Jose Luis Pelaez Inc. v. McGraw-Hill Global Education Holdings LLC et al

Filing 192

OPINION AND ORDER re: 120 SECOND MOTION for Partial Summary Judgment filed by Jose Luis Pelaez Inc., Jose Pelaez, 148 MOTION for Summary Judgment filed by McGraw-Hill School Education Holdings, LLC, McGraw-Hill Gl obal Education Holdings LLC. McGraw-Hill's motion for summary judgment is DENIED insofar as it contends that (1) it is entitled to summary judgment on all of Pelaez's claims because Pelaez cannot show that it violated a condition of its lic enses; and (2) that the Corbis Registrations are invalid. McGraw-Hill's motion for summary judgment is GRANTED insofar as it contends that (1) Pelaez may not seek statutory damages for the claims listed in paragraph 20 of Pelaez's 56.1 Res ponse, with the exception of the claims listed in Rows 341 and 473 of Exhibit 1 to the TAC; and (2) Pelaez may not recover damages- actual or statutory-for the ninety-four claims in the TAC that are based on conduct which occurred entirely prior to July 6, 2013. Pelaez's motion for summary judgment on the 129 claims listed in Exhibit 1 to the Kerr Declaration is GRANTED as to McGraw-Hill's liability on these claims; however, because of the Court's rulings regarding damages, Pelaez will not be able to recover statutory and/or actual damages on all of these claims. Pelaez's motion for summary judgment on the issue of willfulness is DENIED. The Court has attached, as an appendix to this Opinion and Order, a chart su mmarizing its rulings as applied to each of Pelaez's claims. By August 9, 2019, the parties are directed to submit to the Court a joint letter indicating (1) the steps, if any, that must be taken before this case is Ready for Trial; (2) whether they wish to be referred to mediation; and (3) whether they consent to trial of this case before a Magistrate Judge. By August 23, 2019, the parties must submit to the Court a joint pretrial order. The joint pretrial order must comply with this Court 's Individual Rules, which are available at http: //nysd.uscourts.gov/judge/Wood. On that same date, this case will be deemed Ready for Trial. The Clerk of Court is respectfully directed to terminate the motions at ECF Nos. 120 and 148. SO ORDERED. (Pretrial Order due by 8/23/2019.) (Signed by Judge Kimba M. Wood on 8/2/2019) (ne)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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JOSE LUIS PELAEZ, INC. AND JOSE
PELAEZ,

SDNY DOCUMENT
ELECTRONICALLY FILED
DOC#: - - - - ~ -~ DATE FILED:
~ /-;;._ / /
I

9'

Plaintiffs,
-against-

16-cv-5393 (KMW)

MCGRAW-HILL GLOBAL EDUCATION
HOLDINGS LLC AND MCGRAW-HILL
SCHOOL EDUCATION HOLDINGS LLC,

OPINION & ORDER

Defendants.

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KIMBA M. WOOD, United States District Judge:
Plaintiffs Jose Luis Pelaez, Inc. and Jose Pelaez (collectively, "Pelaez") bring this action
for copyright infringement against Defendants McGraw-Hill Global Education Holdings LLC
and McGraw-Hill School Education Holdings LLC (collectively, "McGraw-Hill"). McGrawHill moves for summary judgment on all of Pelaez's claims. Pelaez moves for summary
judgment on 129 of his 573 infringement claims and requests a ruling that the infringement he
alleges was willful. For the reasons below, both parties' motions are GRANTED in part and
DENIED in part.
BACKGROUND
I.

Factual Background

The following facts are not genuinely disputed unless otherwise noted.
Jose Pelaez is a commercial photographer and president and sole owner of Jose Luis
Pelaez Inc., a corporation organized under New York law. (Pls. ' Resp. to Defs.' Statement of
Undisputed Material Facts ("Pelaez 56.1 Response"), ECF No. 155, ,i 3.) McGraw-Hill is a
publisher of textbooks and educational products. (Id. ,i 1.)

Beginning in 1990, Pelaez vnt,r,d into representation agreements with non-parties Corbis

and its predecessor-in-interest The Stock Market (collectively, "Corbis"), authorizing Corbis to
sub-license Pelaez's photographs on his behalf. (Defs.' Resp. to Am. Statement of Undisputed
Material Facts ("McGraw-Hill's 56.1 Resp.")~ 8, ECF No. 132.) The agreements authorized
Corbis to issue limited licenses for the use of Pelaez's images by third parties in exchange for
reasonable license fees. (Id.

~

9.)

During the time period relevant to this suit, Corbis and McGraw-Hill entered into a series
of preferred pricing agreements (collectively, the "PP As"), including:
•
•
•
•
•

An agreement entitled "Textbook rates Glencoe valid through 5-1-2001," effective
as of June 29, 2000 (the "2000 PPA");
An agreement entitled "Special Volume-Based Pricing Agreement," effective as
of January 1, 2003 (the "2003 PPA");
An agreement entitled "Special Volume-Based Pricing Agreement," effective as
of May 1, 2006 (the "2006 PP A");
An agreement entitled "Preferred Pricing Agreement" effective as of February 27,
2009 (the "2009 PP A"); and
An agreement entitled "Preferred Pricing Agreement," effective as of April 1,
2014 (the "2014 PPA").

(Pelaez's Counterresp. to Defs.' Counterstatement of Additional Material Facts ("Pelaez 56.1
Counterresp.")

~~

69, 116, ECF No. 143.) The PPAs set varying fees for different tiers of

anticipated use, typically based on ranges of estimated print runs. (Id.

~

113 .)

Initially, Corbis provided Pelaez's photographs to McGraw-Hill in collections of slide
transparencies or online image collections from which McGraw-Hill could review and select
photographs. (Id.

~~

71-72.) Beginning by at least 2004, however, McGraw-Hill had access to

high-resolution versions of Pelaez's photographs suitable for printing. (Id.)
In the event McGraw-Hill decided to use a photograph from Corbis's collection in one of
its textbooks, McGraw-Hill would request an invoice from Corbis. (Id.) The request provided
Corbis with information regarding the anticipated print run, geographic distribution, language(s),

2

and format(s) of the textbook that was expected to contain the selected photograph. (Id.)
The invoices issued by Corbis generally set forth the "rights" granted to McGraw-Hill
(e.g. , "[o]ne time non-exclusive, North America, English") the "usage" (e.g. , "Books: Text,

Trade Reference"), the "distribution quantity" (e.g., 45 ,000), the license's start date, and the
license' s expiration date. (See Kerr Deel., Ex. 65, ECF No. 123.) Generally, McGraw-Hill
requested an invoice from Corbis prior to publication of the textbook expected to contain the
photograph. (Pelaez 56.1 Counterresp. ,r 81.) However, if McGraw-Hill did not request an
invoice prior to publication, Corbis would later issue a "back-dated" invoice acknowledging
rights beginning prior to the invoice date. (Id.

,r 82.)

Pelaez contends that, from 1992 through 2017, McGraw-Hill repeatedly exceeded the
limitations contained on the invoices issued by Corbis, thereby infringing his copyrights. (Id.

,r 10.)

The photographs on which Pelaez' s claims are based are included in Exhibits 1, 2 and 3 to

the Third Amended Complaint ("TAC"). (ECF No. 117.) With respect to the photographs
contained in Exhibits 1 and 2 to the TAC, Pelaez alleges that McGraw-Hill exceeded the
limitations on the licenses it was granted by (1) printing or distributing more copies of the
photographs than authorized; (2) distributing publications containing the photographs outside the
authorized distribution area; (3) publishing the photographs in electronic, ancillary, or derivative
publications without permission; (4) publishing the photographs in international editions and
foreign publications without permission; and (5) publishing the photographs beyond the specified
time limits. (Id.

,r 15.)

With respect to the photographs in Exhibit 3, Pelaez alleges that

McGraw-Hill never obtained a license to use those photographs, and thus that each use of those
photographs by McGraw-Hill constituted copyright infringement. (Id.

,r 16.)

The core of the parties' disagreement is what significance should be ascribed to the
lnvolces exchanged betwMi\ Corbig

and McGraw• Hill, the PPAB, and th, cou.r~e of conduct
3

between McGraw-Hill and Corbis. According to Pelaez, McGraw-Hill's authorization to use
Pelaez's photographs was limited by the terms included in the invoices. According to McGrawHill, the invoices did not control the scope of its license to use a given photograph; rather, they at
most provided estimates of McGraw-Hill's anticipated use of a photograph and the applicable
billing level for such use.

II.

Procedural Background

Pelaez filed the initial complaint in this suit on July 6, 2016. (ECF No. 1.) He filed an
amended complaint on September 22, 2016 and subsequently filed a second amended complaint
on February 3, 2017. (ECF Nos. 22, 35.)
On June 23, 2017, both parties moved for partial summary judgment. (ECF Nos. 57, 64.)
On February 26, 2018, Pelaez was granted leave to file a further amended complaint.
(ECF No. 111.)
On March 8, 2018, Pelaez filed the TAC. (ECF No. 117.)
On March 12, 2018, Pelaez moved for partial summary judgment on 129 of his copyright
infringement claims alleged in the TAC. (ECF No . 120.)
On March 14, 2018, McGraw-Hill answered the TAC. (ECF No . 129.)
On March 26, 2018, McGraw-Hill filed its memorandum in opposition to Pelaez' s
motion. (Mem. Law Opp'n Pls.' Mot. Partial Summ. J. ("McGraw-Hill Opp'n"), ECF No. 131.)
On April 2, 2018, Pelaez filed his reply. (Pls.' Reply Mem. Supp. Mot. Summ. J. ("Pelaez
Reply"), ECF No. 142.)
On April 10, 2018, McGraw-Hill moved for summary judgment on all of Pelaez's claims
and filed a memorandum in support of its motion. (Mem. Law. Supp. Defs.' Mot. Summ. J.
("McGraw-Hill Mem."), ECF No. 149.) On April 24, 2018, Pelaez filed his memorandum in

op~Mition to McGrnw-Hill'~ motion. (Mem. Law Opp'n D~fa.' Mot. Summ. J. ("Pelaez
4

Opp'n"), ECF No. 154.) On May 1, 2018, McGraw-Hill filed its reply. (Reply in Further Supp.
Defs.' Mot. Summ. J. ("McGraw-Hill Reply"), ECF No. 157.)
Pelaez subsequently filed five letters providing supplemental authority in support of his
motion for partial summary judgment and in opposition to McGraw-Hill's motion for summary
judgment. (ECF Nos. 175-78; ECF Nos. 187-88.) McGraw-Hill filed one letter providing
supplemental authority in support of its motion for summary judgment and in opposition to
Pelaez's motion for partial summary judgment. (ECF No. 179.)

LEGAL STANDARDS
"Summary judgment is proper only when, construing the evidence in the light most
favorable to the non-movant, 'there is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter oflaw."' Viacom Int '!, Inc. v. YouTube, Inc., 676 F.3d 19, 30
(2d Cir. 2012) (quoting Fed. R. Civ. P. 56(a)). "When both sides have moved for summary
judgment, ' each party's motion must be examined on its own merits, and in each case all
reasonable inferences must be drawn against the party whose motion is under consideration. "'

Lyons v. Lancer Ins. Co., 681 F .3d 50, 57 (2d Cir. 2012) (quoting Law Debenture Tr. Co. ofN. Y
v. Maverick Tube Corp., 595 F.3d 458,468 (2d Cir. 2010)).
"The moving party bears the initial burden of showing that there is no genuine dispute as
to a material fact." Jaffer v. Hirji, 887 F.3d 111, 114 (2d Cir. 2018) (quoting CILP Assocs., L.P.

v. Price Waterhouse Coopers LLP, 735 F.3d 114, 123 (2d Cir. 2013)). "But where 'the burden of
proof at trial would fall on the nonmoving party,' the moving party can shift the initial burden by
' point[ing] to a lack of evidence to go to the trier of fact on an essential element of the
nonmovant's claim. "' Id. (alteration in Jaffer) (quoting Simsbury-Avon Pres. Soc '.Y, LLC v.

