Wood v. Houghton Mifflin Harcourt Pub. Co.

Decision Date15 December 2008
Docket NumberCivil Action No. 07-cv-01516-DME-BNB.
CourtU.S. District Court — District of Colorado
PartiesTed WOOD, Plaintiff, v. HOUGHTON MIFFLIN HARCOURT PUBLISHING COMPANY, and R.R. Donnelley & Sons Company, Defendants.

Christopher Seidman, Maurice J. Harmon, Harmon & Seidman LLC, Grand Junction, CO, for Plaintiff.

Evan Michael Rothstein, Tucker K. Trautman, Dorsey & Whitney, LLP, Denver, CO, Christina M. Tchen, David Richard Pehlke, Jason Roy Braswell, Skadden, Arps, Slate, Meagher & Flom, LLP, Chicago, IL, for Defendants.

ORDER ON MOTIONS FOR PARTIAL SUMMARY JUDGMENT

DAVID M. EBEL, Circuit Judge.

Pending before the Court are four motions for partial summary judgment.

On July 31, 2008, Plaintiff Ted Wood ("Wood") filed a motion for partial summary judgment on Houghton Mifflin Harcourt ("HMH")'s and R.R. Donnelley & Sons ("Donnelley")'s liability for copyright infringement. (Dkt.# 97.) HMH and Donnelley responded on August 20, 2008 (Dkt.# 123), and Wood replied on September 4, 2008 (Dkt.# 140). Therefore, this motion is ripe for determination.

On August 8, 2008, Donnelley filed a motion for partial summary judgment on Wood's Summer Success claims and his request for disgorgement of profits. (Dkt.# 107.) Wood responded on August 25, 2008 (Dkt.#125), and Donnelley replied on September 9, 2008 (Dkt.# 144). Therefore, this motion is ripe for determination.

On August 8, 2008, HMH filed a motion for partial summary judgment on Wood's request for the disgorgement of profits. (Dkt.# 108.) Wood responded on September 2, 2008 (Dkt.# 135), and HMH replied on September 17, 2008 (Dkt.# 151). Therefore, this motion is ripe for determination.

On August 8, 2008, HMH filed a motion for partial summary judgment on Wood's fraud claims and request for exemplary damages. (Dkt.# 110.) Wood responded on August 28, 2008 (Dkt.# 138), and HMH replied on September 12, 2008 (Dkt,# 148). Therefore, this motion is ripe for determination.

This Court GRANTS IN PART and DENIES IN PART Wood's motion for partial summary judgment on Defendants' liability for copyright infringement; GRANTS IN PART and DENIES IN PART Donnelley's motion for partial summary judgment on Wood's Summer Success claims and his request for disgorgement of profits; DENIES HMH's motion for partial summary judgment on Wood's request for disgorgement of profits; and DENIES HMH's motion for partial summary judgment on Wood's fraud claims and request for exemplary damages.

I. Background

Ted Wood is a professional photographer who resides in Colorado. HMH is a publisher based in Boston, Massachusetts. Donnelley is a full-service printer headquartered in Chicago, Illinois. From 1999 to 2002, Wood sold to HMH six licenses permitting the publisher to reproduce nine of his photographs in two textbook series, both entitled The, Language of Literature ("LOL"), and in an educational periodical entitled Summer Success Reading Magazine ("SSRM"). Donnelley printed the LOL textbooks.

Wood alleges that each of the licenses at issue in this case authorized HMH to publish no more than 40,000 copies of the textbook or magazine in which his copyrighted photographs were to appear, and to do so only in North America. He further alleges that both Donnelley and HMH infringed his copyright by printing and publishing significantly in excess of 40,000 copies of the LOL textbooks, and that HMH infringed his copyright by publishing in excess of 40,000 copies of the SSRM periodicals.1 HMH committed an additional infringement of his copyright, according to Wood, when it re-published several of his photos in a recent edition of SSRM without securing a license to do so. Wood is making claims of copyright infringement, fraud, and fraudulent concealment against HMH, and a claim of copyright infringement against Donnelley. He seeks injunctive relief, actual damages, and disgorgement of profits against both HMH and Donnelley, as well as exemplary damages against HMH.

