Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`
`:
`GRANT HEILMAN PHOTOGRAPHY, INC.
`:
`
` Plaintiff, :
`v.
`:
`
`
`:
`THE MCGRAW-HILL COMPANIES, INC., and
`:
`JOHN DOES PRINTERS 1-10,
`:
`
`
`:
`
` Defendants :
`
`
`CIVIL ACTION
`
`NO. 12-2061
`
`MEMORANDUM RE: MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`
`Baylson, J.
`
`
`
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`August 6, 2014
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`I. BACKGROUND AND PROCEDURAL HISTORY
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`Plaintiff, a stock photography agency, alleges Defendants, affiliated publishing
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`companies, printed stock photography images it licensed beyond the scope of the licenses
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`Plaintiff granted Defendants in the invoice for each image. On April 18, 2012 Plaintiff filed a
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`complaint claiming 2,395 instances of copyright infringement. This Court bifurcated the trial to
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`hear fifty-seven claims of copyright infringement based on thirty invoices in a bellwether trial.
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`Grant Heilman Photography, Inc. v. McGraw-Hill Companies, Inc., No. 12-2061, 2013 WL
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`1890367 (E.D. Pa. May 7, 2013).
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` Plaintiff moved for partial summary judgment on those fifty-seven claims for copyright
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`infringement. (ECF 104). Defendants opposed the motion, contending the course of dealing
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`demonstrated the scope of the copyright licenses extended beyond the limits articulated in the
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`invoices. (ECF 108). Defendants also argued that the three-year statute of limitations barred
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`Plaintiff’s claims for infringement that occurred prior to April 18, 2009. Oral argument was held
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`on June 6, 2014. (ECF 121). This Court held Defendants did not present any evidence showing
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`1
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 2 of 9
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`Plaintiff regularly permitted Defendants to use the images beyond the terms stipulated in the
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`original invoice without first obtaining permission. Grant Heilman Photography, Inc. v.
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`McGraw-Hill Companies, Inc., No. 12-2061, 2014 WL 2892504, at *9 (E.D. Pa. June 26, 2014).
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`The uncontroverted evidence showed Defendants regularly sought permission for additional use,
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`and there was no evidence that the course of dealing altered the scope of the licenses granted in
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`the invoices. Id. at *10. This Court held the invoices were limited licenses to use the images,
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`and use beyond the scope authorized in the invoices constituted copyright infringement. Id.
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`But, this Court denied Plaintiff’s motion for summary judgment because questions of fact
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`remained whether the three-year statute of limitations was tolled as to infringement prior to April
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`18, 2009. Id. at *13. This Court noted that Plaintiff might be entitled to summary judgment if it
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`submitted uncontroverted evidence of instances of infringement after April 18, 2009. Id.
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`Plaintiff subsequently filed an addendum to amend its motion for partial summary
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`judgment regarding infringement within the three years prior to the filing of Plaintiff’s
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`complaint. (ECF No. 128). Plaintiff submitted additional records documenting the dates on
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`which Defendants’ use exceeded the licensed use granted by Plaintiff to Defendants. (ECF No.
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`129). Defendants filed a response in opposition on July 22. (ECF No. 131). Plaintiffs filed a
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`reply in support of their motion on July 28. (ECF No. 137). Plaintiffs also filed two notices of
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`supplemental authority regarding the statute of limitations issue. (ECF No. 130 & 132).
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`A. Statute of Limitations
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`II. ANALYSIS
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`Plaintiff produced evidence that Defendants printed its images in the following texts after
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`April 18, 2009: Physics: Principals and Problems 2002 ISBN 007823896x; The Words and Its
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`People ISBN 0078654807 and ISBN 0078654815; Physics: Principals and Problems 2009 ISBN
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`2
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 3 of 9
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`0078807212 and ISBN 0078807220; Inquiry into Life 2008 ISBN 0072986751; and Biology 10e
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`ISBN 007352543X, ISBN 0071288449, ISBN 0077313488, ISBN 0077343956, and ISBN
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`0077625412. Plaintiff submitted additional evidence showing Physics: Principals and Problems
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`2002, The World and Its People, and Physics: Principals and Problems 2009 printed Plaintiff’s
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`images without permission after April 2009 that was originally filed under seal. Finally, Plaintiff
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`pointed to its evidence originally submitted in support of its motion for summary judgment
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`showing publication after April 2009 for Inquiry Into Life 2008 and Biology 10e.