Metacon Gun Club, Inc., 575 F.3d 199, 204 (2d Cir. 2009)). It follows that, where a plaintiff's
motion for summary judgru.~11t would be meritoriou~
5

absent the assertion of an affirrmitiY~

defense, in order to avoid summary judgment, the defendant "must adduce evidence which,
viewed in the light most favorable to and drawing all reasonable inferences in favor of [it], would
permit judgment for [it] on the basis of that defense." Frankel v. JCD Holdings SA., 930 F.
Supp. 54, 65 (S.D.N.Y. 1996) (Kaplan, J.).
"In ruling on a motion for summary judgment, the district court may rely on 'any material
that would be admissible' at a trial." Lyons, 681 F.3d at 57 (quoting Major League Baseball

Props., Inc. v. Salvino, Inc., 542 F.3d 290, 309 (2d Cir. 2008)). The court "may not properly
focus on individual strands of evidence and consider the record in piecemeal fashion; rather, it
must consider all of the evidence in the record, reviewing the record taken as a whole." Id.
(internal citations and quotation marks omitted).

DISCUSSION
The Copyright Act gives copyright holders several "exclusive rights," including the right
"to reproduce the copyrighted work" or to authorize others to do so. 17 U.S.C. § 106. "Anyone
who violates any of the exclusive rights of the copyright owner ... is an infringer of the
copyright, or right of the author, as the case may be." Id. § 501(a). A copyright owner who
claims infringement must demonstrate "both ( 1) ownership of a valid copyright and
(2) infringement of the copyright by the defendant." Spinelli v. Nat'! Football League, 903 F.3d
185, 197 (2d Cir. 2018) (quoting Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109 (2d Cir.
2001)).
Ownership of a valid license to use the copyrighted work is generally a defense to
copyright infringement. See id. at 197 ("A valid license to use the copyrighted work 'immunizes
the licensee from a charge of copyright infringement, provided that the licensee uses the
copyright as agreed with the licensor."' (quoting Davis v. Blige, 505 F.3d 90, 100 (2d Cir.

200?))).

However,

a M~yright owner may bring a claim for infringement i.lg~inst a licensee of
6

his or her work where: "(l) the licensee's alleged infringement is outside the scope of the license;
(2) the licensee failed to satisfy a condition precedent to the license, such that the license is
invalid; or (3) the licensor rescinded the license after the licensee materially breached one of its
covenants." PaySys Int'!, Inc. v. Atos Se, Worldline SA, Atos IT Servs. Ltd., 226 F. Supp. 3d 206,
215 (S.D.N.Y. 2016) (Forrest, J.) (citing Graham v. James, 144 F.3d 229, 235-38 (2d Cir.
1998)).
"The existence of a license is an affirmative defense, placing upon the party claiming a
license' the burden of coming forward with evidence' of one." Spinelli, 903 F.3d at 197 (quoting

Bourne v. Walt Disney Co., 68 F.3d 621,631 (2d Cir. 1995)). "By contrast, '[w]here only the
scope of the license is at issue,' it is the copyright owner's burden to show that the defendant's
use of a work was unauthorized." Id. (quoting Bourne, 68 F.3d at 631).
III.

McGraw-Hill's Motion

McGraw-Hill moves for summary judgment on all of Pelaez's claims. In support of its
motion, McGraw-Hill argues principally that the conduct Pelaez complains of constitutes, at
most, a breach of the licensing agreements it entered into with Corbis and therefore cannot also
constitute copyright infringement. In the alternative, McGraw-Hill argues that (1) with respect to
477 of his 573 claims, Pelaez is not eligible for statutory damages because he has not provided
any evidence of when McGraw-Hill's alleged infringement began; (2) with respect to the
remaining ninety-six claims, Pelaez has failed to demonstrate valid registrations, a prerequisite to
liability for copyright infringement; and (3) under Petrella v. Metro-Goldwyn-Meyer, Inc., 572
U.S. 663 (2014), Pelaez may not obtain retrospective relief based on conduct that occurred more
than three years before the filing of his initial complaint in this suit.
A. License Terms

As a threshold matter, McGrnw-Hill contends that to properly claim copyright
7

infringement, Pelaez must show that McGraw-Hill violated a condition precedent to the licenses
granted to it by Corbis. Absent such a showing, argues McGraw-Hill, the only potential claim
based on its conduct is for breach of contract. (McGraw-Hill Mem. 15.)
McGraw-Hill is incorrect. Its argument improperly conflates an infringement claim based
on the violation of a license condition with an infringement claim based on use that exceeds the
scope of a license. Pelaez alleges the latter, not the former.
The agreements entered into by McGraw-Hill and Corbis restricted the scope of the
licenses granted to McGraw-Hill by limiting, among other things, the number of copies McGrawHill was authorized to make and the time period in which it could make those copies. To the
extent McGraw-Hill exceeded these limitations and thereby violated a right granted to Pelaez
under the copyright laws, Pelaez properly claims infringement. See Kamakazi Music Corp. v.
Robbins Music Corp., 684 F.2d 228, 230 (2d Cir. 1982) (holding that, where a license to use a

copyrighted work was limited in duration, unauthorized copying after the licensing agreement
expired constituted infringement); Palmer/Kane LLC v. Rosen Book Works LLC, 204 F. Supp.
3d 565, 576-80 (S.D.N.Y. 2016) (Rak.off, J.) (holding that, where a licensing agreement
authorized the use of a copyrighted work only for a specified time period, use that occurred prior
to or after that time period was infringing); John Wiley & Sons, Inc. v. DRK Photo, 998 F. Supp.
2d 262, 287-88 (S.D.N.Y. 2014) (Failla, J.) (holding that, where agreement authorized licensee
to print up to 30,000 copies, licensee exceeded the "scope" of the license by printing 40,000
copies); Harris v. Simon & Schuster, Inc., 646 F. Supp. 2d 622,631 (S.D.N.Y. 2009) (Sweet, J.)
("[I]nsofar as [plaintiff] alleges that [defendant] exceeded the scope of its [l]icenses by
publishing the [w]ork in states other than those identified [in the licenses], he states a valid claim
for copyright infringement."); SimplexGrinnell LP v. Integrated Sys. & Power, Inc., 642 F. Supp.

2d 167, 191 (S.D.N.Y. 2009) (Lynch, J.), modified on other grounds on rccamtderatian, 64~ f,
8

Supp. 2d 206 (S.D.N.Y. 2009) (holding that, where contract granted right to use copyright work
for licensee's "existing customer base," using the copyrighted work for new customers
constituted copyright infringement).

Graham v. James, 144 F.3d 229, the sole controlling authority relied on by McGraw-Hill
in support of its argument concerning conditions, is not to the contrary. The licensing agreement
at issue in Graham authorized the licensee to sell the copyright owner' s work, without limitation,
in exchange for the licensee' s promises to pay royalties for each copy sold. Id. at 233-34. When
the licensee failed to make the payments as promised, the copyright owner sued for infringement.

See id. The Second Circuit held that the publisher's promise to pay royalties was a covenant,
rather than a condition, of the license. Thus, the publisher' s breach of that promise, without
more, did not void the license. Because the publisher had a valid license to make and sell the
copies at issue, no infringement had occurred, notwithstanding the publisher's breach of the
contract. See id. at 237- 38.
Unlike the copyright owner in Graham, Pelaez does not base his infringement claim on
nonpayment of royalties. Rather, Pelaez contends that the licenses conveyed by Corbis were
limited in scope; that McGraw-Hill exceeded the limitations imposed by the license; and that, in
doing so, McGraw-Hill violated Pelaez's exclusive rights under the copyright laws. Where, as
here, a copyright owner claims that a defendant "acted outside the scope of its license, [he or she]
properly claim[ s] copyright infringement, not breach of contract." Spinelli, 903 F .3d at 202; see

also Universal Instruments Corp. v. Micro Sys. Eng 'g, Inc., 924 F.3d 32, 44 (2d Cir. 2019)
(" [B]ecause copyright licenses prohibit any use not authorized, a licensee infringes the owner's
copyright if its use exceeds the scope of its license."). This type of claim does not require the
court to consider whether a particular contract term was a condition or a covenant.
Although this conclusi6tt. i~

~u~~orted hy the weight of Second Circuit zmthority, it
9

nevertheless conflicts with two recent decisions from this district. See Muench Photography, Inc.

v. McGraw-Hill Glob. Educ. Holdings, LLC, No. 12-CV-6595 (LAP), 2019 WL 1302789
(S.D.N.Y. Feb. 4, 2019) (Preska, J.); Sohm v. Scholastic Inc., No. 16-CV-7098 (JPO), 2018 WL
1605214 (S.D.N .Y. Mar. 29, 2018) (Oetken, J.). 1 Both decisions held that "[w]hether a licensee
has acted outside the scope of the license depends on whether the terms of the license were
covenants or conditions." Sohm, 2018 WL 1605214, at * 12 (quoting BroadVision, Inc. v. Med.

Protective Co., No. 08-CV-1478 (WHP), 2010 WL 5158129, at *3 (S.D.N.Y. Nov. 23, 2010)
(Pauley, J.)); see also Muench, 2019 WL 1302789, at *6. Applying this rule, both decisions
concluded that where a license limits the number of copies of a photograph which may be made,
such limitations are "best characterized as covenants, rather than conditions[,]" and thus no claim
lies in copyright if a defendant exceeds those limitations. Sohm, 2018 WL 1605214, at * 13; see

also Muench, 2019 WL 1302789, at *5.
The Court declines to follow Sohm and Muench in this respect. Both decisions rely
primarily on BroadVision for the rule that whether a defendant's conduct exceeds the scope of a
license depends on whether such conduct breaches a condition of the license. But BroadVision
did not involve a restricted license. Rather, the licensing agreement at issue in BroadVision
permitted unlimited use of the copyrighted work so long as payment for that use was made. See
2010 WL 5158129, at *2. In that respect, BroadVision's facts were analogous to Graham'sthat is, the core of the parties' dispute was the alleged failure to pay monies due under a contract.
The present case is distinguishable because Pelaez alleges that the licenses that authorized
McGraw-Hill to copy his work were limited in scope, not simply that McGraw-Hill did not pay

1

In its Reply, McGraw-Hill also relies on Tangorre v. Mako's, Inc., No. 0l-CV-4430 (BSJ) (DF), 2003 WL 470577,
at *10 (S.D.N.Y. Jan. 6, 2003) (Freeman, M.J.). Because the plaintiff in Tangorre did not contend that the
defendant had exceeded the scope of its license, the analysls ln Tangorre ;s not persuas;ve he¥e.

