructors' solution manual.' The ones [he] was selling were [a] collection of answers to
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`problems in some books, which [he] believed were written, compiled and distributed freely by the
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`students on the Internet." (Scileppi Aff. Ex. D: Nugroho 5/13/09 Aff. & Ex. E: Nugroho undated
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`Aff. ¶ 4.)
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`Plaintiffs' Motion for Summary Judgment
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`Plaintiffs move for summary judgment (Dkt. No. 28), arguing that "[t]here is no
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`genuine dispute" that Nugroho infringed plaintiffs' copyrights by selling derivative works, that is,
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`instructor's solution manuals to plaintiffs' copyrighted textbooks. (Dkt. No. 29: Pls. Br. at 1.)
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`Plaintiffs seek to recover statutory damages of $750 for each of Pearson's 130 copyrighted textbooks
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`and Cengage's fifty-seven copyrighted textbooks that Nugroho infringed. (Pls. Br. at 7-8.) Plaintiffs
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`also request that the Court order that the money in Nugroho's E*Trade account ($38,492.13 as of
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`July 31, 2009) be turned over to plaintiffs to partially satisfy the judgment. (Pls. Br. at 8.) Plaintiffs
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`further seek a permanent injunction to stop Nugroho from "continu[ing] his infringing acts." (Pls.
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`Br. at 9.)
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`Nugroho responds that plaintiffs' motion is meritless because: (1) Nugroho could not
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`have infringed plaintiffs' copyrights in the "Instructor's Solutions Manuals" because plaintiffs'
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`"Instructor's Solutions Manuals" are not copyrighted; and (2) Nugroho's solutions manuals do not
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`infringe on the textbooks' copyrights because the solutions manuals are not "substantial[ly] similar[]"
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`to the textbooks. (Dkt. No. 38: Nugroho Br. at 2-4.)
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`ANALYSIS
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`I.
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`SUMMARY JUDGMENT STANDARD
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`Rule 56(c) of the Federal Rules of Civil Procedure provides that summary "judgment
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`should be rendered if the pleadings, the discovery and disclosure materials on file, and any affidavits
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`show that there is no genuine issue as to any material fact and that the movant is entitled to judgment
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`as a matter of law." Fed. R. Civ. P. 56(c); see also, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322,
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`106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S. Ct. 2505,
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`2509-10 (1986); Lang v. Ret. Living Pub. Co., 949 F.2d 576, 580 (2d Cir. 1991).
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`The burden of showing that no genuine factual dispute exists rests on the party
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`seeking summary judgment. See, e.g., Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S. Ct.
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`1598, 1608 (1970); Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 36 (2d Cir. 1994); Gallo v.
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`Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). The movant may
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`discharge this burden by demonstrating to the Court that there is an absence of evidence to support
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`the non-moving party's case on an issue on which the non-movant has the burden of proof. See, e.g.,
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`Celotex Corp. v. Catrett, 477 U.S. at 323, 106 S. Ct. at 2552-53.
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`To defeat a summary judgment motion, the non-moving party must do "more than
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`simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356 (1986). Instead, the
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`non-moving party must "set out specific facts showing a genuine issue for trial." Fed. R. Civ. P.
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`56(e); accord, e.g., Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. at 587, 106 S. Ct.
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`at 1356; Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000) (At summary judgment,
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`"[t]he time has come . . . 'to put up or shut up.'") (citations omitted), cert. denied, 540 U.S. 811, 124
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`S. Ct. 53 (2003).
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`In evaluating the record to determine whether there is a genuine issue as to any
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`material fact, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are
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`to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. at 255, 106 S. Ct. at 2513.2/
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`The Court draws all inferences in favor of the nonmoving party only after determining that such
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`inferences are reasonable, considering all the evidence presented. See, e.g., Apex Oil Co. v.
