Memo of Law ISO Remedies Motion (ECF...

PUBLIC VERSION

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

HARPERCOLLINS PUBLISHERS LLC,

Plaintiff,

v.

OPEN ROAD INTEGRATED MEDIA, LLP,

Defendant.

)))))))))))

Case No. 1:11-cv-09499-NRB

MEMORANDUM OF LAW IN SUPPORT OF HARPERCOLLINS PUBLISHERS LLC’S MOTION FOR A PERMANENT INJUNCTION, STATUTORY DAMAGES,

ATTORNEYS’ FEES, AND COSTS

Case 1:11-cv-09499-NRB Document 50 Filed 05/23/14 of 31

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TABLE OF CONTENTS

Page

PRELIMINARY STATEMENT .....................................................................................................1

BACKGROUND .............................................................................................................................2

A. Factual Background and the Parties’ Arguments .....................................................2

B. The Court’s Summary Judgment Ruling .................................................................5

C. Open Road’s Subsequent Conduct ...........................................................................7

ARGUMENT ...................................................................................................................................7

I. THE COURT SHOULD ENTER A PERMANENT INJUNCTION ..................................7

II. HARPERCOLLINS IS ENTITLED TO A MAXIMUM STATUTORY DAMAGE AWARD, ENHANCED DUE TO OPEN ROAD’S CONTINUED WILLFUL INFRINGEMENT ...........................................................................................12

III. THE COURT SHOULD GRANT HARPERCOLLINS ITS REASONABLE ATTORNEYS’ FEES ........................................................................................................17

A. An Award of Attorneys’ Fees Is Warranted ..........................................................17

B. The Amount of Fees Requested Is Reasonable ......................................................21

IV. THE COURT SHOULD AWARD HARPERCOLLINS’ FULL COSTS ........................23

CONCLUSION ..............................................................................................................................25


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TABLE OF AUTHORITIES

Page(s)

Cases

16 Casa Duse, LLC v. Merkin,No. 12 Civ. 3492 (RJS), 2013 WL 5510770 (S.D.N.Y. Sept. 27, 2013) ...........................18, 20

All-Star Mktg. Group, LLC v. Media Brands Co., Ltd.,775 F. Supp. 2d 613 (S.D.N.Y. 2011) ......................................................................................13

Arbor Hill Concerned Citizens Neighborhood Ass’n v. Cnty. of Albany,522 F.3d 182 (2d Cir. 2008)...............................................................................................21, 22

Arista Records LLC v. Usenet.com, Inc.,No. 07 Civ. 8822 (HB)(THK), 2010 WL 3629688 (S.D.N.Y. Feb. 2, 2010),report and recommendation adopted, No. 07 Civ. 8822(HB),2010 WL 3629587 (S.D.N.Y. Sept. 16, 2010) ...................................................................15, 16

Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy,548 U.S. 291 (2006) .................................................................................................................24

Barrera v. Brooklyn Music, Ltd.,346 F. Supp. 2d 400 (S.D.N.Y. 2004) ................................................................................23, 24

BBY Solutions v. Schwartz,No. 11 Civ. 0947(ADS)(ETB), 2011 WL 6986937 (E.D.N.Y. Nov. 17, 2011) ......................21

Boosey & Hawkes Music Publ’rs, Ltd. v. Walt Disney Co.,145 F.3d 481 (2d Cir. 1998).................................................................................................6, 19

Bryant v. Media Right Prods., Inc.,603 F.3d 135 (2d Cir. 2010).....................................................................................................13

Complex Sys., Inc. v. ABN Amro Bank N.V.,No. 08 Civ. 7497 (KBF), 2014 U.S. Dist. LEXIS 64467 (S.D.N.Y. May 9, 2014) ......9, 10, 11

Contractual Obligation Prods., LLC v. AMC Networks, Inc.,546 F. Supp. 2d 120 (S.D.N.Y. 2008) ......................................................................................18

Crescent Publ’g Group, Inc. v. Playboy Enters., Inc.,246 F.3d 142 (2d Cir. 2001).....................................................................................................21

eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) ...................................................................................................................8


iii

TABLE OF AUTHORITIES (cont’d)

Page(s)

Cases

EMI April Music Inc. v. 4MM Games, LLC,No. 12 Civ. 2080 (DLC)(JLC), 2014 WL 325933 (S.D.N.Y. Jan. 13, 2014), report and recommendation adopted, No. 12 Civ. 2080(DLC),2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014).................................................................... passim

Farberware Licensing Co. LLC v. Meyer Marketing Co., Ltd.,No. 09 Civ. 2570 (HB), 2009 WL 5173787 (S.D.N.Y. Dec. 30, 2009),aff’d, 428 F. App’x 97 (2d Cir. 2011) ......................................................................................23

Fogerty v. Fantasy, Inc.,510 U.S. 517 (1994) ...........................................................................................................17, 18

Grant v. Martinez,973 F.2d 96 (2d Cir. 1992).......................................................................................................22

Harrell v. Van Der Plas,No. 08 Civ. 8252 (GEL), 2009 WL 3756327 (S.D.N.Y. Nov. 9, 2009) .......................... passim

Hensley v. Eckerhart,461 U.S. 424 (1983) .................................................................................................................21

Hounddog Prods., L.L.C. v. Empire Film Group, Inc.,826 F. Supp. 2d 619 (S.D.N.Y. 2011) ........................................................................................8

LaSalle Bank Nat’l Ass’n v. Nomura Asset Capital Corp.,424 F.3d 195 (2d Cir. 2005).....................................................................................................19

LeBlanc-Sterling v. Fletcher,143 F.3d 748 (2d Cir. 1998).....................................................................................................24

Matthew Bender Co., Inc. v. West Publ’g Co.,240 F.3d 115 (2d Cir. 2001)...............................................................................................17, 18

Microsoft Corp. v. AGA Solutions, Inc.,No. 05 Civ. 5769(DRH)(MLO), 2010 WL 1049219 (E.D.N.Y. Mar. 22, 2010) .....................14

Miltland Raleigh-Durham v. Myers,840 F. Supp. 235 (S.D.NY. 1993)............................................................................................24

Miroglio S.P.A. v. Conway Stores, Inc.,629 F. Supp. 2d 307 (S.D.N.Y. 2009) ..........................................................................13, 18, 20

MiTek Holdings, Inc. v. Arce Eng’g Co.,198 F.3d 840 (11th Cir. 1999) .................................................................................................18


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Page(s)

Cases

Muller v. Twentieth Century Fox Film Corp.,No. 08 Civ. 02550(DC), 2011 WL 3678712 (S.D.N.Y. Aug. 22, 2011) .................................21

