OPINION & ORDER
Plaintiffs Pearson Education, Inc. (“Pearson”), John Wiley & Sons, Inc. (“Wiley”), Cengage Learning, Inc. (“Cengage”), and The McGraw-Hill Companies, Inc. (“McGraw-Hill”)
On September 21, 2012, defendants moved for summary judgment on all claims, and, on December 17, 2012, plaintiffs cross-moved for summary judgment on all claims. For the reasons that follow, (1) as to plaintiffs’ claims, the Court denies plaintiffs’ and Ishayev’s motions for summary judgment, but grants Leykina’s; and (2) as to Ishayev’s libel counterclaim, the Court grants plaintiffs’ motion for summary judgment, and denies Ishayev’s. Those portions of plaintiffs’ motion that are denied are without prejudice to plaintiffs’ right to renew their motion, this time on an intelligible factual record that per
I. Background
A. Parties
Plaintiffs are companies that publish a variety of works, including educational textbooks and accompanying instructors’ solutions manuals. FAC ¶¶ 11, 15-16. Plaintiffs hold numerous copyrights. They earn a substantial portion of their revenue from the publication of copyrighted works. The college textbooks that plaintiffs publish are chosen by college professors in part because of the quality of supplemental materials like instructors’ solutions manuals. Plaintiffs earn significant revenue from the sale of such textbooks and solutions manuals. Id. ¶¶ 14-15.
Defendants Ishayev and Leykina are residents of Brooklyn, New York. FAC ¶1¶ 8-9. The two have known each other since high school and have been in a romantic relationship for more than five years. See Scileppi Decl. Ex. X (“Ishayev Dep.”), at 22. It is undisputed that defendants did not have permission from plaintiffs to reproduce or sell the allegedly infringed works. FAC ¶ 21.
B. Relevant Events
As of fall 2010, websites existed that offered for sale unauthorized copies of the plaintiffs’ instructors’ solutions manuals. This lawsuit arises from a series of transactions conducted by Jennifer Siewert, a paralegal at plaintiffs’ counsel, Dunnegan and Scileppi LLC (“Dunnegan”), in which she sought to purchase those manuals from email addresses and websites allegedly affiliated with “Lazar Ishayev.” Siewert Decl. ¶ 1. As described below, Siewert succeeded in purchasing copies of instructors’ solutions manuals corresponding to six textbooks for which plaintiffs hold copyrights. PI. 56.1 ¶¶ 8-14.
Plaintiffs describe the content of their instructors’ solutions manuals sparingly. They aver that these manuals “contain the answers to the problems in the textbooks.”
Around September 21, 2010, Siewert contacted a “Lazar Ishayev” at lazarfb@ gmail.com, at the direction of Laura Scileppi and Samantha Morrissey, attorneys at Dunnegan. Siewert Decl. ¶ 2.
Around March 9, 2011, Siewert, at Morrissey’s direction, purchased the manual for Financial Management: Theory & Practice from the website solutionsmanuals-testbanks.blogspot.com. Siewert Decl. ¶ 6. Siewert paid “Solutions Direct” for this manual via Google Checkout, another online payment service, id. at ¶ 7; id. Ex. H, received a confirmation page from solutionmanuals-testbanks.blogspot.com, id. ¶ 8; id. Ex. I, and then received an email from “solutions41ess” at solutions41ess@ optimum.net attaching a zip file containing the Financial Management manual, id. ¶ 9; id. Ex. J. Siewert then, again, downloaded the manual herself. Id. ¶ 10; id. Ex. K.
Around June 30, 2011, Siewert, again at Morrissey’s direction, purchased the manual for Corporate Finance from the website solutionsmanuals-testbanks.blogspot.com. Siewert Decl. ¶ 11. She paid “Solutions Direct” for this manual via Google Checkout, id. at ¶ 12; id. Ex. L, received a confirmation page from solution-manuals-testbanks.blogspot.com, id. ¶ 13; id. Ex. M, and then received an email from “solutions41ess” at solutions41ess@ optimum.net attaching a zip file containing the Corporate Finance manual, id. ¶ 14; id. Ex. N. She then downloaded the manual herself. Id. ¶ 15; id. Ex. O.