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`DiMauro, 822 F.2d 246, 252 (2d Cir.), cert. denied, 484 U.S. 977, 108 S. Ct. 489 (1987). "If, as to
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`the issue on which summary judgment is sought, there is any evidence in the record from any source
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`from which a reasonable inference could be drawn in favor of the nonmoving party, summary
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`judgment is improper." Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 37.
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`2/
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`See also, e.g., Feingold v. New York, 366 F.3d 138, 148 (2d Cir. 2004); Chambers v. TRM
`Copy Ctrs. Corp., 43 F.3d at 36; Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d
`at 1223.
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`In considering a motion for summary judgment, the Court is not to resolve contested
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`issues of fact, but rather is to determine whether there exists any disputed issue of material fact. See,
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`e.g., Donahue v. Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d Cir. 1987); Knight v. U.S.
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`Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert. denied, 480 U.S. 932, 107 S. Ct. 1570 (1987). To
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`evaluate a fact's materiality, the substantive law determines which facts are critical and which facts
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`are irrelevant. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S. Ct. at 2510. While
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`"disputes over facts that might affect the outcome of the suit under the governing law will properly
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`preclude the entry of summary judgment[,] [f]actual disputes that are irrelevant or unnecessary will
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`not be counted." Id. at 248, 106 S. Ct. at 2510 (citations omitted); see also, e.g., Knight v. U.S. Fire
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`Ins. Co., 804 F.2d at 11-12.
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`II.
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`PLAINTIFFS' SUMMARY JUDGMENT MOTION SHOULD BE GRANTED
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`Plaintiffs claim that Nugroho "infringed plaintiffs' copyrights through the sale of
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`copies of derivative works known as instructors' solutions manuals." (Dkt. No. 29:Pls. Br. at 3-4, 6-
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`7.)3/ Nugroho does not dispute that plaintiffs have registered copyrights in the textbooks or that his
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`instructor's solutions manuals provide answers to the problems in the textbooks. (See pages 2-3
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`above.) The only issue in dispute is whether the instructor's solutions manuals qualify as "derivative
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`works." The Court agrees with plaintiffs that they do.
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`3/
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`"Plaintiffs are not arguing that Nugroho infringed the copyright in [their] unregistered
`instructors' solutions manual. Rather, plaintiffs are arguing that Nugroho infringed the
`copyrights in their registered textbooks. . . . through the sale of derivative works, the
`instructors' solutions manuals." (Dkt. No. 39: Pls. Reply Br. at 4-5.)
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` The Copyright Act "grants copyright owners a bundle of exclusive rights, including
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`the rights . . . 'to prepare derivative works based upon the copyrighted work.'" Castle Rock Entm't,
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`Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998) (quoting 17 U.S.C. § 106(2)).
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`Thus, "it is a copyright infringement to make or sell a derivative work without a license from the
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`owner of the copyright on the work from which the derivative work is derived." Bucklew v.
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`Hawkins, Ash, Baptie & Co., 329 F.3d 923, 930 (7th Cir. 2003) (Posner, C.J.); see also, 1 Melville
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`B. Nimmer & David Nimmer, Nimmer on Copyright § 3.06 (2009 ed.) ("If the pre-existing work that
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`serves as the basis for a derivative or collective is itself protected by copyright, then its unauthorized
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`incorporation into a derivative or collective work constitutes copyright infringement. . . . [C]onsent
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`of the copyright owner of a still-protected pre-existing work is necessary to render the derivative or
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`collective work noninfringing . . . ."); see generally 4 William F. Patry, Patry on Copyright, Chapter
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`12 (2009 ed.).
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`The Copyright Act defines "derivative work":
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`A "derivative work" is a work based upon one or more preexisting works, such as a
`translation, musical arrangement, dramatization, fictionalization, motion picture
`version, sound recording, art reproduction, abridgment, condensation, or any other
`form in which a work may be recast, transformed, or adapted. A work consisting of
`editorial revisions, annotations, elaborations, or other modifications which, as a
`whole, represent an original work of authorship, is a "derivative work."
