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IP/Entertainment Case Law Updates

Frerck v. John Wiley & Sons, Inc.

District court denies plaintiff’s motion for a preliminary injunction to prevent future infringement of his copyrighted works, holding that although plaintiff demonstrated likelihood of success on the merits of his copyright claim, the harm he suffered could be adequately remedied with money damages.

Plaintiff Robert Frerck, a photographer, entered into limited license agreements with defendant John Wiley & Sons, Inc., a textbook publisher, for use of a number of plaintiff’s photographs in defendant’s publications. Plaintiff alleged that its licenses expressly defined the number of permissible copies, image size, distribution area, form of media, and duration of each publication, and that defendant’s use of its photographs either exceeded the use permitted by the terms of the licenses or, in some cases, were without prior permission. Plaintiff asserted claims against defendant for copyright infringement and fraud, and sought a preliminary injunction preventing defendant from future infringements of his copyrighted products. The court denied plaintiff’s motion for a preliminary injunction, finding that while plaintiff established a likelihood of success on the merits of his copyright claim, the harm he suffered – and would allegedly continue to suffer as a result of continued infringements – could be adequately remedied by money damages.

A party seeking a preliminary injunction must demonstrate (1) its case has some likelihood of succeeding on the merits, (2) no adequate remedy at law exists, and (3) it will suffer irreparable harm if preliminary relief is denied. In support of his claim for copyright infringement, plaintiff submitted evidence that he owned the copyrights to the photographs that he licensed to defendant and that he licensed only a limited right to copy the photographs at issue or did not license them at all. Finally, plaintiff presented evidence that defendant printed some of his photographs without any license and maintained that defendant printed beyond specified limits in other licenses. Based on this evidence, the court concluded that plaintiff had a significant likelihood of success on the merits.

Despite reaching this conclusion, however, the court held that plaintiff was not entitled to a preliminary injunction because he could not establish irreparable harm that could not be redressed through money damages. Plaintiff argued that defendant’s unauthorized use of his copyrighted works forced him to grant licenses to defendant and stripped plaintiff of the ability to control his copyrighted works. Defendant noted that plaintiff is in the business of licensing his photographs for a fee and argued that any harm to plaintiff was purely monetary and could be adequately remedied with money damages. The court agreed, emphasizing that, in contrast to cases cited by plaintiff where monetary damages were found to be an insufficient remedy, plaintiff had not argued that his losses could not be quantified, that the market for his product had been damaged, or that his brand, business reputation and good will would be irreparably harmed simply because his photographs appeared in defendant’s textbooks in unauthorized quantities. Accordingly, the court found that plaintiff’s copyright claim centered on the loss of monetary damages – the fee for each use of his photographs under the terms of the license, as well as any costs and fees that he would be entitled to should he prevail in the lawsuit.

While the court noted the appeal of one of plaintiff’s contentions – that the “continuous litigation” model was a losing proposition for him and therefore an inadequate remedy – the court found that the argument did not compel injunctive relief. The Copyright Act already provides the owner of a copyright with a potent arsenal of remedies against an infringer of his work, including a recovery of his actual damages and any additional profits realized by the infringer, or a recovery of statutory damages and attorneys’ fees.

The court also denied defendant’s motion to dismiss, finding that plaintiff adequately stated a claim for promissory fraud under Illinois law. Plaintiff alleged that, at the time defendant requested specific, limited permission to use his photographs, defendant knew that its actual use under the licenses would exceed the permission requested, and that defendant did this on a continuous basis. The court concluded that, if proven to be true, defendants actions – evidencing an attitude that it is cheaper to infringe now, hope not to get caught, and pay later if necessary – would be fraudulent.