N.Y. State Ass’n for Retarded Children, Inc. v. Carey,711 F.2d 1136 (2d Cir. 1983)...................................................................................................23

Nat’l Football League v. Primetime 24 Joint Venture,No. 98 Civ. 3778LMM, 1999 WL 760131 (S.D.N.Y. Sept. 27, 1999) ...................................11

Omega Importing Corp. v. Petri-King Camera Co.,451 F.2d 1190 (2d Cir. 1971)...................................................................................................16

Pannonia Farms, Inc. v. USA Cable (“Pannonia I”), No. 03 Civ. 7841(NRB), 2004 WL 1276842 (S.D.N.Y. June 8, 2004) ...................................17

Pannonia Farms, Inc. v. USA Cable (“Pannonia III”), No. 03 Civ. 7841(NRB), 2006 WL 2872566 (S.D.N.Y. Oct. 5, 2006) .......................17, 21, 23

Paramount Pictures Corp. v. Carol Publ’g Group,11 F. Supp. 2d 329 (S.D.N.Y. 1998) ........................................................................................11

Pearson Educ., Inc. v. Ishayev,963 F. Supp. 2d 239 (S.D.N.Y. 2013) ........................................................................................8

Pearson Educ., Inc. v. Vergara,No. 09 Civ. 6832(JGK)(KNF), 2010 WL 3744033 (S.D.N.Y. Sept. 17, 2010) ........................9

Porto v. Guirgis,659 F. Supp. 2d 597 (S.D.N.Y. 2009) ......................................................................................18

Psihoyos v. John Wiley & Sons, Inc.,Nos. 12-4874-cv(L), 12-5069-cv(XAP), 2014 WL 1327937 (2d Cir. Apr. 4, 2014) ..............13

Random House, Inc. v. Rosetta Books LLC,150 F. Supp. 2d 613 (S.D.N.Y. 2001), aff’d, 283 F.3d 490 (2d Cir. 2002) ..................... passim

Salinger v. Colting,607 F.3d 68 (2d Cir. 2010).............................................................................................8, 11, 12

Scanlon v. Kessler,23 F. Supp. 2d 413 (S.D.N.Y. 1998) ........................................................................................13

Silverstein v. Penguin Putnam, Inc.,368 F.3d 77 (2d Cir. 2004).................................................................................................10, 11


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Page(s)

Cases

Software Freedom Conservancy, Inc. v. Best Buy Co., Inc.,No. 09 Civ. 10155(SAS), 2010 WL 2985320 (S.D.N.Y. Jul. 27, 2010) .................................17

Syrnik v. Polones Const. Corp.,No. 11 Civ. 7754(KBF), 2012 WL 4122801 (S.D.N.Y. Sept. 19, 2012) .................................24

Tom Doherty Assoc., Inc. v. Saban Entm’t., Inc.,60 F.3d 27 (2d Cir. 1995) ..........................................................................................................8

Tradescape v. Shivaram,77 F. Supp. 2d 408 (S.D.N.Y. 1999) ....................................................................................8, 10

Twin Peaks Prods., Inc. v. Publ’s Int’l, Ltd.,996 F.2d 1366 (2d Cir. 1993).............................................................................................12, 17

United States v. W.T. Grant Co.,345 U.S. 629 (1953) .................................................................................................................10

United States Football League v. Nat’l Football League,887 F.2d 408 (2d Cir. 1989).....................................................................................................24

Warner Bros. Entm’t Inc. v. RDR Books,575 F. Supp. 2d 513 (S.D.N.Y. 2008) ......................................................................8, 10, 11, 12

Williams v. Crichton,891 F. Supp. 120 (S.D.N.Y. 1994)...........................................................................................24

Statutes

17 U.S.C. § 502 ..................................................................................................................1, 7, 8, 16

17 U.S.C. § 504. ...................................................................................................................1, 12, 13

17 U.S.C. § 505 ...................................................................................................................... passim

28 U.S.C. § 1920 ........................................................................................................................1, 24

28 U.S.C. § 1923 ............................................................................................................................24

Other Authorities

Fed. R. Civ. P. 54 .................................................................................................................1, 23, 24

2013 NLJ Billing Survey, NAT’L L.J. (Dec. 2013) .........................................................................22


Pursuant to the Court’s March 14, 2014 Memorandum and Order, 17 U.S.C. §§ 502, 504,

and 505, 28 U.S.C. § 1920, and Federal Rule of Civil Procedure 54(d)(1), Plaintiff HarperCollins

Publishers LLC (“HarperCollins”) respectfully submits this memorandum of law in support of its

motion for an award of a permanent injunction, statutory damages, attorneys’ fees, and costs.

PRELIMINARY STATEMENT

This copyright infringement action arose out of the publication by Defendant Open Road

Integrated Media Inc. (“Open Road”) of an electronic edition of acclaimed children’s novel Julie

of the Wolves by Jean Craighead George (the “Work”), despite HarperCollins’ exclusive right to

publish or license publication of electronic editions of the Work under its 1971 agreement with

George (the “Agreement”). Although HarperCollins advised Open Road repeatedly that such

conduct would violate HarperCollins’ exclusive rights, Open Road – fully aware of the legal risk

– nevertheless proceeded to publish its e-book version of the Work in or about August 2011.

In granting HarperCollins’ motion for summary judgment on its infringement claim and

denying Open Road’s cross-motion, the Court found that the Agreement unambiguously granted

HarperCollins the exclusive right to license e-book versions of the Work. In so holding, the

Court declined Open Road’s invitation to ignore both the plain meaning of the 1971 Agreement

and the interpretive principles established by this Circuit’s “new use” precedents, which, the

Court held, strongly supported HarperCollins’ position. Notwithstanding the Court’s emphatic

rejection of Open Road’s arguments, Open Road to this day (more than two months later)

persists in violating HarperCollins’ exclusive electronic rights by continuing to hold itself out as

an authorized publisher of the Work.

HarperCollins seeks entry of a permanent injunction to protect its exclusive rights in the

Work and statutory damages of not less than $30,000 for Open Road’s blatant infringement. As

the prevailing party, and particularly in light of the objective unreasonableness of Open Road’s


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litigation position, HarperCollins also seeks an award of attorneys’ fees in the amount of

$1,089,371.50 and costs in the amount of $7,040.62. As explained below and in the

accompanying Declaration of R. Bruce Rich, dated May 23, 2014 (“Rich Decl.”), HarperCollins

believes these remedies are necessary and appropriate to compensate it for harm sustained as the

result of Open Road’s infringing conduct; to prevent such conduct from continuing with respect

to Julie of the Wolves and from occurring in the future with respect to that and other works; and

to deter Open Road and others from acting without regard for clear grants of electronic

publication rights to third parties and thereby interfering with the rightful exploitation of those

rights.

