Bean v. John Wiley & Sons Incorporated

Filing 61

ORDER, granting in part and denying in part Defendant's 31 Motion to Dismiss; granting defendant's motion to dismiss plaintiff's claims for copyright infringement with respect to the images contained in the Corbis compilations; denying defendant's motion to dismiss plaintiff's claims for fraud. Signed by Judge Frederick J Martone on 8/3/11.(REW)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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Tom Bean,
Plaintiff,

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vs.

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John Wiley & Sons, Inc.,

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Defendant.

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No. CV 11-8028-PCT-FJM
ORDER

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We have before us defendant’s partial motion to dismiss (doc. 31), plaintiff’s response

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(doc. 37), and defendant’s reply (doc. 41). Defendant moves to dismiss plaintiff’s claims for

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fraud and some of his claims for copyright infringement.

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I

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Plaintiff is a professional photographer who resides in Flagstaff, AZ. Defendant is

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a New York corporation that publishes educational textbooks. Plaintiff sold defendant

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limited licenses to use a number of plaintiff’s photographs in several publications. The

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licenses were limited as to the number of copies published, the distribution area, language,

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duration, and form of media. Plaintiff alleges that defendant’s use of plaintiff’s photographs

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exceeded the use permitted by the terms of the licenses, or in some cases, used photographs

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without seeking any permission first. Plaintiff asserts claims for fraud and copyright

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infringement, in violation of 17 U.S.C. § 501, et seq. This action is one of four actions that

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plaintiff has brought against different publishers in this District. See Bean v. Houghton

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Mifflin Harcourt Publishing Co., et al., No. CV 07-8063; Bean v Houghton Mifflin Harcourt

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Publishing Co., No. CV 10-8034; and Bean v. Pearson Education Inc., No. CV 11-8030.
II

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Defendant argues that plaintiff has failed to plead fraud with particularity as required

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by Rule 9(b), Fed. R. Civ. P. “In alleging fraud or mistake, a party must state with

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particularity the circumstances constituting fraud or mistake.” Fed. R. Civ. P. 9(b). To avoid

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dismissal, a claim for fraud must state “the time, place, and specific content of the false

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representations as well as the identities of the parties to the misrepresentation.” Sanford v.

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MemberWorks, Inc., 625 F.3d 550, 558 (9th Cir. 2010) (quoting Edwards v. Marin Park,

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Inc., 356 F.3d 1058, 1066 (9th Cir. 2004)). Defendant argues that plaintiff’s allegations are

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insufficient because he has failed to identify specific statements that are

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“misrepresentations.”

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Plaintiff argues that his fraud claims are limited to the photographs identified in the

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solicitation letters from defendant that are attached to plaintiff’s complaint. See Complaint,

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ex. C, “Solicitation Letters” (doc. 1-3). Plaintiff contends that these letters provide the “who,

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what, when, and where” of the misrepresentations. The letters contain information about the

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photographs requested and the print runs for the publications, or in some cases, estimated

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print runs. Plaintiff alleges that defendant represented that the photographs would not exceed

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the limitations stated in the solicitation letters, and then points to the attached letters as

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“examples” that set forth the details of the misrepresentations. Complaint, ¶ 9. Plaintiff later

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states in his complaint that defendant’s acts “constitute common-law fraud with respect to

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the photographs identified in Exhibit C.” Complaint, ¶ 22.

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We conclude that for the photographs listed in the solicitation letters, plaintiff has

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adequately stated a claim for fraud. Each letter provides the time, place, and content of the

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misrepresentation, and the identity of the parties to the misrepresentation. “Reading these

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letters in the light most favorable to [plaintiff], these statements could be construed as

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representations that [defendant] would not exceed the licenses by printing more than” the

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stated number of copies. Wood v. Houghton Mifflin Harcourt Pub. Co., 569 F. Supp. 2d
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1135, 1140 (D. Colo. 2008).

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However, plaintiff has not adequately pled a claim for fraud in relation to all

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photographs for which he has not provided solicitation letters. Plaintiff recognizes as much

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by clarifying that he brings his fraud count only with respect to the photographs identified

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in the solicitation letters. Complaint, ¶ 22. As plaintiff realizes, the general allegations in

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his complaint are insufficient under Rule 9(b) to support a fraud claim for the other

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photographs identified in Exhibits A and B. Accordingly, we accept plaintiff’s assertion that

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he has not brought claims for fraud with respect to the photographs not identified in Exhibit

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C.

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Defendant also argues that all the fraud claims should be dismissed because plaintiff

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has not stated the factual basis for his allegation that defendant knew its actual uses would

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exceed the permission requested and that defendant intended to obtain access at a lower cost.

