300 F. Supp. 3d 1356
D. Kan.2018Background
- EIG publishes periodicals (Oil Daily, Petroleum Intelligence Weekly), sells single-user and multi-user subscriptions, and uses monthly group copyright registrations for individual issues.
- The Refinery held single subscriptions for the publications, received them electronically, and employees routinely forwarded issues internally over many years.
- EIG maintained an active copyright-enforcement program (including reporting procedures, bonuses for employees who identify suspected infringement, and warnings in delivery emails).
- EIG sued the Refinery for copyright infringement (filed Jan. 18, 2016), alleging unauthorized copying/distribution; the Refinery asserted statute-of-limitations and multiple affirmative defenses (mitigation, misuse, implied license, adequate remedy at law, failure to state a claim, due-process challenge to statutory damages).
- Motions: Refinery moved for partial summary judgment (limitations and limiting statutory damages); EIG cross-moved on statutory damages, moved to dismiss several affirmative defenses, and moved to exclude the Refinery's expert (Rosenblatt).
- Court disposition: Denied Refinery’s partial summary judgment; granted EIG’s cross-motion on statutory damages; granted in part/denied in part EIG’s motion on affirmative defenses; excluded Rosenblatt’s report/testimony.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Statute of limitations (3-year accrual) | EIG: claims within 3 years of discovery are timely; discovery-rule applies in Tenth Circuit | Refinery: EIG knew or should have known of forwarding by 2008 or at latest 2012, so pre-2013 claims barred | Court applied Tenth Circuit discovery rule; found genuine issues of fact re: EIG's knowledge in 2008 and 2012; denied summary judgment for Refinery |
| Statutory damages per issue vs. per registration | EIG: each issue/issue-date is a separate work eligible for statutory damages | Refinery: group registrations mean damages limited to number of registrations (monthly bundles) | Court held group registration for filing does not convert each monthly bundle into a single compilation; each issue may receive separate statutory damages; granted EIG's cross-motion |
| Failure to mitigate / calculation relevance | EIG: election of statutory damages bars mitigation defense | Refinery: plaintiff conduct relevant to statutory damages amount | Court: election of statutory damages precludes failure-to-mitigate defense; plaintiff conduct not relevant to statutory damages calculation; summary judgment for EIG on this defense |
| Copyright misuse | EIG: no misuse—EIG seeks only rights within its registrations | Refinery: EIG's enforcement practices and incentives amount to misuse/abuse | Court: no evidence EIG tried to assert rights beyond its registrations; misuse defense fails as matter of law; summary judgment for EIG |
| Implied license | EIG: subscription terms, notices, and direct communications preclude an implied license | Refinery: long-term practice and ambiguous invoices could create implied license | Court: genuine fact issues pre-2012; but Dent's March 29, 2012 email clearly revoked any implied license for Oil Daily after that date; implied-license defense limited accordingly (Oil Daily before 3/29/2012; PIW before 6/15/2015) |
| Adequate remedy at law (injunction) | EIG: not a proper affirmative defense; injunction requires showing of future infringement elements | Refinery: reserved defense regarding injunctive relief | Court: not struck—mislabeling not prejudicial; declined to grant summary judgment on this defense (fact issues remain) |
| Due process challenge to statutory damages | EIG: punitive element of statutory damages is permissible; not an affirmative defense to liability | Refinery: statutory damages here would be wholly punitive and violate Due Process | Court: punitive component of statutory damages is permissible; defense fails as framed; summary judgment for EIG on this issue |
| Admissibility of expert (Rosenblatt) | EIG: report focuses on mitigation and publisher practices which are irrelevant to statutory-damages inquiry | Refinery: expert informs jury about EIG's conduct and available mitigation tools | Held: because mitigation and EIG's conduct are not relevant to statutory damages, Rosenblatt's opinions lack relevance; report and testimony excluded |
Key Cases Cited
- Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (U.S. 2014) (Supreme Court discussion of accrual rules for copyright limitations)
- SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (U.S. 2017) (clarifying limits of Petrella discussion; courts have not settled discovery vs. injury accrual for all statutes)
- F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228 (U.S. 1952) (statutory damages can serve punitive and deterrent purposes)
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (standards for copyright protectability and infringement elements)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (U.S. 1993) (trial-court gatekeeping standards for expert testimony)
- Moothart v. Bell, 21 F.3d 1499 (10th Cir. 1994) (Tenth Circuit on statutory damages election and mitigation defense)