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ILLINOIS BELL TEL. CO. v. HAINES & CO.

May 11, 1989

ILLINOIS BELL TELEPHONE COMPANY, Plaintiff,
v.
HAINES AND COMPANY, INC., Haines Criss Cross Publishers, Inc., Willliam K. Haines, Sr., and William K. Haines, Jr., Defendants, HAINES AND COMPANY, INC., Haines Criss Cross Publishers, Inc., Counterclaimants, v. ILLINOIS BELL TELEPHONE COMPANY, Ameritech Publishing, Inc., Ameritech Publishing of Illinois, Inc., The Reuben H. Donnelley Corporation, and AM-DON, Counter-defendants


Suzanne B. Conlon, United States District Judge.


The opinion of the court was delivered by: CONLON

SUZANNE B. CONLON, UNITED STATES DISTRICT JUDGE

 Plaintiff Illinois Bell Telephone Company ("IBT") filed this copyright infringement action against defendants Haines and Company, Inc., Haines Criss Cross Publishers, Inc. (collectively "Haines"), William K. Haines, Sr. and William K. Haines, Jr. Haines filed a counterclaim against IBT, Ameritech Publishing, Inc. ("Ameritech"), Ameritech Publishing of Illinois, Inc. ("Ameritech-Illinois"), The Reuben H. Donnelley Corporation ("Donnelley"), and AM-DON (collectively "counter-defendants") alleging violations of Sections 1 and 2 of the Sherman Antitrust Act (15 U.S.C. §§ 1 and 2), Section 4 of the Clayton Act (15 U.S.C. § 15), and the Illinois Antitrust Act (Ill. Rev. Stat. ch. 38 paras. 60-3 and 60-7). On April 13, 1988, this court granted IBT's motion for summary judgment, holding that IBT has a valid copyright interest in its telephone directories and that Haines' 1982 and 1983 directories infringed IBT's copyrights. Illinois Bell Telephone Company v. Haines, 683 F. Supp. 1204 (N.D. Ill. 1988). IBT currently moves for summary judgment on damages, attorneys' fees and injunctive relief. Counter-defendants move for summary judgment on Haines' counterclaims.

 FACTS

 IBT is a public utility that provides telephone service. IBT is the only source for names, addresses and telephone numbers of residents and businesses in the Chicago area. McDowall Dep. at 54-55, 71-74, 80-81. IBT licenses its directory information primarily to two groups of publishers. One group publishes street address directories, without Yellow Pages advertising. Haines and Donnelley (through AM-DON) are the only two publishers of street address directories in the Chicago area. Melton Dep. at 41; O'Brien Dep. at 24, 28, 41; Haines' memo. at 19. A second group publishes co-bound directories, or alphabetical directories with Yellow Pages advertising. The markets are distinct; the second group does not compete with the first. Haines' memo. at 2.

 Haines publishes cross-reference street address directories under the trademark Criss Cross. The directories contain a street address and telephone numerical directory. Haines publishes 54 street address directories in major metropolitan areas of the country. Haines' memo. at 5. It began publishing Chicago-area directories in 1969. Haines and IBT entered into a licensing agreement, renewed each year from 1971 through 1980, whereby IBT provided Haines with pre-publication advance listings from IBT's Chicago-area directories on a cost per listing basis. IBT allegedly charged Haines the same price per listing as co-bound publishers. Id. at 8. In 1971, Haines paid IBT $.01 per listing. From 1974-81, Haines paid $.0125 per listing. In 1981, IBT raised the price to $.028 per listing. Haines chose not to renew its licensing agreement with IBT in 1982, but continued to utilize IBT's published directories to obtain listing information.

 In July 1984, IBT entered into a ten-year directory agreement with Donnelley, Ameritech, Ameritech-Illinois and AM-DON. The agreement apparently was approved by the Illinois Commerce Commission. Arden Ex. G (transcript of hearing on IBT's petition for approval, Aug. 15, 1984). The agreement provides that IBT will furnish all subscriber information, billing and collecting services for directories to be published by AM-DON (a partnership between Donnelley and Ameritech-Illinois) and prepared and marketed by Donnelley. O'Brien Ex. 12; Haines memo. at 19. The agreement sets one charge for all services provided by IBT to AM-DON, rather than a price per listing. For 1985, IBT received $ 49.5 million; for 1986 through 1994, IBT receives a minimum of $ 75 million annually. O'Brien Ex. 12 at 34. The agreement does not restrict IBT's alternative uses of the listing information during the contract term. Arden Ex. G at 37-38.

