Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Grant Heilman Photography, Inc. v. McGraw-Hill Global Education Holdings, LLC

United States District Court, E.D. Pennsylvania

May 2, 2018

GRANT HEILMAN PHOTOGRAPHY, INC.
v.
McGRAW-HILL GLOBAL EDUCATION HOLDINGS, LLC, McGRAW-HILL SCHOOL EDUCATION HOLDINGS, LLC

          MEMORANDUM

          BAYLSON, JUDGE.

         I. Introduction

         In this copyright infringement action, Defendant McGraw-Hill Global Education Holdings, LLC (“McGraw-Hill” or “Defendant”) has filed a Motion to Disqualify Plaintiff's Counsel, alleging that counsel for Plaintiff Grant Heilman Photography, Inc. (“Grant Heilman” or “Plaintiff”) should be disqualified because they retained and consulted Plaintiff's former employee to obtain information regarding this case and other ongoing litigation against Defendant. Plaintiff's counsel is Harmon Seidman Bruss & Kerr, LLC (“Harmon Seidman”).

         Defendant's Motion must be considered in the context of a prior lawsuit between the same parties in this Court, and related litigation in other courts. Plaintiff serves as an agent for numerous photographers, in connection with the licensing of their photographic work product in various publications. As is well known, photographs are entitled to copyright protection. In this case, and similar cases, Plaintiff has acted on authorization by photographers to file lawsuits for damages under the copyright laws for unauthorized or excessive publication of photographs. It appears to be a general practice in the industry that when a publisher wishes to publish a specific photograph, there will usually be a quantity limit on the number of publications, or the quantity of each publication, and a schedule of fees to be paid depending on the frequency and quantity of reproductions of the photograph.

         Defendant is a large textbook publisher, who often includes photographs in its textbooks. Defendant recognizes the applicability of the copyright laws to its publication of photographs. In the prior case, after contentious discovery, Defendant eventually admitted liability for excessive publication of photographs and that it was liable for damages to the Plaintiff as agent for the photographers. One of the important facts developed in the prior litigation, discussed infra, is that Defendant apparently did not have any internal controls to regulate the quantity of textbooks that it was publishing containing photographs subject to payment of licensing fees, and thus was internally unaware that it was incurring liability to the Plaintiff, as agent for photographers, when it published textbooks.

         The first action, which began in 2012, was the subject of extensive discovery, a mini-trial, a settlement, and dismissal. See Grant Heilman Photography, Inc. v. McGraw-Hill School Education Holdings, LLC, et al., No. 12-cv-2061-MMB (the “2012 Action”). However, the settlement agreement reached in the 2012 Action did not release potential future claims based on printing or distribution of Plaintiff's photos after the settlement date. (See ECF 41, Pl. Statement of Facts re: Def. Mot. for Partial SJ, ¶ 18).

         On October 14, 2016, Defendant disclosed several unauthorized post-settlement printings of photographs for which Plaintiff owns licensing rights. (Id. ¶ 20). The disclosure led to the present lawsuit, which began in the Northern District of California on December 23, 2016. (ECF 1-1). Subsequently, the case was transferred to this Court on February 14, 2017. (ECF 1). The parties generally agree that Defendant is liable for copyright infringement, but disagree regarding the measure of damages, and specifically, whether Plaintiff is eligible for statutory damages.[1](See ECF 18, Def. Mot. for Partial SJ).

         II. Procedural Background

         The issue presently before the Court is whether the lawyers from Harmon Seidman, the law firm serving as Plaintiff's counsel, should be disqualified from the case as a result of their communications and entering into a consulting agreement with Defendant's former employee, Mari Masalin-Cooper (“Masalin-Cooper”). Defendant asserts that on August 31, 2017, the plaintiff in Robert Frerck v. McGraw-Hill Global Education Holdings, LLC, No. 16-cv-11605 (N.D. Ill.)-a case alleging copyright infringement by Defendant-disclosed for the first time in interrogatory responses that every lawyer at Harmon Seidman[2] had communicated with Masalin-Cooper beginning in August, 2016. (ECF 30-4, Beall Decl. re: Mot. to Disqualify, Ex. B). The interrogatory responses objected to the disclosure of the contents of most of such communications on the grounds of “attorney work-product.” (Id.).

