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Frerck v. John Wiley & Sons, Inc.

United States District Court, N.D. Illinois, Eastern Division

July 14, 2014

ROBERT FRERCK, Plaintiff,
v.
JOHN WILEY & SONS, INC. and JOHN DOE PRINTERS 1-10, Defendants.

MEMORANDUM OPINION AND ORDER

ROBERT M. DOW, Jr., District Judge.

This matter is before the Court on Plaintiff Robert Frerck's motion for partial summary judgment [154 and 155] and Defendant John Wiley and Son's partial motion for summary judgment [164]. For the reasons set forth below, the Court grants in part and denies in part Frerck's motion for partial summary judgment [154 and 155] and grants Defendant John Wiley and Sons' partial motion for summary judgment [164].

I. Background

The relevant facts in this matter are largely undisputed. Plaintiff Robert Frerck is a professional photographer who resides in Chicago, Illinois. He also is the owner of Odyssey Productions, Inc., a stock photography agency. Defendant John Wiley and Sons, Inc. is a textbook publisher, located in Hoboken, New Jersey. Between approximately 1996 and 2009, Plaintiff, through his agencies, sold Defendant limited licenses to use a number of Plaintiff's photographs in Defendant's publications. The restrictions on these licenses included, among other things, limitations on the authorized print quantities for the various educational publications at issue, limitations on the geographic distribution for such publications, and limitations on the type of media in which the photographs could be reproduced. Defendant then reproduced the photographs in the publications identified in Exhibit 1 to the Alex Kerr Declaration (attached to Plaintiff's partial motion for summary judgment). Despite the limits set forth in the licenses that it obtained, it is undisputed that Defendant used certain of the photographs beyond license limits in various publications. Specifically, in certain instances, Defendant reproduced more copies of photographs than was permitted by the licenses, distributed photographs beyond the licenses' limitations on geographic distribution, and reproduced photographs in unlicensed electronic media.

The parties' negotiations concerning the use of Plaintiff's photos typically began when the title was in the pre-publication phase. Defendant Wiley's photo department would contact Plaintiff or his agents to request permission to use certain images, and Plaintiff typically would agree. In order to process payment, Defendant would send an invoice request letter to Plaintiff, and Plaintiff would then issue an invoice to Defendant. Such letter typically would identify the image requested, the publication for which it would be used, and the estimated usage. Because the textbook had not yet been published, the usage necessarily would be an estimate. However, in regard to the photographs that are at issue in these motions, the initial licenses were the only licenses that Defendant sought. In other words, if the actual usage exceeded the license granted, Defendant did not seek license renewals or permission to use the photographs beyond the scope of the initial licenses.

On April 25, 2011, Plaintiff filed this action, alleging claims for copyright infringement (Count I) and fraud (Count II) against Defendant Wiley. Plaintiff also asserted a claim of copyright infringement against ten unidentified third parties, dubbed the "John Doe Printers" (Count III). On January 3, 2013, Frerck filed an amended complaint, dropping his claims against the John Doe Printers as well as certain infringement claims against Wiley and asserting additional claims against Wiley, including new counts for contributory infringement (Count III) and vicarious infringement (Count IV). Frerck's claims of direct copyright infringement arise out of Wiley's alleged unauthorized use of his images, including printing copies in excess of the authorized limits, distributing copies outside of the authorized territories, and reproducing the images in unauthorized formats. Exhibit A to the first amended complaint identifies the type of infringement for each image as well as the applicable invoice and licenses limits.

II. Legal Standard on Cross Motions for Summary Judgment

Summary judgment is proper if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). On cross motions for summary judgment, the Court construes all facts and inferences "in favor of the party against whom the motion under consideration is made." In re United Air Lines, Inc., 453 F.3d 463, 468 (7th Cir. 2006) (quoting Kort v. Diversified Collection Servs., Inc., 394 F.3d 530, 536 (7th Cir. 2005)); see also Gross v. PPG Indus., Inc., 636 F.3d 884, 888 (7th Cir. 2011); Foley v. City of Lafayette, Ind., 359 F.3d 925, 928 (7th Cir.2004). To avoid summary judgment, the opposing party must go beyond the pleadings and "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986) (internal quotation marks and citation omitted).