BACKGROUND

A. Factual Background and the Parties’ Arguments

HarperCollins learned of George’s intention to enter into an agreement with Open Road,

a digital book publisher, for the publication of an e-book version of Julie of the Wolves in

approximately December 2010. See Rich Decl. ¶ 3. Over the ensuing months, HarperCollins

repeatedly advised George and her literary agent, Ginger Knowlton of Curtis Brown, Ltd., that

HarperCollins held the exclusive right to license electronic publishing rights in the Work to third

parties and that any publication of the Work by Open Road would constitute copyright

infringement. Id. ¶ 4, 7 & Ex. F. In a meeting between the parties’ counsel, HarperCollins’

counsel identified the specific provisions of the Agreement that unambiguously granted these

rights exclusively to HarperCollins, gave Open Road fair notice of HarperCollins’ reservation of

all its legal rights, and indicated HarperCollins’ intent to sue for copyright infringement should

Open Road proceed with its plan to publish a Julie of the Wolves e-book. Id. ¶ 8.

The relevant provisions of the Agreement granted HarperCollins the exclusive English

language rights to publish the Work “in book form” and also granted HarperCollins the exclusive


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take and defend six depositions. See id. ¶ 19. In addition, after Open Road insisted on

submitting expert reports, HarperCollins was required to work extensively with its expert, Dr.

Andries van Dam, in connection with the preparation of his responsive report. See id. ¶ 20. On

March 18, 2013, the parties cross-moved for summary judgment comprising nearly 100 pages of

briefing and more than 140 exhibits. Id. ¶ 21. HarperCollins’ motion was supported by

declarations from one fact witness and one expert witness.

In its summary judgment papers, Open Road argued that HarperCollins itself had not

been granted the right to publish e-book versions of the Work because, according to Open Road,

e-books were not encompassed by the Agreement’s broad grant of rights to publish the Work “in

book form.” Dkt. 22 at 11-19. This argument – in addition to being irrelevant, because only

HarperCollins’ right to license third parties was at issue – was premised on the factually

distinguishable, more-than-decade-old case Random House, Inc. v. Rosetta Books LLC, 150 F.

Supp. 2d 613 (S.D.N.Y. 2001), aff’d, 283 F.3d 490 (2d Cir. 2002). See Dkt. 22 at 11-18. In that

case, the district court refused to enjoin another e-book publisher, Rosetta Books, from

publishing novels to which Random House held the rights to “print, publish and sell” “in book

form”; none of the publishing contracts at issue in that case mentioned electronic publication.

Concerning the salient portions of Paragraph 20 of the Agreement, Open Road urged the

Court to effectively rewrite it by striking the “and/or” so that the language concerning

“information and storage and retrieval systems” was merely “modified” by the remainder of the

provision – “whether through computer, computer-stored, mechanical or other electronic means

now known or hereafter invented” – rather than the “electronic means” clause having

independent significance. See Dkt. 35 at 8-10. So interpreted, Open Road maintained that

Paragraph 20 did not compass e-books because “information and storage and retrieval systems”


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was limited to “systems in which books and other publications would be analyzed, indexed,

classified, and abstracted, including by computers.” Dkt. 22 at 21; Dkt. 25 (Declaration of

Michael J. Boni In Support of Defendant Open Road’s Motion for Summary Judgment) Ex. 33

(Amended Declaration and Expert Report of David Farber (“Farber Decl.”)) ¶ 18. Such systems,

Open Road contended, were confined to “the functional equivalent of a more advanced library

card retrieval system.” Farber Decl. ¶ 18.

B. The Court’s Summary Judgment Ruling

On March 14, 2014, the Court granted HarperCollins’ motion for summary judgment and

denied Open Road’s cross-motion for summary judgment. In doing so, the Court squarely

rejected each of Open Road’s arguments. Dkt. 46.

First, the Court rejected Open Road’s attempt to “redirect the Court’s attention” away

from Paragraph 20 to Paragraph 1 and to Rosetta Books – a case that, the Court noted, “did not

directly address” the issues in this case. Id. at 20. The Court found that the Agreement’s broad

and unqualified grant to HarperCollins of the right to “publish” the Work “in book form” was

distinguishable from the arguably more limited “print, publish and sell” grant language that

Rosetta Books had successfully argued denoted a paper copy. Id. at 16 (emphasis added).3

The Court determined, however, that it did not need to decide whether the “in book form”

grant by itself covered e-book publication rights because Paragraph 20 left no doubt that

HarperCollins held the exclusive right to license third parties to publish electronic editions of the

Work. Paragraph 20, the Court explained, “explicitly grant[ed] HarperCollins certain rights

3 The Court’s suggestion that Open Road’s attempt to avoid Paragraph 20 was disingenuous (see id. at 20 (attributing Open Road’s focus on Paragraph 1 to its “apparent[] recogni[tion of] the breadth of the language in Paragraph 20”)) is bolstered by the fact that Open Road’s counsel, who also was counsel to Rosetta Books, argued in Rosetta Books that e-book rights had not been conveyed to Random House because none of the contracts anywhere addressed electronic rights. See Dkt. 23 Ex. 46 at 19-20. The Agreement contains the very reference to electronic rights that Open Road’s counsel thus recognized would have dictated a different result in Rosetta Books.


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associated with use by ‘electronic means,’” thereby creating “a critical distinction from Rosetta

Books, whose contract made no mention of electronic exploitation at all.” Dkt. 46 at 17. The

Court further found that Paragraph 20, by encompassing “the forward-looking reference to

technologies ‘now known or hereafter invented,’” was “sufficiently broad to draw within its

ambit e-book publication.” Id. E-book technology, the Court stated, “encompasses a later-

invented version of the very ‘computer, computer-stored, mechanical or other electronic means’

provided by Paragraph 20.” Id.

The court held this conclusion was reinforced by this Circuit’s “new use” cases, as the

“expansive contractual language” in the Agreement was at least as broad as that previously found

to be “sufficient to encompass a later-developed new use.” Id. at 18. Indeed, the Court noted

that by expressly providing for anticipated electronic means that might be “hereafter invented,”

Paragraph 20 was “greater in breadth” with respect to new uses than contracts at issue in the

“new use” cases that lacked such a future-use provision but nonetheless were found to be broad

enough to encompass new electronic uses. Id. at 19.4

To the extent Open Road did address Paragraph 20, the Court found that it “attempt[ed]

to rewrite” it by excising the “and/or” language that George’s own literary agent had insisted on

including and by limiting its analysis to the portion of the provision addressing “information and

storage and retrieval systems.” Id. at 20-22. The Court noted that it was, in any event, far from

clear that treating the “electronic means” language as a mere modifier would support Open

Road’s position, finding it “plausible” that “storage and retrieval and information systems” alone

could encompass e-book technology under the “new use” precedents. See id. at 22.