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`Defendants respond that seven of the twelve titles at issue in Plantiff’s original motion for
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`partial summary judgment were not printed within the expiration of the three-year limitations
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`period, so Plaintiff is not entitled to summary judgment. As to the remaining five titles,
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`Defendants admit that they were printed within the limitations period, but contend Plaintiff has
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`failed to demonstrate the number of copies printed within the limitations period that exceeded the
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`license terms.
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`The following is a chart summarizing the evidence of the publications and the excess
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`quantities printed after the limitations period expired on April 18, 2009.1
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`Title
`
`Invoice
`No.
`
`ISBN
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`Physics: Principals
`and Problems
`2002
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`201549 007823896x
`
`
`The World and Its
`People
`
`
`205064
`
`
`0078654807
`0078654815
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`Actual use
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`Invoice Rights
`North America
`Before 4/2009: 188,569
`English
`After 4/2009: 18,517
`100,000 student and
`teacher, CD ROM,
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`Internet
`100,000 max student
`and teacher editions,
`CD ROM
`15% Canada for 6
`years from 2005
`
`
`Before 4/2009: 128,560
`After 4/2009: 5,257
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`
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`1 This Court does not present these figures as factual finding of the absolute number of copies printed. Plaintiff did
`not seek summary judgment on damages. The number of copies is only relevant to consider whether Plaintiff has
`produced evidence that Defendants printed more copies than were authorized under the terms of the licenses.
`3
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 4 of 9
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`Physics: Principals
`and Problems
`2009
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`207872
`
`0078807212
`0078807220
`
`Inquiry into Life
`2008
`
`
`206588
`
`0072986751
`
`100,000
`Student Edition and
`CD ROMs <15%
`Canada
`English and Chinese
`US 10% World
`57,100
`+ CD ROM 1,200
`
`Before 4/2009: 51,067
`Exceeded 100,000 in 2011:
`113,484
`2012-2013: 6,568
`Total excess: 20,052
`
`Before 4/2009: 61,551
`After 4/2009: 7,594
`
`007352543X
`0071288449
`0077313488
`0077343956
`0077625412
`
`World English
`language, 100,000
`
`Exceeded quantity
`11/12/2009: 103,074
`After 11/2009: 44,421
`Total excess: 47,495
`
`Biology 10e
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`207645
`
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`B. Authorized Use
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`Defendants contend that McGraw Hill did obtain license extensions to print a total of
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`600,000 copies of Physics: Principals and Problems. Defendants have pointed to Invoice No.
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`206503 dated September 29, 2006 authorizing 500,000 copies of the 2005 edition of Physics,
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`Principals and Problems as an “extension of rights to invoice 203614 dated 4/29/04.” Def’s Ex.
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`30. In 2009, Defendants requested another extension of the license in Invoice No. 203614 to
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`print 100,000 copies of Physics: Principals and Problems 2009. Def’s Ex. 11. On March 4,
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`2009, Plaintiff submitted Invoice No. 207872 authorizing 100,000 copies of Physics: Principals
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`and Problems 2009. Pl’s Ex. E.
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`Plaintiff responds that the licenses were for different editions of the textbook. But the
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`invoice allows use of the licensed images in revised editions “with less than 10% change from
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`the original edition for a period of six years.” Pl’s Ex. E. Plaintiff has not produced evidence
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`showing more than 10% of the text was changed from the 2005 to the 2009 edition. In addition,
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`the six-year period referenced in the 2006 invoice overlaps with the 2009 invoice.
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`4
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 5 of 9
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`The images referenced in the 2004 invoice, the 2006 invoice, and the 2009 invoice are
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`identical. Pl’s Letter Reply Ex. A, Def’s Ex. 30, and Pl’s Ex. E. The 2009 license extension
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`request referenced Invoice No. 203614 which authorized use for the 2005 edition, but the letter
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`sought extended use for the 2009 edition. Def’s Ex. The total quantity printed was less than
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`500,000. This evidence raises a genuine` question of fact whether Defendants exceeded the
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`scope of the license to use the images in Physics: Principals and Problems. Thus, Plaintiff’s
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`motion for partial summary judgment on images licensed in Invoice Nos. 201549 and 207872
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`shall be denied.
