Basic Books, Inc. v. Kinko's Graphics Corp.

Decision Date28 March 1991
Docket NumberNo. 89 Civ. 2807 (CBM).,89 Civ. 2807 (CBM).
PartiesBASIC BOOKS, INC., Harper & Row Publishers, Inc., John Wiley & Sons, Inc., McGraw-Hill, Inc., Penguin Books USA, Inc., Prentice-Hall, Inc., Richard D. Irwin, Inc., and William Morrow & Co., Inc., Plaintiffs, v. KINKO'S GRAPHICS CORPORATION, Defendant.
CourtU.S. District Court — Southern District of New York

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Ronald S. Rauchberg, Charles S. Sims, Herman L. Goldsmith, Jon A. Baumgarten, Proskauer, Rose, Goetz & Mendelsohn, New York City, for plaintiffs.

Dean A. Olds, Jeffery A. Handelman, Thomas A. Schmidt, Kevin J. McDevitt, Willian, Brinks, Olds, Hofer, Gilson & Lione, Chicago, Ill., John S. Siffert, Lankler, Siffert & Wohl, New York City, for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

MOTLEY, District Judge.

Plaintiffs, all major publishing houses in New York City, brought this suit against Kinko's alleging copyright infringement pursuant to the Copyright Act of 1976. 17 U.S.C. § 101, et seq. More specifically, plaintiffs allege that Kinko's infringed their copyrights when Kinko's copied excerpts from books, whose rights are held by the plaintiffs, without permission and without payment of required fees and sold the copies for a profit. Plaintiffs request relief in the form of statutory damages, injunction, declaratory judgment and attorney's fees and costs.

Kinko's admits that it copied the excerpts in suit without permission, compiled them into course "packets," and sold them to college students. It defends on four grounds. First, Kinko's claims their use of the excerpts was a "fair use," specifically provided for in § 107 of the Copyright Act. Second, Kinko's alleges that plaintiffs misused their copyrights by trying to create an industry standard beyond that established by congressional mandate and which impermissibly precludes all use of plaintiffs' works without permission and royalty. Third, Kinko's claims that plaintiffs are estopped from complaining of the copying because they have known for a long time about Kinko's 20-year practice of selling course packets and did nothing about it and Kinko's detrimentally relied upon their silence. Fourth, Kinko's argues that, with respect to two of the alleged infringements, plaintiffs failed to record their copyrights before filing this complaint and, therefore, this court lacks jurisdiction with respect to those two excerpts.

This court finds and concludes that defendant did violate the Copyright Act, that plaintiffs did not misuse their copyrights nor are they estopped from asserting their rights under the copyrights. With regard to the copyrights that were not recorded before filing the complaint, this court finds them to be validly asserted. Finally, Kinko's has not convincingly shown that the excerpts it appropriated without seeking permission were a fair use of the works in question. This court hereby awards plaintiffs injunctive relief, as well as statutory damages in the amount of $510,000, attorneys fees and costs.

FINDINGS OF FACT

There are 12 instances of copyright infringement alleged in this case. The 12 excerpts, which vary in length from 14 to 110 pages, were copied from books previously published by the plaintiffs, compiled in five numbered packets ("anthologies") with excerpts from other books and distributed by Kinko's. Kinko's neither sought nor obtained permission to copy any of these works. There are two stores from which Kinko's sold the excerpts included in this suit: one at 24 E. 12th Street (which services, among others, students at New York University and the New School for Social Research) and a second at 2872 Broadway (which services Columbia University students). Below is a list of the 5 packets, by number and title, and a list of the titles of the works copied. Next to the latter title is the total number of pages copied, the approximate percentage of the entire book that was copied and whether the work was in- or out-of print.

PACKET # 1: "WORK AND COMMUNITY". (PX 16)

This packet included 388 pages of copied work1 taken from 25 books. This course was taught at the New School for Social Research by Professor Hoffman; 3 students were enrolled. This packet was sold for $24.00: $21.75 for copying and $2.25 for binding.

1. Understanding Capitalism (PX 5) 22 pp. 5%, in-print, by Samuel Bowles & Richard Edwards.

Pages 62-83 (all of chapter 4) of this 15-chapter book was copied. The book has 419 pages of text in addition to 11 pages of introductory material. It was published in 1985. The amount copied which encompasses an entire chapter of Bowles and Edwards' relatively recent book weighs against defendant.2

2. Community: A Critical Response (PX 4) 23pp. 18-21%, out-of-print, by Joseph Gusfield.

Pages 1-22 (all of chapter 1) of this 4-chapter book was copied. The book is 120 pages. The soft-cover version exhibited at trial has a price of $3.95. The book was published in 1975. This book was out-of-print and is relatively old, however, the amount copied weighs heavily against defendant.