10

money it owed to Corbis under the licensing agreements.
To the extent McGraw-Hill contends that its overuse was within the scope of the license
because of what the parties refer to as the "ten-times payment clause," (McGraw-Hill Mem. 14),
the Court disagrees. Under that provision, "in the event of unauthorized use," Corbis was
entitled to bill McGraw-Hill "ten (10) times the normal license fee for any unauthorized use, or
any other fees , damages, or penalties Corbis may be entitled to under this Agreement or
applicable law." (2003 PPA, at 6; see also 2006 PPA, at 7.) The provision also states that
" [u]nauthorized use of these Images constitutes copyright infringement," and that " [t]he
foregoing is not a limiting statement of Corbis' rights or remedies in connection with any
unauthorized use. " (2003 PPA, at 6; see also 2006 PPA, at 7.) The existence of a potential
contractual remedy, enforceable by Corbis, does not negate the express limitations imposed on
the licenses granted to McGraw-Hill.
For the reasons above, McGraw-Hill' s motion for summary judgment is DENIED to the
extent it relies on the argument that, to prove infringement, Pelaez must show that the limitations
on the licenses were conditions rather than covenants.
B. Statutory Damages

McGraw-Hill next moves for summary judgment on the issue of Pelaez' s eligibility for
statutory damages.
A copyright infringer "is liable for either- (1) the copyright owner's actual damages and
any additional profits of the infringer, ... ; or (2) statutory damages." 17 U.S.C. § 504(a). "The
copyright owner is entitled to recover the actual damages suffered by him or her as a result of the
infringement, and any profits of the infringer that are attributable to the infringement," id.
§ 504(b ), but "may elect, at any time before final judgment is rendered, to recover, instead of

actual dmrrnges and profits, an award of statutory damageB," td. § 504(c)(1 ),
11

Under 17 U.S.C. § 412, to be eligible for an award of statutory damages, a copyright
owner must have registered his work prior to the date on which infringement commenced.
"Statutory damages may not be awarded even if infringement, commenced before registration,
continues after [the effective date of] registration." Ushodaya Enters., Ltd. v. VR.S. Int'!, Inc.,
64 F. Supp. 2d 352, 353 (S.D.N.Y. 1999) (Cedarbaum, J.), ajf'd, 2 F. App'x 128 (2d Cir. 2001).
McGraw-Hill argues that, with respect to 477 of his 573 claims, Pelaez has failed to
identify when McGraw-Hill's alleged infringement "commenced" and therefore cannot carry his
burden to show his entitlement to statutory damages. (McGraw-Hill Mem. 16.) Pelaez
acknowledges he will bear the burden of proving statutory damages at trial, but nevertheless
contends that McGraw-Hill is not entitled to summary judgment unless it comes forward with
evidence demonstrating that the infringements did not occur prior to the registration of the
photographs' copyrights. (Pelaez Opp'n 10.)
Pelaez is incorrect. "A defendant does not have to introduce evidence that would negate
the possibility of damages in order to move for summary judgment." Vaughn v. Consumer Home

Mortg. Co., 297 F. App'x 23, 27 (2d Cir. 2008). "When the burden of proof at trial would fall on
the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go
to the trier of fact on an essential element of the nonmovant's claim." Simsbury-Avon Pres.

Soc '.Y, 575 F.3d at 204 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)). "In that
event, the nonmoving party must come forward with admissible evidence sufficient to raise a
genuine issue of fact for trial in order to avoid summary judgment." Id. (citing Celotex, 477 U.S.
at 322- 23).
These standards "appl[y] to damages the same as [they] appl[y] to liability." Seoul

Broad. Sys. Int '!, Inc. v. Sang, 754 F. Supp. 2d 562, 567 (E.D.N.Y. 2010). Although, as Pelaez

points out, 17 U.S.C. § 504 permits a copyright owner to elect to recover Btatutory dam~g~s in
12

lieu of actual damages "at any time before final judgment," this does not bar McGraw-Hill from
litigating Pelaez's entitlement to statutory damages at the summary judgment stage. See, e.g. ,
Papazian v. Sony Music Entm 't, No. 16-CV-07911 (RJS), 2017 WL 4339662, at *6 (S.D.N.Y.

Sept. 28, 2017) (Sullivan, J.) (holding that defendant was entitled to summary judgment where
"plaintiff provide[d] absolutely no evidence ' from which a reasonable inference in [his] favor
may be drawn"' on the issue of his entitlement to statutory damages, (quoting Binder & Binder
PC v. Barnhart, 481 F.3d 141, 148 (2d Cir. 2007))); Granger v. Gill Abstract Corp., 566 F. Supp.

2d 323, 326 (S.D.N.Y. 2008) (Castel, J.) (granting defendants ' motion for summary judgment "to
the extent that plaintiff may not recover statutory damages").
McGraw-Hill has "point[ ed] to a lack of evidence" regarding Pelaez' s eligibility for
statutory damages. In response, Pelaez has not come forward with any evidence. Instead, Pelaez
contends only that "there is not sufficient evidence in the record to determine whether [the]
infringements occurred before the applicable registrations were issued." 2 (Pelaez Opp' n 10-11.)
This assertion is not sufficient to raise a genuine issue of fact for trial.
For the foregoing reasons, summary judgment is GRANTED in favor of McGraw-Hill to
the extent that Pelaez may not seek statutory damages for the claims listed in paragraph 20 of
Pelaez' s 56.1 Response, with the exception of the claims described in Rows 341 and 4 73 of
Exhibit 1 to the TAC.3 As to the latter two claims, summary judgment is DENIED because

2

Although Pelaez states that he sent corrected damages disclosures to McGraw-Hill on April 23 , 2018, and that
these corrected disclosures identified damages for certain additional rows, see Pelaez Counterresp. 'I[ 19, Pelaez
does not explain how this should affect the Court's analysis.
3 Specifically, Pelaez may not seek statutory damages for the following claims : (a) TAC, Ex. 1, Rows 1, 2, 3, 4, 5,
6, 7, 8, 9, 10, 11 , 12, 13 , 14, 15 , 16, 17, 18, 19, 20,21 , 22,23 , 24, 25, 26, 27, 28, 29, 30, 31 , 32,33,34,3 5, 36, 37,
38,39, 40, 41 , 42, 43 , 44, 45, 46, 47, 48, 49, 50,51 , 52, 53 , 54, 55 , 56,57,58, 59,60,61 , 62, 64, 66, 67, 68, 69,
70, 71 , 72, 73 , 75 , 76, 78, 79, 80, 81 , 82, 83 , 84, 85 , 86, 87,88, 89, 90, 91 , 92, 93 , 95,96,97, 98,99, 100, 101 ,
102, 103, 104, 106, 107, 108, 109, 110, 111 , 112, 113, 114,115, 116, 117, 118, 119,120, 121 , 122, 123, 124, 125,
126, 127, 128, 130, 131, 132, 133, 134, 135, 136, 137, 138, 139, 140, 142, 143, 145, 147, 148, 149, 150, 151, 153,
154, 155, 156, 158, 159, 160, 162, 163, 164, 165, 166, 167, 171 , 172, 173, 174, 176, 177, 178, 179, 180, 181 , 182,
184, 185, 186, 187, 189, 190, 191, 193, 194, 195, 196, 197, 198, 199,200, 201 , 202, 203,204, 205 , 206,207, 208,
209, 210, 211,212, 213 , 214, 215, 216, 217, ~18, ~19, ~~0, 222, 221,224, 225, 227,22&, 229, 230, 231 , 232, 233 ,

13

Pelaez did, in fact, provide information regarding his eligibility for statutory damages in
connection with those two claims.

C. Registration
McGraw-Hill next argues that the copyright registrations applicable to Pelaez' s remaining
ninety-seven claims (the "Corbis Registrations") are invalid for failure to comply with 17 U.S .C.
§ 409, and therefore those claims must be dismissed.
Under 17 U.S.C. § 41 l(a), "no civil action for infringement ... shall be instituted until
. . . registration of the copyright claim has been made in accordance with [the Act] ." Section
411 ' s registration requirement is a "precondition to filing a claim." Reed Elsevier, Inc. v.

Muchnick, 559 U.S . 154, 166 (2010). For this reason, " [t]he absence of a valid copyright
registration .. . bar[ s] a plaintiff from bringing a viable copyright infringement action.' " Sohm,
2018 WL 1605214, at *3 (second alteration in Sohm) (quoting L.A. Printex Indus., Inc. v. Le

Chateau, Inc., No . 11-CV-4248, 2012 WL 987590, at *3 (S.D.N.Y. Mar. 23 , 2012) (Swain, J.)).
" [R]egistration ... has been made within the meaning of 17 U.S.C. § 41 l(a) ... when the
Register has registered a copyright after examining a properly filed application. " Fourth Estate

Pub. Benefit Corp. v. Wall-Stre et.com, LLC, 139 S. Ct. 881 , 892 (2019). Under 17 U .S.C. § 409,
" in the case of a work other than an anonymous or pseudonymous work," an application for
copyright registration must include, among other things, "the name and nationality or domicile of

234, 235, 236,238,240, 241 , 242,243 , 244, 245,246,247,248,250, 251 , 252, 253,254, 256, 257, 259, 261 , 263 ,
264, 265, 266,267, 268,269,270,271 , 272, 273,274,275, 276,277, 278, 280, 281 , 282, 283 , 284, 285 , 287, 288,
289, 290, 291 , 292,293,294,295,296, 297, 298,302,303,304, 305, 307, 308,309, 310, 312, 313 , 314, 315,316,
317, 318, 320, 321,322,323,324, 325,326, 327,328,329, 330, 331 , 332,335,336, 337, 342, 343, 344, 345, 346,
347,348,349, 350, 351 , 352, 354, 355 , 356, 357, 358, 360, 362, 365, 366, 367,369, 370,371 , 372,373,374, 375,
376,377,378, 379,380,382,383 , 384, 385, 386, 388, 389, 390, 391 , 393 , 395,397, 398,399,400, 401 , 402, 404,
405, 406, 407, 408,409,411 , 412, 413 , 417, 420, 421 , 422, 423 , 424, 425, 426, 427, 428,429, 430, 431 , 433 , 434,
435,436,437, 438,439,440, 441,442,443,444, 445, 446,447, 448,449, 451 , 452, 453, 454, 455, 456, 457, 458,
459, 460, 461 , 463 , 464, 465, 466, 467, 468, 469, 470, 471 , 472, 475 , 476, 477,478, 479, 480, 481,482,483 , 484,
486,487,488,491 , 492, 494, 495, and496 ; (b) TAC, Ex.2, Rows 5, 11 , 12, 13, 14, 15, 16, 18, 19; and(c)TAC,
Ex. 3, Rows I, 6, 7, 8, 9, 10, 15, 16, 17, 18, 19, 20, 21, 22, 23 , 24, 25, 26, 27, 30, 32, 33 , 34, 35, 36, 37, 38, 39,
40, 41 , 42, 43 , 45, 47, 48, 49, 50, 51 , 51, ~~. and~,.

14

the author or authors; ... [and] the title of the work."
The Corbis Registrations were obtained beginning in 2002 as part of a program in which
Pelaez transferred his copyright in the photographs to Corbis for the express purpose of allowing
Corbis to register the photographs ' copyrights. 4 (See Pelaez Deel.

,r 4 (ECF No. 124).)

Corbis

then submitted a single application to the Register of Copyrights, purporting to register a
database that included the work of multiple photographers, including that of Pelaez. Once this
"bulk registration" was complete, Corbis then assigned ownership of the copyrights back to
Pelaez. It is undisputed that Pelaez is not named, and the titles of the Pelaez' s photographs are
not listed, on the face of the Corbis Registrations. (Pelaez Counterresp.

,r,r 15-16; Pelaez Opp'n

11.)
Courts in this district disagree on whether this type of bulk registration validly registers
the individual works in the databases for the purposes of an infringement suit. Pelaez urges the
Court to follow Sohm, 2018 WL 1605214, at *5, which held that, where a registrant owns the
copyright to the components in a database at the time of registration, the registration of that
database is valid as to its component works. The Fourth and Ninth Circuits have reached the
same conclusion. See Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., 747 F.3d 673 ,
682 (9th Cir. 2014); Metro. Reg 'l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d
591 , 597 (4th Cir. 2013). McGraw-Hill urges the Court to follow Muench Photography, Inc. v.

Houghton Mifflin Harcourt Pub. Co., 712 F. Supp. 2d 84, 95 (S.D.N.Y. 2010) (Preska, J.),
reconsidered on other grounds, No. 09-CV-2669 (LAP), 2010 WL 3958841 (S.D.N.Y. Sept. 27,
2010), which held precisely the opposite.
In Sohm , the Court explained that the key word in§ 409 is "work," not author," and that

4

McGraw-Hill challenges the registrations only on the basis that they did not comply with§ 409 of the Act. It does
not dispute that the copyrights were properly asslgned to Corbis and then pro~etly imignBd hllCK to Pelaez.