         As a result, Defendant sought the deposition of Masalin-Cooper, which took place on September 14, 2017. (ECF 30-8, 30-9, Beall Decl. re: Mot. to Disqualify, Ex. F (“Masalin-Cooper Depo.”)). At multiple points during the deposition, Harmon Seidman attorney Alex Kerr instructed Masalin-Cooper not to answer Defendant's questions about Masalin-Cooper's interactions with Harmon Seidman attorneys on the grounds that the answers would reveal “attorney-work product” information. (Id. at 12:17-14:15, 23:1-24:1).

         Shortly thereafter, on September 25, 2017, Defendant filed its Motion to Disqualify Harmon Seidman, together with the sworn declaration of Christopher P. Beall and six exhibits. (ECF 30 (“Mot. to Disqualify”), ECF 30-2 through 30-10 (Ex. A-G)). Following an extension in its time to respond, Plaintiff timely filed its response on October 23, 2017, together with five sworn declarations. (ECF 35 (“Response”), ECF 35-1 through 35-5). On October 24, 2017, Plaintiff filed a “supplemental declaration” of Amanda Bruss. (ECF 36). On October 30, 2017, Defendant filed a reply in further support of its motion, along with the sworn declaration of Michael Beylkin. (ECF 38, (“Reply”), ECF 39).[3] The Court held a hearing on February 20, 2018, during which two witnesses, Michael Beylkin and Elizabeth Seidlin-Bernstein, testified for Defendant and three witnesses, Amanda Bruss, Maurice Harmon, and Sonia Wasco, testified for Plaintiff. (ECF 51 (“Tr.”)).

         The factual background below is derived from, inter alia, Masalin-Cooper's deposition, the parties' declarations, and live testimony from the hearing.

         III. Factual Background

         Masalin-Cooper began working at Defendant on September 24, 2012. During her time working at Defendant, Masalin-Cooper worked as Director of Creative Services and Content Licensing and as Director of Standards and Compliancy. At Defendant, she was deeply involved in discovery management and other litigation support, including with respect to the 2012 Action. In fact, according to attorney Michael Beylkin, who represented Defendant in the 2012 Action, Masalin-Cooper was “the primary point of contact for all the litigation efforts for the Higher Ed Division of McGraw-Hill, ” and Masalin-Cooper assisted in “getting background information as to all the litigations, discovery materials, getting discovery information, witness prep, discussing potential witnesses, ” and other tasks. (Tr. 9:15-17; 9:20-23). Moreover, she oversaw the McGraw-Hill team responsible for suppressing the unauthorized images that were at issue in the 2012 Action. She also participated in telephone calls and meetings throughout the 2012 Action, and was privy to confidential litigation strategy discussions between Defendant's attorneys, as well as consultations between outside counsel and in-counsel counsel regarding Defendant's legal positions. (See Tr. 55:25-56:6 (“She was intimately involved in various issues related to litigation strategy as well as trial preparation and trial strategy.”). She also participated in deposition preparation sessions and assisted in the collection of information for discovery. (Tr. 9:15-17; 9:20-23; 13:3-4).

         Importantly, Masalin-Cooper submitted a sworn declaration in the 2012 Action on December 2, 2014, reproduced in its entirety below:

Mari Masalin-Cooper, pursuant to 28 U.S.C. § 1746, states as follows:
1. I am Director of Licensing and Standards for Defendant McGraw-Hill Global Education Holdings, LLC (the “Higher Education Group”). I have personal knowledge of the matters stated herein.
2. I respectfully submit this declaration in support of McGraw-Hill's Opposition to Plaintiff's Motion for Permanent Injunction and Impoundment.
3. In my capacity as Director of Licensing and Standards for the Higher Education Group, I am presently overseeing efforts to ensure that none of the photos that were at issue in the “mini-trial” in this case is used in any future printing of Higher Education textbooks.
4. Specifically, working with a list containing both the Higher Education textbooks from the mini-trial and the at-issue photos from those textbooks, I have issued a directive to my department that those photos be removed from the master PDFs for those textbooks. Once the photos have been removed from the master PDF, then, if any of those textbooks are reprinted at any point, the reprinted versions will not include the removed photos.
I declare under penalty of perjury under the laws of the United States that the foregoing statements are true and correct.

(ECF 30-10, emphasis added).