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`C. Copyright Registration
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`
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`Defendants further challenge the copyright registration of four images.2 “In any judicial
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`proceedings the certificate of a registration . . . shall constitute prima facie evidence of the
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`validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c). “This
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`means that the defense need[s] to show why the court should disregard the registration, and
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`absence of evidence redounds to the defense’s detriment.” Neri v. Monroe, 726 F.3d 989, 991
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`(7th Cir. 2013).
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`Defendants contend the group copyright registrations of these images were flawed
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`because “photographs in the group must have been published within the same calendar year.” 37
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`C.F.R. § 202.3(b)(10)(iii). “‘Publication’ is the distribution of copies or phonorecords of a work
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`to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering
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`to distribute copies or phonorecords to a group of persons for purposes of further distribution,
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`public performance, or public display, constitutes publication.” 17 U.S.C. § 101. Plaintiff
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`2 Defendants point to four Image ID numbers, but Image ID No. O14 05 36B0 and Image ID No. O14 05 36C0
`appear to be different exposures of an identical image that was registered as a single copyright as Image ID No. O14
`05 36A0.
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`5
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 6 of 9
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`responds that unintentional errors in registration do not invalidate the copyright, so long as they
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`do not prejudice Defendants.
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`The Third Circuit has held “an inadvertent and immaterial misstatement will not
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`invalidate a copyright registration, a proposition on which there is broad consensus in the federal
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`courts.” Raquel v. Educ. Mgmt. Corp., 196 F.3d 171, 177 (3d Cir. 1999) judgment vacated 531
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`U.S. 952 (2000). “It is well established that immaterial, inadvertent errors in an application for
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`copyright registration do not jeopardize the validity of the registration.” Data Gen. Corp. v.
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`Grumman Sys. Support Corp., 36 F.3d 1147, 1161 (1st Cir. 1994) abrogated by Reed Elsevier,
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`Inc. v. Muchnick, 559 U.S. 154 (2010) (Masquerade Novelty, Inc. v. Unique Indus., Inc., 912
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`F.2d 663, 668 (3d Cir. 1990)). “Only the knowing failure to advise the Copyright Office of facts
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`which might have occasioned a rejection of the application constitutes reason for holding the
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`registration invalid and thus incapable of supporting an infringement action.” Eckes v. Card
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`Prices Update, 736 F.2d 859, 861-62 (2d Cir. 1984) (internal citations and alterations omitted).
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`In a similar case the District of Massachusetts denied the defendant’s motion for
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`summary judgment because it found that errors in a group copyright application were not
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`material. Cipes v. Mikasa, Inc., 346 F. Supp. 2d 371, 373 (D. Mass. 2004). The plaintiff had
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`mistakenly registered some images that were not published in the same calendar year, and
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`registered some images twice, contravening copyright registration regulations. Id. These errors
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`were immaterial because the Copyright Office had a procedure to correct such errors, the
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`plaintiff represented that he already sought to correct the errors, and there was no reason to
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`believe the corrections would be rejected by the Copyright Office. Id. at 374 (“[B]ecause it does
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`not appear that any of Cipes’s errors are fatal to his Registrations, the errors are immaterial.”).
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`6
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 7 of 9
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`The court further found that the defendant was not prejudiced by the errors because it “was well
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`aware of Cipes rights in the subject photographs.” Id.
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`Defendants have presented evidence that Plaintiff filed a supplemental copyright
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`registration form seeking to correct group copyright VA 1-643-925 to exclude Image ID O14 05
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`36A0 because it was originally published prior to 1994. Def’s Ex. 38. Plaintiff filed another
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`supplemental copyright registration form to group copyright VA 1-644-214 to exclude Image ID
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`J 5 G 13 849A0 because it was originally published prior to 2002. Def’s Ex. 40. Plaintiff later
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`filed a request to withdraw the supplementary registrations. Def’s Ex. 43. Although Plaintiff
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`later withdrew these supplements, the evidence raises a genuine question of fact whether the
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`images were originally published before 1994 and 2002, respectively.
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`Plaintiff correctly notes that Defendants have not produced any evidence that the error
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`was intentional. But the Third Circuit requires errors to be both inadvertent and immaterial.