3. Work and Community in the West (PX 2) 34pp. 22-24%, out-of-print. An anthology with contributions from six authors, edited by Edward Shorter.

Pages 1-33 (chapter 1) of this 6-chapter book was copied. The book totals 146 pages. The soft-cover version exhibited at trial has a price of $2.95. It was published in 1973. This book was out-of-print and is relatively old, however, the amount copied weighs heavily against defendant.

4. The Deindustrialization of America (PX 1) 53pp. 16-20%, in-print, by Barry Bluestone & Bennett Harrison.

Pages 3-21 (chapter 1) and pages 231-64 (chapter 8) were copied from this 8-chapter book. The book is 323 pages. The book was published in 1982. The amount copied weighs against defendant.

5. All Our Kin: Strategies for Survival in a Black Community (PX 3); 14pp. 8-11%, in-print, by Carol Stack.

This book has 175 pages in addition to 21 pages of introductory material. The pages copied were pages 32-45, one of the 8 chapters in the book. The exhibited copy of the hardcover book has a price of $7.95. It was published in 1974. The amount copied weighs against defendant.

6. A Lesser Life (PX 12) 37pp. 8-9%, in-print, by Sylvia Ann Hewlett.

Pages 11-47 of this book were copied; they include the Introduction and one additional chapter. The book has 461 pages. The exhibited hardcopy has a price of $17.95. It was published in 1986. The amount copied weighs against defendant.

PACKET # 7: "ART THERAPY WITH GROUPS". (PX 15)

This packet included 383 pages taken from 43 sources. The course was taught at New York University by Professor Haeseler; 10 students were enrolled. This packet sold for $20.07.

7. Group Dynamics: The Psychology of Small Group Behavior (PX 8) 40pp. 7-8%, in-print, by Marvin Shaw.

Kinko's copied the following pages from this book: pages 1-17 (chapter 1), 342-45, 224, 225, 238-39, 256-61, and pages 306-13 of this 531-page book. The book has 12 chapters. It was published in 1971. The amount copied weighs against defendant.

8. Art Psychotherapy (PX 7) 20pp. 6%, in-print, by Harriet Wadeson.

Pages 236-55 were copied (less than half of chapter 19 of this book). The book is 352 pages in addition to 23 pages of introductory material. The soft-cover version exhibited at trial has a price of $17.95. This book was published in 1980. The amount copied weighs against defendant.

PACKET # 34: untitled. (PX 18)

This packet includes 324 pages taken from 23 sources. This course was taught at Columbia University by Professor Ichniowski. Thirty-three students were enrolled. This packet was sold for $21.50: $16.98 for copying, $1.50 for binding, and $1.50 for royalty payment.

9. Business Ethics (PX 10) 22pp. 14%, in-print, by Norman Bowie.

Pages 17-38 (all of chapter 2) of this book were copied. The book has 7 chapters, 159 pages of text and index, and 13 pages of introductory material. This book was published in 1982. The amount copied weighs against defendant.

PACKET # 36: "INTERNATIONAL AFFAIRS". (PX 19)

This packet included 292 pages taken from 22 sources. This course was taught at Columbia University by Professor Lissakers; 48 students were enrolled. The packet sold for $17.75: $14.90 for copying, and $1.50 for binding.

10. The Money Market (PX 11) 100pp. 13-14%, in-print, by Marcia Stigum.

This book contains 728 pages of text (20 chapters) and 23 pages of introductory material. Pages 7-43 and 129-191 of the book were copied. This represented chapters 2, 3 and 6. This book was published in 1978 and reprinted in 1983. The amount copied weighs against defendant.

11. The Money Bazaars (PX 9) 65pp. 17-18%, out-of-print, by Marvin Mayer.

Pages 177-241 were copied. The pages covered Chapters 7 and 8, and part of 9. The 12 chapters and index in the book total 376 pages. The paperback book sells for $4.95. It was published in 1984. The amount copied, despite the fact that this book was out-of-print, weighs heavily against defendant.

PACKET # 70: "U.S. SINCE 1945". (PX 17)

This packet included copies of 212 pages of materials taken from 7 sources. This course was taught by Professor Freeman at Columbia University. It enrolled 132 students. This packet was sold for $11.00: $8.66 for copying, and $1.50 for binding.3

12. Lyndon Johnson and the American Dream (PX 6), 110pp. 25-28%, in-print, out-of-stock, by Doris Kearns.

Chapters 7, 8 and 10 of this 12-chapter book were copied. The pages copied were 177-219, 220-62, and 300-23. The book has over 400 pages, including preface, prologue, epilogue, author's postscript, endnotes, and index. It was published in 1976. The amount copied weighs heavily against defendant, despite the fact that the book was out-of-stock.

Each packet has a cover page, printed with the Kinko's logo, "Kinko's Copies: Professor Publishing," the name of the course and professor, the designated packet number, and a price listing. There is a space on...

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