memo of law iso remedies motion (ecf...
TRANSCRIPT
PUBLIC VERSION
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
HARPERCOLLINS PUBLISHERS LLC,
Plaintiff,
v.
OPEN ROAD INTEGRATED MEDIA, LLP,
Defendant.
)))))))))))
Case No. 1:11-cv-09499-NRB
MEMORANDUM OF LAW IN SUPPORT OF HARPERCOLLINS PUBLISHERS LLCâS MOTION FOR A PERMANENT INJUNCTION, STATUTORY DAMAGES,
ATTORNEYSâ FEES, AND COSTS
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TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT .....................................................................................................1
BACKGROUND .............................................................................................................................2
A. Factual Background and the Partiesâ Arguments .....................................................2
B. The Courtâs Summary Judgment Ruling .................................................................5
C. Open Roadâs Subsequent Conduct ...........................................................................7
ARGUMENT ...................................................................................................................................7
I. THE COURT SHOULD ENTER A PERMANENT INJUNCTION ..................................7
II. HARPERCOLLINS IS ENTITLED TO A MAXIMUM STATUTORY DAMAGE AWARD, ENHANCED DUE TO OPEN ROADâS CONTINUED WILLFUL INFRINGEMENT ...........................................................................................12
III. THE COURT SHOULD GRANT HARPERCOLLINS ITS REASONABLE ATTORNEYSâ FEES ........................................................................................................17
A. An Award of Attorneysâ Fees Is Warranted ..........................................................17
B. The Amount of Fees Requested Is Reasonable ......................................................21
IV. THE COURT SHOULD AWARD HARPERCOLLINSâ FULL COSTS ........................23
CONCLUSION ..............................................................................................................................25
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TABLE OF AUTHORITIES
Page(s)
Cases
16 Casa Duse, LLC v. Merkin,No. 12 Civ. 3492 (RJS), 2013 WL 5510770 (S.D.N.Y. Sept. 27, 2013) ...........................18, 20
All-Star Mktg. Group, LLC v. Media Brands Co., Ltd.,775 F. Supp. 2d 613 (S.D.N.Y. 2011) ......................................................................................13
Arbor Hill Concerned Citizens Neighborhood Assân v. Cnty. of Albany,522 F.3d 182 (2d Cir. 2008)...............................................................................................21, 22
Arista Records LLC v. Usenet.com, Inc.,No. 07 Civ. 8822 (HB)(THK), 2010 WL 3629688 (S.D.N.Y. Feb. 2, 2010),report and recommendation adopted, No. 07 Civ. 8822(HB),2010 WL 3629587 (S.D.N.Y. Sept. 16, 2010) ...................................................................15, 16
Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy,548 U.S. 291 (2006) .................................................................................................................24
Barrera v. Brooklyn Music, Ltd.,346 F. Supp. 2d 400 (S.D.N.Y. 2004) ................................................................................23, 24
BBY Solutions v. Schwartz,No. 11 Civ. 0947(ADS)(ETB), 2011 WL 6986937 (E.D.N.Y. Nov. 17, 2011) ......................21
Boosey & Hawkes Music Publârs, Ltd. v. Walt Disney Co.,145 F.3d 481 (2d Cir. 1998).................................................................................................6, 19
Bryant v. Media Right Prods., Inc.,603 F.3d 135 (2d Cir. 2010).....................................................................................................13
Complex Sys., Inc. v. ABN Amro Bank N.V.,No. 08 Civ. 7497 (KBF), 2014 U.S. Dist. LEXIS 64467 (S.D.N.Y. May 9, 2014) ......9, 10, 11
Contractual Obligation Prods., LLC v. AMC Networks, Inc.,546 F. Supp. 2d 120 (S.D.N.Y. 2008) ......................................................................................18
Crescent Publâg Group, Inc. v. Playboy Enters., Inc.,246 F.3d 142 (2d Cir. 2001).....................................................................................................21
eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) ...................................................................................................................8
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 3 of 31
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TABLE OF AUTHORITIES (contâd)
Page(s)
Cases
EMI April Music Inc. v. 4MM Games, LLC,No. 12 Civ. 2080 (DLC)(JLC), 2014 WL 325933 (S.D.N.Y. Jan. 13, 2014), report and recommendation adopted, No. 12 Civ. 2080(DLC),2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014).................................................................... passim
Farberware Licensing Co. LLC v. Meyer Marketing Co., Ltd.,No. 09 Civ. 2570 (HB), 2009 WL 5173787 (S.D.N.Y. Dec. 30, 2009),affâd, 428 F. Appâx 97 (2d Cir. 2011) ......................................................................................23
Fogerty v. Fantasy, Inc.,510 U.S. 517 (1994) ...........................................................................................................17, 18
Grant v. Martinez,973 F.2d 96 (2d Cir. 1992).......................................................................................................22
Harrell v. Van Der Plas,No. 08 Civ. 8252 (GEL), 2009 WL 3756327 (S.D.N.Y. Nov. 9, 2009) .......................... passim
Hensley v. Eckerhart,461 U.S. 424 (1983) .................................................................................................................21
Hounddog Prods., L.L.C. v. Empire Film Group, Inc.,826 F. Supp. 2d 619 (S.D.N.Y. 2011) ........................................................................................8
LaSalle Bank Natâl Assân v. Nomura Asset Capital Corp.,424 F.3d 195 (2d Cir. 2005).....................................................................................................19
LeBlanc-Sterling v. Fletcher,143 F.3d 748 (2d Cir. 1998).....................................................................................................24
Matthew Bender Co., Inc. v. West Publâg Co.,240 F.3d 115 (2d Cir. 2001)...............................................................................................17, 18
Microsoft Corp. v. AGA Solutions, Inc.,No. 05 Civ. 5769(DRH)(MLO), 2010 WL 1049219 (E.D.N.Y. Mar. 22, 2010) .....................14
Miltland Raleigh-Durham v. Myers,840 F. Supp. 235 (S.D.NY. 1993)............................................................................................24
Miroglio S.P.A. v. Conway Stores, Inc.,629 F. Supp. 2d 307 (S.D.N.Y. 2009) ..........................................................................13, 18, 20
MiTek Holdings, Inc. v. Arce Engâg Co.,198 F.3d 840 (11th Cir. 1999) .................................................................................................18
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TABLE OF AUTHORITIES (contâd)
Page(s)
Cases
Muller v. Twentieth Century Fox Film Corp.,No. 08 Civ. 02550(DC), 2011 WL 3678712 (S.D.N.Y. Aug. 22, 2011) .................................21
N.Y. State Assân for Retarded Children, Inc. v. Carey,711 F.2d 1136 (2d Cir. 1983)...................................................................................................23