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`17 U.S.C. § 101. "A derivative use can certainly be complementary to, or fulfill a different function
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`from, the original." Blanch v. Koons, 467 F.3d 244, 252 n.4 (2d Cir. 2006).4/ For example, in
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`4/
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`"A work is not derivative, however, simply because it is based upon the preexisting works.
`(continued...)
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`Pavlica v. Behr, Judge Chin held that a "15-day Workshop Schedule" and a "Teacher's Manual
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`Addendum" that complemented a "Teacher's Manual" were derivative works:
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`They do not have independent economic value, and they are not by themselves
`economically viable. The Schedule is by nature derivative and it is meaningless
`without the Manual. It has no purpose on its own as it merely lays out a schedule
`with repeated references to the Manual, using terms that appear in the Manual and
`that have little meaning without reference to the Manual. Similarly, the Addendum
`is by nature derivative, as it merely provides additional samples of papers written by
`students and a booklet prepared for a science symposium, to be used with the
`Manual.
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`Pavlica v. Behr, 03 Civ. 9628, 04 Civ. 8152 , 2006 WL 1596763 at *1, 3 (S.D.N.Y. June 12, 2006)
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`(Chin, D.J.) (record citation omitted). In Addison-Wesley Publ'g Co. v. Brown, 223 F. Supp. 219,
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`221-24, 226-28 (E.D.N.Y. 1963), the Court held that defendant's publication and sale of a "Manual
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`of Solutions" corresponding to the questions posed in plaintiff's copyrighted textbook infringed on
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`plaintiff's copyright, explaining:
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`The solutions, for their part, have no independent viability. Without
`appropriation of the exact dimensions and magnitudes stipulated, in their context of
`the postulates propounded in plaintiffs' problems, whatever the form or version into
`which defendants in their effort at disguise may have translated what they purloined,
`the solutions would exist in vacuo and be meaningless. What gives the solutions
`their value is that which, and only that which is already in the pirated works.
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`4/
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`(...continued)
`If that were the standard, then parodies and book reviews would fall under the
`definition, . . . . The statutory language seeks to protect works that are recast, transformed,
`or adapted into another medium, mode, language, or revised version, while still representing
`the original work of authorship." Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d
`513, 538-39 (S.D.N.Y. 2008) (citation, quotations & fn. omitted).
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`Addison-Wesley Publ'g Co. v. Brown, 223 F. Supp. at 220, 223-24; see, e.g., Castle Rock Entm't,
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`Inc. v. Carol Publ'g Group, Inc., 150 F.3d at 145 (trivia book about the television sitcom, Seinfeld,
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`"substitutes for a derivative market that a television program copyright owner such as Castle Rock
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`'would in general develop or license others to develop.'") (quoting Campbell v. Acuff-Rose Music,
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`Inc., 510 U.S. 569, 592, 114 S. Ct. 1164, 1178 (1994)); Educ. Testing Serv. v. Simon, 95 F. Supp.
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`2d 1081, 1089 (C.D. Cal. 1999) ("Defendants have further violated [plaintiff's] right to create
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`derivative works by incorporating the copied questions into a new work – defendants' coaching
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`materials – which add, among other things, suggested answers to the questions."); Video Aided
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`Instruction, Inc. v. Y & S Express, Inc., No. 96 CV 518, 1996 WL 711513 at *5 (E.D.N.Y. Oct. 29,
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`1996) (study booklets and audio portions of an educational videocassette series were derivative
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`works rather than separate works for purposes of statutory damages because their "viability [was]
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`wholly dependent on the video-cassettes themselves").5/
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`Here, as in Pavlica and Addison-Wesley Publ'g Co., Nugroho's instructor's solutions
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`manuals complement plaintiffs' copyrighted textbooks, have no "independent economic value" and
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`5/
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`See also, e.g., Midway Mfg. Co. v. Arctic Int'l, Inc., No. 80 C 5863, 1981 WL 1390 at * 9
`(N.D. Ill. June 2, 1981) ("If defendant's device is designed and used solely to modify
`plaintiff's visual image, then plainly defendant's device would only have value because of
`plaintiff's particular copyrighted audio visual work. Defendant, thus, by selling its device
`reaps the benefits of plaintiff's artistic endeavor."); Kepner-Tregoe, Inc. v. Carabio, No.