A genuine issue of material fact exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248. The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary judgment is proper against "a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322. The party opposing summary judgment "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "The mere existence of a scintilla of evidence in support of the opposing] position will be insufficient; there must be evidence on which the jury could reasonably find for the [opposing party]." Anderson, 477 U.S. at 252.

Plaintiff moves for partial summary judgment on his copyright infringement claim (Count I) against Defendant, seeking a finding of liability on 102 claims of copyright infringement, which are alleged in the first amended complaint and identified in Exhibit 1 to the Kerr Declaration filed concurrently with Plaintiff's summary judgment motion.[1] In turn, Defendant moves for summary judgment on Plaintiff's claims of fraud (Count II), contributory infringement (Count III), and vicarious infringement (Count IV). Defendant also moves for summary judgment as to certain claims of copyright infringement alleged in Count I. The Court first addresses Plaintiff's partial motion for summary judgment.

III. Analysis of Plaintiff's Motion for Partial Summary Judgment

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). Where, as here, the works in question were licensed to the defendant, the plaintiff must show that the defendant's use went beyond the license terms. See I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996) ("The licensee violates the copyright by exceeding the scope of this license."); Estate of Brown v. Arc Music Grp., 2013 WL 1277064, at *3 (7th Cir. Mar. 29, 2013).

A. Ownership of valid copyright

Plaintiff has submitted evidence that he owns the copyrights to the photographs that he licensed to Wiley. In Wiley's response brief, it challenges seven images as failing to have been properly registered with the Copyright Office. However, in his reply brief, Plaintiff admitted that incorrect registration numbers were identified for six of the photographs in Exhibit A. He then provided the correct registrations for the six photographs. The seventh photograph, Image #MEXCS04H004, is listed with the correct registration number, VA X-XXX-XXX. In the deposit for this copyright registration (VA X-XXX-XXX), the number on the photograph itself is "MEXCS04H004, " but the adjacent Image ID column in the deposit document states, "MEXCS04B044." The later ID# ("MEXCS04B044") is the same as that listed in the ID column for the preceding (and different) image. Despite this error in the deposit document, Plaintiff has sufficiently demonstrated that Image #MEXCS04H004 was included in the VA X-XXX-XXX deposit and properly registered.

Defendant also contends that the copyright registration for Image #PERUS06D00120 is invalid because it was published individually before being registered as part of a published collection. Defendant's arguments are belied by the relatively recent amendment to 17 U.S.C. § 411. In December 2008, Congress amended 17 U.S.C. § 411 to provide that a certificate of registration satisfies the section's registration requirements, "regardless of whether the certificate contains any inaccurate information, unless" the following two requirements are met: (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. Olem Shoe Corp. v. Washington Shoe Co., 2010 WL 3505100, *1-2 (S.D. Fla. Sept. 3, 2010) (citing 17 U.S.C. § 411). The Seventh Circuit followed and clarified this two-step process in DeliverMed Holdings, LLC v. Schaltenbrand24, a case not cited by Defendant:

[C]ourts can demand that the party seeking invalidation first establish that the other preconditions to invalidity are satisfied before obtaining the Register's advice on materiality. In other words, a litigant should demonstrate that (1) the registration application included inaccurate information; and (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office. 17 U.S.C. 411(b)(1)(A). Once these requirements are met, a court may question the Register as to whether the inaccuracy would have resulted in the application's refusal.

734 F.3d 616, 625 (7th Cir. 2013). Defendant has neither cited nor complied with the statute or DeliverMed. It has failed to satisfy the statute's threshold, as articulated in DeliverMed, by producing evidence that Plaintiff knew of his error when he submitted his registration application to the Copyright Office. In fact, when Plaintiff was questioned about Image ID #PERUS06D001 during his deposition, defense counsel did not question him about its ...


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