Natâl Football League v. Primetime 24 Joint Venture,No. 98 Civ. 3778LMM, 1999 WL 760131 (S.D.N.Y. Sept. 27, 1999) ...................................11
Omega Importing Corp. v. Petri-King Camera Co.,451 F.2d 1190 (2d Cir. 1971)...................................................................................................16
Pannonia Farms, Inc. v. USA Cable (âPannonia Iâ), No. 03 Civ. 7841(NRB), 2004 WL 1276842 (S.D.N.Y. June 8, 2004) ...................................17
Pannonia Farms, Inc. v. USA Cable (âPannonia IIIâ), No. 03 Civ. 7841(NRB), 2006 WL 2872566 (S.D.N.Y. Oct. 5, 2006) .......................17, 21, 23
Paramount Pictures Corp. v. Carol Publâg Group,11 F. Supp. 2d 329 (S.D.N.Y. 1998) ........................................................................................11
Pearson Educ., Inc. v. Ishayev,963 F. Supp. 2d 239 (S.D.N.Y. 2013) ........................................................................................8
Pearson Educ., Inc. v. Vergara,No. 09 Civ. 6832(JGK)(KNF), 2010 WL 3744033 (S.D.N.Y. Sept. 17, 2010) ........................9
Porto v. Guirgis,659 F. Supp. 2d 597 (S.D.N.Y. 2009) ......................................................................................18
Psihoyos v. John Wiley & Sons, Inc.,Nos. 12-4874-cv(L), 12-5069-cv(XAP), 2014 WL 1327937 (2d Cir. Apr. 4, 2014) ..............13
Random House, Inc. v. Rosetta Books LLC,150 F. Supp. 2d 613 (S.D.N.Y. 2001), affâd, 283 F.3d 490 (2d Cir. 2002) ..................... passim
Salinger v. Colting,607 F.3d 68 (2d Cir. 2010).............................................................................................8, 11, 12
Scanlon v. Kessler,23 F. Supp. 2d 413 (S.D.N.Y. 1998) ........................................................................................13
Silverstein v. Penguin Putnam, Inc.,368 F.3d 77 (2d Cir. 2004).................................................................................................10, 11
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TABLE OF AUTHORITIES (contâd)
Page(s)
Cases
Software Freedom Conservancy, Inc. v. Best Buy Co., Inc.,No. 09 Civ. 10155(SAS), 2010 WL 2985320 (S.D.N.Y. Jul. 27, 2010) .................................17
Syrnik v. Polones Const. Corp.,No. 11 Civ. 7754(KBF), 2012 WL 4122801 (S.D.N.Y. Sept. 19, 2012) .................................24
Tom Doherty Assoc., Inc. v. Saban Entmât., Inc.,60 F.3d 27 (2d Cir. 1995) ..........................................................................................................8
Tradescape v. Shivaram,77 F. Supp. 2d 408 (S.D.N.Y. 1999) ....................................................................................8, 10
Twin Peaks Prods., Inc. v. Publâs Intâl, Ltd.,996 F.2d 1366 (2d Cir. 1993).............................................................................................12, 17
United States v. W.T. Grant Co.,345 U.S. 629 (1953) .................................................................................................................10
United States Football League v. Natâl Football League,887 F.2d 408 (2d Cir. 1989).....................................................................................................24
Warner Bros. Entmât Inc. v. RDR Books,575 F. Supp. 2d 513 (S.D.N.Y. 2008) ......................................................................8, 10, 11, 12
Williams v. Crichton,891 F. Supp. 120 (S.D.N.Y. 1994)...........................................................................................24
Statutes
17 U.S.C. § 502 ..................................................................................................................1, 7, 8, 16
17 U.S.C. § 504. ...................................................................................................................1, 12, 13
17 U.S.C. § 505 ...................................................................................................................... passim
28 U.S.C. § 1920 ........................................................................................................................1, 24
28 U.S.C. § 1923 ............................................................................................................................24
Other Authorities
Fed. R. Civ. P. 54 .................................................................................................................1, 23, 24
2013 NLJ Billing Survey, NATâL L.J. (Dec. 2013) .........................................................................22
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Pursuant to the Courtâs March 14, 2014 Memorandum and Order, 17 U.S.C. §§ 502, 504,
and 505, 28 U.S.C. § 1920, and Federal Rule of Civil Procedure 54(d)(1), Plaintiff HarperCollins
Publishers LLC (âHarperCollinsâ) respectfully submits this memorandum of law in support of its
motion for an award of a permanent injunction, statutory damages, attorneysâ fees, and costs.
PRELIMINARY STATEMENT
This copyright infringement action arose out of the publication by Defendant Open Road
Integrated Media Inc. (âOpen Roadâ) of an electronic edition of acclaimed childrenâs novel Julie
of the Wolves by Jean Craighead George (the âWorkâ), despite HarperCollinsâ exclusive right to
publish or license publication of electronic editions of the Work under its 1971 agreement with
George (the âAgreementâ). Although HarperCollins advised Open Road repeatedly that such
conduct would violate HarperCollinsâ exclusive rights, Open Road â fully aware of the legal risk
â nevertheless proceeded to publish its e-book version of the Work in or about August 2011.
In granting HarperCollinsâ motion for summary judgment on its infringement claim and
denying Open Roadâs cross-motion, the Court found that the Agreement unambiguously granted
HarperCollins the exclusive right to license e-book versions of the Work. In so holding, the
Court declined Open Roadâs invitation to ignore both the plain meaning of the 1971 Agreement
and the interpretive principles established by this Circuitâs ânew useâ precedents, which, the
Court held, strongly supported HarperCollinsâ position. Notwithstanding the Courtâs emphatic
rejection of Open Roadâs arguments, Open Road to this day (more than two months later)
persists in violating HarperCollinsâ exclusive electronic rights by continuing to hold itself out as
an authorized publisher of the Work.
HarperCollins seeks entry of a permanent injunction to protect its exclusive rights in the
Work and statutory damages of not less than $30,000 for Open Roadâs blatant infringement. As
the prevailing party, and particularly in light of the objective unreasonableness of Open Roadâs
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litigation position, HarperCollins also seeks an award of attorneysâ fees in the amount of
$1,089,371.50 and costs in the amount of $7,040.62. As explained below and in the
accompanying Declaration of R. Bruce Rich, dated May 23, 2014 (âRich Decl.â), HarperCollins
believes these remedies are necessary and appropriate to compensate it for harm sustained as the
result of Open Roadâs infringing conduct; to prevent such conduct from continuing with respect
to Julie of the Wolves and from occurring in the future with respect to that and other works; and
to deter Open Road and others from acting without regard for clear grants of electronic
publication rights to third parties and thereby interfering with the rightful exploitation of those
rights.