4 The Court also rejected Open Road’s contention that a “foreseeability” analysis was required as part of the “new use” contract assessment, noting that, contrary to Open Road’s contention, whether foreseeability of the new use is required “remains an open question.” Id. at 25 (quoting Boosey & Hawkes Music Publ’rs, Ltd. v. Walt Disney Co., 145 F.3d 481, 486 (2d Cir. 1998)).


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Finally, the Court readily disposed of Open Road’s remaining arguments, concluding

that:

Open Road’s claims regarding the purported lack of a publication grant or a royalty rate in Paragraph 20 were irrelevant attempts to “redirect attention to . . . a question not before this Court and not germane to this litigation,” id. at 23;

the parties’ course of performance under the Agreement did not favor Open Road (and in fact likely favored HarperCollins), as Open Road’s only examples of George licensing electronic uses of the Work were undertaken without HarperCollins’ knowledge or consent, id. at 27; and

Open Road’s argument that subsequent contracts containing different language should bear on the construction of the 1971 Agreement had no merit, id. at 28.

C. Open Road’s Subsequent Conduct

Despite the Court having found its publication of the Work to be infringing, Open Road

continues to hold itself out to the public as an authorized publisher of the Julie of the Wolves e-

book. As of the date of this motion, Open Road’s website continues to invite consumers to “Buy

the EBook” of the Work through a variety of channels, including Amazon, Apple, and Google.

See Rich Decl. ¶ 15 & Ex. K. As recently as May 1, 2014 (some six weeks after this Court’s

summary judgment decision), the Julie of the Wolves e-book remained available for sale on each

of these channels. Id. ¶ 14 & Ex. I. Even today, Google Play continues to display Open Road’s

version of the e-book and invites consumers to add it to their “Wishlist.” Id. ¶ 16 & Ex. L.

Based on the Court’s ruling in its favor, as well as Open Road’s subsequent continued

infringing conduct, HarperCollins now moves for appropriate remedies as the prevailing party in

this action.

ARGUMENT

I. THE COURT SHOULD ENTER A PERMANENT INJUNCTION

HarperCollins seeks the entry of a permanent injunction against Open Road’s continuing

and future infringement of HarperCollins’ exclusive electronic publishing rights. Section 502 of


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the Copyright Act authorizes the Court to enter a final injunction “on such terms as it may deem

reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502. A plaintiff

seeking a permanent injunction must demonstrate: (1) that it has suffered an irreparable injury;

(2) that remedies available at law, such as monetary damages, are inadequate to compensate for

that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a

remedy in equity is warranted; and (4) that the public interest would not be disserved by a

permanent injunction. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).5

HarperCollins easily meets this standard.

First, there can be little question that HarperCollins will suffer irreparable harm without

an injunction. Harm may be irreparable “for many reasons, including that a loss is difficult to

replace or difficult to measure, or that it is a loss that one should not be expected to suffer.”

Salinger, 607 F.3d at 81; see also Tom Doherty Assoc., Inc. v. Saban Entm’t, Inc., 60 F.3d 27, 38

(2d Cir. 1995) (affirming grant of injunction based on finding that publishing company would be

irreparably harmed by being prevented from taking advantage of market opportunity to which it

had a right and finding damages caused by lost opportunity would be difficult to quantify);

Tradescape v. Shivaram, 77 F. Supp. 2d 408, 411 (S.D.N.Y. 1999) (finding irreparable harm

where “long-term damage to plaintiff’s market share and reputation would be impossible to

quantify”); accord EMI April Music Inc. v. 4MM Games, LLC, No. 12 Civ. 2080(DLC)(JLC),

2014 WL 325933, at *9 (S.D.N.Y. Jan. 13, 2014), report and recommendation adopted, No. 12

Civ. 2080(DLC), 2014 WL 1383468 (S.D.N.Y. Apr. 7, 2014) (finding irreparable harm because,

5 Although the Second Circuit has not expressly held that the eBay standard applies to permanent injunctions in the copyright context, it has held that it applies to preliminary injunctions in copyright cases, Salinger v. Colting, 607 F.3d 68, 77 (2d Cir. 2010), and there would appear to be no basis for finding it inapplicable to a copyright permanent injunction. Indeed, courts in this District have held that it applies. See, e.g., Pearson Educ., Inc. v. Ishayev, 963 F. Supp. 2d 239, 254 (S.D.N.Y. 2013); WarnerBros. Entm’t Inc. v. RDR Books, 575 F. Supp. 2d 513, 551-52 (S.D.N.Y. 2008); Hounddog Prods., L.L.C. v. Empire Film Grp., Inc., 826 F. Supp. 2d 619, 632 (S.D.N.Y. 2011).


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inter alia, defendant had “refused to properly license” works at issue, and plaintiff could not

control defendant’s illegal use of copyrighted works); Pearson Educ., Inc. v. Vergara, No. 09

Civ. 6832(JGK)(KNF), 2010 WL 3744033, at *4 (S.D.N.Y. Sept. 27, 2010) (finding irreparable

harm based on determination that plaintiff publisher should not be expected to suffer decline in

sales and profits of books due to defendant’s infringement).

HarperCollins plainly is suffering irreparable harm, and will continue to do so if a

permanent injunction is not entered. Open Road’s continued unlicensed offering and sale of the

Work following the summary judgment ruling, and its ongoing representation to consumers that

it is an authorized publisher of the Work, in violation of what the Court found to be

HarperCollins’ exclusive electronic publication rights, interfere with HarperCollins’ ability to

sell or license publication of the Work and thus its ability to take advantage of a market

opportunity that it – and only it – is entitled to exploit. By its unlawful competition, Open Road

has harmed HarperCollins to an extent that is impossible to quantify and that HarperCollins

cannot control. See Complex Sys., Inc. v. ABN Amro Bank N.V., No. 08 Civ. 7497 (KBF), 2014

U.S. Dist. LEXIS 64467, at *39 (S.D.N.Y. May 9, 2014) (“Direct competition may . . . constitute

irreparable harm.”) (citation omitted). HarperCollins should not be expected to continue to

incur this harm as a result of Open Road’s ongoing infringing conduct.

