Steinmetz v. McGraw-Hill Global Education Holdings, LLC
220 F. Supp. 3d 596
E.D. Pa.2016Background
- Steinmetz, a photographer, sued McGraw‑Hill (MHE) for copyright infringement alleging MHE used his photos beyond license terms and without authorization; complaint lists 367 claimed infringements across direct licenses and licenses via Corbis and NGS.
- 58 claims derive from direct invoices to Steinmetz; 294 claims derive from transactions involving Corbis; MHE produced invoices for 180 of the Corbis claims; 15 claims involve NGS.
- Corbis–MHE invoices and Preferred Pricing Agreements (PPAs) contain an identical forum‑selection clause designating New York courts; Steinmetz was not a party to those agreements and was not alleged to have been represented by Corbis.
- MHE moved under 28 U.S.C. § 1404(a) to transfer the case to SDNY based solely on the Corbis forum‑selection clause; Steinmetz opposed, arguing the clause does not bind him and his copyright claim does not depend on Corbis agreements.
- The court concluded Steinmetz is not bound by the Corbis–MHE forum‑selection clause because he was not a party (or agent) and the clause is limited to disputes regarding the Corbis agreements; therefore Atlantic Marine did not control.
- On the § 1404(a) Jumara balancing of private and public interests, the court found MHE failed to carry its burden to show transfer is warranted and denied the motion to transfer.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of Corbis forum‑selection clause to Steinmetz | Steinmetz was not a party to Corbis–MHE agreements and did not assent; clause does not bind him | MHE: many claims derive from Corbis transactions so the clause governs most disputes and requires transfer to SDNY | Clause does not apply — Steinmetz not a party/agent and clause is limited to disputes "regarding this Agreement" |
| Whether infringement claim depends on Corbis agreements | Copyright claim rests on ownership and unauthorized copying, independent of Corbis invoices | MHE: Corbis relationship is instrumental; Corbis contracts necessarily implicated for Corbis‑derived claims | Claim does not depend on Corbis agreements; invoices are evidence/defense at most, not elements of infringement |
| Standard to evaluate transfer motion | N/A — argues Atlantic Marine inapplicable if clause not binding | MHE invoked Atlantic Marine deference to forum clause | Atlantic Marine framework inapplicable because clause does not bind plaintiff; court applied Jumara §1404(a) factors instead |
| Whether §1404(a) transfer is warranted on convenience/public interest | Steinmetz: MHE failed to show private/public factors favor transfer; plaintiff’s forum choice should not be disturbed | MHE: majority of claims tied to Corbis; witnesses not in Philadelphia (but provided little detail) | MHE failed to meet heavy burden; Jumara factors do not favor transfer — motion denied |
Key Cases Cited
- Atl. Marine Constr. Co. v. U.S. Dist. Court, 134 S. Ct. 568 (2013) (forum‑selection clauses should be given controlling weight when they bind the parties)
- Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) (private and public interest factors govern §1404(a) transfer analysis when no binding forum clause applies)
- Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, 307 F.3d 197 (3d Cir. 2002) (elements of copyright infringement: ownership and unauthorized copying)
- Cmty. for Creative Non‑Violence v. Reid, 490 U.S. 730 (1989) (author as creator is the general rule for copyright ownership)
- Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679 (2d Cir. 1993) (forum‑selection clause in contract has no effect where plaintiff asserts copyright claims and asserts no rights under that contract)