C. Procedural History
On July 7, 2011, plaintiffs filed a complaint asserting claims of willful copyright infringement against defendants. Dkt. 1. On May 4, 2012, defendants filed an answer that included a counterclaim for damages arising from, as Ishayev characterized it, plaintiffs’ alleged defamation of Ishayev’s character. Dkt. 12. On May 7, 2012, the Court approved a case management plan, which included a schedule for amended pleadings, deposition, and fact discovery. Dkt. 14. On June 8, 2012, plaintiffs filed an amended complaint. Dkt. 23. On September 21, 2012, defendants filed a motion for summary judgment on all claims, Dkt. 49; and, on December 17, 2012, plaintiffs filed their own motion for summary judgment on all claims, Dkt. 53. On March 4, 2013, defendants submitted a memorandum in opposition to the plaintiffs’ motion. Dkt. 67. On March 20, 2013, plaintiffs submitted a reply. Dkt. 70.
II. Legal Standard
To prevail on a motion for summary judgment, the movant must “show[] that there is no genuine dispute as to any material fact and the movant is entitled' to judgment as a matter of law.” Fed. R.Civ.P. 56(a). The movant bears the burden of demonstrating the absence of a question of material fact. In making this determination, the' Court must view all facts “in the light most favorable” to the non-moving party. Holcomb v. Iona Coll.,
In considering plaintiffs’ motion, the Court is mindful that Ishayev and Leykina are pro se litigants whose submissions must be construed to “raise the strongest arguments that they suggest.” Triestman v. Fed. Bureau of Prisons,
III. Discussion
Plaintiffs bring a claim for copyright infringement under 17 U.S.C. § 501. “To establish copyright infringement, ‘two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’ ” Williams v. Crichton,
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3)to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
17 U.S.C. § 106.
It is undisputed that plaintiffs own a valid copyright for each of the six textbooks implicated in this case. See supra note 4. The instructors’ solutions manuals allegedly infringed by Ishayev and Leykina here, however, are not themselves copyrighted; rather, they are unregistered works, which plaintiffs contend are protected derivative works of the copyrighted textbooks. Therefore, a second two-step analysis is required to ascertain whether Ishayev’s and Leykina’s actions constitute copyright infringement. To resolve plaintiffs’ motion for summary judgment the Court must determine (1) whether the manuals are indeed derivative works qualifying for copyright protection, and, if they are, (2) whether, based on the evidence adduced at summary judgment, it is beyond genuine dispute that defendants have infringed one or more of the plaintiffs’ exclusive § 106 rights with respect to such unregistered derivative works.
A. Derivative Works
The right “to prepare derivative works based upon the copyrighted work” is an exclusive right guaranteed by the Copyright Act to the owner of any copyright. 17 U.S.C. § 106(2); see Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc.,
A “derivative work” is defined as a work based upon one or more preexisting works, such as a translation, musi*247 cal arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.
17 U.S.C. § 101. In order “for a work to qualify as a derivative work it must be independently copyrightable.” Woods v. Bourne Co.,
Plaintiffs claim that their instructors’ solutions manuals are important companion works to their copyrighted textbooks and thus are derivative works. The record evidence supplied by plaintiffs here as to the content of the instructors’ solutions manuals and the extent to which it replicates portions of the copyrighted textbooks is woefully sparse, but the record reflects this much: that these manuals contain the answers to questions provided in plaintiffs’ registered textbooks. Pl. Br. 12; see Morris Decl. ¶¶4-5; Murphy Decl. ¶¶4-5; Stitt Decl. ¶¶ 5-6; Beacher Decl. ¶¶ 4-5. Because those answers are “elaborations” of the copyrighted material present in the plaintiffs’ textbooks, the Court finds that the new material presented in the instructors’ manuals is sufficiently original to pass the low threshold required. On that basis, the Court holds that the plaintiffs’ instructors’ manuals are derivative works.