15

under 17 U.S.C. § 101, a collective work-such as the databases registered by Corbis-is a type
of"work." 2018 WL 1605214, at *4 (citing Alaska Stock, 747 F.3d at 681); see also 17 U.S.C.
§ 101 ("A 'collective work' is a work ... in which a number of contributions, constituting
separate and independent works in themselves, are assembled into a collective whole.").
Therefore, the "author" and "title" required to be named under 17 U.S.C. § 409(2) and (6) are
those of the collective work, not of each component work. Sohm, 2018 WL 1605214 at *4
(citing Alaska Stock, 747 F.3d at 681).5
The Court finds Sohm's reasoning persuasive, and therefore holds that the Corbis
Registrations are valid. The Court further holds that the Corbis Registrations extend to Pelaez's
photographs, for the reasons explained in Alaska Stock., 747 F.3d at 685.

Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001), clarified on denial ofreh'g,
283 F.3d 502 (2d Cir. 2002), abrogated on other grounds, Reed Elsevier, 559 U.S. 154, on which
McGraw-Hill relies, is not to the contrary. The issue in Morris was whether a collective work
registration could extend to component works where the copyright registrant of the collective
work did not own the copyright in the component works. Id. Here, by contrast, Pelaez
transferred ownership of the copyright in his works to Corbis prior to registration. Thus, at the
time Corbis applied for registration, it owned the component works now at issue. "Under the law
of this Circuit, where the owner of a copyright for a collective work also owns the copyright for a
constituent part of that work, registration of the collective work is sufficient to permit an
infringement action under§ 41 l(a) for the constituent part." Id. at 68 (citing Streetwise Maps,

5

The Sohm Court reached this conclusion based on the plain text of the Act. 2018 WL 1605214, at *5 . It added,
however, that even if the statutory text were ambiguous, it would reach the same conclusion because the Copyright
Office's own interpretation of 17 U.S.C. § 409 did not require the application for registration of a collective work
to contain the names of all the photographers. Id. This Court agrees with Sohm that the Copyright Office's
interpretation is entitled to Skidmore deference. See id.

16

Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998)).

McGraw-Hill's motion for summary judgment is therefore DENIED insofar as it relates
to the invalidity of the Corbis Registrations.
D. Damages

McGraw-Hill next moves for summary judgment in its favor on the issue of whether
Pelaez may recover damages for infringement that occurred prior to July 7, 2013, three years
before he filed the initial complaint in this case. (McGraw-Hill Mem. 25.)
Under 17 U.S.C. § 507(b), "[n]o civil action shall be maintained under the provisions of
this [Act] unless it is commenced within three years after the claim accrued." This Circuit
follows a discovery rule, pursuant to which "copyright infringement claims do not accrue until
actual or constructive discovery of the relevant infringement." Psihoyos v. John Wiley & Sons,
Inc., 748 F.3d 120, 125 (2d Cir. 2014). Pelaez argues that, under the discovery rule, damages are

recoverable "for all infringements, regardless of when they occur, as long as a complaint is
timely filed." (Pelaez Opp'n 25.) McGraw-Hill disagrees and contends that timely claims are
subject to the additional limitation that damages may not be recovered for infringement that
occurred more than three years before the filing of the complaint. McGraw-Hill relies on
Petrella, 572 U.S. 663, to support this argument.

In Petrella, the Supreme Court held that the equitable defense of laches cannot bar relief
on an infringement claim brought within three years of the occurrence of the allegedly infringing
conduct. 572 U.S. at 667. The plaintiff in Petrella was aware that the defendant was infringing
her copyright as early as nine years before she brought suit. Id. at 674. When she finally took
legal action, she sought relief only for discrete acts of infringement that occurred within the
three-year period before she filed suit. Id. at 674-75.

In concluding that laches could not be asserted as adefomic to infring~m~nt in this
17

instance, the Supreme Court repeatedly stressed that under 17 U.S.C. § 507(b), "a successful
plaintiff can gain retrospective relief only three years back from the time of suit. No recovery
may be had for infringement in earlier years." Id. at 677; see also id. at 672 (" § 507(b)'s
limitations period[] ... allows plaintiffs during that lengthy term to gain retrospective relief
running only three years back from the date the complaint was filed. "); id. at 675 (noting that the
plaintiff "recognize[ d] " that "no relief . .. can be awarded for infringing acts prior to" three years
before her complaint was filed).
In the wake of Petrella, courts in this district have applied one of two contradictory,
bright-line rules. Some courts have held that, even if a plaintiffs complaint is timely under the
discovery rule, he or she nonetheless may not recover damages for infringements that occurred
more than three years prior to the commencement of his or her suit. See Craig v. UMG
Recordings, Inc., No. 16-CV-5439 (JPO), 2019 WL 1432929, at *5 (S.D.N.Y. Mar. 29, 2019)
(Oetken, J.) ("After a plaintiff has established the timeliness of his or her claim with respect to
any one particular act, ... [he or she may] recover damages for only those infringing acts that
occurred within three years of the filing of the complaint."); Papazian, 2017 WL 4339662, at *3
(holding that when infringing acts occur over time, damages are only recoverable for
infringements that occurred within the three years prior to the filing of the complaint); Wu v.
John Wiley & Sons, Inc. , No. 14-CV- 6746 (AKH) (AJP), 2015 WL 5254885, at *7 (S.D.N.Y.
Sept. 10, 2015) (Peck, M.J.) (holding that, " [f]ollowing Petrella, [the copyright owner] can
recover damages only for any .. . infringing acts that occurred on or after" three years before he
filed suit).6

In Papazian, Judge Sullivan also considered whether Petrella might bar actual damages for infringement that
occurred more than three years prior to filing suit, but not bar statutory damages for such infringement. See
2017 WL 4339662, at *6 (holding that " [t]he most straightforward interpretation of Petrella .. . is that no recovery
of any kind, including statutory damages, ls permitted for mf'ringing ads occurring tt'tlW~ th!ln three yell'~ prior to

6

18

Other courts have held that, notwithstanding Petrella, so long as a plaintiffs complaint is
timely under the discovery rule, he or she may collect damages on the underlying claims. See PK

Music Performance, Inc. v. Timberlake , No. 16-CV-1215 (VSB), 2018 WL 4759737, at *10
(S.D.N.Y. Sept. 30, 2018) (Broderick, J.) ("[I]t would be inconsistent with the discovery rule to
apply the three-year lookback."); Sohm, 2018 WL 1605214, at *11 (refusing to limit damages to
three years before filing); Energy Intelligence Grp., Inc. v. Scotia Capital (USA) Inc., No. 16CV-0617, 2017 WL 432805 , at *2 (S.D.N.Y. Jan. 30, 2017) (Castel, J.) ("Under no reasonable
reading of Petrella could the opinion be interpreted to establish a time limit on the recovery of
damages separate and apart from the statute of limitations.").
This Court agrees with those courts that have held that a plaintiff may not reach back to
recover damages for infringement that occurred more than three years before filing suit. See

Papazian, 2017 WL 4339662, at *4-5. "When infringing acts occur over time," the
determination of when a plaintiffs claim accrues is a separate inquiry from the question of
"which, if any, of the multiple infringing acts trigger actual or statutory damages under the
Copyright Act." Id. at *4. To make the damages determination, " [t]he Second Circuit has
always applied [a] rolling approach," under which damages may be recovered only for infringing
acts that occurred up to three years before the filing of the complaint, "such that the passage of
each additional day forecloses one more day of past damages. " Id.
As courts in this district have pointed out, there is "doctrinal tension" in applying both a
three-year damages lookback and the discovery rule. Id. at *5 n.5; see also PK Music

Performance, 2018 WL 4759737, at *10 ("Applying the three-year lookback ... would
effectively impose the injury rule[, pursuant to which a copyright owner's claim accrues on the

suit"). Neither party here advances this argument, and so the court does not consider

19

it.

date of the infringement]."). But the Court is not free to ignore Petrella' s language concerning
the availability of retrospective relief, and it also is not free to depart from the discovery rule.

See Papazian, 2017 WL 4339662, at *5 n.5 ("The Court remains bound by the Second Circuit' s
decision to apply the discovery rule in Psihoyos, while at the same time, Petrella requires this
Court to apply the rolling approach in determining Plaintiff's entitlement to damages."). The
doctrinal tension is thus unavoidable in this instance.
Pelaez does not dispute McGraw-Hill's assertion that it "did not print or distribute the
titles implicated in 94 of the claims in the TAC between July 3, 2013 , and July 3, 2016."
(McGraw-Hill Mem. 25.) Accordingly, McGraw-Hill ' s motion for summary judgment is
GRANTED to the extent that Pelaez may not recover damages-actual or statutory-for the
ninety-four claims in the TAC that are based on conduct that occurred entirely prior to July 6,
2013. 7

IV.

Pelaez's Motion

Pelaez moves for summary judgment on 129 of his claims. 8 In support of his motion,
Pelaez argues that, although McGraw-Hill obtained licenses to reproduce the photographs at
issue, those licenses expressly limited the number of copies McGraw-Hill was permitted to make,
and McGraw-Hill exceeded those limitations. In response, McGraw-Hill argues that summary
judgment is inappropriate because: (1) the registrations on which Pelaez relies for these claims

7

These claims are listed in TAC, Ex. 1, Rows 1, 2, 3, 4, 6, 7, 12, 13 , 41, 42, 48, 50, 83 , 84, 85 , 86, 87, 88, 89, 91 ,
101 , 123, 124, 125, 126, 127, 138, 142, 143, 144, 145, 146, 151 , 152, 153 , 154, 157, 160, 161 , 162, 163 , 164, 166,
167, 168, 169, 170, 171 , 172, 173 , 179, 182, 183 , 184, 185, 186, 187, 200,2 10, 217, 218,219, 220, 221 , 222, 223 ,
233 , 234,235,236,242 , 252, 253 ,261 , 271 , 274,275, 291 , 292, 304, 308, 315, 412, 427, 455,456, 458, 459, 461,
462,463,471 , 472, and 482.