This Court has jurisdiction over Wood's copyright claim under 28 U.S.C. § 1331 and 28 U.S.C. § 1338. This Court has supplemental jurisdiction, 28 U.S.C. § 1367, over Wood's fraud and fraudulent concealment claims, both of which are brought under Colorado law. Wood's state and federal claims "derive from a common nucleus of operative fact." United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 725, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966).

II. Documentary record

Over a period of several years, from 1999 through 2002, Wood sold licenses to HMH (generally acting through its subsidiary McDougal Littell) to reproduce nine of his copyrighted photographs in HMH textbooks and educational periodicals. The documentary record includes a number of requests from HMH for permission to reproduce Wood's photos, as well as a number of invoices through which Wood granted this permission. These requests and invoices, which do not contain identical terms in every instance, involved the following textbooks and periodicals:

(1) Language of Literature, Grade 6, 2001 ("LOL 6, 2001")

(2) Language of Literature, Grade 6, 2002 ("LOL 6, 2002")

(3) Language of Literature, Grade 7, 2001 ("LOL 7, 2001")

(4) Language of Literature, Grade 7, 2002 ("LOL 7, 2002")

(5) Great Source Summer Success Reading Magazine, Grade 5, 2001 ("SSRM 5, 2001")

(6) Great Source Summer Success Reading Magazine, Grade 7, 2002 ("SSRM 7, 2002").2 Additionally, Wood alleges that there are two editions of SSRM in which HMH allegedly reprinted his photographs without securing a license:

(7) Great Source Summer Success Reading Magazine, Grade 5, 2008 ("SSRM 5, 2008")

(8) Great Source Summer Success Reading Magazine, Grade 7, 2008 ("SSRM 7, 2008").

All four Language of Literature textbooks were printed by Donnelley; none of the four Summer Success magazines was printed by Donnelley.

Wood alleges that Donnelley and HMH infringed his copyright by significantly exceeding the scope of the licenses he issued for these texts and magazines. The documentary record contains the following information as to each license:

(1) LOL 6, 2001

(a) Invoice from Wood to HMH subsidiary McDougal Littell, dated April 23, 1999, licensing the use of four photos. No mention of limitations on number of copies or geographical distribution. (Dkt. #97, Ex. B to Ex. 1, at 23.) There is no request letter from HMH matching this invoice.

(b) Request letter from HMH subsidiary McDougal Littell to Wood, dated November 12, 1999, for permission to add an additional use of one of the photos licensed in the April 23, 1999, invoice, supra. Specifies "[o]ne-time North American rights" and "press run of under 40,000 circulation." (Id. at 22.)

(c) Invoice from Wood to HMH subsidiary McDougal Littell, dated November 15, 1999, licensing the additional use of the photo requested in HMH's November 12, 1999, letter, supra. No mention of limitations on number of copies or geographical distribution. (Id. at 24.)

(2) LOL 6, 2002

(a) Request letter from HMH subsidiary McDougal Littell to Wood, dated September 8, 2000, for permission to reuse the four Wood images published in LOL 6, 2001. Specifies "North American rights, English only, for a print run of 40,000." (Id. at 25.)

(b) Invoice from Wood to HMH subsidiary McDougal Littell, dated September 27, 2000, licensing re-use of the four photos requested in HMH's September 8, 2008, letter, supra. No mention of limitations on number of copies or geographical distribution. (Id. at 26.)

(3) LOL 7, 2001

(a) Invoice from Wood to HMH subsidiary McDougal Littell, dated June 29, 1999, licensing the use of two photos. Specifies "[u]sage rights" as "[o]ne-time print run under 40,000, North American rights, English language only." (Id. at 28.) There is no request letter from HMH matching this invoice.

(4) LOL 7, 2002

(a) Request letter from HMH subsidiary McDougal Littell to Wood, dated September 22, 2000, for permission to re-use the two Wood images published in LOL 7, 2001. Specifies "North American rights, English only, ... for a print run of 40,000." (Id. at 27.)