`8-71025, 1979 WL 1072 at *17 (E.D. Mich. July 23, 1979) (materials used to train
`instructors to teach a program were "by nature derivative" because they could not "'live their
`own copyright life'" and "would have no purpose" without the program); Procter & Gamble
`Co. v. Moskowitz, 127 U.S.P.Q. 523, 524 (E.D.N.Y. 1960) (noting that "selling answers to
`a [copyrighted] puzzle contest [is]an unlawful interference with the plaintiff's business and
`copyright").
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 10 of 18
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`are "meaningless" without the textbooks because they merely provide answers to questions posed
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`in the textbooks. Accordingly, this Court holds that Nugroho's instructor's solutions manuals are
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`derivative works that infringe upon plaintiffs' textbook copyrights.6/
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`III. MONETARY AND INJUNCTIVE RELIEF
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`A.
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`Statutory Damages
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`Plaintiffs request "minimum statutory damages" in the amount of $750 for each of
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`the 187 copyrighted textbooks7/ that Nugroho infringed. (See page 3 above; Dkt. No. 29: Pls. Br.
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`at 7-8.)
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`The owner of a registered copyright that has been infringed can elect to recover either
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`actual damages or statutory damages. 17 U.S.C. ¶¶ 504(a)(1)-(2), 504(c). Plaintiffs do not seek
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`actual damages in this case, but rather ask that the Court award statutory damages. (See page 3
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`above.)
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`6/
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`7/
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`Nugroho relies upon Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F. Supp. 2d 147
`(E.D.N.Y. 2002) (Weinstein, D.J.), aff'd, 354 F.3d 112 (2d Cir. 2003), to argue that he did
`not infringe plaintiffs' copyrights because (1) plaintiffs' solutions manuals were not registered
`and (2) the solutions manuals he sold "failed to show any substantial similarity" to the
`textbooks. (Dkt. No. 38: Nugroho Br. at 2-4, emphasis omitted.) As plaintiffs aptly noted
`in their brief (see Pls. Br. at 4-5), Nugroho's arguments and Well-Made Toy Mfg. Corp. do
`not apply to this case because (1) plaintiffs are not arguing that Nugroho infringed its
`"unregistered instructors' solutions manual[s]" and (2) plaintiffs are not arguing that Nugroho
`infringed their copyrights by selling a "substantially similar work" but instead are arguing
`that Nugroho infringed their copyrights by selling derivative works. (Dkt. No. 39: Pls. Reply
`Br. at 4-5.)
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`Nugroho does not dispute that each of the 187 works he sold via PayPal were instructor's
`solutions manuals to plaintiffs' textbooks. (See page 3 above.)
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`Statutory damages "'are available without proof of plaintiff's actual damages or proof
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`of any damages.'" Nat'l Football League v. PrimeTime 24 Joint Venture, 131 F. Supp. 2d 458, 472
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`(S.D.N.Y. 2001) (Peck, M.J.) (quoting Starbucks Corp. v. Morgan, 99 Civ. 1404, 2000 WL 949665
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`at *2 (S.D.N.Y. July 11, 2000) (Peck, M.J.) (citing 17 U.S.C. § 504(c)(1)); see, e.g., Business Trends
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`Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 403 (2d Cir. 1989) ("[C]opyright plaintiffs
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`may elect at any time before final judgment to receive statutory damages under Section 504(c), a
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`method useful where proof of actual damages or profits is insufficient."); UMG Recordings, Inc. v.
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`Griffin, No. 08-CV-00274, 2008 WL 4974856 at *2 (N.D.N.Y. Nov. 24, 2008). ("[A] plaintiff may
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`elect statutory damages regardless of the adequacy of the evidence offered as to his actual damages
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`and the amount of the defendant's profits.") (quotations omitted); Interscope Records v. Sharp, No.
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`05-CV-920, 2007 WL 4555905 at *2 (N.D.N.Y. Dec. 19, 2007) (same); 4 Melville B. Nimmer &
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`David Nimmer, Nimmer on Copyright § 14.04[A] (2009 ed.) ("Under the current [Copyright] Act,
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`the copyright owner may elect to recover statutory damages, instead of actual damages and
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`defendant's profits. He may, moreover, make such an election regardless of the adequacy of the
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`evidence offered as to his actual damages and the amount of defendant's profits, and even if he has
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`intentionally declined to offer such evidence, although it was available. . . . The availability of
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`statutory damages under the current Act, even under circumstances in which plaintiff's damages or
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`defendant's profits are susceptible to precise evaluation, represents a departure from the pertinent
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`provisions of the 1909 Act.") (fns. omitted); 6 William F. Patry, Patry on Copyright § 22: 153-208
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`(2009 ed.). As Professor Patry has explained:
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`Since actual damages and profits frequently are difficult to prove, the
`Copyright Act provides for minimum and maximum statutory damages. These
`damages may be elected by the copyright owner at any time before final judgment is
`rendered, without proof of actual damages.
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`2 William F. Patry, Copyright Law & Practice at 1170 (1994) (fns. omitted).
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`The Copyright Act's provision for statutory damages is found in 17 U.S.C.
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`§ 504(c)(1), which provides:
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`[T]he copyright owner may elect, at any time before final judgment is rendered, to
`recover, instead of actual damages and profits, an award of statutory damages for all
`infringements involved in the action, with respect to any one work, for which any one
`infringer is liable individually, or for which any two or more infringers are liable
`jointly and severally, in a sum of not less than $750 or more than $30,000 as the court
`considers just. For the purposes of this subsection, all the parts of a compilation or
`derivative work constitute one work.
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`17 U.S.C. § 504(c)(1) (emphasis added). "The current statute shifts the unit of damages inquiry from
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`number of infringements to number of works." Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996
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`F.2d 1366, 1381 (2d Cir. 1993). "Where the suit involves infringement of more than one separate
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`and independent work, minimum statutory damages [of $750] for each work must be awarded." 6
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`William F. Patry, Patry on Copyright § 22:185 (2009 ed.); see also, e.g., WB Music Corp. v. RTV
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`Commc'n Group, Inc., 445 F.3d 538, 540 (2d Cir. 2006) ("'[T]he total number of awards of statutory
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`damages that a plaintiff may recover in any given action depends on the number of works that are
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`infringed and the number of individually liable infringers, regardless of the number of infringements
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`of those works.'"); D.C. Comics Inc. v. Mini Gift Shop, 912 F.2d 29, 34 (2d Cir. 1990) ("Within
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`these [minimum and maximum amount] limitations the court's discretion and sense of justice are
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`controlling, but it has no discretion when proceeding under this [statutory damages] provision to go
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 13 of 18
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`13
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`outside of them.") (quotation omitted); Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d
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`513, 554 (S.D.N.Y. 2008) (Awarding "statutory damages of $750.00 for each of the seven Harry
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`Potter novels" infringed by defendant's derivative work.); 4 Melville B. Nimmer & David Nimmer,
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`Nimmer on Copyright § 14.04[B][1][a] (2009 ed.) ("[T]he statute itself sets certain minimum and
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`maximum limits for such [statutory] damages, which are mandatory.").; id. § 14.04[E][1][a] ("If
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`defendant's infringing work copies from several different copyrighted works owned by plaintiff, the
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`applicable minimum damages can be multiplied by the number of such infringed copyrights."); 6
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`William F. Patry, Patry on Copyright § 22:184 (2009 ed.) ("[B]y contrast with the 1909 Act, under
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`the 1976 Act awards of statutory damages are determined by the number of works infringed, not by
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`the number of infringing acts. This represents a fundamental shift between the two acts.").