8

These claims are listed in TAC, Ex. 1, Rows 3, 5, 8, 10, 14, 15, 28, 30, 31 , 64, 65 , 66, 67, 68 , 69, 70, 71 , 72, 73 ,
74, 75, 76, 77, 78, 79, 80, 81 , 84, 85, 86, 87, 88, 89, 91 , 94, 95, 96, 97, 102, 103 , 104, 106, 107, 108, 109, 110,
111 , 112, 113 , 114, 115 , 116, 118, 119, 120, 121 , 125, 131 , 132, 133 , 139, 140, 141 , 146, 149, 150, 166, 176, 177,
188, 189, 192, 193 , 194,195,196,197, 203 , 242,244,257, 266,268, 269,270, 272,285, 286, 293 , 302, 303 ,3 15 ,
316, 318, 321 , 324, 325, 346, 366, 376,377, 378, 379,380, 386, 387,388, 389, 390, 391 , 393,396, 397, 398,399,
400, 401 , 402 , 405 , 406, 407, 408 , 418,

4~A, 4~~. 4~\ 4~7, 4?( 47?. (!]ee Kerr D~tl., B~. 1(HCF No. 113).)
20

are invalid, and therefore Pelaez cannot show that he owned a copyright in the photos; (2) there is
a genuine dispute of material fact as to when Pelaez knew of, or reasonably should have known
of, these claims; and (3) there is a genuine dispute of material fact as to whether its use of the
photographs was authorized.
A. Registration

McGraw-Hill first contends that Pelaez is not entitled to summary judgment on the claims
at issue because the Corbis Registrations are invalid with respect to Pelaez's photographs. The
Court disagrees. The Corbis Registrations are valid as to Pelaez's photographs for the reasons
explained supra in Section LC.
B. Statute of Limitations

McGraw-Hill next contends that Pelaez is not entitled to summary judgment on any of his
claims because he knew, or had reason to know, of McGraw-Hill's unauthorized use of his
photographs, if any, prior to July 6, 2013. If McGraw-Hill were correct on this point, Pelaez's
claims would be time-barred under 17 U.S.C. § 507(b).
Under the discovery rule adopted by the Second Circuit in Psihoyos, 748 F.3d at 125, a
claim is timely so long as it is brought within three years of its discovery. The date of discovery
"will be later than the date of [infringement] only to the extent that plaintiff exercised reasonable
diligence but remained unaware of the [infringement]." Weber v. Ge/fen Records, Inc., 63 F.
Supp. 2d 458, 464 (S.D.N.Y. 1999) (Motley, J.).
McGraw-Hill does not dispute that Pelaez became aware of the infringements he alleges
in late 2014 (McGraw-Hill 56.1 Counter ,r 97), but nevertheless contends that Pelaez' s claims are
untimely, for two reasons. First, McGraw-Hill argues that Pelaez' s experience in the stock
photography industry-which includes more than thirty years of experience as a professional

photogrnpher, neMly zo ymrn il~ il Btovk photo~~phy ~u~im~~~ owner, and unspecified dealin~s
21

with publishing clients-should have put him on "inquiry notice" to investigate any potential
misuse of his work prior to July 3, 2013. (McGraw-Hill Opp'n 17-18.) Second, McGraw-Hill
argues that Corbis's knowledge should be imputed to Pelaez for purposes of 17 U.S.C. § 507, and
that Corbis was aware of potential claims of infringement as early as May 2009. (Jd.)
Both of McGraw-Hill's arguments regarding notice are unpersuasive. First, general
knowledge of an industry, or experience in an industry, does not trigger the running of the statute
of limitations in 17 U.S.C. § 507. See Wu v. John Wiley, 2015 WL 5254885, at *6 (collecting
cases). Pelaez's understanding of the stock photography industry, without more, does not
demonstrate that a reasonable person exercising due diligence would have discovered the
infringement alleged.
Second, an agent's knowledge is properly imputed to his or her principal for statute of
limitations purposes only where the "agent is employed to represent [the] principal with respect
to a given matter and acquires knowledge material to that representation." Veal v. Geraci, 23
F.3d 722, 725 (2d Cir. 1994). This rule has been applied where a party's lawyer acquires
knowledge about his or her claim. See, e.g., id. at 725 (holding that a claim "may have accrued
as early as" the date on which claimant's counsel became aware of facts underlying claim); L.1
Head Start Child Dev. Servs., Inc. v. Econ. Opportunity Comm 'n of Nassau Cty., Inc., 558 F.

Supp. 2d 378, 396 (E.D.N.Y. 2008), aff'd, 710 F.3d 57 (2d Cir. 2013) (holding that the statute of
limitations began to run when plaintiff's counsel knew of facts giving rise to claim). To the
extent it applies in situations where the agency relationship is something other than that of
lawyer-client, its application is narrower than McGraw-Hill suggests. For example, in Weiss v.
La Suisse, Societe D 'Assurances Sur La Vie, 381 F. Supp. 2d 334, 339 (S.D.N.Y. 2005)

(McMahon, J.), on which McGraw-Hill relies, the agents (1) had been "formally appointed" by
the plaintiffs to

reteiv~ all communicationg from the defendant concerning the actions which
22

formed the bases of plaintiffs' claims; (2) had "threaten[ed the defendant] with litigation"; and
(3) had attempted to effect a global settlement on behalf of the plaintiffs.
The record here demonstrates that the scope of Corbis' s agency was limited to
representing Pelaez in the sublicensing of his photographs. (See Pelaez Deel., Exs. 6-10.)
McGraw-Hill does not offer any evidence to show that Corbis was authorized to represent Pelaez
in connection with the legal claims now before the Court. Cf Pub. Emps. ' Ret. Sys. of Miss. v.

Goldman Sachs Grp. , Inc., 280 F.R.D. 130, 141 (S.D.N.Y. 2012) (Baer, J.) (holding that, where
attorney had not yet been retained as plaintiffs legal representative, attorney's knowledge could
not be imputed to plaintiff for statute of limitations purposes). Because Corbis cannot be
considered Pelaez's agent with r.espect to Pelaez's copyright claims, it would be improper to
attribute Corbis's knowledge of the claims, if any, to Pelaez for statute of limitations purposes.
In sum, because McGraw-Hill is incorrect that Corbis's knowledge may be imputed to
Pelaez for statute of limitations purposes, it has not identified any dispute of material fact
regarding the date on which Pelaez's claims accrued.
C. License
McGraw-Hill lastly contends that Pelaez is not entitled to summary judgment on the
claims at issue because it had permission, either express or implied, from Corbis to use Pelaez's
photographs in the manner alleged in the TAC. The Court addresses each argument in turn.
1. Express License
a.

Legal Standard

"Copyright disputes involving only the scope of the alleged infringer's license present the
court with a question that essentially is one of contract: whether the ... license agreement
encompasses the defendant's activities." Bourne, 68 F.3d at 631; see also Great Minds v. Fedex

Office & Print Serv~, 1 In~. , 886 F.3d 91 7 94 (2d Cir. 2018) ("Copyright licenses are generally
23

construed according to principles of contract law.").
"In a dispute over the meaning of a contract, the threshold question is whether the
contract is ambiguous, which is a question oflaw for the court." Great Minds, 886 F.3d at 94
(internal citations and quotation marks omitted). "Under New York law," which the parties agree
applies to the interpretation of the agreements entered into by McGraw-Hill and Corbis, "courts
must consider how the contract would be understood 'by a reasonably intelligent person who has
examined the context of the entire integrated agreement and who is cognizant of the customs . . .
and terminology as generally understood in the particular trade or business."' Id. (omission in

Great Minds) (quoting Orchard Hill Master Fund Ltd. v. SBA Commc 'ns Corp., 830 F.3d 152,
156- 57 (2d Cir. 2016)). "Where the parties dispute the meaning of particular contract clauses,
the task of the court 'is to determine whether such clauses are ambiguous when read in the
context of the entire agreement' .... " Law Debenture Tr., 595 F.3d at 467 (quoting Sayers v.

Rochester Tel. Corp. Supplemental Mgmt. Pension Plan, 7 F.3d 1091 , 1095 (2d Cir. 1993)).
"[I]f [the agreement] is straightforward and unambiguous, its interpretation presents a
question of law for the court to be made without resort to extrinsic evidence." Spinelli, 903 F.3d
at 200 (quoting Postlewaite v. McGraw-Hill, Inc., 411 F.3d 63, 67 (2d Cir. 2005)). " If 'specific
[contract] language is susceptible of two reasonable interpretations,"' however, "the contract is
ambiguous as a matter of law." Great Minds, 886 F.3d at 94 (alteration in Great Minds) (quoting

Ellington v. EM! Music, Inc., 24 N.Y.3d 239,244 (2014). Only then may extrinsic evidence of
the parties' intent be considered. Law Debenture Tr., 595 F.3d at 465.
b.

Application

During the relevant time period, the licenses granted to McGraw-Hill were governed by
two sets of documents: the PP As entered into by Corbis and McGraw-Hill and invoices issued by

Corbis to McGraw-Hill.
24

The parties appear to agree that Corbis and McGraw-Hill intended both the PP As and the
Invoices to govern the scope of McGraw-Hill's licenses to reproduce Pelaez's photographs.
Even if the parties were to disagree on this point, "[u]nder New York law, 'all writings which
form part of a single transaction and are designed to effectuate the same purpose [must] be read
together."' TVT Records v. Island DefJam Music Grp., 412 F.3d 82, 89 (2d Cir. 2005) (second
alteration in TVT Records) (quoting This is Me, Inc. v. Taylor, 157 F.3d 139, 143 (2d Cir. 1998)).
Whether the parties intended the agreements to be read as one contract " [is] determine[d] from
the circumstances surrounding the transaction," Arciniaga v. Gen. Motors Corp., 460 F.3d 231 ,
237 (2d Cir. 2006), and "if the documents in question reflect no ambiguity as to whether they
should be read as a single contract, the question is a matter of law for the court," TVT Records,
412 F.3d at 89. Here, it is clear that the documents were intended to be read as one contract
because: (1) the 2003, 2006, 2009, and 2014 PPAs expressly refer to the invoices; (2) the
invoices do not contain price terms, which are supplied by the PP As; (3) each agreement was
entered into by McGraw-Hill and Corbis or Corbis's predecessor-in-interest, The Stock Market;
(4) the PP As and the invoices each serve the same overarching purpose- namely, to set the terms
of the agreement between Corbis and McGraw-Hill. Cf Arciniaga, 460 F.3d at 237 (discussing
and applying these factors in analyzing whether two agreements should be read as a single
contract).
The parties disagree, however, as what effect to give the terms of each set of documents.
Pelaez contends that the terms included in the invoices limited the scope of McGraw-Hill's
licenses, whereas McGraw-Hill contends that it was entitled to make additional uses beyond
those described in the invoices. 9 Specifically, McGraw-Hill argues that proper determination of

9

Pelaez uses the term "license" interchangeably with the term "invoice" throughout his briefing. Because the term
"license" assumes a legal concluslon, the Court subsiautes the word 11 invoice 11 flMM~M'Y

as

25

when quotin~ Pelaez.

the scope of its licenses requires consideration of (1) the invoices; (2) the PP As; and (3) the
course of dealing between McGraw-Hill and Corbis. (See McGraw-Hill Opp'n 10- 13.)
For the reasons that follow, the Court agrees with Pelaez that McGraw-Hill has failed to
show that there is a dispute of material fact as to whether it had an express license to use Pelaez' s
photographs.
(i)

Usage Prior to 2003

The PP As relied on by McGraw-Hill in support of its express license argument date back
to January 1, 2003. (See id. at 13 .) Pelaez alleges infringement dating back to 1994. (Pelaez
56.1 Counterresp.

~

10.) Because there was no PPA in effect when the pre-2003 invoices were

issued, the PP As are not probative of the scope of any express license issued by Corbis prior to
2003 . The scope of any express license granted by Corbis to McGraw-Hill prior to January 1,
2003, is therefore properly determined by the relevant invoices alone, if any.
(ii)

The 2003 and 2006 PP As

As relevant here, the 2003 and 2006 PP A are substantively identical. (See Beall Deel.,
Ex. 6 ("2003 PPA"); id., Ex. 7 ("2006 PPA).) Both PPAs unambiguously provide that the
licenses granted by Corbis to McGraw-Hill are limited by the terms of the invoices.
As relevant here, the 2003 and 2006 PP As each state:
Images obtained from Corbis are licensed on a non-transferable,
onetime, non-exclusive basis, and are strictly limited to the use,
medium, time period, print run, placement, size of Image, territory,
and any other restrictions indicated in the invoice or contained on
Corbis' online site, and are licensed for use within one year from the
date of the invoice, or sixty (60) days for internal evaluations
("comps").
(2003 PPA, at 6 (emphasis added) ; 2006 PPA at 6 (emphasis added).). Both PPAs further
provide that McGraw-Hill's "ability to access an Image does not in itself entitle [it] to use that

Image," illld that, "[u]nluBB othtrwiBw BJ]w~ifi¥Q 'n a separate writin5 si5ned by Corbis, [McGraw26

Hill's] reproduction oflmages is limited to (i) internal evaluation or comps, or (ii) the specific
use described in your invoice, which together with these terms shall constitute the full license
granted." (2003 PPA, at 6; id. , 2006 PPA, at 6.)
McGraw-Hill does not offer any competing interpretation of the above-quoted portions of
the PPAs, and the Court is not aware of one.
(iii)

The 2009 PP A

As with the 2003 and 2006 PP As, there is no language in the 2009 PP A that abrogates the
print run limitations specified in the invoices. (See Beall Deel., Ex. 8 ("2009 PPA").) To the
contrary, the 2009 PPA explicitly incorporates the terms of the invoices, stating that Corbis
grants McGraw-Hill "a limited, non-exclusive right to use the Rights Managed Content licensed
hereunder to create and exploit the End Use solely as specified in the PPA, as modified by the
Invoice, and expressly as limited in the Specific Content Web Pages and the terms and conditions

herein." (Id. at 10 (emphasis added).) The 2009 PPA continues:
As stated in the Invoice , the license granted hereunder for the
applicable Rights Managed Content allows You to use the Rights
Managed Content obtained hereunder for ten years from the date the
applicable Invoice is Issued. Except where specifically permitted in
the Agreement, You may not distribute, publish, display or
otherwise use in any way, the Rights Managed Content, including
without limitation the End Use after the end of the applicable
License Term for that Image.
(Id. (emphasis added).)

