United States District Court, E.D. Pennsylvania
GRANT HEILMAN PHOTOGRAPHY, INC.
McGRAW-HILL GLOBAL EDUCATION HOLDINGS, LLC, McGRAW-HILL SCHOOL EDUCATION HOLDINGS, LLC
MEMORANDUM RE: DEFENDANT'S MOTION FOR PARTIAL
copyright infringement case, Defendant has moved for partial
summary judgment under Rule 56 of the Federal Rules of Civil
Procedure, seeking a ruling that Plaintiff is not eligible
for statutory damages stemming from any copyright
infringement of the photographs at issue.
underlying case before this Court is Plaintiff's second
copyright infringement action against Defendant. The first
action (the “2012 Action”) was the subject
of a mini-trial and later, a settlement.
second case is about very similar alleged copyright
infringements-via Defendant's reprinting of books
containing Plaintiff's images-which occurred after the
2012 Action was settled. Defendant has conceded liability for
copyright infringement, but disputes Plaintiff's
eligibility for statutory damages pursuant to 17 U.S.C.
§ 504. In the 2012 Action, this Court ruled that none of
the photos at issue in that case were eligible for statutory
Factual and Procedural Background
April 18, 2012, Plaintiff commenced the 2012 Action against
Defendant, alleging copyright infringement. In September,
2014, the Court conducted a mini-trial of 53 claims (out of
Plaintiff's more than 2, 300 claims). The Court
ultimately granted Defendant's Motion for a Directed
Partial Verdict, on the grounds that none of the photos at
issue were eligible for statutory damages. Specifically, the
Court concluded that none of the photos at issue in the
mini-trial were eligible for statutory damages because
Defendant had infringed the same photos in earlier textbooks
before Plaintiff obtained copyright registrations for the
photos. In other words, where infringements of photos began
prior to their registration dates, Defendant could not be
liable for statutory damages.
eight photos that this Court found ineligible for statutory
damages, six have subsequently been pleaded as the basis for
Defendant's liability in the present case (the
“2016 Action”). Additionally, another twelve
photos now being pled in the 2016 Action were subject to the
jury's verdict in the 2012 Action, where the evidence at
trial showed Defendant's infringement began prior to the
the mini-trial, but prior to a new trial of all remaining
claims in the 2012 Action, the Court granted Defendant's
Motion for Summary Judgment on the issue of statutory
damages, thereby precluding Plaintiff from pursuing statutory
damages for any of its claims in that case. In doing so, the
Court concluded that all infringement by Defendant had
commenced prior to the photos' registration dates. That
Motion addressed fifty-five photos, nineteen of which are the
subject of allegations in the 2016 Action.
March 2, 2016 (the “Settlement Date”), the
parties reached a voluntary settlement of all remaining
claims in the 2012 Action. However, on October 14, 2016,
Defendant disclosed by letter to Plaintiff that it had
continued to infringe on Plaintiff's copyrights after the
Settlement Date. In that letter, Defendant claimed its
post-settlement infringements were inadvertent. Plaintiff
subsequently filed this suit for copyright infringement in
the Northern District of California, on December 23, 2016.
(ECF 1). The case was transferred to this District on
February 14, 2017. (Id.).
Complaint contains only one cause of action, for copyright
infringement, for which Plaintiff seeks monetary damages,
injunctive relief, and interest. Plaintiff also seeks
statutory damages, pursuant to 17 U.S.C. § 504(a).
present Motion for Partial Summary Judgment, seeking a ruling
that Plaintiff's claims are ineligible for statutory
damages, was filed on May 9, 2017 (ECF 18,
“MSJ”), renewed on September 15, 2017 (ECF 29,
“RMSJ”), responded to on November 3, 2017 (ECF
40, “Pl. Resp.”), and replied to on November 21,
2017 (ECF 45, “Def. Rep.”). Consistent with this
Court's Rules, the parties submitted statements of
undisputed facts (ECF 19, 41), which the Court drew upon in
laying out the factual background above.
Relevant Statutory Language
relevant statutory provision is 17 U.S.C. § 504(a),
which states, in pertinent part,
(a) IN GENERAL.-Except as otherwise provided by this title,
an infringer of copyright is liable for . . . (2) statutory