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`Accordingly, plaintiffs are entitled to the requested minimum statutory damages of
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`$750 for each of Pearson's 130 copyrighted textbooks and Cengage's fifty-seven copyrighted
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`textbooks that Nugroho infringed, totaling $97,500 for Pearson and $42,750 for Cengage. The Court
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`also should order the receiver for Nugroho's E*Trade account to release those funds to plaintiffs to
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`partially satisfy the judgment.
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`B.
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`Injunctive Relief
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`Plaintiffs also request a permanent injunction to stop Nugroho from "continu[ing] his
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`infringing acts." (See page 3 above.) In Warner Bros. Entm't Inc. v. RDR Books, Judge Patterson
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`summarized the standard for injunctive relief in copyright cases, as follows:
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`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
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 14 of 18
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`14
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`U.S.C. § 502(a). In eBay Inc. v. MercExchange, LLC, the Supreme Court made clear
`that an injunction does not automatically follow a determination that a copyright has
`been infringed. 547 U.S. 388, 392-93, 126 S. Ct. 1837 (2006). A copyright plaintiff
`seeking a permanent injunction still must satisfy the traditional four-factor test before
`the district court may use its equitable discretion to grant such relief. The plaintiff
`must demonstrate: (1) that it will suffer an irreparable injury; (2) that remedies
`available at law, such as monetary damages, are inadequate to compensate for that
`injury; (3) that, considering the balance of hardships between the plaintiff and
`defendant, a remedy in equity is warranted; and (4) that the public interest would not
`be disserved by a permanent injunction.
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`Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d 513, 551-52 (S.D.N.Y. 2008); see, e.g.,
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`eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391-93, 126 S. Ct. 1837, 1839-40 (2006)
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`("According to well-established principles of equity, a plaintiff seeking a permanent injunction must
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`satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that
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`it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages,
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`are inadequate to compensate for that injury; (3) that, considering the balance of hardships between
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`the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would
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`not be disserved by a permanent injunction. . . . And as in our decision today, this Court has
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`consistently rejected invitations to replace traditional equitable considerations with a rule that an
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`injunction automatically follows a determination that a copyright has been infringed."); 6 William
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`F. Patry, Patry on Copyright §§ 22:74, 22:78 (2009 ed.).
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`Plaintiffs satisfy the four step test. Because plaintiffs have succeeded in showing that
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`Nugroho infringed their copyrights, irreparable harm may be presumed. See, e.g., ABKCO Music,
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`Inc. v. Stellar Records, Inc., 96 F.3d 60, 66 (2d Cir. 1996); SimplexGrinnell LP v. Integraged Sys.