In support of its argument that, under the 2009 PPA, the terms contained in the invoices
did not limit McGraw-Hill's use of Pelaez' s photographs, McGraw-Hill points to the 2009 PP A' s
"Increased Use" provision. That provision sets forth the fees applicable to an image in the event
"McGraw-Hill desires to increase the total number of Unique Users after the initial license for
such Image is granted." (Id. at 4.) It provides:

27

[McGraw-Hill] may re-license such Image, however, the additional
fee will be the greater of (i) the difference between the increased
total usage fee and the fee already paid for such license by [McGrawHill], or (ii) $35 per Image. [McGraw-Hill] acknowledges and
agrees that Corbis will re-license images to [McGraw-Hill]
following any License Term provided that Corbis still retains the
right to represent and license such images.
(Id.) McGraw-Hill argues that this language "reflects the parties' mutual understanding of the

preexisting circumstance of permission to use Corbis images." (McGraw-Hill Opp'n 12.)
McGraw-Hill's reliance on this provision is misplaced. By its plain text, the abovequoted language speaks to the price McGraw-Hill will pay in the event it elects to re-license an
image. This conclusion is reinforced when the provision is read in the context of the 2009 PPA
as a whole, which repeatedly incorporates the terms of the invoices by reference. Neither the
Increased Use provision, nor the language of the 2009 PPA more broadly, support the conclusion
that McGraw-Hill was authorized to reproduce Pelaez's images in unlimited quantities, thereby
nullifying the print run limitations contained in the invoices. Therefore, to the extent McGrawHill argues that the 2009 PPA expressly authorized McGraw-Hill to reproduce Pelaez's
photographs in quantities exceeding the limits set forth in the invoices, the Court disagrees.
(iv)

The 2014 PPA

None of the photographs on which Pelaez's claims are based were invoiced after the
effective date of the 2014 PPA. The Court thus does not see any reason to consider whether the
2014 PPA expressly granted McGraw-Hill a license to use Pelaez's photographs.
c.

Conclusion

The PP As and the invoices unambiguously limit the licenses granted to McGraw-Hill.
Each PP A must be considered together with the relevant invoices, and there are not any terms in
the PP As that purport to abrogate the limitations contained in the invoices. Because the PP As

and the invoices are "strnightforward a.nd un!lmbiguou~, [their] interpretation presents a question
28

of law for the court to be made without resort to extrinsic evidence." Spinelli, 903 F.3d at 200
(quoting Postlewaite, 411 F.3d at 67). McGraw-Hill thus may not rely on the Spelman and
Beacher Declarations, or any other extrinsic evidence, to create a dispute of fact as to the
meaning of these documents. McGraw-Hill's express license argument must be rejected.
2. Implied License
McGraw-Hill also argues that, even if it did not have an express license to exploit
Pelaez's photographs beyond the usage specified in the invoices, it had an implied license to do
so.
a.

Legal Standard

It is well-established that, like other contracts, a nonexclusive license to use copyrighted
work may be implied from conduct. See Melville B. Nimmer & David Nimmer, 3 NIMMER ON
COPYRIGHT § 10.03 [7] (2019). Although the Second Circuit has not ruled on the precise
circumstances under which an implied license may be found, the parties appear to agree that the
correct test is whether "the totality of the parties' conduct" indicates an intent to grant permission
to use the copyrighted work. 10 Id. The majority of Courts of Appeals that have considered the
issue have adopted this test, as have several decisions from this district. 11 See Corbello v.
De Vito, 777 F.3d 1058, 1067 (9th Cir. 2015) (holding that courts should focus on "the licensor's

objective intent. .. as manifested by the parties' conduct"); Baisden v. I'm Ready Prods., Inc.,
693 F.3d 491, 501 (5th Cir. 2012) (holding that an implied license may arise "where the totality

10

Although Pelaez does not use the term "totality of the circumstances," he states that whether an implied license
existed "comes down to whether there was a ' meeting of the minds' between the parties to permit the particular
usage at issue." (Pelaez Reply 7.) In the Court's view, in this context, the phrase "meeting of the minds" is simply
a different verbal formulation of the phrase "totality of the circumstances." To the extent there is any difference
between the two, the Court adopts the totality of the circumstances test.

11

The caselaw does not make clear whether the source of the totality of the circumstances test is state law or federal
law. Because the parties do not argue the standard would differ depending on whether state or federal law applies,
that Court need not, and does not, address that issue here.

29

of the parties' conduct supported such an outcome"); Estate of Hevia v. Portrio Corp., 602 F.3d
34, 41 (1st Cir. 2010) (holding that the proper test is "whether 'the totality of the parties' conduct
indicates an intent to grant such permission" (quoting 3 Melville B. Nimmer & David Nimmer,
NIMMER ON COPYRIGHT§ 10.03[A][7], at 10-42 (2000)); Thomas M Gilbert Architects, P.C. v.
Accent Builders And Developers, LLC, 377 F. App'x 303, 307- 08 (4th Cir. 2010) (holding that

the totality of the circumstances test applies unless there is a valid written agreement between the
parties); Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103, 119-124 (S.D.N.Y. 2012)
(Oetken, J.) (discussing implied license cases and noting that "whichever test is applied, the
question comes down to whether there was a 'meeting of the minds' between the parties to
permit the particular usage at issue"); but see Muhammad-Ali v. Final Call, Inc., 832 F.3d 755,
762 (7th Cir. 2016) (requiring, to find an implied license, that "(1) a person (the licensee)
requests the creation of a work, (2) the creator (the licensor) makes that particular work and
delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor
copy and distribute his work" (quoting 1.A.E. , Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996));
Flo & Eddie, Inc. v. Sirius XM Radio Inc., 80 F. Supp. 3d 535, 539 (S.D.N.Y. 2015) (McMahon,
J.) (same)).

Because "an implied license to use a copyrighted work ' cannot arise out of the unilateral
expectations of one party,"' Design Options, Inc. v. BellePointe, Inc., 940 F. Supp. 86, 92
(S.D.N.Y. 1996) (Sweet, J.) (quoting Allen- My/and v. International Business Machines Corp.,
746 F.Supp. 520,549 (E.D. Pa. 1990)), "the question [of implied license] comes down to whether
there was a ' meeting of the minds' between the parties to permit the particular usage at issue,"
Pearson, 855 F. Supp. 2d at 124. The focus is on "the licensor's objective intent at the time of

creation and delivery of the [copyrighted work] as manifested by the parties' conduct." Corbello,

777 FJd M1067 (quoting A!1!1et Marketing Sys. , Inc. v. Gagnon, 542 fJd 748, 756 (9th Cir,
30

2008)). The parties here agree that, although Pelaez created the photographs at issue, the relevant
intent for the purposes of whether an implied license was granted is that of Corbis, not Pelaez.
b.

Application

McGraw-Hill points to the following circumstances as raising an issue of fact as to its
implied license defense: (1) the 2009 PP A contained a term describing how to calculate amounts
owed by McGraw-Hill for the use of a photograph in excess of an initial invoice; (2) beginning
by at least 2004, Corbis provided McGraw-Hill with unrestricted access to its archive of highresolution images, prior to Corbis requesting payment for usage of the images; and (3) Corbis
never refused a request by McGraw-Hill for a license. (McGraw-Hill Opp'n 11-12.) McGrawHill also relies on selective quotations from the declaration of Steve Spelman, who was
employed by Corbis from May 2005 to May 2014, and worked on licensing issues.
The individual strands of evidence identified by McGraw-Hill must be considered in light
of the record as a whole. For clarity, the Court divides the record evidence in three categories:
(1) the parties' written agreements; (2) evidence of Corbis' s conduct; and (3) the Spelman

declaration. For the reasons that follow, McGraw-Hill has not established a triable issue of fact
as to whether it had an implied license to use Pelaez's photographs.
(i)

The Written Agreements

As a threshold matter, Pelaez contends that any implied agreement allowing McGraw-Hill
to exceed the print limitations contained in the invoices would impermissibly contradict the
express written agreements. (Pelaez Reply 2- 3.) This is incorrect. Pelaez' s theory of
infringement is that the licenses Corbis expressly granted to McGraw-Hill authorized McGrawHill to make a limited number of copies of his photographs; after McGraw-Hill "exhausted" the
quota provided for by the license, that license effectively expired. (Id. at 6.) Under Pelaez' s

theory, there b no Gontrndivtion b;twwwll tlw ~~press written asreementsl that covered only the
31

usage provided for therein, and an implied agreement, if any, that would cover reproduction
beyond what was provided for by the express agreements.
Although the written agreements do not, standing alone, preclude an implied license, they
are probative of the parties' intent. See, e.g. , Pearson, 855 F. Supp. 2d at 126 (holding that
written agreements provided "compelling evidence of [the parties ' ] expectations" regarding
whether a license to use copyrighted photographs had been granted). Several terms contained in
the written agreements entered into by Corbis and McGraw-Hill are inconsistent with there being
an implied license. As explained supra in Section IV.C.1 , the written agreements provided, in
various terms, that: McGraw-Hill's use of photographs obtained from Corbis was limited to the
usage provided for in the invoices; McGraw-Hill's ability to access an image did not entitle it to
use that image; and, reproduction of Corbis's images by McGraw-Hill was limited to internal use
and "comps" and/or to the use specified in the invoice, unless otherwise specified in a writing
signed by Corbis. (See Pelaez Reply 2- 5.) The existence ofrepeated warnings regarding
unauthorized use negate the interpretation that Corbis intended to grant McGraw-Hill a license to
use Pelaez' s photographs in excess of the quantities provided for in the invoices.
McGraw-Hill ' s argument to the contrary is unconvincing. McGraw-Hill contends that the
2009 PP A "reflects the parties' mutual understanding" that it had ongoing authorization to use
Corbis ' s images, even in the absence of an invoice. (McGraw-Hill Opp'n 12.) In support of this
argument, McGraw-Hill points to what it refers to as the "Increased Use" provision. That
provision states,' in relevant part:
If [McGraw-Hill] desires to increase the total number of Unique
Users after the initial license for such Image is granted, [McGrawHill] may re-license such Image, however, the additional fee will be
the greater of (i) the difference between the increased total usage fee
and the fee already paid for such license by [McGraw-Hill], or (ii)
$35 per Image. [McGraw-Hill] acknowledges and agrees that