Second, HarperCollins has no adequate remedy at law. A plaintiff has no adequate

remedy at law where, absent an injunction, the defendant is likely to continue the infringement.

See EMI April Music, 2014 WL 325933, at *9 (finding no evidence defendant would stop its

infringing activities where it “failed to cease its infringing activities even after being notified of

its infringement”); Pearson Educ. v. Vergara, 2010 WL 3744033, at *4 (finding award of


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monetary damages would not adequately compensate plaintiffs where there was no evidence to

suggest defendant would cease infringing activity).

Open Road has shown no sign it will stop its infringing conduct unless it is enjoined from

doing so. Even following issuance of the Court’s strongly worded summary judgment ruling,

Open Road continued to make the Work available for sale through links on its website to various

online retailers until at least May 1, 2014 – some six weeks after the Court’s ruling. Rich Decl.

Ex. ¶ 14 & Ex. I. Even today, Open Road continues to represent that consumers can “Buy the

EBook” via its website, and at least one of its vendors maintains a page dedicated to Open

Road’s e-book edition of the Work and permits putative purchasers to place it on their

“Wishlist,” implicitly suggesting that the e-book will be available from Open Road in the future.

Id. ¶¶ 15-16 & Exs. K-L. Hence, it is clear that if an injunction is not issued, Open Road is

likely to continue infringing HarperCollins’ copyright rights.6 See Warner Bros., 575 F. Supp.

2d at 553. Given the “significant threat of future infringement” in this case, it is apparent that

HarperCollins “cannot be compensated by monetary relief alone.” EMI April Music, 2014 WL

325933, at *9.7

The principle that injunctive relief should be granted where denying it “would amount to

a forced license to use the creative work of another,” see Silverstein v. Penguin Putnam, Inc.,

368 F.3d 77, 84 (2d Cir. 2004); Complex Sys., 2014 U.S. Dist. LEXIS 64467, at *34-35, further

6 The fact that Open Road appears to have instructed its retailers to cease actually selling the Julie of the Wolves e-book does not lessen the need for a permanent injunction: Open Road’s prior conduct indicates its proclivity for flouting the Court’s summary judgment ruling, and voluntary cessation of illegal or infringing conduct does not prevent the granting of a permanent injunction. See, e.g., Tradescape.com, 77 F. Supp. 2d at 410 n.2 (granting permanent injunction in copyright action, noting “[v]oluntary cessation of unlawful conduct alone does not moot an application for an injunction”) (citing United States v. W.T. Grant Co., 345 U.S. 629, 633 (1953)).7 HarperCollins is concerned not only with Open Road’s continued infringement of its rights in Julie of the Wolves but also with protecting its rights to other works as to which it holds comparable exclusive rights.


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compels entry of an injunction. Indeed, the failure to issue an injunction would be “tantamount

to the creation of a compulsory license, future damages . . . becoming a sort of royalty.”

Silverstein, 368 F.3d at 84; see also Paramount Pictures Corp. v. Carol Publ’g Grp., 11 F. Supp.

2d 329, 338 (S.D.N.Y. 1998) (rejecting argument that damages would be sufficient remedy for

infringing publication, since “[a]llowing this argument to prevail would, in effect, make any

copyright holder an involuntary licensor of the copyright to any entity that could be relied on to

pay damages”). Such a judicially-sanctioned, involuntary “license” is neither a desirable practice

nor consistent with the objectives of the Copyright Act. See Nat’l Football League v. Primetime

24 Joint Venture, No. 98 Civ. 3778 LMM, 1999 WL 7601310, at *4 (S.D.N.Y. Sept. 27, 1999).

Plainly, without an injunction, HarperCollins will effectively become a forced licensor of Open

Road, with any future damages obtained through litigation its only “royalty.”

Third, the balance of hardships weighs heavily in favor of HarperCollins. The harm to

HarperCollins in the absence of an injunction – the deprivation of its exclusive right to publish or

license publication of the Work in electronic form – is clear, while any harm an injunction would

cause to Open Road would consist solely of its inability to continue infringing HarperCollins’

copyright rights. The law “does not protect this type of hardship.” Warner Bros., 575 F. Supp.

2d at 553; see also Complex Sys., 2014 U.S. Dist. LEXIS 64467, at *51 (finding balance of

hardships weighed in favor of permanent injunction where defendant’s only hardship was being

“prevent[ed] . . . from doing that which it has no right to do”).

Fourth, the public interest will be served by entry of a permanent injunction. The

purpose of copyright law is “to promote the store of knowledge available to the public.”

Salinger, 607 F.3d at 82. To the extent copyright law accomplishes this end “by providing

individuals a financial incentive to contribute to the store of knowledge,” the public interest


12

“may well be already accounted for by the plaintiff’s interest.” Id. In order to advance the

public interest in access to literary works, copyright law “must prevent the misappropriation of

the skills, creative energies, and resources which are invested in the protected work.” Warner

Bros., 575 F. Supp. 2d at 553. Here, a permanent injunction protecting HarperCollins’ exclusive

electronic rights in the Work, as well as in any other works to which it holds commensurate

rights, will enable and encourage HarperCollins to continue to meet public demand for digital

versions of important backlist literary works like Julie of the Wolves without the threat of

unlawful direct competition.

Toward this end, HarperCollins’ proposed permanent injunction (see Rich Decl. Ex. A)

would enjoin Open Road from publishing or contracting to publish the Work and holding itself

out as an authorized publisher of the Work. It would require Open Road to discontinue the sale

and offering for sale of the Work through any and all sales channels; to delete or destroy all

copies of the Work (or any portion thereof) in its possession, custody, or control; and to remove

the Work from the sales catalogs, websites, and any other sources that list works available for

sale or download from Open Road. It would require Open Road to notify all third parties with

which it has contracted or otherwise arranged to offer the Work for sale to promptly stop doing

so. Finally, it would prevent Open Road from publishing, or contracting to publish, any other

work for which HarperCollins holds the exclusive right to publish “in book form” together with

the exclusive electronic rights conveyed to HarperCollins in the Agreement.

II. HARPERCOLLINS IS ENTITLED TO A MAXIMUM STATUTORY DAMAGE AWARD, ENHANCED DUE TO OPEN ROAD’S CONTINUED WILLFUL INFRINGEMENT

HarperCollins has elected to recover statutory damages in lieu of actual damages under

section 504 of the Copyright Act. See 17 U.S.C. § 504(c); see also, e.g., Twin Peaks Prods., Inc.

v. Publ’ns Int’l, Ltd., 996 F.2d 1366, 1380-81 (2d Cir. 1993). Statutory damages are available


13

without proof of actual damages. All-Star Mktg. Grp., LLC v. Media Brands Co., 775 F. Supp.