BACKGROUND
A. Factual Background and the Partiesâ Arguments
HarperCollins learned of Georgeâs intention to enter into an agreement with Open Road,
a digital book publisher, for the publication of an e-book version of Julie of the Wolves in
approximately December 2010. See Rich Decl. ¶ 3. Over the ensuing months, HarperCollins
repeatedly advised George and her literary agent, Ginger Knowlton of Curtis Brown, Ltd., that
HarperCollins held the exclusive right to license electronic publishing rights in the Work to third
parties and that any publication of the Work by Open Road would constitute copyright
infringement. Id. ¶ 4, 7 & Ex. F. In a meeting between the partiesâ counsel, HarperCollinsâ
counsel identified the specific provisions of the Agreement that unambiguously granted these
rights exclusively to HarperCollins, gave Open Road fair notice of HarperCollinsâ reservation of
all its legal rights, and indicated HarperCollinsâ intent to sue for copyright infringement should
Open Road proceed with its plan to publish a Julie of the Wolves e-book. Id. ¶ 8.
The relevant provisions of the Agreement granted HarperCollins the exclusive English
language rights to publish the Work âin book formâ and also granted HarperCollins the exclusive
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take and defend six depositions. See id. ¶ 19. In addition, after Open Road insisted on
submitting expert reports, HarperCollins was required to work extensively with its expert, Dr.
Andries van Dam, in connection with the preparation of his responsive report. See id. ¶ 20. On
March 18, 2013, the parties cross-moved for summary judgment comprising nearly 100 pages of
briefing and more than 140 exhibits. Id. ¶ 21. HarperCollinsâ motion was supported by
declarations from one fact witness and one expert witness.
In its summary judgment papers, Open Road argued that HarperCollins itself had not
been granted the right to publish e-book versions of the Work because, according to Open Road,
e-books were not encompassed by the Agreementâs broad grant of rights to publish the Work âin
book form.â Dkt. 22 at 11-19. This argument â in addition to being irrelevant, because only
HarperCollinsâ right to license third parties was at issue â was premised on the factually
distinguishable, more-than-decade-old case Random House, Inc. v. Rosetta Books LLC, 150 F.
Supp. 2d 613 (S.D.N.Y. 2001), affâd, 283 F.3d 490 (2d Cir. 2002). See Dkt. 22 at 11-18. In that
case, the district court refused to enjoin another e-book publisher, Rosetta Books, from
publishing novels to which Random House held the rights to âprint, publish and sellâ âin book
formâ; none of the publishing contracts at issue in that case mentioned electronic publication.
Concerning the salient portions of Paragraph 20 of the Agreement, Open Road urged the
Court to effectively rewrite it by striking the âand/orâ so that the language concerning
âinformation and storage and retrieval systemsâ was merely âmodifiedâ by the remainder of the
provision â âwhether through computer, computer-stored, mechanical or other electronic means
now known or hereafter inventedâ â rather than the âelectronic meansâ clause having
independent significance. See Dkt. 35 at 8-10. So interpreted, Open Road maintained that
Paragraph 20 did not compass e-books because âinformation and storage and retrieval systemsâ
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was limited to âsystems in which books and other publications would be analyzed, indexed,
classified, and abstracted, including by computers.â Dkt. 22 at 21; Dkt. 25 (Declaration of
Michael J. Boni In Support of Defendant Open Roadâs Motion for Summary Judgment) Ex. 33
(Amended Declaration and Expert Report of David Farber (âFarber Decl.â)) ¶ 18. Such systems,
Open Road contended, were confined to âthe functional equivalent of a more advanced library
card retrieval system.â Farber Decl. ¶ 18.
B. The Courtâs Summary Judgment Ruling
On March 14, 2014, the Court granted HarperCollinsâ motion for summary judgment and
denied Open Roadâs cross-motion for summary judgment. In doing so, the Court squarely
rejected each of Open Roadâs arguments. Dkt. 46.
First, the Court rejected Open Roadâs attempt to âredirect the Courtâs attentionâ away
from Paragraph 20 to Paragraph 1 and to Rosetta Books â a case that, the Court noted, âdid not
directly addressâ the issues in this case. Id. at 20. The Court found that the Agreementâs broad
and unqualified grant to HarperCollins of the right to âpublishâ the Work âin book formâ was
distinguishable from the arguably more limited âprint, publish and sellâ grant language that
Rosetta Books had successfully argued denoted a paper copy. Id. at 16 (emphasis added).3
The Court determined, however, that it did not need to decide whether the âin book formâ
grant by itself covered e-book publication rights because Paragraph 20 left no doubt that
HarperCollins held the exclusive right to license third parties to publish electronic editions of the
Work. Paragraph 20, the Court explained, âexplicitly grant[ed] HarperCollins certain rights
3 The Courtâs suggestion that Open Roadâs attempt to avoid Paragraph 20 was disingenuous (see id. at 20 (attributing Open Roadâs focus on Paragraph 1 to its âapparent[] recogni[tion of] the breadth of the language in Paragraph 20â)) is bolstered by the fact that Open Roadâs counsel, who also was counsel to Rosetta Books, argued in Rosetta Books that e-book rights had not been conveyed to Random House because none of the contracts anywhere addressed electronic rights. See Dkt. 23 Ex. 46 at 19-20. The Agreement contains the very reference to electronic rights that Open Roadâs counsel thus recognized would have dictated a different result in Rosetta Books.
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 11 of 31
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associated with use by âelectronic means,ââ thereby creating âa critical distinction from Rosetta
Books, whose contract made no mention of electronic exploitation at all.â Dkt. 46 at 17. The
Court further found that Paragraph 20, by encompassing âthe forward-looking reference to
technologies ânow known or hereafter invented,ââ was âsufficiently broad to draw within its
ambit e-book publication.â Id. E-book technology, the Court stated, âencompasses a later-
invented version of the very âcomputer, computer-stored, mechanical or other electronic meansâ
provided by Paragraph 20.â Id.
The court held this conclusion was reinforced by this Circuitâs ânew useâ cases, as the
âexpansive contractual languageâ in the Agreement was at least as broad as that previously found
to be âsufficient to encompass a later-developed new use.â Id. at 18. Indeed, the Court noted
that by expressly providing for anticipated electronic means that might be âhereafter invented,â
Paragraph 20 was âgreater in breadthâ with respect to new uses than contracts at issue in the
ânew useâ cases that lacked such a future-use provision but nonetheless were found to be broad
enough to encompass new electronic uses. Id. at 19.4
To the extent Open Road did address Paragraph 20, the Court found that it âattempt[ed]
to rewriteâ it by excising the âand/orâ language that Georgeâs own literary agent had insisted on
including and by limiting its analysis to the portion of the provision addressing âinformation and
storage and retrieval systems.â Id. at 20-22. The Court noted that it was, in any event, far from
clear that treating the âelectronic meansâ language as a mere modifier would support Open
Roadâs position, finding it âplausibleâ that âstorage and retrieval and information systemsâ alone
could encompass e-book technology under the ânew useâ precedents. See id. at 22.
