Beasley v. John Wiley & Sons, Inc.
56 F. Supp. 3d 937
N.D. Ill.2014Background
- Photographer Michael Beasley licensed 31 of his photos (via agent Odyssey) to Wiley for use in Frommer’s “Chicago Day by Day” by paying a $7,500 invoice dated Dec. 19, 2005 that expressly granted “one time nonexclusive print rights” for the “1st Edition” and stated “No electronic rights.”
- Wiley paid the invoice, published a 1st edition (May 2006) and later a 2nd edition (May 2009); in total Wiley printed 75,938 copies (distributed ~55,000) and made electronic versions available (Wiley distributed 42 electronic copies of edition one and 16 of edition two).
- Beasley sued Oct. 31, 2012 alleging (Count I) copyright infringement for uses beyond the license, (Count II) common-law fraud, and (Count III) DMCA §1202 violation; he sought injunctive relief, damages, and fees.
- Beasley moved for summary judgment on liability for copyright infringement (Count I). Wiley moved for summary judgment on Counts II and III. Beasley later sought to withdraw Counts II and III.
- The court held there was a one-edition, no-electronic-rights license, that Wiley exceeded the license by publishing a second edition and electronic copies, and granted summary judgment to Beasley on liability for Count I.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of license: whether Wiley’s use exceeded the licensed rights | Invoice granted only a one-time right for the 1st edition; no electronic rights — use beyond that infringed | Invoice ambiguous; license terms may be found in multiple communications; spreadsheet suggested “2 Editions Total” | Invoice language (“one time…1st Edition” and surrounding communications show one-edition grant). Wiley exceeded the license by printing a second edition and distributing e-books; summary judgment for Beasley on liability. |
| De minimis/non‑substantial infringement (extent of overruns) | N/A — infringement occurred and is not de minimis given reproduction and distribution rights | Overruns (≈9,000 distributed over licensed 46,000 and 58 e-book copies) are de minimis/trifling and not sufficient for liability | Rejected — reproducing and distributing thousands beyond authorized copies and reproducing electronically are not de minimis; liability stands. |
| Statute of limitations (accrual) | Beasley did not discover infringement until Nov. 2011; suit filed within 3 years | Infringement accrued at publication (2007 e-book, 2009 second edition) so many claims are time-barred | Seventh Circuit discovery rule applies: limitations runs when plaintiff knows or should have known. Beasley’s testimony that he first learned in Nov. 2011 sufficed; no genuine issue of earlier discovery. |
| Withdrawal of Counts II (fraud) and III (DMCA) after defendant’s summary judgment motion | Seeks leave to withdraw those claims (omit in amended complaint) | Opposes dismissal without adjudication because it incurred expense and may seek fees if it prevails on DMCA | Court will not permit withdrawal of DMCA claim without addressing potential fee entitlement; defendant’s motion on Counts II–III entered and continued; status hearing set to resolve how to proceed. |
Key Cases Cited
- Janky v. Lake County Convention & Visitors Bureau, 576 F.3d 356 (7th Cir. 2009) (elements of copyright infringement claim)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (originality requirement for copyright protection)
- S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) (copyright licenses are assumed to prohibit uses not authorized)
- Gilliam v. American Broadcasting Cos., 538 F.2d 14 (2d Cir. 1976) (licensee not entitled to uses beyond those specifically empowered by license)
- Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004) (copyright statute of limitations accrues under discovery rule)
- Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983) (no general duty for copyright owners to investigate potential infringements)