The weight of authority, however, is to the contrary: that an unregistered derivative work is protected from infringement only to the extent to which that unregistered work has reproduced protected material from the underlying registered work. See Pearson Educ., Inc. v. Frances, No. 11 Civ. 6081(LTS)(JCF),
The Court finds this latter, majority approach more persuasive. It fully protects the copyright holder’s exclusive right under 17 U.S.C. § 106 to “prepare derivative works.” At the same time, it gives persons who create derivative works an incentive to register them. It also avoids the problem, inherent in plaintiffs’ approach, of giving unduly sweeping protection to the holder of the copyright in the original work: Plaintiffs’ approach would allow a copyright holder who licenses a third party to create derivative works to sue for infringement of not only the licensed material, but also — if the third-party has not registered his derivative work— the new, original material created by the third party. But that outcome contravenes the purposes of the Copyright Act. Instead, the holder of the underlying copyright may properly sue only on the protected material incorporated into the derivative work. Accord 2-7 Nimmer on Copyright § 7.16(B)(5)(b) (“So long as the infringement relates to material common to both the underlying and [unregistered] derivative work, the copyright owner can simply allege violation of the former.”).
Measured against that standard, to establish infringement based on the instructors’ solution manuals, plaintiffs would have to show that materials copied from that manual were common to the underlying registered textbooks. For reasons that are unclear, on their motion for summary judgment, plaintiffs did not bring such evidence before the Court. Instead, plaintiffs, curiously, presented the Court with only a single, heavily-redacted page from each allegedly infringed instructors’ solutions manual. See supra note 5. Nor did plaintiffs otherwise adduce evidence of content common to the textbooks and the solutions manuals. Because plaintiffs have thus failed to show “that the amount that was copied is ‘more than de minimis,”’ they have not met their burden for summary judgment. Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc.,
Defendants, however, have also fallen short of establishing that summary judgment in their favor is merited on this point. They have not presented evidence that the instructors’ solutions manuals in question that they allegedly copied lacked more than de minimis material from the underlying registered textbooks. Until unredacted copies of the instructors’ solutions manuals in question have been put before the Court and the parties have addressed the extent to which there are common contents between those and the registered textbooks, the Court will be unable to determine whether sufficient copying has taken place to support a claim.
Accordingly, the Court denies both plaintiffs’ and defendants’ motion for summary judgment with respect to Ishayev for
B. Infringement by Hyperlink
Plaintiffs’ motion for summary judgment, as to three of the instructors’ solutions manuals, cannot be granted for a separate reason. Those manuals
To elaborate: Plaintiffs allege that Ishayev and Leykina infringed plaintiffs’ copyrights “through their sales of unauthorized copies of plaintiffs’ instructors’ solutions manuals” over the internet. FAC ¶ 1. It is undisputed that, with respect to three manuals, Ishayev, without consent from any plaintiff, sent emails to Siewert containing hyperlinks to a website called filesonic.com from which Siewert could and did directly download the specific requested manuals.
As a matter of law, sending an email containing a hyperlink to a site facilitating the sale of a copyrighted work does not itself constitute copyright infringement. A hyperlink (or HTML instructions directing an internet user to a particular website) is the digital equivalent of giving the recipient driving directions to another
The analysis in MyPlayCity is apposite here. There, MyPlayCity (“MPC”), an internet content provider that created Internet-based video games, alleged copyright infringement by Conduit Ltd. (“Conduit”), an Internet company that sold content producers the “right to use its online platform to create and distribute customized ‘tool-bars.’ ”
So, too, here: The hyperlink that Ishayev sent to Siewert directed her to filesonic.com, a file sharing website on which she could access electronic copies of three of plaintiffs’ manuals, but, like the toolbars in MyPlayCity, the link was .not itself a digital copy of any of the protected materials, and did not contain a copy of any of those materials.
To be sure, if Ishayev had himself uploaded the electronic copies of the manual onto the filesonic.com website, he would then be liable for copyright infringement, assuming plaintiffs had met their burden in showing that more than a de minimis amount of copyrighted material was present in the instructors’ manuals. And, plaintiffs contend that he is liable on that basis. They assert that “[a] reasonable juror could not conclude that defen
For this reason, even if there had been sufficient evidence to demonstrate that materials common to the registered textbooks and the instructors’ training materials had been copied, the present record would prevent the Court from granting summary judgment in plaintiffs’ favor as to Auditing & Assurance Services, Financial Accounting, and Advanced Financial Accounting.