4 The Court also rejected Open Roadâs contention that a âforeseeabilityâ analysis was required as part of the ânew useâ contract assessment, noting that, contrary to Open Roadâs contention, whether foreseeability of the new use is required âremains an open question.â Id. at 25 (quoting Boosey & Hawkes Music Publârs, Ltd. v. Walt Disney Co., 145 F.3d 481, 486 (2d Cir. 1998)).
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 12 of 31
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Finally, the Court readily disposed of Open Roadâs remaining arguments, concluding
that:
Open Roadâs claims regarding the purported lack of a publication grant or a royalty rate in Paragraph 20 were irrelevant attempts to âredirect attention to . . . a question not before this Court and not germane to this litigation,â id. at 23;
the partiesâ course of performance under the Agreement did not favor Open Road (and in fact likely favored HarperCollins), as Open Roadâs only examples of George licensing electronic uses of the Work were undertaken without HarperCollinsâ knowledge or consent, id. at 27; and
Open Roadâs argument that subsequent contracts containing different language should bear on the construction of the 1971 Agreement had no merit, id. at 28.
C. Open Roadâs Subsequent Conduct
Despite the Court having found its publication of the Work to be infringing, Open Road
continues to hold itself out to the public as an authorized publisher of the Julie of the Wolves e-
book. As of the date of this motion, Open Roadâs website continues to invite consumers to âBuy
the EBookâ of the Work through a variety of channels, including Amazon, Apple, and Google.
See Rich Decl. ¶ 15 & Ex. K. As recently as May 1, 2014 (some six weeks after this Courtâs
summary judgment decision), the Julie of the Wolves e-book remained available for sale on each
of these channels. Id. ¶ 14 & Ex. I. Even today, Google Play continues to display Open Roadâs
version of the e-book and invites consumers to add it to their âWishlist.â Id. ¶ 16 & Ex. L.
Based on the Courtâs ruling in its favor, as well as Open Roadâs subsequent continued
infringing conduct, HarperCollins now moves for appropriate remedies as the prevailing party in
this action.
ARGUMENT
I. THE COURT SHOULD ENTER A PERMANENT INJUNCTION
HarperCollins seeks the entry of a permanent injunction against Open Roadâs continuing
and future infringement of HarperCollinsâ exclusive electronic publishing rights. Section 502 of
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the Copyright Act authorizes the Court to enter a final injunction âon such terms as it may deem
reasonable to prevent or restrain infringement of a copyright.â 17 U.S.C. § 502. A plaintiff
seeking a permanent injunction must demonstrate: (1) that it has suffered 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. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).5
HarperCollins easily meets this standard.
First, there can be little question that HarperCollins will suffer irreparable harm without
an injunction. Harm may be irreparable âfor many reasons, including that a loss is difficult to
replace or difficult to measure, or that it is a loss that one should not be expected to suffer.â
Salinger, 607 F.3d at 81; see also Tom Doherty Assoc., Inc. v. Saban Entmât, Inc., 60 F.3d 27, 38
(2d Cir. 1995) (affirming grant of injunction based on finding that publishing company would be
irreparably harmed by being prevented from taking advantage of market opportunity to which it
had a right and finding damages caused by lost opportunity would be difficult to quantify);
Tradescape v. Shivaram, 77 F. Supp. 2d 408, 411 (S.D.N.Y. 1999) (finding irreparable harm
where âlong-term damage to plaintiffâs market share and reputation would be impossible to
quantifyâ); accord EMI April Music Inc. v. 4MM Games, LLC, No. 12 Civ. 2080(DLC)(JLC),
2014 WL 325933, at *9 (S.D.N.Y. Jan. 13, 2014), report and recommendation adopted, No. 12
Civ. 2080(DLC), 2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014) (finding irreparable harm because,
5 Although the Second Circuit has not expressly held that the eBay standard applies to permanent injunctions in the copyright context, it has held that it applies to preliminary injunctions in copyright cases, Salinger v. Colting, 607 F.3d 68, 77 (2d Cir. 2010), and there would appear to be no basis for finding it inapplicable to a copyright permanent injunction. Indeed, courts in this District have held that it applies. See, e.g., Pearson Educ., Inc. v. Ishayev, 963 F. Supp. 2d 239, 254 (S.D.N.Y. 2013); WarnerBros. Entmât Inc. v. RDR Books, 575 F. Supp. 2d 513, 551-52 (S.D.N.Y. 2008); Hounddog Prods., L.L.C. v. Empire Film Grp., Inc., 826 F. Supp. 2d 619, 632 (S.D.N.Y. 2011).
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 14 of 31
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inter alia, defendant had ârefused to properly licenseâ works at issue, and plaintiff could not
control defendantâs illegal use of copyrighted works); Pearson Educ., Inc. v. Vergara, No. 09
Civ. 6832(JGK)(KNF), 2010 WL 3744033, at *4 (S.D.N.Y. Sept. 27, 2010) (finding irreparable
harm based on determination that plaintiff publisher should not be expected to suffer decline in
sales and profits of books due to defendantâs infringement).
HarperCollins plainly is suffering irreparable harm, and will continue to do so if a
permanent injunction is not entered. Open Roadâs continued unlicensed offering and sale of the
Work following the summary judgment ruling, and its ongoing representation to consumers that
it is an authorized publisher of the Work, in violation of what the Court found to be
HarperCollinsâ exclusive electronic publication rights, interfere with HarperCollinsâ ability to
sell or license publication of the Work and thus its ability to take advantage of a market
opportunity that it â and only it â is entitled to exploit. By its unlawful competition, Open Road
has harmed HarperCollins to an extent that is impossible to quantify and that HarperCollins
cannot control. See Complex Sys., Inc. v. ABN Amro Bank N.V., No. 08 Civ. 7497 (KBF), 2014
U.S. Dist. LEXIS 64467, at *39 (S.D.N.Y. May 9, 2014) (âDirect competition may . . . constitute
irreparable harm.â) (citation omitted). HarperCollins should not be expected to continue to
incur this harm as a result of Open Roadâs ongoing infringing conduct.
