864 F. Supp. 2d 316
E.D. Pa.2012Background
- Heilman Photography licenses Grant Heilman photographs to Wiley 1995–2009 under limited licenses (copies, geographic area, language, duration, media).
- Licenses limited Wiley’s use; Wiley printed beyond licensed quantities and distributed beyond licensed regions (including North America) and used images without license in some editions.
- Plaintiffs allege Wiley exceeded license scope and/or used unpermitted images, and that Wiley made misrepresentations to obtain licenses.
- Plaintiffs seek a preliminary injunction under 17 U.S.C. §502 to stop future unlicensed printing and for related relief; also seek damages and fees.
- Procedural posture: hearing held May–June 2011; court preliminarily analyzes likelihood of success, irreparable harm, public interest, and potential harms; judge issued denial of the injunction.
- Court finds plaintiffs are reasonably likely to succeed on the merits but fail to show immediate irreparable harm, and thus denies the motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on the merits | Heilman argues Wiley exceeded license terms and/or printed without permission. | Wiley contends no sufficient showing on the merits. | Plaintiffs are reasonably likely to succeed on copyright infringement. |
| Irreparable harm | Irreparable harm due to ongoing infringement and control/courts cannot correct harm. | Economic damages suffice; no immediate irreparable harm shown. | Irreparable harm not shown; injunction denied. |
| Public interest | Protecting copyrights serves the public interest. | Injunction would disrupt education and publishers. | Public interest not harmed by denying/allowing; balance favors denial here. |
| Harm to defendant | Blocking future printings would prevent ongoing infringement. | Injunction would disrupt schools and Wiley’s business. | No irreparable harm to Wiley shown; Wiley already pursuing licensing/compliance policies. |
| Relief scope appropriate | Would enjoin future printings containing unlicensed images. | Existing printed editions and sales should not be enjoined. | Court denies injunction; relief not warranted. |
Key Cases Cited
- Nutrasweet Co. v. Vit-Mar Enterprises, 176 F.3d 151 (3d Cir.1999) (preliminary injunction factors require all four elements be satisfied)
- Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (U.S. 1991) (ownership and originality required for copyright; exclusive rights)
- eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (U.S. 2006) (no automatic injunction; must weigh four factors)
- Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir.1983) (rebuttable presumption of irreparable harm discussed; focus on likelihood of success and harm)
- Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir.1966) (public interest and presumption nuances in publishing cases)
- WPIX, Inc. v. ivi, Inc., 765 F.Supp.2d 594 (S.D.N.Y.2011) (injunctions require likelihood of irreparable harm; not automatic)
- Educational Testing Servs. v. Katzman, 793 F.2d 533 (3d Cir.1986) (prima facie infringement evidence and irreparable harm considerations)
- American Telephone & Telegraph Co. v. Winback, & Conserve Program, Inc., 42 F.3d 1421 (3d Cir.1994) (public-interest considerations in injunctions; weigh four factors)
- Psystar Corp. v. Apple Inc., 673 F.Supp.2d 943 (N.D. Cal.2009) (illustrative discussion on irreparable harm and monetary damages)
- Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20 (1908) (established injunctive relief considerations balancing injury)