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`& Power, Inc., 07 Civ. 2700, – F. Supp. 2d –, 2009 WL 857504 at *2 (S.D.N.Y. Mar. 31, 2009)
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 15 of 18
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`15
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`(Lynch, D.J.) ("[I]rreparable injury may generally be presumed 'when a copyright plaintiff makes a
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`prima facie showing of infringement.'"), modified on other grounds, – F. Supp. 2d –, 2009 WL
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`2223692 (S.D.N.Y. July 27, 2009); Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d at 552
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`("Because Plaintiffs have demonstrated a case of copyright infringement, and because Defendant has
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`failed to establish its affirmative defense to copyright infringement, irreparable injury may be
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`presumed in this case. In view of eBay, which applied the traditional four-part test for injunctive
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`relief in the context of a patent claim, there is some question of whether the presumption of
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`irreparable harm still applies. District courts, however, have continued to apply the presumption
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`post-eBay."). Plaintiffs also have demonstrated that monetary damages are inadequate to compensate
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`for their injury. Nugroho likely will not be able to satisfy the monetary judgment beyond the
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`$38,492.13 in his E*Trade accounts because, without those accounts, he does not "have the sufficient
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`fund[s] to cover [his] basic living expenses such as paying for meals and house rents." (Dkt. No. 32:
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`Scileppi Aff. Ex. D: Nugroho 5/13/09 Letter.) Nor has Nugroho stated, much less given any
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`assurances, that he will not continue to infringe, absent an injunction. See, e.g., SimplexGrinnell
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`LP v. Integraged Sys. & Power, Inc., 2009 WL 857504 at *23 ("there is ample evidence to suggest
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`that [defendant] would continue to engage in [infringing activity] absent an injunction, making any
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`remedy at law inadequate."). Warner Bros. Entm't Inc. v. Carsagno, No. 06 CV 2676, 2007 WL
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`1655666 at *6 (E.D.N.Y. June 4, 2007) ("As there is no assurance in the record against defendant's
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`continued violation of plaintiff's copyrights, a remedy at law is insufficient to compensate for
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`plaintiff's injuries."). As to the third factor, balance of the hardships, Nugroho has not identified any
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 16 of 18
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`16
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`hardship beyond the inability to sell instructor's solutions manuals that infringe plaintiffs' copyrights.
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`Plaintiffs, however, sell their own instructor's solutions manuals and would be harmed if they
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`continued to lose sales to defendant's infringing copies.8/ Finally, as to the fourth step, Nugroho has
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`not shown that an injunction would "disserve" the public.9/ Accordingly, the Court should issue a
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`permanent injunction enjoining Nugroho from publishing and/or selling any instructor's solutions
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`manuals to any of plaintiffs' copyrighted textbooks.
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`CONCLUSION
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`For the reasons set forth above, plaintiffs' summary judgment motion (Dkt. No. 28)
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`should be GRANTED. The Court should award Pearson statutory damages of $97,500 and award
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`Cengage $42,750. The Court also should permanently enjoin Nugroho from violating plaintiffs'
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`copyrights. The Court also should order Clifford James, Esq., the temporary receiver for Nugroho's
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`8/
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`9/
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`See, e.g., SimplexGrinnell LP v. Integrated Sys. & Power, Inc., 2009 WL 857504 at *23
`("[D]efendant has not identified any hardship it would suffer if infringing uses of the
`Programmer were enjoined beyond the legally unprotected 'hardship' of loss of ability to
`engage in unauthorized conduct and the concomitant business opportunities that such
`unauthorized activities may provide."); Warner Bros. Entm't Inc. v. RDR Books, 575 F.
`Supp. 2d at 553 ("While Plaintiffs have identified their hardships if an injunction were not
`granted, Defendant identifies no hardship it would suffer if publication of the Lexicon were
`enjoined. The only possible harm to Defendant is the loss of the chance to sell an infringing
`book, but the law does not protect this type of hardship.").
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`See, e.g., Warner Bros. Entm't, Inc. v. Carsagno, 2007 WL 1655666 at *6 ("'[T]he public
`interest would not be disserved by a permanent injunction, as there is a greater public benefit
`in securing the integrity of [plaintiff's] copyrights than in allowing [defendant] to make [the]
`copyrighted material available to the public.'").
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`Case 1:08-cv-08034-DAB Document 40 Filed 10/27/09 Page 17 of 18
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`17
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`attached E*Trade accounts, to turn over the funds from the E*Trade account to plaintiffs to partially
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`satisfy the judgment.
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`FILING OF OBJECTIONS TO THIS REPORT AND RECOMMENDATION
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`Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil
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`Procedure, the parties shall have ten (10) days from service of this Report to file written objections.
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`See also Fed. R. Civ. P. 6.10/ Such objections (and any responses to objections) shall be filed with
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`the Clerk of the Court, with courtesy copies delivered to the chambers of the Honorable Deborah A.
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`Batts, 500 Pearl Street, Room 2510, and to my chambers, 500 Pearl Street, Room 1370. Any
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`requests for an extension of time for filing o