2d 613, 626 (S.D.N.Y. 2011). For each work infringed, a prevailing copyright plaintiff may

recover statutory damages of from $750 to $30,000, and the award may be increased up to

$150,000 per work where the infringement is willful. 17 U.S.C. § 504(c)(1)-(2). Courts “enjoy

wide discretion in setting the amount of statutory damages.” Bryant v. Media Right Prods., Inc.,

603 F.3d 135, 143 (2d Cir. 2010) (quotation and alteration omitted); see also EMI April Music,

2014 WL 325933, at *4.

Notwithstanding Open Road’s blatant infringement, HarperCollins initially was not

inclined to seek enhanced statutory damages based on willful infringement. However, Open

Road’s continued infringing conduct following the Court’s summary judgment ruling has led

HarperCollins to believe that a statutory damages award should incorporate a willfulness

component. Accordingly, HarperCollins requests a statutory damage award of at least the

maximum for non-willful infringement ($30,000) but urges the Court to enhance that award by

an amount in its discretion in view of Open Road’s continued infringing conduct.8

In setting an award of statutory damages under section 504, courts in this Circuit consider

the following factors: “(1) the infringer’s state of mind; (2) the expenses saved, and profits

earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on

the infringer and third parties; (5) the infringer’s cooperation in providing evidence concerning

the value of the infringing material; and (6) the conduct and attitude of the parties.” Bryant, 603

F.3d at 144; see also Psihoyos v. John Wiley & Sons, Inc., Nos. 12-4874-cv(L), 12-5069-

8 The appropriateness of an award of attorneys’ fees, as discussed in Section III, infra, is unaffected by the Court’s determination as to willfulness. See Miroglio S.P.A. v. Conway Stores, Inc., 629 F. Supp. 2d 307, 310-11 (S.D.N.Y. 2009); see also Scanlon v. Kessler, 23 F. Supp. 2d 413, 416 (S.D.N.Y. 1998) (“[T]he court’s finding of lack of wilfulness on the part of [the defendant] does not prevent plaintiff from being awarded attorney’s fees and costs. Wilfulness goes to the issue of damages and not to the ultimate issue of determining whether defendants violated the Act by infringing on [the plaintiff’s] copyrights.”).


15

Ex. 41 at OR000560-61; see also Dkt. 19 (Declaration of Kate Jackson In Support of

HarperCollins’ Motion for Summary Judgment) ¶¶ 28-29. Open Road nonetheless proceeded

with publication of the e-book version of the Work notwithstanding the evident reservations of

its counsel and of George’s agent as to the potential violation of HarperCollins’ contractual

rights. See Dkt. 23 Ex. 21 at OR000739; id. Ex. 18 at OR000504; id. Ex. 4 (Deposition of

Ginger Knowlton, dated Nov. 29, 2013), at 73:24-74:3. Indeed, it was not until Open Road

that Open Road’s publication of the Work moved forward. Id. Ex. 21 at OR000120.

In short, Open Road’s infringement was hardly innocent.

Deterrence (Factor 4) also strongly favors a significant statutory award. Courts “must

consider the deterrent effect on both other potential infringers as well as Defendants themselves,”

Arista Records LLC v. Usenet.com, Inc., No. 07 Civ. 8822(HB)(THK), 2010 WL 3629688, at *6

(S.D.N.Y. Feb. 2, 2010), report and recommendation adopted, No. 07 Civ. 8822(HB), 2010 WL

3629587 (S.D.N.Y. Sept. 16, 2010), and deterring similar conduct by other enterprises “requires

a substantial award.” EMI April Music, 2014 WL 325933, at *4. A meaningful award is called

for to deter Open Road – and others – from arrogating to themselves the new-media publication

rights of legitimate licensees like HarperCollins. An orderly market for electronic publication

rights requires respect for the rights of those who have bargained for such rights, particularly

given the increasing consumer demand for access to valuable backlist titles in new electronic

formats. See, e.g., Dkt. 19 ¶¶ 15-17. This case will surely be looked to as an important

precedent in this area. Hence, a sizeable statutory damage award – coupled with the other

remedies sought in this motion – will send an appropriately strong message to digital publishers


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III. THE COURT SHOULD GRANT HARPERCOLLINS ITS REASONABLE ATTORNEYS’ FEES

A. An Award of Attorneys’ Fees Is Warranted

Section 505 of the Copyright Act authorizes a court in its discretion to award “a

reasonable attorney’s fee” to the prevailing party. 17 U.S.C. § 505; see also Matthew Bender &

Co. v. West Publ’g Co., 240 F.3d 116, 121 (2d Cir. 2001) (holding that granting attorneys’ fees

under section 505 is within district court’s broad discretion). The Second Circuit has interpreted

section 505 in a manner that is “very favorable to prevailing parties,” and fees are “generally

awarded to a prevailing plaintiff” in this Circuit. Twin Peaks Prods., 996 F.2d at 1383; Software

Freedom Conservancy, Inc. v. Best Buy Co., No. 09 Civ. 10155(SAS), 2010 WL 2985320, at *3

(S.D.N.Y. July 27, 2010) (“[B]ecause the Copyright Act intended to encourage suits to redress

infringement, fees are generally awarded to a prevailing plaintiff.”).

The U.S. Supreme Court has identified several factors for courts to consider in

determining whether a fee award is appropriate: frivolousness, motivation, objective

unreasonableness (both factual and legal), and “the need in particular circumstances to advance

considerations of compensation and deterrence.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534

n.19 (1994); Matthew Bender & Co., 240 F.3d at 121; Pannonia Farms, Inc. v. USA Cable

(“Pannonia I”), No. 03 Civ. 7841(NRB), 2004 WL 1276842, at *6 (S.D.N.Y. June 8, 2004)

(Buchwald, J.); Pannonia Farms, Inc. v. USA Cable (“Pannonia III”), No. 03 Civ. 7841(NRB),

2006 WL 2872566, at *1 (S.D.N.Y. Oct. 5, 2006) (Buchwald, J.). These factors are neither

mandatory nor exclusive; rather, they “may be used to guide courts’ discretion” and are to be

applied in a manner “faithful to the purposes of the Copyright Act.” Fogerty, 510 U.S. at 534

n.19; Harrell v. Van Der Plas, No. 08 Civ. 8252 (GEL), 2009 WL 3756327, at *3 (S.D.N.Y.

Nov. 9, 2009).