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`Raquel, 196 F.3d at 177; see also Cipes, 346 F. Supp. 2d at 374 (going on to consider whether
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`copyright application errors were material after finding they were inadvertent). The question
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`remains whether this error, if proven, could be material. Plaintiffs have not produced evidence
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`showing the first date of publication for the images in question. The presumption of validity
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`only applies to registrations of works “made before or within five years after first publication of
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`the work . . .” 17 U.S.C. § 410. Accordingly, Defendants have presented sufficient evidence to
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`raise a genuine question of fact whether Plaintiff holds a valid copyright registration for Image
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`ID O14 05 36B0 and ID O14 05 36C0.
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`
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`For Image ID O10C0591C0, licensed in Invoice Nos. 206588 and 207645, Defendants
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`produced a copy of the image in Plaintiff’s photograph file dated 1981 and a supplemental
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`copyright registration form correcting group copyright registration VA 1-643-931. Def’s Exs. 35
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 8 of 9
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`& 36. The Plaintiff’s file is not evidence of publication prior to 1993. Def’s Ex. 35. There is no
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`evidence that this file was distributed in 1981. Moreover, the group copyright registration
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`correction does not include Image ID O10C0591C0 in the list of images published prior to 1993.
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`Def’s Ex. 36. Accordingly, Defendants have not presented evidence raising a genuine question
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`of the validity of Plaintiff’s copyright registration of Image ID O10C0591C0.
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`D. Summary
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`Plaintiff has produced uncontroverted evidence that Defendants exceeded the scope of
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`the licenses granted in Invoice Nos. 205064, 206588, and 207645.
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`Defendants have presented evidence raising a question of fact whether Defendants’ use
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`exceeded the scope of the licenses granted in Invoice Nos. 201549 and 207872.
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` Defendants have raised questions of fact regarding the valid registration of Image ID J 5
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`G 13 849A2 and ID O14 05 36C0, but have not submitted any evidence regarding the remaining
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`images in Invoice Nos. 206588 and 207645.
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`Defendants have not produced any evidence challenging Plaintiff’s evidence that
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`Defendants printed Image ID M 2 G 14 231A0 beyond the terms authorized in Invoice No.
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`205064.
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` Accordingly, Plaintiffs are entitled to summary judgment on the following Images for
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`Defendants’ unauthorized use of the following images:
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`Complaint
`Row
`1827
`1828
`1829
`1830
`1831
`1832
`1833
`1834
`
`Image ID No.
`
`
`J 5 G 15 1335C0 206588
`M 9 G 24 55A0
`206588
`M 10 G 06 44C0 206588
`O 3 ADP10
`206588
`O3 OSC50
`206588
`O 4 OPB54
`206588
`O 5 GIB05 18A0 206588
`O10C 05 91C0
`206588
`
`Invoice No. Complaint
`Row
`2210
`2212
`2213
`2214
`2215
`2216
`2217
`2218
`
`Image ID No.
`
`
`H 6 06 238A0
`J 5 G 151335C0
`M 9 G 24 55A0
`O 1 GAA10 13A0
`O 2 ANT06 12A0
`O3 ADP10
`O 3 OSC50
`04 ANC06
`
`Invoice No.
`
`207645
`207645
`207645
`207645
`207645
`207645
`207645
`207645
`
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`8
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`Case 5:12-cv-02061-MMB Document 139 Filed 08/06/14 Page 9 of 9
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`1835
`1836
`1837
`2208
`2209
`
`
`O12 RHN05
`206588
`O14 05 36B0
`206588
`206588
`V8 03 987G0
`3 D PLA0 15 A0 207645
`3 J SAG06 27A0 207645
`
`2219
`2221
`2222
`2224
`1459
`
`O 4 OPB54 34A0
`O 5 QUL50 17B0
`O10C 05 91C0
`R 2 06 85A0
`M 2 G 14 231 A0
`
`207645
`207645
`207645
`207645
`205064
`
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`Based on the evidence submitted by both parties, this Court shall grant Plaintiff’s motion
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`III. Conclusion
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`for summary judgment in part, as to the enumerated images in Invoice Nos. 205064, 206588, and
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`207645. Plaintiff’s motion is denied as to the remaining images.
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`O:\CIVIL 12\12-2061 grant v. mcgraw\12cv2061.msj.partial.memo.docx
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