         The issues presented in the present litigation appear to arise directly out of the failure of Masalin-Cooper's directive, referred to in paragraph 4 of her 2014 declaration. In fact, on May 10, 2016, Masalin-Cooper was terminated “for cause” due to the failure of her team to suppress the content which was at issue in the 2012 Action (although Masalin-Cooper stated at her deposition that she believed she was “scapegoated”).

         On August 18, 2016, Masalin-Cooper sent an apparently unsolicited email to Harmon Seidman attorney Christopher Seidman, which stated:

Dear Christopher,
I have recently left McGraw-Hill in Dubuque and moved back to the greater Detroit area. I will be reopen my business, B2B Copyright in September.
As a Content Licensing Director for Cengage Learning, Copyright Clearance Center and McGraw-Hill Education, I have a deep and broad understanding of the business of permission/rights acquisition and the business contract and compliance of 3rd party content and media.
I am hoping to branch out my services to include consulting on the best publishing business practices of content licensing and contract compliance as it pertains to copyright.
Do you feel this type of consulting service would be a benefit to a firm like yours? Would you be willing to share your thought about this type of consulting services and if there is a market for this service?
Any feedback about this service would be appreciated.
Thank you for your time and consideration.
Best,
Mari Masalin-Cooper[4]

         Christopher Seidman did not respond to the email. Twelve days later, Masalin-Cooper sent another email, this time to Harmon Seidman attorney, Maurice Harmon:

Dear Mr. Harman, I [sic]
I've recently left McGraw-Hill in Dubuque, and moved back to the greater Detroit area. I will be reopen my business, B2B Copyright in September.
As a Content Licensing Director for Cengage Learning, Copyright Clearance Center and McGraw-Hill Education, I have a deep and broad understanding of the business of permission/rights acquisition and the business of contract compliance for the use of 3rd party content and media in educational learning products.
I am hoping to branch out my services to include consulting on the best publishing business practices of content licensing and contract compliance as it pertains to copyright.
Do you feel this type of consulting service would be a benefit to a firm like yours? Would you be willing to share your thoughts about this type of consulting services and the market for this service?
Any feedback about this service would be appreciated. Thank you for your time and consideration.
Best,
Mari Masalin-Cooper

         Two days later, Masalin-Cooper and Harmon spoke telephonically about Masalin-Cooper's professional background, experience, and work history at Defendant. Then, the two exchanged a series of emails and had another telephone conversation seeking to meet in person in New York City or Detroit. Harmon asked additional questions during this September 9, 2016 telephone conversation, regarding Masalin-Cooper's ability to contribute as an expert or fact witness in textbook publisher cases. The two never met in person.

         On December 1, 2016, Masalin-Cooper sent a proposed consulting agreement to Mr. Harmon. On December 5, 2016, Harmon asked for clarification regarding Masalin-Cooper's consulting fees. On December 6, 2016, Masalin-Cooper responded by email with a revised consulting agreement. The final agreement stated that Masalin-Cooper would provide consulting and/or expert witness services concerning “Litigation involving McGraw-Hill Global Education Holdings LLC and McGraw-Hill School Education Holdings LLC.” It specified that Masalin-Cooper had to retain all non-public information obtained from Harmon Seidman as confidential, and precluded Masalin-Cooper from working for any other person or party in the case for two weeks.

         Later that day, Harmon Seidman attorney Amanda Bruss emailed Masalin-Cooper to confirm Harmon Seidman's agreement to the fees. Bruss stated to Masalin-Cooper that her questions were “regarding [Defendant's] databases [and] not case specific but apply generally to all our cases involving [Defendant].” (ECF 35-4, Ex. 1 to Bruss Decl. (emphasis added)). On December 8, 2016, Harmon Seidman issued a check for $600 for Masalin-Cooper's consulting services. (ECF 30-7, Check). The same day, Bruss and Masalin-Cooper spoke on the phone for approximately one hour, discussing Defendant's databases, permissions systems, and licensing procedures. At Masalin-Cooper's deposition, she responded several times to questions about her conversation with Bruss:

Q. Okay. What was it that Miss Bruss asked you about?
A. Okay. She wanted to know why the discovery was taking so long, why there was so much confusion about the discovery and why if it was, if it was legitimate, if it was taking too long ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.