18

The Second Circuit has held that objective unreasonableness should be given “substantial

weight” in determining whether an award of attorneys’ fees is warranted. Matthew Bender &

Co., 240 F.3d at 121. This Circuit’s emphasis on objective unreasonableness is “firmly rooted in

Fogerty’s admonition that any factor a court considers in deciding whether to award attorneys’

fees must be ‘faithful to the purposes of the Copyright Act,’” namely, to “encourage the

origination of creative works by attaching enforceable property rights to them.” Id. (citation

omitted). The “touchstone” of the court’s exercise of its discretion under section 505 is whether

a fee award will further the interests of copyright law by “encouraging the raising of objectively

reasonable claims and defenses.” MiTek Holdings, Inc. v. Arce Eng’g Co., 198 F.3d 840, 842

(11th Cir. 1999) (citing Fogerty, 510 U.S. at 526-27).

A copyright claim or defense is objectively unreasonable when it is “clearly without

merit or otherwise patently devoid of a legal or factual basis.” Porto v. Guirgis, 659 F. Supp. 2d

597, 617 (S.D.N.Y. 2009); see also Contractual Obligation Prods., LLC v. AMC Networks, Inc.,

546 F. Supp. 2d 120, 125 (S.D.N.Y. 2008) (same). Courts in this District have awarded

attorneys’ fees to prevailing plaintiffs under section 505 based solely on the objective

unreasonableness of the defendant’s position. See, e.g., 16 Casa Duse, LLC v. Merkin, No. 12

Civ. 3492(RJS), 2013 WL 5510770, at *17 (S.D.N.Y. Sept. 27, 2013) (awarding attorneys’ fees

based on defendant’s objectively unreasonable claim that copyright owner did not in fact own

rights asserted); Harrell, 2009 WL 3756327, at *4 (awarding attorneys’ fees based on finding

defendant’s argument that its infringing activity was authorized objectively unreasonable);

Miroglio, 629 F. Supp. 2d at 311 (recommending award of attorneys’ fees based on objective

unreasonableness of defendants’ position that infringing work was not substantially similar when

it was “nearly identical” to plaintiff’s work).


19

For reasons explained thoroughly in the Court’s summary judgment ruling and

summarized above, Open Road’s defenses in this case were objectively unreasonable. Notably,

the Court’s ruling rested on “a plain reading of the contractual language,” which, the Court

found, clearly granted HarperCollins “the exclusive right to license third parties to publish e-

book versions of Julie of the Wolves.” Dkt. 46 at 15-16. The Court readily found that Paragraph

20, which conveyed to HarperCollins control over uses of the Work “by electronic means now

known or hereafter invented,” was “sufficiently broad to draw within its ambit e-book

publication.” Id. at 17. Because the Court found the Agreement unambiguous with respect to

electronic rights, Open Road’s advocacy of a contrary interpretation of the Agreement was

necessarily objectively unreasonable. See LaSalle Bank Nat’l Ass’n v. Nomura Asset Capital

Corp., 424 F.3d 195, 207 (2d Cir. 2005) (defining an unambiguous contract as one that is not

“reasonably capable of ‘more than one meaning’”).

This conclusion is bolstered by the Court’s finding that Open Road’s attempt to elide the

plain meaning of Paragraph 20 was “at variance with the generally-applied heavy presumption

that a deliberately prepared and executed written instrument manifests the true intention of the

parties.” Dkt. 46 at 21 (citation omitted). The Court found Open Road’s proposed reading of the

Agreement “particularly unwarranted” in light of the Second Circuit’s “new use” case law, under

which the parties “should be entitled to rely on the words of the contract.” Id. (quoting Boosey &

Hawkes, 145 F.3d at 488).

In addition, the Court was appropriately critical of Open Road’s litigation tactics. For

example, it ascribed Open Road’s strategy of “largely ignor[ing]” Paragraph 20 to its recognition

of “the breadth of the language” of that provision, Dkt. 46 at 20, which, the Court observed, led

Open Road to try to “redirect the Court’s attention” to Paragraph 1 and to Rosetta Books. But


21

* * *

In sum, Open Road violated HarperCollins’ rights in a blatant and knowing manner. Its

defense was both “clearly without merit” and “patently devoid of a legal or factual basis,”

Harrell, 2009 WL 3756327, at *3, yet it forced HarperCollins to invest substantial resources in

protecting the value of its copyrights before the Court. As a sanction for Open Road’s clear-cut

infringement, as compensation for HarperCollins, and as a deterrent to Open Road and others

who would seek unlawfully to exploit electronic uses of literary works, an award of attorneys’

fees is warranted.

B. The Amount of Fees Requested Is Reasonable

Courts calculate a “presumptively reasonable” attorney’s fee by multiplying the number

of hours reasonably expended on the litigation by a reasonable hourly rate. Harrell, 2009 WL

3756327, at *1 (citing Hensley v. Eckerhart, 461 U.S. 424, 433 (1983)); see also Muller v.

Twentieth Century Fox Film Corp., No. 08 Civ. 02550(DC), 2011 WL 3678712, at *2 (S.D.N.Y.

Aug. 22, 2011); BBY Solutions, Inc. v. Schwartz, No. CV 11-0947(ADS)(ETB), 2011 WL

6986937, at *5 (E.D.N.Y. Nov. 17, 2011). The reasonable hourly rate is the rate “a paying client

would be willing to pay.” Harrell, 2009 WL 3756327, at *5 (citing Arbor Hill Concerned

Citizens Neighborhood Ass’n v. Cnty. of Albany, 522 F.3d 182, 183 (2d Cir. 2008)). The Second

Circuit has held that “for prevailing parties with private counsel, the actual billing arrangement is

a significant . . . factor in determining what fee is ‘reasonable.’” Crescent Publ’g Grp., Inc. v.

Playboy Enters., Inc., 246 F.3d 142, 151 (2d Cir. 2001); see also Pannonia III, 2006 WL

2872566, at *2 (“the actual billing arrangement between counsel and client provides a strong

indication of what constitutes a reasonable fee”).

HarperCollins seeks the reimbursement of attorneys’ fees in the amount of

$1,089,371.50, which represents 70% of the total fees HarperCollins paid Weil, Gotshal &


22

Manges LLP (“Weil”) in connection with its work on this matter. Although HarperCollins

believes it is entitled to recover the total fees actually paid to its counsel in this action, in an

effort to be conservative in this submission, HarperCollins is requesting an award of only 70% of

that amount. Based on the nature and amount of the work performed, the fees actually billed to

and paid by HarperCollins (totaling $1,556,245.00), and Weil’s peer law firms’ rates in this

District, this fee request is reasonable.

