58 F. Supp. 3d 380
S.D.N.Y.2014Background
- HarperCollins sued Open Road for copyright infringement after Open Road published an e-book edition of Julie of the Wolves based on a 1971 contract between the author Jean George and Harper & Row (HarperCollins’ predecessor).
- Paragraph 20 of the 1971 Contract reserved for the author prior written consent for licensing rights for “use thereof in storage and retrieval and information systems ... now known or hereafter invented,” which the Court read to cover e-book rights.
- The Court granted summary judgment to HarperCollins on liability, concluding the contract’s forward-looking language encompassed e-book publication.
- After the liability ruling, Open Road continued sales for a limited period (totaling 304 sales reported) while pursuing settlement discussions, then removed listings and ceased sales following HarperCollins’ demand.
- HarperCollins moved for permanent injunction, statutory damages, attorneys’ fees and costs; Open Road conceded costs but opposed the other remedies.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of 1971 contract: do terms cover e-books? | Contract’s Paragraph 20 is broad and includes technologies "now known or hereafter invented," so e-book rights belong to HarperCollins. | E-book rights fall outside the scope of the 1971 Contract. | Court: Paragraph 20 covers e-book publication; HarperCollins has exclusive right to license e-books. |
| Permanent injunction: warranted and scope | Injunction needed to prevent future infringement and protect HarperCollins’ exclusive business opportunities; seek broad injunction including similar contracts. | No injunction or, if granted, a narrower injunction; Open Road argued limited risk. | Court: Grants a narrowly tailored permanent injunction covering works assigned under identical contractual language but declines broader wording like "substantially identical language." |
| Statutory damages and willfulness | Seeks at least $30,000, enhanced for willful infringement. | Agrees to up to $30,000 by bench determination but insists on jury for enhancements. | Court: Finds post-opinion sales willful as a matter of law, awards statutory damages of $30,000 (parties waived jury right as to this amount). |
| Attorneys’ fees under 17 U.S.C. §505 | Requests ~ $1.09M (70% of billed fees). | Argues fees not warranted. | Court: Denies fee award — defendant’s position not objectively unreasonable and other Fogerty factors do not favor awarding fees. |
Key Cases Cited
- Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir. 1968) (old-contract/new-technology precedent cited in new-use analysis)
- Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995) (new-use cases interpreting pre-digital grants)
- Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) (construction of forward-looking licensing language)
- Random House, Inc. v. Rosetta Books LLC, 283 F.3d 490 (2d Cir. 2002) (e-book rights and old publishing contracts)
- Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) (injunctive relief in copyright cases; irreparable harm standard)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (four-factor test for permanent injunctions)
- Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (U.S. 1998) (Seventh Amendment jury right for statutory-damages determinations)