 Haines contends that IBT, Ameritech, Ameritech-Illinois, Donnelley and AM-DON misused IBT's copyright to restrain trade in violation of Section 1 of the Sherman Act (15 U.S.C. § 1) and conspired to monopolize, attempted to monopolize, and monopolized the market for street address directories in the Chicago area in violation of Section 2 of the Sherman Act (15 U.S.C. § 2). Haines also charges that counter-defendants' conduct violated the analogous provisions of the Illinois Antitrust Act (Ill. Rev. Stat. ch. 38 para. 60-3) and Section 4 of the Clayton Act (15 U.S.C. § 15).

 DISCUSSISON

 A party is entitled to judgment where the pleadings, deposition, affidavits and other supporting materials show there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). Summary judgment is appropriate in antitrust litigation unless the non-movant presents sufficient evidence to survive a motion for directed verdict. Collins v. Associated Pathologists, Ltd., 844 F.2d 473, 476 (7th Cir. 1988) (the mere existence of a triable issue is no longer sufficient). Fed.R.Civ.P. 56(c) mandates the entry of summary judgment against parties who fail to establish the existence of an essential element of their case. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).

 I. IBT's Motion for Summary Judgment on Statutory Damages, Attorneys' Fees and Injunctive Relief

 This court previously ruled that Haines' 1983 and 1984 directories infringe the copyrights of IBT's 1982 and 1983 directories. Illinois Bell Telephone Co. v. Haines and Co., 683 F. Supp. at 1210. IBT moves for summary judgment on damages, attorneys' fees and injunctive relief.

 Damages

 An infringer of a copyright is liable for either the copyright owner's actual damages and any additional profits realized by the infringer, or statutory damages. 17 U.S.C. § 504(a). Under the statute in existence at the time of the infringement, statutory damages were allocated as follows:

 
(1) Except as provided by clause (2) of this subsection, the copyright owner may elect . . . . an award of statutory damages . . . . in a sum of not less than $ 250 or more than $ 10,000 as the court considers just . . . .
 
(2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $ 50,000.

 17 U.S.C. § 504(c). In a statutory award, the amount of damages is within the court's discretion. Broadcast Music, Inc. v. Niro's Palace, Inc., 619 F. Supp. 958, 963 (N.D. Ill. 1985).

 IBT seeks statutory damages for infringement of 34 editions of IBT directories published in 1982 and 1983. IBT's memo. at 2-3. Haines claims that it used only 14 editions of IBT's directories per year (or 28 directories) as references for Haines' 1983 and 1984 directories. Haines memo. at 2. Appendix A to the October 1981 license agreement between IBT and Haines, as well as correspondence from IBT in 1982 and 1983, lists 14 regional directories provided to and used by Haines. See McDowall Dec., Ex. B. IBT calculates lost revenues for 1983 and 1984 by quantifying listings for 14 regions. Id., Ex. C. Although three directories are published twice annually, IBT's records indicate that Haines was billed once per year for these regions. Haines maintains that it used only one edition of each directory per year. McGeorge Decl. at para. 2. There is no evidence that Haines infringed the additional publication each year. Therefore, IBT is entitled to statutory damages for infringement of 14 directories for both 1983 and 1984, or for 28 acts of infringement.

 To determine the amount of statutory damages for copyright infringement, the court considers the willfulness of defendant's conduct and the deterrent value of the sanction imposed. International Korwin Corp. v. Kowalczyk, 665 F. Supp. 652, aff'd, 855 F.2d 375 (N.D. Ill. 1987). "Willful" means acting with knowledge that one's conduct constitutes an infringement. See 3 Nimmer § 14.04 [B][3] at 14-28. Proof of actual knowledge of the infringement is not necessary; reckless disregard for the copyright holder's rights may establish knowledge of the infringement. See id. at 380 n. 10.

 IBT claims Haines willfully infringed its copyright. Haines paid for the listing information for almost ten years before it elected not to renew the license agreement. Haines continued to use IBT's published directories despite correspondence from IBT in April 1983 and June 1984, demanding restitution ...


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