Warren v. John Wiley & Sons, Inc.
952 F. Supp. 2d 610
S.D.N.Y.2013Background
- Three professional photographers (Warren, Rubin, Young‑Wolff) sued publisher John Wiley & Sons for copyright infringement; Rubin also sued two Wiley employees (Newman, Zerter) and unnamed printers.
- Young‑Wolff alleges infringement of 17 photographs (with registration numbers); Warren and Rubin allege single‑work infringements but did not include registration numbers in their complaints.
- Alleged infringements include unauthorized publication, publication before license start dates, exceeding print runs, foreign distribution (exportation), and reuse in later/derivative editions.
- Plaintiffs also allege a Wiley “clean‑up” practice of seeking post hoc licenses and concealing prior unauthorized uses; Plaintiffs assert fraud, fraudulent concealment, and (for Young‑Wolff) breach of licensing contracts.
- Wiley moved to dismiss under Fed. R. Civ. P. 9(b) and 12(b)(6); the court evaluated sufficiency of copyright, fraud, fraudulent concealment, exportation, and breach claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of copyright claims against Wiley | Plaintiffs allege which works, ownership/registration, and manners of infringement | Wiley says Warren/Rubin failed to plead registration numbers and Young‑Wolff ambiguously pleaded more works | Copyright claims against Wiley survive — plaintiffs pleaded works, ownership/registration allegations, and infringement details sufficiently at the pleading stage |
| Copyright liability of Wiley employees Newman & Zerter (personal liability) | Rubin alleges they participated in/controlled infringements via the "clean‑up" campaign | Wiley says no factual allegations show they authorized, directly participated in, or profited from infringement | Claims against Newman and Zerter dismissed for failing to plead contributory or vicarious liability facts |
| Infringing exportation as separate claim | Rubin & Young‑Wolff plead § 602 exportation claims | Wiley argues § 602 describes a form of infringement, not an independent cause of action | Court dismisses separate exportation claims but allows exportation allegations to proceed as part of infringement claims |
| Fraud / Fraudulent concealment & Pleading particularity / damages | Plaintiffs claim Wiley made misrepresentations to licensing agents and concealed prior uses, causing pecuniary harm | Wiley contends plaintiffs failed to plead time, place, speaker, content, reliance, and independent damages as required by Rules 9(b) and 12(b)(6) | Fraud and fraudulent concealment claims dismissed for failure to plead with particularity and for lacking distinct, non‑copyright damages; many allegations pleaded only "on information and belief" |
| Young‑Wolff breach of contract claims re: hundreds of licenses | Young‑Wolff alleges hundreds of license breaches and attaches an invoice spreadsheet | Wiley says plaintiff failed to plead terms, contracting parties, specific breaches, or damages for each contract | Breach of contract claims dismissed for lack of specificity and failure to plead essential contract elements |
Key Cases Cited
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must plausibly state a claim to survive dismissal)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (complaints must contain factual content permitting a reasonable inference of liability)
- Arista Records, LLC v. Doe S, 604 F.3d 110 (2d Cir. 2010) (summary of exclusive rights under the Copyright Act)
- Softel, Inc. v. Dragon Medical & Scientific Commc’ns, 118 F.3d 955 (2d Cir. 1997) (standards for contributory and vicarious copyright liability)
- In re NYSE Specialists Sec. Litig., 503 F.3d 89 (2d Cir. 2007) (court may consider documents attached to complaints on motions to dismiss)
- Carell v. Shubert Org., 104 F. Supp. 2d 236 (S.D.N.Y. 2000) (dismissing individual‑defendant copyright claims where plaintiff failed to allege acts supporting direct, contributory, or vicarious liability)
- Kregos v. Associated Press, 3 F.3d 656 (2d Cir. 1993) (fraud damages must be direct, immediate, and proximate result of misrepresentation)