C. Leykina’s Liability
The Court turns next to considering the evidence of Leykina’s liability for copyright infringement. This analysis is different as between the manuals distributed via zip file, and those distributed via hyperlink. The Court addresses these categories in turn.
As to the first category (ie., as to the Intermediate Accounting, Financial Management: Theory & Practice, and Corporate Finance manuals), plaintiffs have not come forward with any affirmative evidence to support their allegation that Leykina worked together with Ishayev to carry out the three zip file transactions. Leykina, for her part, denies involvement in any of Ishayev’s allegedly infringing activities: “I did not participate in any activity that Plaintiffs’ allege.... ” Dkt. 68 (“Leykina Deck”). In the absence of such evidence, Leykina is not liable for infringement of the three above-mentioned manuals. Her motion for summary judgment as to the manuals distributed via zip file must, therefore, be granted.
But this evidence falls short of being sufficient to establish Leykina’s liability for copyright infringement, for two reasons. First, at most, it establishes Leykina’s receipt and retention of sales proceeds of copyrighted material. It is not sufficient to establish her participation in the process of sending hyperlinks to customers. The sole evidence as to that issue, in fact — Leykina’s statements — is to the contrary.
Second, as noted, the transactions involving the sending of hyperlinks do not themselves constitute infringement, and these are the only transactions in which Leykina’s PayPal account was utilized. As to Ishayev, his distribution via zip file of various other manuals created by plaintiffs was a basis on which a reasonable juror could infer that he had uploaded the infringing materials to filesonic.com; therefore, the claims of infringement as to him with regard to the materials accessible by hyperlink survived. The same cannot be said of Leykina. Unlike in the case of Ishayev, there is no evidence on the summary judgment record that Leykina ever copied plaintiffs’ other three instructors’ manuals. There is, therefore, no non-speculative basis on which a juror could infer that she had participated in uploading the instructors’ solutions manuals to filesonic.com.
Defendants’ motion for summary judgment with respect to Leykina on the three remaining copyright claims is, therefore, granted.
D. Injunctive Relief
Plaintiffs also seek an injunction against defendants. The Copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). An injunction, however, is not
(1) that it will suffer an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
Id.
With the Court having denied plaintiffs’ motion for summary judgment, however, it is premature to consider plaintiffs’ bid for an injunction against Ishayev.
E. Ishayev’s Counterclaim for Libel
In his answer to the FAC, Ishayev brought a counterclaim against plaintiffs for defamation because they cast “aspersions on the Defendant’s, character and reputation ... as a result of the unsubstantiated allegations, which are public records.” Dkt. 40, at 2. He seeks $3.5 million in damages. Id. at 3. The Court construes this as a claim of libel, because “[l]ibel is a method of defamation expressed in writing or print.” Celle v. Filipino Reporter Enters. Inc.,
1) a written defamatory statement of fact concerning the plaintiff;
2) publication to a third party;
3) fault (either negligence or actual malice depending on the status of the libeled party);
4) falsity of the defamatory statement; and
5) special damages or per se actionability (defamatory on its face).
Id. (collecting cases).
The allegedly libelous statements of which Ishayev complains are plaintiffs’ complaint and FAC, which include the “unsubstantiated allegations” of copyright infringement that Ishayev claims caused him irreparable harm. However, “[i]n the context of a legal proceeding, statements by parties and their attorneys are absolutely privileged if, by any view or under any circumstances, they are pertinent to the litigation.” O'Brien v. Alexander,
Here, Ishayev challenges plaintiffs’ very allegations of infringement, which are central to their case. Plaintiffs’ pleadings and submissions cannot be the basis for a libel suit because they were indisputably pertinent to the litigation, and therefore privileged. Furthermore, Ishayev has not met his burden to show that plaintiffs acted with negligence or malice, because the Court has found that a genuine issue of material fact exists with respect to most of plaintiffs’ claims. Because the Court concludes that plaintiffs brought their claims in good faith, their allegations cannot form the basis of a libel suit. Thus, Ishayev has failed to establish at least two of the five elements of libel. The Court accordingly dismisses Ishayev’s counterclaim with prejudice.