The rates used to compute the requested fee award are based on amounts HarperCollins

actually paid, and they reflect the standard hourly rates that generally are charged to Weil’s fee-

paying clients. Specifically, the hourly rates charged to HarperCollins range from $1,175 per

hour (for R. Bruce Rich, a senior partner at Weil, head of the firm’s Intellectual Property &

Media Litigation practice group, and lead day-to-day partner on this case) to $265 per hour (for

Crystal Cromwell McCray, a senior paralegal at the firm). See Rich Decl. ¶¶ 29-36. These rates

appropriately reflect the experience, expertise, and skill of the Weil attorneys and staff involved

and are commensurate with the market rates charged by Weil’s peer firms in this District. Id. ¶

37; see also 2013 NLJ Billing Survey, NAT’L L.J. (Dec. 2013) (Rich Decl. Ex. M) (listing partner

billing rates in 2013 of up to $1,800 and associate billing rates of up to $975 in New York City).

After assessing reasonable rates, the Court then determines whether the hours billed to

the matter were reasonable in order to calculate the presumptively reasonable fee. Harrell, 2009

WL 3756327, at *6 (citing Arbor Hill, 522 F.3d at 189-90). In considering whether the hours

expended were reasonable, the inquiry is based “not . . . on what effort appears necessary in

hindsight, but rather on whether ‘at the time the work was performed, a reasonable attorney

would have engaged in similar time expenditures.’” Id. (quoting Grant v. Martinez, 973 F.2d 96,

99 (2d Cir. 1992)).


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The Rich Declaration accompanying this motion attaches contemporaneous time records

from the early assessment of HarperCollins’ claim in the summer of 2011 through the issuance

of the Court’s summary judgment ruling on March 17, 2014. Rich Decl. ¶ 2(b) & Ex. B.

HarperCollins’ time records specify, for each attorney, the date, the hours expended, and the

nature of the work done. See N.Y. State Ass’n for Retarded Children, Inc. v. Carey, 711 F.2d

1136, 1147-48 (2d Cir. 1983); Pannonia III, 2006 WL 2872566, at *2 (“In this Circuit, all fee

applications must be supported by contemporaneous records specifying by attorney, the date, the

hours expended and the nature of the work done.”).

The hours expended by Weil on this litigation are reasonable. HarperCollins engaged in

substantial discovery, including document productions, depositions, and the preparation and

analysis of expert reports; prepared letter briefs in connection with Open Road’s efforts to stay

and/or dismiss the case in favor of arbitration; prepared briefs in connection with cross-motions

for summary judgment; prepared letter briefs in connection with Open Road’s effort to introduce

new “evidence”; and prepared for oral argument on the motions for summary judgment. Rich

Decl. ¶¶ 18-22. All of these activities were necessary, particularly in view of Open Road’s

unnecessarily-complicating approach to the case. See id. ¶¶ 18, 20, 22.

IV. THE COURT SHOULD AWARD HARPERCOLLINS’ FULL COSTS

Under section 505 of the Copyright Act, as a prevailing party HarperCollins also is

entitled to its full costs. Section 505 “provides the court with explicit statutory authority to

award costs pursuant to a violation of the Copyright Act.” Barrera v. Brooklyn Music, Ltd., 346

F. Supp. 2d 400, 404 (S.D.N.Y. 2004). Under Fed. R. Civ. P. 54, costs are awardable to a

prevailing party as of course, and the losing party has the burden to show that costs should not be

imposed. Farberware Licensing Co. v. Meyer Mktg. Co., No. 09 Civ. 2570(HB), 2009 WL


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5173787, at *3 (S.D.N.Y. Dec. 30, 2009), aff’d 428 F. App’x 97 (2d Cir. 2011) (citations

omitted).

“[A]lthough the authority to award costs in [a copyright infringement] action is derived

from § 505,” Fed. R. Civ. P. 54 and 28 U.S.C. § 1920 “provide[] guidance as to the types of costs

deemed recoverable.” Barrera, 346 F. Supp. 2d at 405; see also Williams v. Crichton, 891 F.

Supp. 120, 121-22 (S.D.N.Y. 1994) (applying both 17 U.S.C. § 505 and Fed. R. Civ. P. 54 in

determining that prevailing party was entitled to recover certain costs). The costs recoverable

under Rule 54(d)(1) include: “(1) fees of the clerk and marshal; (2) fees for printed or

electronically recorded transcripts necessarily obtained for use in the case; (3) fees and

disbursements for printing and witnesses; (4) fees for exemplification and the costs of making

copies of any material where the copies are necessarily obtained for use in the case; [and] (5)

docket fees under 28 U.S.C. § 1923 . . . .” Syrnik v. Polones Constr. Corp., No. 11 Civ.

7754(KBF), 2012 WL 4122801, at *3 (S.D.N.Y. Sept. 19, 2012) (citing 28 U.S.C. § 1920;

Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy, 548 U.S. 291, 298 (2006)). Recoverable costs

also may include “reasonable out-of-pocket expenses incurred by attorneys and ordinarily

charged to their clients.” LeBlanc-Sterling v. Fletcher, 143 F.3d 748, 763 (2d Cir. 1998)

(quoting United States Football League v. Nat’l Football League, 887 F.2d 408, 416 (2d Cir.

1989)); see also Miltland Raleigh-Durham v. Myers, 840 F. Supp. 235, 239 (S.D.N.Y. 1993)

(“Attorneys may be compensated for reasonable out-of-pocket expenses incurred and

customarily charged to their clients, as long as they ‘were incidental and necessary to the

representation of those clients.’”).

As set out more fully in the accompanying Rich Declaration, HarperCollins seeks

recovery of its taxable costs in the amount of $7,040.62.


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CONCLUSION

For the foregoing reasons, HarperCollins respectfully requests that the Court: (1) enter a

permanent injunction in the form attached as Exhibit A to the Rich Declaration; (2) award

HarperCollins statutory damages in the amount of at least $30,000.00; and (3) award

HarperCollins reasonable attorneys’ fees in the amount of $1,089,371.50 and costs in the amount

of $7,040.62.

Dated: New York, New York May 23, 2013 Respectfully submitted,

WEIL, GOTSHAL & MANGES LLP

By: /s/ R. Bruce Rich R. Bruce Rich (RBR-0313) Jonathan Bloom (JB-7966) Sabrina A. Perelman (SP-2268) 767 Fifth AvenueNew York, New York 10153Tel: (212) 310-8000 Fax: (212) 310-8007

Attorneys for Plaintiff HarperCollins Publishers LLC


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