Following summary judgment in plaintiff HarperCollins Publishers LLC’s favor on its copyright infringement claim against defendant Open Road Integrated Media LLP, HarperCollins moved for a permanent injunction, statutory damages and attorneys’ fees.
The underlying dispute involved the scope of a 1971 publishing contract between the late Jean George, author of the children’s novel Julie of the Wolves, and HarperCollins’ predecessor in interest, Harper & Row. In 2010, Open Road contacted Ms. George to propose publishing an e-book version of her novel. Ms. George then invited HarperCollins to match the 50 percent royalty offered by Open Road, but HarperCollins declined to publish an e-book on those terms. After Open Road released its e-book, HarperCollins brought suit, alleging that the e-book infringed its exclusive copyright under the 1971 contract. In response, Open Road argued that e-book publication rights were outside the scope of the 1971 contract. In an earlier order, the court found that the 1971 contract was sufficiently broad to include e-book publication and concluded that Open Road infringed HarperCollins’ exclusive right.
Following the order, Open Road did not immediately stop selling its e-book, but pursued a negotiated settlement with HarperCollins that would include a license to continue publishing the e-book. HarperCollins subsequently demanded that Open Road stop selling the e-book. As of the day that HarperCollins filed its instant motion, Open Road and at least one of its distributors were continuing to market the e-book online.
In its motion, HarperCollins sought a permanent injunction enjoining Open Road from publishing Julie of the Wolves, holding itself out as an authorized publisher of Julie of the Wolves and publishing other works for which HarperCollins had exclusive publication rights under agreements with language similar to the 1971 contract.
Under the Copyright Act, courts have discretion to grant permanent injunctions when a plaintiff has established that (1) it has suffered irreparable injury; (2) it has no adequate remedy at law; (3) the balance of hardships tips in its favor; and (4) a permanent injunction would not disserve the public interest. The critical question is whether there is a reasonable likelihood that the wrong will be repeated, so the prevailing plaintiff in a copyright action must show some probability that the defendant would resume its infringement in the future.
Here, it was undisputed that Open Road continued selling its e-book despite the court’s prior opinion finding copyright infringement. While Open Road stopped selling its e-book following HarperCollins’ demand, it did not take every reasonable step to stop marketing its e-book until after the motion had been filed. The court therefore concluded that there was a reasonable likelihood of future infringement absent an injunction. The court found that the first two factors had been satisfied. The court also found that the balance of hardships strongly favored HarperCollins, because a copyright infringer cannot complain about the loss of its ability to offer an infringing product. Lastly, the court found that a permanent injunction did not disserve the public interest, because the public has a compelling interest in protecting copyrights. Because HarperCollins met its burden, the court exercised its discretion to enter a permanent injunction. Regarding scope, the court concluded that an injunction would be appropriate as to works under agreements with the same language as the 1971 contract, but not works as to which the publishing contracts contained only “substantially identical language.”
The court then turned to HarperCollins’ request for statutory damages. The Copyright Act gives a successful plaintiff the option to recover statutory damages, with an enhancement if the plaintiff proves willful infringement. Here, the court concluded that the appropriate amount of statutory damages was $30,000, which was a reasonable reflection of the economic significance of the case, considering that Open Road’s total profit was less than $20,000.
Lastly, HarperCollins sought an award of its attorneys’ fees. The court concluded that Open Road’s position — while rejected on the merits — was not objectively unreasonable given that the dispute arose in the context of a developing and somewhat uncharted area of copyright law. Accordingly, the court declined to exercise its discretion to award attorneys’ fees.