CONCLUSION
For the reasons stated above, the Court: (1) as to plaintiffs’ claims against Ishayev, denies both plaintiffs’ and defendants’ motion for summary judgment; (2) as to plaintiffs’ claims against Leykina, grants defendants’ motion for summary judgment, and denies plaintiffs’ motion; (3) denies plaintiffs’ request for injunctive relief; and (4) dismisses Ishayev’s defamation counterclaim, with prejudice. The Clerk of Court is directed to terminate the motions pending at docket numbers 49 and 53.
The Court further directs that the parties submit, by August 16,2013, a joint letter setting out, in detail, their respective views as to how they wish to proceed in this litigation. If plaintiffs intend to move again for summary judgment, this time on the basis of unredacted evidence that permits the Court to meaningfully assess plaintiffs’ claims of copyright infringement, such a motion is due by August 30, 2013.
SO ORDERED.
Notes
. All four are collectively referred to as "plaintiffs,” unless otherwise noted.
. Plaintiffs also initially sued "John Does Nos. 1-5.” Because discovery has ended and plainliffs have not sought to amend their complaint or identify the John Doe defendants, the Court dismisses plaintiffs’ claims against John Doe Nos. 1-5.
. The Court’s account of the facts is derived from the parties’ submissions in support of and opposition to the instant motions. Plaintiffs have submitted: the first amended complaint ("FAC”) (Dkt. 23), a Rule 56.1 Statement ("Pi. 56.1”) (Dkt. 53), a memorandum of law in support of plaintiffs’ motion for summary judgment ("PL Br.”) (Dkt. 54), reply memorandum of law ("PL Reply Br.”) (Dkt. 70), and declarations from LaShonda Morris ("Morris Decl.”) (Dkt. 55), Patrick Murphy ("Murphy Decl.”) (Dkt. 56), Jessica Stitt ("Stitt Decl.”) (Dkt. 57), Bonnie Beacher ("Beacher Decl.”) (Dkt. 58), Jennifer Siewert ("Siewert Deck”) (Dkt. 59), and Laura Scileppi ("Scileppi Deck”) (Dkt. 60), with accompanying exhibits. Defendants submitted an Answer and Counterclaim (Dkt. 40), a Rule 56.1 Statement ("Def. 56.1”) (Dkt. 49), a memorandum of law in opposition to the plaintiffs’ motion ("Def. Br.”) (Dkt. 67), and declarations from Leykina (Dkt. 68) and Ishayev (Dkt. 69) in support of their own motion for summary judgment.
. The copyrights at issue here include: Pearson’s copyright for the textbook Auditing and Assurance Services by Arens, 13th Edition, see Morris Decl. ¶¶ 3, 6; id. Ex. A; Wiley's copyrights for the textbooks Intermediate Accounting by Kieso, 13th Edition, and Financial Accounting by Weygandt, 7th Edition, see Murphy Deck ¶¶ 3, 6-7; id. Ex. B; Cengage’s copyright for the textbook Financial Management: Theory & Practice by Brigham, 12th Edition, see Stitt Decl. ¶¶ 3, 7; id. Ex. C. and McGraw-Hill's copyrights for the textbooks Principles of Corporate Finance by Brealey, 7th Edition, and Advanced Financial Accounting, by Baker, 8th Edition, see Beacher Deck ¶¶ 3, 6-7; id. Ex. D. Each plaintiff has registered the above copyrights with the United States Copyright Office. See Morris Decl. ¶ 3; id. Ex. A, D; Murphy Deck ¶ 3; id. Ex. B; Stitt Deck ¶ 3; id. Ex. C; Beacher Decl. ¶¶ 3, 6-7; id. Ex. D.