Second, HarperCollins has no adequate remedy at law. A plaintiff has no adequate
remedy at law where, absent an injunction, the defendant is likely to continue the infringement.
See EMI April Music, 2014 WL 325933, at *9 (finding no evidence defendant would stop its
infringing activities where it âfailed to cease its infringing activities even after being notified of
its infringementâ); Pearson Educ. v. Vergara, 2010 WL 3744033, at *4 (finding award of
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 15 of 31
10
monetary damages would not adequately compensate plaintiffs where there was no evidence to
suggest defendant would cease infringing activity).
Open Road has shown no sign it will stop its infringing conduct unless it is enjoined from
doing so. Even following issuance of the Courtâs strongly worded summary judgment ruling,
Open Road continued to make the Work available for sale through links on its website to various
online retailers until at least May 1, 2014 â some six weeks after the Courtâs ruling. Rich Decl.
Ex. ¶ 14 & Ex. I. Even today, Open Road continues to represent that consumers can âBuy the
EBookâ via its website, and at least one of its vendors maintains a page dedicated to Open
Roadâs e-book edition of the Work and permits putative purchasers to place it on their
âWishlist,â implicitly suggesting that the e-book will be available from Open Road in the future.
Id. ¶¶ 15-16 & Exs. K-L. Hence, it is clear that if an injunction is not issued, Open Road is
likely to continue infringing HarperCollinsâ copyright rights.6 See Warner Bros., 575 F. Supp.
2d at 553. Given the âsignificant threat of future infringementâ in this case, it is apparent that
HarperCollins âcannot be compensated by monetary relief alone.â EMI April Music, 2014 WL
325933, at *9.7
The principle that injunctive relief should be granted where denying it âwould amount to
a forced license to use the creative work of another,â see Silverstein v. Penguin Putnam, Inc.,
368 F.3d 77, 84 (2d Cir. 2004); Complex Sys., 2014 U.S. Dist. LEXIS 64467, at *34-35, further
6 The fact that Open Road appears to have instructed its retailers to cease actually selling the Julie of the Wolves e-book does not lessen the need for a permanent injunction: Open Roadâs prior conduct indicates its proclivity for flouting the Courtâs summary judgment ruling, and voluntary cessation of illegal or infringing conduct does not prevent the granting of a permanent injunction. See, e.g., Tradescape.com, 77 F. Supp. 2d at 410 n.2 (granting permanent injunction in copyright action, noting â[v]oluntary cessation of unlawful conduct alone does not moot an application for an injunctionâ) (citing United States v. W.T. Grant Co., 345 U.S. 629, 633 (1953)).7 HarperCollins is concerned not only with Open Roadâs continued infringement of its rights in Julie of the Wolves but also with protecting its rights to other works as to which it holds comparable exclusive rights.
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compels entry of an injunction. Indeed, the failure to issue an injunction would be âtantamount
to the creation of a compulsory license, future damages . . . becoming a sort of royalty.â
Silverstein, 368 F.3d at 84; see also Paramount Pictures Corp. v. Carol Publâg Grp., 11 F. Supp.
2d 329, 338 (S.D.N.Y. 1998) (rejecting argument that damages would be sufficient remedy for
infringing publication, since â[a]llowing this argument to prevail would, in effect, make any
copyright holder an involuntary licensor of the copyright to any entity that could be relied on to
pay damagesâ). Such a judicially-sanctioned, involuntary âlicenseâ is neither a desirable practice
nor consistent with the objectives of the Copyright Act. See Natâl Football League v. Primetime
24 Joint Venture, No. 98 Civ. 3778 LMM, 1999 WL 7601310, at *4 (S.D.N.Y. Sept. 27, 1999).
Plainly, without an injunction, HarperCollins will effectively become a forced licensor of Open
Road, with any future damages obtained through litigation its only âroyalty.â
Third, the balance of hardships weighs heavily in favor of HarperCollins. The harm to
HarperCollins in the absence of an injunction â the deprivation of its exclusive right to publish or
license publication of the Work in electronic form â is clear, while any harm an injunction would
cause to Open Road would consist solely of its inability to continue infringing HarperCollinsâ
copyright rights. The law âdoes not protect this type of hardship.â Warner Bros., 575 F. Supp.
2d at 553; see also Complex Sys., 2014 U.S. Dist. LEXIS 64467, at *51 (finding balance of
hardships weighed in favor of permanent injunction where defendantâs only hardship was being
âprevent[ed] . . . from doing that which it has no right to doâ).
Fourth, the public interest will be served by entry of a permanent injunction. The
purpose of copyright law is âto promote the store of knowledge available to the public.â
Salinger, 607 F.3d at 82. To the extent copyright law accomplishes this end âby providing
individuals a financial incentive to contribute to the store of knowledge,â the public interest
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12
âmay well be already accounted for by the plaintiffâs interest.â Id. In order to advance the
public interest in access to literary works, copyright law âmust prevent the misappropriation of
the skills, creative energies, and resources which are invested in the protected work.â Warner
Bros., 575 F. Supp. 2d at 553. Here, a permanent injunction protecting HarperCollinsâ exclusive
electronic rights in the Work, as well as in any other works to which it holds commensurate
rights, will enable and encourage HarperCollins to continue to meet public demand for digital
versions of important backlist literary works like Julie of the Wolves without the threat of
unlawful direct competition.
Toward this end, HarperCollinsâ proposed permanent injunction (see Rich Decl. Ex. A)
would enjoin Open Road from publishing or contracting to publish the Work and holding itself
out as an authorized publisher of the Work. It would require Open Road to discontinue the sale
and offering for sale of the Work through any and all sales channels; to delete or destroy all
copies of the Work (or any portion thereof) in its possession, custody, or control; and to remove
the Work from the sales catalogs, websites, and any other sources that list works available for
sale or download from Open Road. It would require Open Road to notify all third parties with
which it has contracted or otherwise arranged to offer the Work for sale to promptly stop doing
so. Finally, it would prevent Open Road from publishing, or contracting to publish, any other
work for which HarperCollins holds the exclusive right to publish âin book formâ together with
the exclusive electronic rights conveyed to HarperCollins in the Agreement.
II. HARPERCOLLINS IS ENTITLED TO A MAXIMUM STATUTORY DAMAGE AWARD, ENHANCED DUE TO OPEN ROADâS CONTINUED WILLFUL INFRINGEMENT
HarperCollins has elected to recover statutory damages in lieu of actual damages under
section 504 of the Copyright Act. See 17 U.S.C. § 504(c); see also, e.g., Twin Peaks Prods., Inc.
v. Publâns Intâl, Ltd., 996 F.2d 1366, 1380-81 (2d Cir. 1993). Statutory damages are available
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13
without proof of actual damages. All-Star Mktg. Grp., LLC v. Media Brands Co., 775 F. Supp.
2d 613, 626 (S.D.N.Y. 2011). For each work infringed, a prevailing copyright plaintiff may
recover statutory damages of from $750 to $30,000, and the award may be increased up to
$150,000 per work where the infringement is willful. 17 U.S.C. § 504(c)(1)-(2). Courts âenjoy
wide discretion in setting the amount of statutory damages.â Bryant v. Media Right Prods., Inc.,
603 F.3d 135, 143 (2d Cir. 2010) (quotation and alteration omitted); see also EMI April Music,
2014 WL 325933, at *4.
Notwithstanding Open Roadâs blatant infringement, HarperCollins initially was not
inclined to seek enhanced statutory damages based on willful infringement. However, Open
Roadâs continued infringing conduct following the Courtâs summary judgment ruling has led
HarperCollins to believe that a statutory damages award should incorporate a willfulness
component. Accordingly, HarperCollins requests a statutory damage award of at least the
maximum for non-willful infringement ($30,000) but urges the Court to enhance that award by
an amount in its discretion in view of Open Roadâs continued infringing conduct.8
In setting an award of statutory damages under section 504, courts in this Circuit consider
the following factors: â(1) the infringerâs state of mind; (2) the expenses saved, and profits
earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on
the infringer and third parties; (5) the infringerâs cooperation in providing evidence concerning
the value of the infringing material; and (6) the conduct and attitude of the parties.â Bryant, 603
F.3d at 144; see also Psihoyos v. John Wiley & Sons, Inc., Nos. 12-4874-cv(L), 12-5069-
8 The appropriateness of an award of attorneysâ fees, as discussed in Section III, infra, is unaffected by the Courtâs determination as to willfulness. See Miroglio S.P.A. v. Conway Stores, Inc., 629 F. Supp. 2d 307, 310-11 (S.D.N.Y. 2009); see also Scanlon v. Kessler, 23 F. Supp. 2d 413, 416 (S.D.N.Y. 1998) (â[T]he courtâs finding of lack of wilfulness on the part of [the defendant] does not prevent plaintiff from being awarded attorneyâs fees and costs. Wilfulness goes to the issue of damages and not to the ultimate issue of determining whether defendants violated the Act by infringing on [the plaintiffâs] copyrights.â).
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Ex. 41 at OR000560-61; see also Dkt. 19 (Declaration of Kate Jackson In Support of
HarperCollinsâ Motion for Summary Judgment) ¶¶ 28-29. Open Road nonetheless proceeded
with publication of the e-book version of the Work notwithstanding the evident reservations of
its counsel and of Georgeâs agent as to the potential violation of HarperCollinsâ contractual
rights. See Dkt. 23 Ex. 21 at OR000739; id. Ex. 18 at OR000504; id. Ex. 4 (Deposition of
Ginger Knowlton, dated Nov. 29, 2013), at 73:24-74:3. Indeed, it was not until Open Road
that Open Roadâs publication of the Work moved forward. Id. Ex. 21 at OR000120.
In short, Open Roadâs infringement was hardly innocent.
Deterrence (Factor 4) also strongly favors a significant statutory award. Courts âmust
consider the deterrent effect on both other potential infringers as well as Defendants themselves,â
Arista Records LLC v. Usenet.com, Inc., No. 07 Civ. 8822(HB)(THK), 2010 WL 3629688, at *6
(S.D.N.Y. Feb. 2, 2010), report and recommendation adopted, No. 07 Civ. 8822(HB), 2010 WL
3629587 (S.D.N.Y. Sept. 16, 2010), and deterring similar conduct by other enterprises ârequires
a substantial award.â EMI April Music, 2014 WL 325933, at *4. A meaningful award is called
for to deter Open Road â and others â from arrogating to themselves the new-media publication
rights of legitimate licensees like HarperCollins. An orderly market for electronic publication
rights requires respect for the rights of those who have bargained for such rights, particularly
given the increasing consumer demand for access to valuable backlist titles in new electronic
formats. See, e.g., Dkt. 19 ¶¶ 15-17. This case will surely be looked to as an important
precedent in this area. Hence, a sizeable statutory damage award â coupled with the other
remedies sought in this motion â will send an appropriately strong message to digital publishers
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III. THE COURT SHOULD GRANT HARPERCOLLINS ITS REASONABLE ATTORNEYSâ FEES
A. An Award of Attorneysâ Fees Is Warranted
Section 505 of the Copyright Act authorizes a court in its discretion to award âa
reasonable attorneyâs feeâ to the prevailing party. 17 U.S.C. § 505; see also Matthew Bender &
Co. v. West Publâg Co., 240 F.3d 116, 121 (2d Cir. 2001) (holding that granting attorneysâ fees
under section 505 is within district courtâs broad discretion). The Second Circuit has interpreted
section 505 in a manner that is âvery favorable to prevailing parties,â and fees are âgenerally
awarded to a prevailing plaintiffâ in this Circuit. Twin Peaks Prods., 996 F.2d at 1383; Software
Freedom Conservancy, Inc. v. Best Buy Co., No. 09 Civ. 10155(SAS), 2010 WL 2985320, at *3
(S.D.N.Y. July 27, 2010) (â[B]ecause the Copyright Act intended to encourage suits to redress
infringement, fees are generally awarded to a prevailing plaintiff.â).
The U.S. Supreme Court has identified several factors for courts to consider in
determining whether a fee award is appropriate: frivolousness, motivation, objective
unreasonableness (both factual and legal), and âthe need in particular circumstances to advance
considerations of compensation and deterrence.â Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
n.19 (1994); Matthew Bender & Co., 240 F.3d at 121; Pannonia Farms, Inc. v. USA Cable
(âPannonia Iâ), No. 03 Civ. 7841(NRB), 2004 WL 1276842, at *6 (S.D.N.Y. June 8, 2004)
(Buchwald, J.); Pannonia Farms, Inc. v. USA Cable (âPannonia IIIâ), No. 03 Civ. 7841(NRB),
2006 WL 2872566, at *1 (S.D.N.Y. Oct. 5, 2006) (Buchwald, J.). These factors are neither
mandatory nor exclusive; rather, they âmay be used to guide courtsâ discretionâ and are to be
applied in a manner âfaithful to the purposes of the Copyright Act.â Fogerty, 510 U.S. at 534
n.19; Harrell v. Van Der Plas, No. 08 Civ. 8252 (GEL), 2009 WL 3756327, at *3 (S.D.N.Y.
Nov. 9, 2009).
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The Second Circuit has held that objective unreasonableness should be given âsubstantial
weightâ in determining whether an award of attorneysâ fees is warranted. Matthew Bender &
Co., 240 F.3d at 121. This Circuitâs emphasis on objective unreasonableness is âfirmly rooted in
Fogertyâs admonition that any factor a court considers in deciding whether to award attorneysâ
fees must be âfaithful to the purposes of the Copyright Act,ââ namely, to âencourage the
origination of creative works by attaching enforceable property rights to them.â Id. (citation
omitted). The âtouchstoneâ of the courtâs exercise of its discretion under section 505 is whether
a fee award will further the interests of copyright law by âencouraging the raising of objectively
reasonable claims and defenses.â MiTek Holdings, Inc. v. Arce Engâg Co., 198 F.3d 840, 842
(11th Cir. 1999) (citing Fogerty, 510 U.S. at 526-27).
A copyright claim or defense is objectively unreasonable when it is âclearly without
merit or otherwise patently devoid of a legal or factual basis.â Porto v. Guirgis, 659 F. Supp. 2d
597, 617 (S.D.N.Y. 2009); see also Contractual Obligation Prods., LLC v. AMC Networks, Inc.,
546 F. Supp. 2d 120, 125 (S.D.N.Y. 2008) (same). Courts in this District have awarded
attorneysâ fees to prevailing plaintiffs under section 505 based solely on the objective
unreasonableness of the defendantâs position. See, e.g., 16 Casa Duse, LLC v. Merkin, No. 12
Civ. 3492(RJS), 2013 WL 5510770, at *17 (S.D.N.Y. Sept. 27, 2013) (awarding attorneysâ fees
based on defendantâs objectively unreasonable claim that copyright owner did not in fact own
rights asserted); Harrell, 2009 WL 3756327, at *4 (awarding attorneysâ fees based on finding
defendantâs argument that its infringing activity was authorized objectively unreasonable);
Miroglio, 629 F. Supp. 2d at 311 (recommending award of attorneysâ fees based on objective
unreasonableness of defendantsâ position that infringing work was not substantially similar when
it was ânearly identicalâ to plaintiffâs work).
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For reasons explained thoroughly in the Courtâs summary judgment ruling and
summarized above, Open Roadâs defenses in this case were objectively unreasonable. Notably,
the Courtâs ruling rested on âa plain reading of the contractual language,â which, the Court
found, clearly granted HarperCollins âthe exclusive right to license third parties to publish e-
book versions of Julie of the Wolves.â Dkt. 46 at 15-16. The Court readily found that Paragraph
20, which conveyed to HarperCollins control over uses of the Work âby electronic means now
known or hereafter invented,â was âsufficiently broad to draw within its ambit e-book
publication.â Id. at 17. Because the Court found the Agreement unambiguous with respect to
electronic rights, Open Roadâs advocacy of a contrary interpretation of the Agreement was
necessarily objectively unreasonable. See LaSalle Bank Natâl Assân v. Nomura Asset Capital
Corp., 424 F.3d 195, 207 (2d Cir. 2005) (defining an unambiguous contract as one that is not
âreasonably capable of âmore than one meaningââ).
This conclusion is bolstered by the Courtâs finding that Open Roadâs attempt to elide the
plain meaning of Paragraph 20 was âat variance with the generally-applied heavy presumption
that a deliberately prepared and executed written instrument manifests the true intention of the
parties.â Dkt. 46 at 21 (citation omitted). The Court found Open Roadâs proposed reading of the
Agreement âparticularly unwarrantedâ in light of the Second Circuitâs ânew useâ case law, under
which the parties âshould be entitled to rely on the words of the contract.â Id. (quoting Boosey &
Hawkes, 145 F.3d at 488).
In addition, the Court was appropriately critical of Open Roadâs litigation tactics. For
example, it ascribed Open Roadâs strategy of âlargely ignor[ing]â Paragraph 20 to its recognition
of âthe breadth of the languageâ of that provision, Dkt. 46 at 20, which, the Court observed, led
Open Road to try to âredirect the Courtâs attentionâ to Paragraph 1 and to Rosetta Books. But
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* * *
In sum, Open Road violated HarperCollinsâ rights in a blatant and knowing manner. Its
defense was both âclearly without meritâ and âpatently devoid of a legal or factual basis,â
Harrell, 2009 WL 3756327, at *3, yet it forced HarperCollins to invest substantial resources in
protecting the value of its copyrights before the Court. As a sanction for Open Roadâs clear-cut
infringement, as compensation for HarperCollins, and as a deterrent to Open Road and others
who would seek unlawfully to exploit electronic uses of literary works, an award of attorneysâ
fees is warranted.
B. The Amount of Fees Requested Is Reasonable
Courts calculate a âpresumptively reasonableâ attorneyâs fee by multiplying the number
of hours reasonably expended on the litigation by a reasonable hourly rate. Harrell, 2009 WL
3756327, at *1 (citing Hensley v. Eckerhart, 461 U.S. 424, 433 (1983)); see also Muller v.
Twentieth Century Fox Film Corp., No. 08 Civ. 02550(DC), 2011 WL 3678712, at *2 (S.D.N.Y.
Aug. 22, 2011); BBY Solutions, Inc. v. Schwartz, No. CV 11-0947(ADS)(ETB), 2011 WL
6986937, at *5 (E.D.N.Y. Nov. 17, 2011). The reasonable hourly rate is the rate âa paying client
would be willing to pay.â Harrell, 2009 WL 3756327, at *5 (citing Arbor Hill Concerned
Citizens Neighborhood Assân v. Cnty. of Albany, 522 F.3d 182, 183 (2d Cir. 2008)). The Second
Circuit has held that âfor prevailing parties with private counsel, the actual billing arrangement is
a significant . . . factor in determining what fee is âreasonable.ââ Crescent Publâg Grp., Inc. v.
Playboy Enters., Inc., 246 F.3d 142, 151 (2d Cir. 2001); see also Pannonia III, 2006 WL
2872566, at *2 (âthe actual billing arrangement between counsel and client provides a strong
indication of what constitutes a reasonable feeâ).
HarperCollins seeks the reimbursement of attorneysâ fees in the amount of
$1,089,371.50, which represents 70% of the total fees HarperCollins paid Weil, Gotshal &
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22
Manges LLP (âWeilâ) in connection with its work on this matter. Although HarperCollins
believes it is entitled to recover the total fees actually paid to its counsel in this action, in an
effort to be conservative in this submission, HarperCollins is requesting an award of only 70% of
that amount. Based on the nature and amount of the work performed, the fees actually billed to
and paid by HarperCollins (totaling $1,556,245.00), and Weilâs peer law firmsâ rates in this
District, this fee request is reasonable.
The rates used to compute the requested fee award are based on amounts HarperCollins
actually paid, and they reflect the standard hourly rates that generally are charged to Weilâs fee-
paying clients. Specifically, the hourly rates charged to HarperCollins range from $1,175 per
hour (for R. Bruce Rich, a senior partner at Weil, head of the firmâs Intellectual Property &
Media Litigation practice group, and lead day-to-day partner on this case) to $265 per hour (for
Crystal Cromwell McCray, a senior paralegal at the firm). See Rich Decl. ¶¶ 29-36. These rates
appropriately reflect the experience, expertise, and skill of the Weil attorneys and staff involved
and are commensurate with the market rates charged by Weilâs peer firms in this District. Id. ¶
37; see also 2013 NLJ Billing Survey, NATâL L.J. (Dec. 2013) (Rich Decl. Ex. M) (listing partner
billing rates in 2013 of up to $1,800 and associate billing rates of up to $975 in New York City).
After assessing reasonable rates, the Court then determines whether the hours billed to
the matter were reasonable in order to calculate the presumptively reasonable fee. Harrell, 2009
WL 3756327, at *6 (citing Arbor Hill, 522 F.3d at 189-90). In considering whether the hours
expended were reasonable, the inquiry is based ânot . . . on what effort appears necessary in
hindsight, but rather on whether âat the time the work was performed, a reasonable attorney
would have engaged in similar time expenditures.ââ Id. (quoting Grant v. Martinez, 973 F.2d 96,
99 (2d Cir. 1992)).
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23
The Rich Declaration accompanying this motion attaches contemporaneous time records
from the early assessment of HarperCollinsâ claim in the summer of 2011 through the issuance
of the Courtâs summary judgment ruling on March 17, 2014. Rich Decl. ¶ 2(b) & Ex. B.
HarperCollinsâ time records specify, for each attorney, the date, the hours expended, and the
nature of the work done. See N.Y. State Assân for Retarded Children, Inc. v. Carey, 711 F.2d
1136, 1147-48 (2d Cir. 1983); Pannonia III, 2006 WL 2872566, at *2 (âIn this Circuit, all fee
applications must be supported by contemporaneous records specifying by attorney, the date, the
hours expended and the nature of the work done.â).
The hours expended by Weil on this litigation are reasonable. HarperCollins engaged in
substantial discovery, including document productions, depositions, and the preparation and
analysis of expert reports; prepared letter briefs in connection with Open Roadâs efforts to stay
and/or dismiss the case in favor of arbitration; prepared briefs in connection with cross-motions
for summary judgment; prepared letter briefs in connection with Open Roadâs effort to introduce
new âevidenceâ; and prepared for oral argument on the motions for summary judgment. Rich
Decl. ¶¶ 18-22. All of these activities were necessary, particularly in view of Open Roadâs
unnecessarily-complicating approach to the case. See id. ¶¶ 18, 20, 22.
IV. THE COURT SHOULD AWARD HARPERCOLLINSâ FULL COSTS
Under section 505 of the Copyright Act, as a prevailing party HarperCollins also is
entitled to its full costs. Section 505 âprovides the court with explicit statutory authority to
award costs pursuant to a violation of the Copyright Act.â Barrera v. Brooklyn Music, Ltd., 346
F. Supp. 2d 400, 404 (S.D.N.Y. 2004). Under Fed. R. Civ. P. 54, costs are awardable to a
prevailing party as of course, and the losing party has the burden to show that costs should not be
imposed. Farberware Licensing Co. v. Meyer Mktg. Co., No. 09 Civ. 2570(HB), 2009 WL
Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 Page 29 of 31
24
5173787, at *3 (S.D.N.Y. Dec. 30, 2009), affâd 428 F. Appâx 97 (2d Cir. 2011) (citations
omitted).
â[A]lthough the authority to award costs in [a copyright infringement] action is derived
from § 505,â Fed. R. Civ. P. 54 and 28 U.S.C. § 1920 âprovide[] guidance as to the types of costs
deemed recoverable.â Barrera, 346 F. Supp. 2d at 405; see also Williams v. Crichton, 891 F.
Supp. 120, 121-22 (S.D.N.Y. 1994) (applying both 17 U.S.C. § 505 and Fed. R. Civ. P. 54 in
determining that prevailing party was entitled to recover certain costs). The costs recoverable
under Rule 54(d)(1) include: â(1) fees of the clerk and marshal; (2) fees for printed or
electronically recorded transcripts necessarily obtained for use in the case; (3) fees and
disbursements for printing and witnesses; (4) fees for exemplification and the costs of making
copies of any material where the copies are necessarily obtained for use in the case; [and] (5)
docket fees under 28 U.S.C. § 1923 . . . .â Syrnik v. Polones Constr. Corp., No. 11 Civ.
7754(KBF), 2012 WL 4122801, at *3 (S.D.N.Y. Sept. 19, 2012) (citing 28 U.S.C. § 1920;
Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy, 548 U.S. 291, 298 (2006)). Recoverable costs
also may include âreasonable out-of-pocket expenses incurred by attorneys and ordinarily
charged to their clients.â LeBlanc-Sterling v. Fletcher, 143 F.3d 748, 763 (2d Cir. 1998)
(quoting United States Football League v. Natâl Football League, 887 F.2d 408, 416 (2d Cir.
1989)); see also Miltland Raleigh-Durham v. Myers, 840 F. Supp. 235, 239 (S.D.N.Y. 1993)
(âAttorneys may be compensated for reasonable out-of-pocket expenses incurred and
customarily charged to their clients, as long as they âwere incidental and necessary to the
representation of those clients.ââ).
As set out more fully in the accompanying Rich Declaration, HarperCollins seeks
recovery of its taxable costs in the amount of $7,040.62.
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CONCLUSION
For the foregoing reasons, HarperCollins respectfully requests that the Court: (1) enter a
permanent injunction in the form attached as Exhibit A to the Rich Declaration; (2) award
HarperCollins statutory damages in the amount of at least $30,000.00; and (3) award
HarperCollins reasonable attorneysâ fees in the amount of $1,089,371.50 and costs in the amount
of $7,040.62.
Dated: New York, New York May 23, 2013 Respectfully submitted,
WEIL, GOTSHAL & MANGES LLP
By: /s/ R. Bruce Rich R. Bruce Rich (RBR-0313) Jonathan Bloom (JB-7966) Sabrina A. Perelman (SP-2268) 767 Fifth AvenueNew York, New York 10153Tel: (212) 310-8000 Fax: (212) 310-8007
Attorneys for Plaintiff HarperCollins Publishers LLC
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