Photograph copyright infringement case headed to New York federal court

By Nicholas Malfitano | Jun 27, 2015

Maurice Harmon  

PHILADELPHIA – A motion from one of the world’s top textbook publishers to transfer a copyright infringement case against it to the U.S. District Court for the Southern District of New York has been granted.

Judge L. Felipe Restrepo of the U.S. District Court for the Eastern District of Pennsylvania recently approved the motion made by Houghton Mifflin Harcourt Co. to transfer the case brought by Joel Gordon to New York, after weighing what he saw as “the public-interest and private-interest” factors associated with the case.

According to the complaint, Gordon granted limited licensing rights to Houghton Mifflin Harcourt between 1990 and 2008 for the publishing of a selection of his photographs. The licenses were limited by number of copies, distribution area, language and duration, the suit says.

Gordon says that the publishing company, which produces educational textbooks ranging from pre-kindergarten to the 12th grade for 50 million students in 150 countries, repeatedly violated the licenses by printing more than the permitted number of copies, distributing them outside the authorized areas and publishing them in overseas markets without his permission.

The suit says that the entire scope of the alleged infringement is still unknown because only Houghton Mifflin has the full circulation records. According to the suit, however, this is not the first time the publishing company has taken advantage of licenses.

The suit cites a similar case in Colorado, in which the court found that Houghton Mifflin signed an agreement to use a photographer’s pictures in no more than 40,000 copies of two separate textbooks, but went on to publish a combined total of more than one million copies, a clear violation of the license’s scope.

According to the complaint, there are 25 more copyright infringement suits filed by separate photographers throughout the country. The claim alleges that Houghton Mifflin was properly enriched by the unauthorized use of Gordon’s photos.

Restrepo found the U.S. District Court’s Southern District of New York to be a “proper” one for the case.

“HMH undoubtedly ‘resides’ in the Southern District of New York on account of its substantial operations in New York, N.Y. Furthermore, a substantial part of the events giving rise to Gordon’s claim occurred in the Southern District of New York, as the relevant licenses were negotiated and granted by Gordon while he operated in that district, and HMH allegedly violated Gordon’s copyright by distributing infringing works in that district as well,” Restrepo said.

Restrepo determined that both public interest and private interest each had six factors in order to determine the final transference of the case.

Public interest

-The enforceability of the judgment;

-Practical considerations that could make the trial easy, expeditious, or inexpensive;

-The relative administrative difficulty in the two fora resulting from court congestion;

-The local interest in deciding local controversies at home;

-The public policies of the fora; and

-The familiarity of the trial judge with applicable state law in diversity issues.

Private interest

-Plaintiff’s forum preference as manifested in the original choice;

-The defendant’s forum preference;

-Whether the claim arose elsewhere;

-The convenience of the parties as indicated by their relative physical and financial condition;

-The convenience of the witnesses – but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and

-The location of books and records – but only to the extent that the files could not be produced in the proposed forum.

With respect to the public-interest factors, Restrepo found it would be “easier and less expensive” to hold proceedings located in New York City (practical considerations for trial); the events and parties involved in this action are based in the Southern District of New York (the local interest); and New York state law would be directly applicable to Gordon’s copyright claim (familiarity with state law). The other criteria were regarded by Restrepo as “neutral”, non-factors for moving the case.

Similarly, in regards to the private-interest factors, Restrepo again ruled the events and parties involved in this action are based in the Southern District of New York (where the claim arose); and it would be more convenient for the parties involved to attend proceedings located in New York City (convenience of the parties). The other criteria were also found to be neutral.

“Having considered the public-interest and private-interest factors as outlined above, and in light of all the facts and circumstances presented to the Court by way of pleading, motion, and oral argument, in the interest of justice the Defendant’s motion to transfer venue to the Southern District of New York will be granted,” Restrepo said.

The plaintiff is seeking: “A permanent injunction against defendant and anyone working in concert with from copying, displaying, distributing, selling or offering to sell plaintiff’s photographs described in this complaint and plaintiff’s photographs not included in suit; Impoundment of all copies of plaintiff’s photographs used in violation of plaintiff’s copyrights as well as all related records and documents and, at final judgment, destruction or other reasonable disposition of the unlawfully used photographs, including digital files and any other means by which they could be used again by defendant without plaintiff’s authorization; An award of plaintiff’s actual damages and all profits derived from the unauthorized use of plaintiff’s photographs or, where applicable and at plaintiff’s election, statutory damages; in addition to attorney’s fees, court costs, interest and other relief as the Court deems just and proper.”

The plaintiff also demands a jury trial of all issues in this case. The plaintiff is represented by Alexander Rice Kerr in Jackson, Wyo. and Maurice Harmon of Harmon & Seidman in New Hope.

The defendant is represented by Robert R. Baron, Jr. and Tyler Marandola of Ballard Spahr, in Philadelphia.

U.S. District Court for the Eastern District of Pennsylvania case 2:14-cv-04703

From the Pennsylvania Record: Reach Courts Reporter Nicholas Malfitano at

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