. The excerpt from the Intermediate Accounting manual provided by plaintiffs includes only the chapter number and the copyright information. See Siewert Decl. Ex. G. The excerpt from the Financial Management manual provided by plaintiffs includes only the chapter number and chapter name: “An Overview of Financial Management and The Financial Environment.” See id. Ex. K. The excerpt from the Pnnciples of Corporate Finance manual provided by plaintiffs includes only the chapter number and chapter name: “How to Calculate Present Value.” See id. Ex. O. The excerpt of the Auditing and Assurance Services manual provided by plaintiffs includes only the chapter number and chapter name: “The Demand for Audit and Other Assurance Services.” See id. The excerpt from the Financial Accounting manual provided by plaintiffs includes only the chapter number, chapter name, and a table title: "Accounting in Action” and "Assignment Classification table” respectively. See id. The excerpt of the Advanced Financial Accounting manual provided by plaintiffs includes only the chapter number and chapter name: "Intercorporate Acquisitions and Investments in Other Entities.” See id.
. The record does not reflect how Scileppi, Morrissey, or Siewert discovered the lazarfb@gmail.com email address with respect to the first listed transaction.
. Plaintiffs alternatively argue that the manuals are protected derivative works because they have "no independent economic value” and are functionally "meaningless” without the original work. See Pl. Br. 11 (citing Pearson Educ., Inc. v. Nugroho, No. 08 Civ. 8034(DAB)(AJP),
. These are: Auditing & Assurance Services, Financial Accounting, and Advanced Financial Accounting.
. Plaintiffs’ claims would have succeeded, however, with respect to the three solutions manuals — Intermediate Accounting, Financial Management: Theory & Practice, and Corporate Finance — that Ishayev sent via three emails directly to Siewert, each with an attached zip file containing the text of the specific manual requested, which is undisputed by defendants. See Def. Br. 13. Once received by Siewert, the attached zip files provided her with immediate access to the text of the manuals. Consistent with a uniform body of case law the Court holds that by emailing zip files containing digital copies of the above mentioned manuals, without plaintiffs’ consent, Ishayev infringed their exclusive rights under § 106. See, e.g., Vergara,
.During his deposition, Ishayev equivocated as to whether he was paid in exchange for providing the zip files and hyperlinks identified above. See Ishayev Dep. 42-44. However, the Court finds that no reasonable juror could fail to find that Ishayev was in fact compensated for his actions, given (1) the PayPal receipts provided in Exhibit E of the Siewert Declaration, (2) Ishayev's admission that he operated a PayPal account associated with lazarfb@gmail.com and with his bank accounts at Astoria Federal Savings Bank and TD Bank, see Ishayev Dep. 83, 94; Scileppi Decl. Ex. AC, and (3) Ishayev’s admission that he used that PayPal account with respect to transactions involving instructors' solutions manuals, see Ishayev Dep. 44, 83.
. To be sure, “[ajlthough hyperlinking per se does not constitute direct copyright infringement because there is no copying ... in some instances there may be a tenable claim of contributory infringement or vicarious liability.” Online Policy Grp. v. Diebold, Inc.,
. Ishayev testified that "I said that I may, in exchange for compensation, have provided information, in digital or instructions how to retrieve any such item from a source that I do not control.” Ishayev Dep. 44. Although not pellucid, the Court construes this statement as denying the act of uploading. In his brief, Ishayev flatly denied uploading the materials, stating that he “did not have actual knowledge that the links he sent house actual copyrights material ... nor is he the one who uploaded such infringing material.” Def. Br. 10. Ishayev later attested that everything in his brief was true. See Dkt. 69 (“Ishayev Deck”).
. For this reason, plaintiffs’ claim that Leykina has not come forward with "any evidence demonstrating that Leykina was not involved in the sale of instructors’ solutions manuals,” PL Reply Br. 2, is untrue. Leykina’s sworn denial is such evidence.
. Pro se opposition papers can be treated as supplementary factual declarations if not inconsistent with the depositions and declarations on record. See Pahuja v. Am. Univ. of Antigua, No. 11 Civ. 4607(PAE),
. With the Court having granted summary judgment in Leykina’s favor, there is no basis for entry of an injunction against her.