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We conclude that plaintiff’s allegations are adequate because under Rule 9(b), Fed. R. Civ.

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P., knowledge and intent may be alleged generally. The only aspects of fraud “that require

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particularized allegations are the factual circumstances of the fraud itself.” Sanford v.

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MemberWorks, Inc., 625 F.3d 550, 558 (9th Cir. 2010); see also Flowers v. Carville, 310

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F.3d 1118, 1131 (9th Cir. 2002) (“That she averred the required state of mind generally,

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without alleging corroborating evidence, does not defeat her complaint.”). Plaintiff alleges

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that at the time defendant solicited the licences, it knew its use would exceed the permission

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requested and that it intended by its misrepresentation to obtain access at a lower cost than

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it would have paid had defendant been honest about its intended usage. Complaint, ¶¶

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10–11. These allegations are sufficient at the pleading stage.

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Defendant also argues that the fraud claims fail because the allegedly false

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representations did not relate to an existing fact or past event. A claim for fraud generally

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cannot lie where the allegedly false or misleading representation relates to future prospects

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or performance. See Dawson v. Withycombe, 216 Ariz. 84, 96, 163 P.3d 1034, 1046 (Ct.

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App. 2007) (citing Law v. Sidney, 47 Ariz. 1, 4–5, 53 P.2d 64, 66–67 (1936)). However, a

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forward-looking statement may be actionable where defendant made the statement with
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actual knowledge that the prediction will not be met. Id. Plaintiff alleges that defendant

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knew at the time it made the requests that its use would exceed the permission it requested.

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Complaint, ¶ 10. Plaintiff has sufficiently alleged that defendant made forward looking

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predictions about print runs with actual knowledge that they would be incorrect

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Defendant argues that plaintiff cannot state a claim for fraudulent concealment

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because defendant did not owe plaintiff a duty. Motion to Dismiss at 11. However, plaintiff

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states that he has not asserted a claim for fraudulent concealment. Response at 7. We

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therefore do not address this argument.

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We therefore deny defendant’s motion to dismiss the fraud claims as to the

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photographs identified in Exhibit C of plaintiff’s complaint. The motion is moot as to the

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other photographs because plaintiff does not assert fraud claims related to them.

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III

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Defendant argues that plaintiff’s claims for copyright infringement of certain

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photographs fail because the photographs were never properly registered. Plaintiff may not

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bring an action for infringement until he has registered or preregistered the work. 17 U.S.C.

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§ 411(a). According to defendants, Corbis Corporation, a stock photo agency, filed certain

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of plaintiff’s copyright registrations. In a separate action, this Court has already found those

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registrations to be invalid because Corbis did not comply with the registration requirements

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of 17 U.S.C. § 409. See Bean v. Houghton Mifflin Harcourt Publishing Co., No. CV 10-

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8034, 2010 WL 3168624 (D. Ariz. Aug. 10, 2010). The Court concluded that Corbis’s

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registration of six compilations containing thousands of photographs by different authors was

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not effective in registering the individual works in the compilations to the individual authors.

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Corbis failed to provide the titles of the individual photographs, the names of the all of the

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authors, and the connection between individual author and photograph. Because Corbis did

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not comply with the registration requirements of 17 U.S.C. § 409, plaintiff’s claims for

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infringement failed as a matter of law. Additionally, in a separate action in this District, the

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Court adopted the ruling in Bean v. Houghton Mifflin and concluded that with respect to the

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images in the six compilations, plaintiff failed to allege that the images are properly
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registered. Bean v. Pearson Educ., Inc., No. CV 11-8030 (D. Ariz. May 17, 2011). See also

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Muench Photography, Inc. v. Houghton Mifflin Harcourt Publishing Co., 712 F. Supp. 2d

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84, 95 (S.D.N.Y 2010) (registration of compilation by Corbis that did not include names of

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all authors did not effectively register the individual images). We also adopt the ruling that

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this Court has now made twice. Because the registrations are invalid, plaintiff cannot allege

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registration of the copyrights for the images in the six compilations, and therefore plaintiff

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cannot state a claim for infringement with respect to those photographs.
IV

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IT IS ORDERED GRANTING IN PAR T AND DENYING IN PART defendant’s

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motion to dismiss (doc. 31).
IT IS ORDERED GRANTING defendant’s motion to dismiss plaintiff’s claims for

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copyright infringement with respect to the images contained in the Corbis compilations.
IT IS ORDERED DENYING defendant’s motion to dismiss plaintiff’s claims for

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fraud.
DATED this 3rd day of August, 2011.

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