(b) Invoice from Wood to HMH subsidiary McDougal Littell, dated September 22, 2000, licensing re-use of the two photos requested in HMH's September 22, 2008, letter, supra. Specifies "[u]sage rights" as "[o]ne-time print run under 40,000, North American rights, English language only." (Id. at 29.)

(5) SSRM 5, 2001

(a) Request letter from HMH subsidiary Brown Publishing Network, dated April 3, 2001, for permission to use two Wood photos. Specifies "[o]ne-time U.S. Englfish] language rights"; "[u]nder 40,000 print run." (Id., Ex. C to Ex. 1, at 31.)

(b) Invoice from Wood to HMH subsidiary Broivn, Publishing Network, dated April 11, 2001, licensing use of the photos requested in HMH's April 3, 2001, letter, supra. Specifies "US English language rights for a press run of under 40,000." (Id. at 32.)

(6) SSRM 7, 2002

(a) Request letter from HMH subsidiary Brown Publishing Network, dated April 3, 2001, for permission to use a "spot detail" of one of the Wood photos requested for SSRM 5, 2001. Specifies "[o]ne-time U.S. Engl[ish] language rights"; "[u]nder 40,000 print run." (Id. at 31.)

(b) Invoice from Wood to HMH subsidiary Brown Publishing Network, dated April 11, 2001, licensing spot use requested in HMH's April 3, 2001, letter, supra. Specifies "US English language rights for a press run of under 40,000." (Id. at 32.)

(c) Invoice from Wood to HMH subsidiary Brown Publishing Network, dated February 1, 2002, licensing the use of a photo. Specifies "US English language rights for a press run of under 40,000"; handwritten correction (presumably by HMH employee) crosses out "US" and replaces it with "North American, as per email 1/31/02." (Id. at 33.)

(7) SSRM 5 & SSRM 7, 2008

(a) Request letter from agent of HMH subsidiary Great Source Education Group, dated January 16, 2008, for permission to use one Wood photo in a Summer...

To continue reading

Request your trial
26 cases
  • John Wiley & Sons, Inc. v. Photo
    • United States
    • U.S. District Court — Southern District of New York
    • February 21, 2014
    ...an interpretation of the license that [plaintiff] concedes was granted.” (internal citation omitted)); Wood v. Houghton Mifflin Harcourt Publ'g Co., 589 F.Supp.2d 1230, 1241 (D.Colo.2008) (granting partial summary judgment where licensee used copyright beyond the scope of the license); Bean......
  • Bergt v. McDougal Littell
    • United States
    • U.S. District Court — Northern District of Illinois
    • September 14, 2009
    ...containing the painting, the relevant inquiry in determining whether a causal nexus exists. See Wood v. Houghton Mifflin Harcourt Pub. Co., 589 F.Supp.2d 1230, 1249 (D.Colo.2008). As with McDougal's revenue derived from infringement, Bergt has established a causal nexus between Donnelley's ......
  • Dash v. Mayweather
    • United States
    • U.S. Court of Appeals — Fourth Circuit
    • September 26, 2013
    ...TGB as a component of “Yep.” Id. at 1085. Although Dash relies on the district court's reasoning in Wood v. Houghton Mifflin Harcourt Publishing, Co., 589 F.Supp.2d 1230 (D.Colo.2008), to support his claim for profit damages under § 504(b), we note that this case could, at first blush, be r......
  • Church Mut. Ins. Co. v. Phillip Marshall Coutu, an Individual, Power Adjusters, Inc.
    • United States
    • U.S. District Court — District of Colorado
    • September 13, 2017
    ...to act upon the concealed fact; and (5) Plaintiff acted on the concealed fact to its detriment. See Wood v. Houghton Mifflin Harcourt Publ'g. Co., 589 F. Supp. 2d 1230, 1254 (D. Colo. 2008) (applying Colorado law); Baker v. Wood, Ris & Hames, Prof'l Corp., 364 P.3d 872, 883 (Colo. 2016). Th......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT