Pearson Educ. Inc. v. Kumar

• Decision Date: 16 April 2010
• Docket Number: No. 1:07-CV-9399 (CSH).,1:07-CV-9399 (CSH).
• Citation: 721 F.Supp.2d 166
• Parties: PEARSON EDUCATION, INC., John Wiley & Sons, Inc., Cengage Learning Inc. and the McGraw-Hill Companies, Inc., Plaintiffs, v. Vinod KUMAR, Virender Yadav and Sukhwinder Singh d/b/a Modern Books d/b/a Express Books and John Does Nos. 1-5, Defendants.
• Court: U.S. District Court — Southern District of New York

721 F.Supp.2d 166

PEARSON EDUCATION, INC., John Wiley & Sons, Inc., Cengage Learning Inc. and the McGraw-Hill Companies, Inc., Plaintiffs,

v.Vinod KUMAR, Virender Yadav and Sukhwinder Singh d/b/a Modern Books d/b/a Express Books and John Does Nos. 1-5, Defendants.

No. 1:07-CV-9399 (CSH).

United States District Court,S.D. New York.

April 16, 2010.

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Megan Leigh Martin, William Irvin Dunnegan, Laura Jean Scileppi, Dunnegan, L.L.C., New York, NY, for Plaintiffs.

Vivek S. Suri, New York, NY, for Defendants.

MEMORANDUM OPINION AND ORDER

HAIGHT, Senior District Judge:

MEMORANDUM OPINION AND ORDER

The four plaintiff corporations (“Plaintiffs”) hold copyrights for a variety of educational textbooks. They move for summary judgment against Defendants Vinod Kumar (“Kumar”) and Dart Air, Inc. (“Dart”) on claims of copyright infringement of 379 copyrights under §§ 106(3), 501, and 602(a) of the Copyright Act. ¹ Specifically, Plaintiffs contend that Kumar and Dart purchased foreign editions of their books, manufactured outside of the United States, and resold them to purchasers in the United States through various Internet websites. ² They currently seek summary judgment on their claim of copyright infringement, minimum statutory damages under 17 U.S.C. § 504(c) (i.e., $750 per copyright for each of the 379 copyrights at issue), and a permanent injunction barring Kumar and Dart from any future infringement.

Defendants Kumar and Dart (hereinafter “Defendants”) oppose Plaintiffs' summary judgment motion. They argue that the sale of Plaintiffs' copyrighted works is lawful under the “first sale” doctrine, codified at 17 U.S.C. § 109(a). Moreover, Kumar asserts that he cannot be liable for copyright infringement because he had no knowledge that the sale of the foreign editions was unlawful.

Defendant Kumar moves to dismiss the complaint against him for lack of personal jurisdiction. Defendants jointly cross move to dismiss the complaint for failure to state a claim and/or summary judgment.

Addressing each motion in turn, this Court finds that the pleadings, depositions, affidavits, and admissions on file show that there is no genuine issue as to any material fact and that Plaintiffs are entitled to judgment on their copyright infringement claim as a matter of law. As a result, Plaintiffs are entitled to the requested minimum statutory damages and a permanent injunction against defendants Kumar and Dart from the future manufacture, distribution and/or sale of Plaintiffs' foreign editions. Defendants' cross motions are denied as set forth below.

I. FACTS

The record establishes the following facts. Plaintiffs, publishers of numerous copyrighted educational textbooks, create various versions of their books customized for sale in specific geographic markets. Amended Complaint ¶¶ 17-18. These versions include those authorized for sale in the United States (“United States Editions”) and those intended for sale outside of the United States (“Foreign Editions”). Id. United States Editions are of the highest quality, generally printed with hard-cover bindings with glossy protective coatings, and may include such extra features as sewn ribbon bookmarks. Id. ¶ 17. They are often accompanied by academic supplements such as CD-ROMs, computer passwords to academic websites, and study guides. Id.

Foreign Editions are identical in content to United States Editions but inferior in printing quality. ³ Id. ¶ 18; Essig. Dec. ¶ 5; Murphy Dec. ¶ 4; Sampson Dec. ¶ 6; Beacher Dec. ¶ 5; Plaintiffs' Rule 56.1 Statement ¶ 5. They are printed on thinner paper with different bindings, covers, and jacket designs. Amended Complaint ¶ 18. They possess fewer internal ink colors, if any, and contain lower quality photographs and graphics. Id. They are generally not accompanied by academic supplements. Id. Each such edition is generally marked by a legend indicating its lower cost with “Low Price Edition” and/or authorized for sale only in a particular country or geographic region. Id. Foreign Editions are uniformly manufactured outside of the United States. Id.

Defendant Kumar is a natural person, a citizen of India, residing in New Delhi, India. Affidavit of Vinod Kumar ¶ 3. He is in the courier business and thus able to export merchandise from India to the United States at a reduced cost. Dunnegan Dec., Ex. F., 32: 2-4, 79: 18-25.

Defendant Dart is a corporation organized pursuant to the laws of the State of New York with its principal place of business in New York City. Defendants' First Memorandum of Law (filed 1/8/2009), p. 3, Statement of Facts ¶ 5; Amended Complaint, p. 3, ¶ 11. Kumar initially hired, and later acquired, Dart to distribute Plaintiffs' Foreign Editions in the United States. ⁴ Dunnegan Dec., Ex. F, 32:1 to 33:6; see also Kumar Letter (dated 8/7/2008), p. 2, para. 1.

Defendants purchased Foreign Editions of Plaintiffs' books in India and resold them in the United States through Internet websites, ⁵ using a variety of usernames. ⁶ Kumar Letter (dated 8/7/2008), para. 1 (“I admit I sold these textbooks through abebooks.com andtextbookx.com”); see also Dunnegan Dec., Ex. F, 63:10-15, 72:11-18 and Ex. I (Banks Dec.) ¶ 3; Amended Complaint, p. 4, ¶ 12; Defendant's First Memorandum of Law (filed 1/8/2009), p. 4, ¶ 12.

Plaintiffs are the owners of the United States copyrights with respect to all 379 of the works of authorship at issue in their summary judgment motion. ⁷ Amended Complaint ¶¶ 19, 26-30 and Schedules A and D; Plaintiffs' Rule 56.1 Statement ¶¶ 1-4; Essig. Deaf 3 and Ex. A; Murphy. Dec. ¶ 3 and Ex. D. Each of these 379 copyrights has been registered with the United States Copyright Office. Amended Complaint ¶¶ 19, 26-30; Plaintiffs' Rule 56.1 Statement ¶¶ 1-4. Defendants sold a Foreign Edition of each of Plaintiffs' 379 copyrights at issue. Plaintiffs' Rule 56.1 Statement ¶¶ 7-10; Dunnegan Dec., Ex. M-P.

II. JURISDICTION AND VENUE

This Court has “federal question” subject matter jurisdiction over Plaintiffs' copyright and trade infringement actions pursuant to 28 U.S.C. §§ 1331 ⁸ and 1338. ⁹ These claims patently arise under federal statute, the Copyright Act, 17 U.S.C. § 101 et seq. and the Lanham Act, 15 U.S.C. § 1051 et seq.

This Court also has jurisdiction over Plaintiffs' claim for “common law unfair competition under state law” pursuant to 28 U.S.C. § 1338(b). Section 1338(b) grants district courts “original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws.” Plaintiffs' unfair competition claim is joined with their substantial and related claims of copyright and trademark infringement. ¹⁰

Venue is proper in this District pursuant to 28 U.S.C. § 1391. Section 1391(b) provides that a civil action “not founded solely on diversity of citizenship” may only be brought in three specified judicial districts:

(1) a judicial district where any defendant resides, if all defendants reside in the same State, (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated, or (3) a judicial district in which any defendant may be found, if there is no district in which the action may otherwise be brought.

28 U.S.C. § 1391(b). Subsection (b)(1) does not apply, since all Defendants do not reside in the same state. However, subsection (b)(2) is satisfied, since the copyrighted works at issue were distributed in this district and that distribution comprises “a substantial part of the events” giving rise to the Plaintiffs' three claims. ¹¹ Alternatively, subsection (b)(3) applies, since it is undisputed that defendant Dart was “found” in this district. Dart's address for service was 155 West 29th Street, Suite 9B, New York, New York, and Dart's principal place of business was indisputably New York City. Defendants' First Memorandum of Law (filed 1/8/2009), p. 3, ¶ 5.

III. STANDARD FOR SUMMARY JUDGMENT A. General Standard

Plaintiffs have brought the present motion for summary judgment on their copyright infringement claim pursuant to Federal Rule of Civil Procedure 56(c). The standard to be applied on a motion for summary judgment in this Circuit is well settled. Under Rule 56(c), summary judgment may only be granted when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits show that there is no genuine issue as to any material fact and that “the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c); Globecon Group, LLC v. Hartford Fire Ins. Co., 434 F.3d 165, 170 (2d Cir.2006) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)); Ford v. Reynolds, 316 F.3d 351, 354 (2d Cir.2003); McAnaney v. Astoria Financial Corp., 665 F.Supp.2d 132, 141-42 (E.D.N.Y.2009). See also Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, 300 (2d Cir.2003) (summary judgment is appropriate only if the moving party shows that there are no genuine issues of material fact and that the moving party is entitled to judgment as a matter of law.”).

When ruling on a motion for summary judgment, the court “must resolve all ambiguities and draw all reasonable inferences in the non-movant's favor.” Pearson Educ., Inc. v. Liao, No. 07-Civ-2423 (SHS), 2008 WL 2073491, at *2 (S.D.N.Y. May 13, 2008) (citing Giannullo v. City of New York, 322 F.3d 139, 140 (2d Cir.2003)). Summary judgment is proper only when, after drawing all reasonable inferences in favor of the non-movant, no reasonable trier of fact could find in that party's favor. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). See also Anderson, 477 U.S. at 248, ...