CMbig will re-licerne image~ to [McGrnw•Hill] following any
32

License Term provided that Corbis still retains the right to represent
and license such images.
(2009 PPA, at 4.) "Unique User" means "a discrete individual who receives access to a
Component." (Id. at 5.) "Component" is, in tum, defined as "an editorial work of intellectual
property published by McGraw-Hill . .. including but not limited to a textbook, trade, retail,
custom or reference book, a compendium, study guide, test bank, instructor manual, student
edition, teacher edition, quiz book, answer book, and other types such as overhead
transparencies, slide sets, PowerPoint of supplementary material." (Id.)
The above-quoted provision demonstrates the parties' shared understanding that, if
McGraw-Hill sought to use an image in quantities beyond those provided for by its initial license,
then Corbis would "re-license" that image to McGraw-Hill. It then sets forth the parties'
agreement concerning the price McGraw-Hill would pay in the event McGraw-Hill re-licensed
an image. It is not reasonable to infer from this provision that Corbis intended to grant McGrawHill permission to use Pelaez's photographs beyond the scope of the invoices without first
securing additional permission- that is, without first "re-licensing" the photographs-to do so.
In sum, a reasonable factfinder could not infer from the written agreements that Corbis intended
to grant an implied license to McGraw-Hill.
(ii)

Corbis' s Conduct

McGraw-Hill points to the fact that Corbis never refused a request for an express license
as evidence of an implied license, relying on Falcon Enter., Inc. v. Pubs. Serv. , Inc., 438 F.
App'x 579, 581 (9th Cir. 2011). The record in Falcon established that the parties had "frequent
and informal interactions," which "contradicted" the plaintiff-copyright owner's "claim that
[defendant-]Publishers needed an express license for each image [they] published." Id. In
contrast to Falcon, the record here establishes that the parties engaged in a structured process for

33

licensing images, which included memorializing their agreements in writing. (See, e.g. , Spelman
Deel. , 15 (characterizing use absent an invoice as an "oversight" which "could occasionally
happen").) Falcon is thus distinguishable. See, e.g., Frerckv. Pearson Educ. , Inc., 63 F. Supp.
3d 882,889 (N.D. Ill. 2014) ("In contrast to ... Falcon, plaintiff and defendant abided by a
formal protocol ... "); Bean v. Pearson Educ., Inc., 949 F. Supp. 2d 941, 946-47 (D. Ariz. 2013)
("In contrast to the informal course of conduct described in Falcon ... here the parties engaged
in a structured process . . .. "). 12
Moreover, McGraw-Hill fails to offer any evidence that Corbis knew McGraw-Hill was
reproducing Pelaez's photographs in quantities beyond those specified in the invoices. Cf Keane

Dealer Servs., Inc. v. Harts , 968 F. Supp. 944, 947 (S.D.N.Y. 1997) (Baer, J.) (holding that
copyright owner granted implied license where it knew of, and failed to object to, licensee's use
of licensor's copyrighted work). The failure to provide evidence of Corbis' s knowledge of
McGraw-Hill's use distinguishes the present case from Pearson, on which McGraw-Hill relies. 13
In Pearson, 855 F. Supp. 2d 103, like in this case, a plaintiff-photographer brought claims of
copyright infringement by against a publisher-defendant who had obtained the photographer's
images from non-party agencies. The record on summary judgment established that the publisher
used the photographer's copyrighted images before obtaining the agencies' written permission to

12

Even McGraw-Hill's own conduct does not support its contention that it had an implied license. Throughout its
briefing, McGraw-Hill contends that, under the terms of the alleged implied license, it would report to Corbis its
usage, be invoiced for that usage, and pay for it. But it is undisputed that McGraw-Hill never reported to Corbis any
of the print overruns Pelaez alleges, was never invoiced for the overruns, and never paid for the uses . McGrawHill's failure to act in accordance with what it contends were the parties ' expectations further demonstrates that there
was not a meeting of the minds as to McGraw-Hill's authorization to use Pelaez's photographs.
13

McGraw-Hill also relies on Judge Failla's oral ruling at a hearing in Lefkowitz v. McGraw-Hill Global Educ.
Holdings, LLC, 13-CV-5023 (KPF) (S.D.N.Y. Jan. 28, 2016), denying summary judgment for the plaintiff in that
case, arguing that Lefkowitz was "virtually identical" to this one. (McGraw-Hill Opp'n 3.) Because the transcript of
the oral ruling does not divulge the precise basis for the ruling-that is, what facts were, in Judge Failla' s view,
sufficient to raise a triable issue regarding McGraw-Hill's implied license argument- McGraw-Hill ' s reliance on the
Lefkowitz ruling is, in this regard, unhelpful.

34

do so, waiting "months-or even over a year-after publication to seek licenses for the images at
issue." Id. at 127. In support of their implied license defense, the publishers "submit[ted]
testimony .. . stating that they attended meetings during which representatives from [the stock
photography agency] were made aware of this practice,"- that is, backdating invoices-"and at
least tacitly approved of it." Id. at 128. The publishers also "submit[ted] numerous examples of
invoices where the Agencies appear to have granted a license retroactively for other
photographers and artists," in which "the 'invoice date' [wa]s, at times, months or even over a
year after the 'start date' listed on the invoice." Id.
The sole fact in this record that supports McGraw-Hill's implied license argument is that,
beginning by at least 2004, Corbis provided McGraw-Hill with unrestricted access to its archive
of high-resolution images, prior to Corbis requesting payment for usage of the images. But under
§ 202 of the Copyright Act, "[t]ransfer of ownership of any material object ... does not of itself

convey any rights in the copyrighted work embodied in the object." 17 U.S.C. § 202. For that
reason, mere delivery of copyrighted work to a putative licensee, standing alone, is not sufficient
to give rise to an implied license. See Corbel/a, 777 F.3d at 1067.
(iii)

The Spelman Declaration

As a threshold matter, Pelaez argues that the Spelman Declaration is inadmissible because
it contradicts the testimony of Daniel Feduff, who Corbis designated as its Fed. R. Civ. P.
30(b)(6) witness. This contention-for which Pelaez fails to cite any authority-is incorrect.
" [A]s with any other party statement [statements made in a 30(b)(6) deposition] are not ' binding'
in the sense that the corporate party is forbidden to call the same or another witness to offer
different testimony at trial." Wright & Miller, FED. PRAC. & PROC. CIV. § 2103 (3d ed.). That is
particularly true where, as here, the 30(b)(6) testimony is from a non-party. McGraw-Hill is free

tc attempt to contradict or otherwise call into question Fuduff BtcBtimony with admissible
35

evidence. 14
Although not inadmissible under Fed. R. Civ. P. 30(b)(6), the Spelman Declaration does
not raise a material issue of fact regarding Corbis's intent to grant an implied license. Spelman' s
description of the relationship between Corbis and McGraw-Hill relied on formal, written
agreements. He explains that under the PP As and the parties' course of dealing, McGraw-Hill
would select and download the images it wished to use, notify Corbis of the anticipated usage of
the selected images, and request an invoice, which Corbis would then issue. (See Spelman Deel.
~

8.) To the extent Spelman addresses use outside the scope of an invoice, he characterizes such

an occurrence as an "oversight," which "could occasionally happen." (Id.

~

15; see also id.~ 10

(noting that "on occasion ... a Corbis invoice would sometimes not include a reference to certain
kinds of use of the Corbis photos, such as in an electronic version of [McGraw-Hill]'s book").)
The Spelman Declaration at best establishes that Corbis "essentially looked the other way
in the face of infringement." See Palmer/Kane LLC, 204 F. Supp. 3d at 575. Spelman' s
statement that "Corbis did not treat an ongoing, high-volume customer' s use of a licensed photo
... in excess of or beyond the terms of the invoice in question to be an instance of copyright
infringement," (Spelman Deel.~ 14), does not establish the existence of an implied license.
" [T]hat Corbis may have chosen not to view defendant's pre-license use as ' infringing' is neither
here nor there. Infringement is infringement, regardless of what Corbis ... may have chosen to
call it." See Palmer/Kane LLC, 204 F. Supp. 3d at 575.
3. Conclusion
McGraw-Hill has not raised a triable issue of fact as to whether it was granted a license-

There is one caveat. Spelman was employed by Corbis from May 2005 to May 2014. (Spelman Deel. ,r 1.) Thus,
his declaration is inadmissible to the extent it purports to offer evidence regarding whether Corbis granted
McGraw-Hill an implled license prlor to ~004.

14

36

express or implied- to use Pelaez's photographs. Because Pelaez has demonstrated that there is
no material issue of fact as to McGraw-Hill's liability on any of the claims identified in Exhibit 1
to the Kerr Declaration, Pelaez' s motion for summary judgment is GRANTED as to these claims.
As explained supra in Section III.D, however, Pelaez cannot recover actual or statutory damages
on many of these claims.
D. Willfulness

Pelaez also requests summary judgment on the issue of whether McGraw-Hill's
infringement of its copyright was willful.
1. Legal Standard
Where a plaintiff proves infringement, he or she "may, in lieu of an award of actual
damages and profits, request that statutory damages under 17 U.S.C. § 504(c) be awarded."
Island Software & Comp. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 262-63 (2d Cir. 2005).

"If a plaintiff so elects, the district court will grant anywhere between $750 and $30,000 for each
copyright infringed." Id. (citing 17 U.S .C. § 504(c)(l)). If the defendant' s infringement was
willful, then "the district court may also, at its discretion, enhance the statutory damages award to
as much as $150,000 per infringed work." Id. at 263 (citing 17 U.S .C. § 504(c)(2)).
"To prove 'willfulness' under the Copyright Act, the plaintiff must show (1) that the
defendant was actually aware of the infringing activity, or (2) that the defendant's actions were
the result of ' reckless disregard' for, or ' willful blindness' to, the copyright holder's rights."
Island Software, 413 F.3d at 263 . Willfulness may be proven on summary judgment, so long as

the court draws all reasonable inferences in the defendant' s favor. See, e.g., Fendi Adele, S.R.L.
v. Ashley Reed Trading, Inc., 507 F. App 'x 26, 31 (2d Cir. 2013); see also Island Software, 413

F.3d at 263- 64.

37

2. Application
~elaez proceeds on a willful blindness theory. He contends that he is entitled to summary
judgment on the willfulness issue because McGraw-Hill (1) knew that the photographs were
copyrighted, and that licenses were required in order to lawfully exploit copyrighted material;
(2) did not track its use of Pelaez' s Photographs; (3) did not notify Corbis of its total use; and
(4) has been defending against infringement suits involving the publications at issue in this case
since as early as 2012.
McGraw-Hill does not dispute Pelaez's factual assertions. Instead, McGraw-Hill
contends, first, that to prove willfulness Pelaez must demonstrate that a "specific ... decisionmaker" willfully "caused the infringement to occur." (McGraw-Hill Opp'n 25.) To the extent
McGraw-Hill suggests that Pelaez cannot rely on the collective knowledge and actions of
employees at McGraw-Hill to prove willfulness, the Court disagrees. The general rule in this
Circuit, developed in the securities fraud context, is that " [a] corporation is considered to have
acquired the collective knowledge of its employees." New York v. United Parcel Serv. , Inc., 253
F. Supp. 3d 583 , 670 (S .D.N.Y. 2017) (Forrest, J.); see also, e.g., Silvercreek Mgmt. , Inc. v.

Citigroup, Inc., 248 F. Supp. 3d 428, 439 n.8 (S.D.N.Y. 2017) (Oetken, J.); In re WorldCom, Inc.
Sec. Litig., 352 F. Supp. 2d 472,497 (S.D.N.Y. 2005) (Cote, J.). Apart from citing, without
discussion, a single out-of-Circuit district court decision, McGraw-Hill does not provide any
reason for the court to depart from this general rule.
McGraw-Hill also contends, however, that its employees held the "reasonable belief'
that, to the extent it reproduced photographs in quantities beyond those stated in Corbis's
invoices, this "was simply a matter for additional billing and not copyright infringement."
(McGraw-Hill Opp'n 24 (citing Beall Opp. Deel. ,i 8).) In support of this contention, McGraw-

Hill points to the course of dealing butWuun itBtilf and Corbi~.
38

Drnwins all reasonable inferences

in favor of McGraw-Hill, a jury could conclude that McGraw-Hill did not believe it was
engaging in copyright infringement when it used Pelaez's photographs in quantities beyond those
provided for by the Corbis Invoices. For this reason, Pelaez's motion for summary judgment on
willfulness is DENIED.

V.

Pelaez's Concession as to 61 Claims

Pelaez concedes that it has not alleged damages for sixty-one of its claims and does not
oppose entry of judgment as to those claims. (Pelaez Opp ' n 9.) Accordingly, summary
judgment is GRANTED in favor of McGraw-Hill on those claims. 15

CONCLUSION
McGraw-Hill ' s motion for summary judgment is DENIED insofar as it contends that
(1) it is entitled to summary judgment on all of Pelaez' s claims because Pelaez cannot show that
it violated a condition of its licenses; and (2) that the Corbis Registrations are invalid.
McGraw-Hill ' s motion for summary judgment is GRANTED insofar as it contends that
(1) Pelaez may not seek statutory damages for the claims listed in paragraph 20 of Pelaez' s 56.1
Response, with the exception of the claims listed in Rows 341 and 473 of Exhibit 1 to the TAC;
and (2) Pelaez may not recover damages- actual or statutory-for the ninety-four claims in the
TAC that are based on conduct which occurred entirely prior to July 6, 2013 .
Pelaez's motion for summary judgment on the 129 claims listed in Exhibit 1 to the Kerr
Declaration is GRANTED as to McGraw-Hill ' s liability on these claims; however, because of the
Court' s rulings regarding damages, Pelaez will not be able to recover statutory and/or actual
damages on all of these claims.

15 These claims are listed in TAC, Ex. 1, Rows 44, 45, 46, 82, 138, 182,183, 201 , 202, 204,211 , 224, 237,238, 251 ,
254, 255 , 256, 258, 262, 265, 267, 271 , 297, 298, 299, 300, 328, 333 , 353 , 403 , 404, 413 , 420, 421 , 424, 429,430,
443, 446, 455, 466,467, 475, 478, 482, 486, 487,488,489, 490, 493 , 494, and 497; and TAC, Ex. 3, Rows 7, 15, 16,

20, 23, 34, and 45 .

39

Pelaez's motion for summary judgment on the issue of willfulness is DENIED.
The Court has attached, as an appendix to this Opinion and Order, a chart summarizing its
rulings as applied to each of Pelaez's claims.
By August 9, 2019, the parties are directed to submit to the Court a joint letter indicating
(1) the steps, if any, that must be taken before this case is Ready for Trial; (2) whether they wish

to be referred to mediation; and (3) whether they consent to trial of this case before a Magistrate
Judge.
By August 23, 2019, the parties must submit to the Court a joint pretrial order. The joint
pretrial order must comply with this Court' s Individual Rules, which are available at
http: //nysd.uscourts.gov/judge/Wood. On that same date, this case will be deemed Ready for
Trial.
The Clerk of Court is respectfully directed to terminate the motions at ECF Nos. 120 and
148.
SO ORDERED.
Dated: New York, New York
August 1._, 2019

J{;c;,..R/h..

Lsrrxd.

V),\.,.
KIMBA M. WOOD
United States District Judge

40

Appendix: Summary of Claims and Rulings

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit I-Row 1
Exhibit 1-Row 2
Exhibit 1-Row 3
Exhibit 1-Row 4
Exhibit 1-Row 5
Exhibit 1-Row 6
Exhibit 1-Row 7
Exhibit 1-Row 8
Exhibit 1-Row 9
Exhibit 1-Row 10
Exhibit 1-Row 11
Exhibit 1-Row 12
Exhibit 1-Row 13
Exhibit 1-Row 14
Exhibit I-Row 15
Exhibit 1-Row 16
Exhibit 1-Row 17
Exhibit 1-Row 18
Exhibit 1-Row 19
Exhibit 1-Row 20
Exhibit 1-Row 21
Exhibit 1-Row 22
Exhibit 1-Row 23
Exhibit 1-Row 24
Exhibit 1-Row 25
Exhibit 1-Row 26
Exhibit 1-Row 27
Exhibit 1-Row 28
Exhibit 1-Row 29
Exhibit 1-Row 30
Exhibit 1-Row 31
Exhibit 1-Row 32
Exhibit 1-Row 33
Exhibit 1-Row 34
Exhibit 1-Row 35
Exhibit 1-Row 36
Exhibit 1-Row 37
Exhibit 1-Row 38
Exhibit 1-Row 39
Exhibit 1-Row 40
Exhibit 1-Row 41
Exhibit 1-Row 42
Exhibit 1-Row 43

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

H~hibit 1-Row 44

X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X
X
X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X

X
X
X
X
X
X
X
X

X
X
X

X
X

X

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit 1-Row 45
Exhibit 1-Row 46
Exhibit 1-Row 47
Exhibit I-Row 48
Exhibit 1-Row 49
Exhibit 1-Row 50
Exhibit 1-Row 5 I
Exhibit 1-Row 52
Exhibit 1-Row 53
Exhibit 1-Row 54
Exhibit 1-Row 55
Exhibit I-Row 56
Exhibit 1-Row 57
Exhibit 1-Row 58
Exhibit I-Row 59
Exhibit 1-Row 60
Exhibit 1-Row 61
Exhibit 1-Row 62
Exhibit 1-Row 63
Exhibit 1-Row 64
Exhibit 1-Row 65
Exhibit 1-Row 66
Exhibit 1-Row 67
Exhibit 1-Row 68
Exhibit 1-Row 69
Exhibit 1-Row 70
Exhibit I-Row 71
Exhibit 1-Row 72
Exhibit 1-Row 73
Exhibit 1-Row 74
Exhibit 1-Row 75
Exhibit 1-Row 76
Exhibit 1-Row 77
Exhibit 1-Row 78
Exhibit 1-Row 79
Exhibit 1-Row 80
Exhibit 1-Row 81
Exhibit 1-Row 82
Exhibit 1-Row 83
Exhibit 1-Row 84
Exhibit 1-Row 85
Exhibit 1-Row 86
Exhibit 1-Row 87

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Eahibit I-Row 55

X

Summary
Judgment Granted
in McGraw-Hill's
Favor
X
X

X
X

X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X
X
X
X
X

,.,,

2

X
X
X
X
X

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit I-Row 89
Exhibit I-Row 90
Exhibit I-Row 91
Exhibit I-Row 92
Exhibit I-Row 93
Exhibit I-Row 94
Exhibit I-Row 95
Exhibit I-Row 96
Exhibit I-Row 97
Exhibit I-Row 98
Exhibit I-Row 99
Exhibit I-Row 100
Exhibit I-Row 101
Exhibit 1-Row 102
Exhibit 1-Row 103
Exhibit 1-Row 104
Exhibit I-Row 105
Exhibit 1-Row 106
Exhibit I-Row 107
Exhibit I-Row 108
Exhibit I-Row 109
Exhibit I-Row 110
Exhibit 1-Row 111
Exhibit 1-Row 112
Exhibit 1-Row 113
Exhibit I-Row 114
Exhibit 1-Row 115
Exhibit 1-Row 116
Exhibit I-Row 117
Exhibit 1-Row 118
Exhibit 1-Row 119
Exhibit 1-Row 120
Exhibit 1-Row 121
Exhibit 1-Row 122
Exhibit 1-Row 123
Exhibit I-Row 124
Exhibit 1-Row 125
Exhibit 1-Row 126
Exhibit I-Row 127
Exhibit I-Row 128
Exhibit 1-Row 129
Exhibit 1-Row 130
Exhibit I-Row 131

X
X
X
X
X

Emibit I-Row lJ,

X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

Summary
Judgment Granted
in Pelaez's favor on
Liability

X

X

X

X

X
X
X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

X

X
X

X
X

3

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit I-Row 133
Exhibit I-Row 134
Exhibit I-Row 135
Exhibit I-Row 136
Exhibit I-Row 137
Exhibit I-Row 138
Exhibit I-Row 139
Exhibit I-Row 140
Exhibit I-Row 141
Exhibit I-Row 142
Exhibit I-Row 143
Exhibit I-Row 144
Exhibit I-Row 145
Exhibit I-Row 146
Exhibit 1-Row 147
Exhibit 1-Row 148
Exhibit I-Row 149
Exhibit I-Row 150
Exhibit 1-Row 151
Exhibit I-Row 152
Exhibit I-Row 153
Exhibit I-Row 154
Exhibit I-Row 155
Exhibit I-Row 156
Exhibit 1-Row 157
Exhibit I-Row 158
Exhibit 1-Row 159
Exhibit I-Row 160
Exhibit I-Row 161
Exhibit I-Row 162
Exhibit I-Row 163
Exhibit 1-Row 164
Exhibit I-Row 165
Exhibit 1-Row 166
Exhibit I-Row 167
Exhibit I-Row 168
Exhibit 1-Row 169
Exhibit 1-Row 170
Exhibit 1-Row 171
Exhibit I-Row 172
Exhibit I-Row 173
Exhibit I-Row 174
Exhibit I-Row 175

X
X
X
X
X
X
X
X

Exhibit 1-Row 1YJ

X

X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

Summary
Judgment Granted
in Pelaez's favor on
Liability
X

X

X
X
X
X

X
X
X
X
X

X

X
X
X
X
X
X

X
X
X
X
X
X
X
X
X
X

X
X
X
X

X
X
X
X
X
X

X
X
X
X
X
X
X
X

X

4

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit 1-Row 177
Exhibit 1-Row 178
Exhibit 1-Row 179
Exhibit 1-Row 180
Exhibit 1-Row 181
Exhibit 1-Row 182
Exhibit 1-Row 183
Exhibit 1-Row 184
Exhibit 1-Row 185
Exhibit I-Row 186
Exhibit 1-Row 187
Exhibit 1-Row 188
Exhibit 1-Row 189
Exhibit I-Row 190
Exhibit I-Row 191
Exhibit I-Row 192
Exhibit I-Row 193
Exhibit I-Row 194
Exhibit 1-Row 195
Exhibit I-Row 196
Exhibit 1-Row 197
Exhibit 1-Row 198
Exhibit 1-Row 199
Exhibit 1-Row 200
Exhibit 1-Row 201
Exhibit I-Row 202
Exhibit I-Row 203
Exhibit I-Row 204
Exhibit 1-Row 205
Exhibit 1-Row 206
Exhibit I-Row 207
Exhibit 1-Row 208
Exhibit 1-Row 209
Exhibit 1-Row 210
Exhibit 1-Row 211
Exhibit I-Row 212
Exhibit 1-Row 213
Exhibit I-Row 214
Exhibit I-Row 215
Exhibit I-Row 216
Exhibit I-Row 217
Exhibit 1-Row 218
Exhibit I-Row 219
Elihi~it 1-Row 220

X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X
X

X
X
X
X
X
X

X
X

X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X
X
X
X

X
X
X
X
X

X
X

X
X
X
X

5

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit 1-Row 221
Exhibit I-Row 222
Exhibit 1-Row 223
Exhibit 1-Row 224
Exhibit I-Row 225
Exhibit I-Row 226
Exhibit 1-Row 227
Exhibit 1-Row 228
Exhibit I-Row 229
Exhibit I-Row 230
Exhibit 1-Row 231
Exhibit 1-Row 232
Exhibit I-Row 233
Exhibit 1-Row 234
Exhibit 1-Row 235
Exhibit 1-Row 236
Exhibit 1-Row 237
Exhibit 1-Row 238
Exhibit 1-Row 239
Exhibit 1-Row 240
Exhibit 1-Row 241
Exhibit I-Row 242
Exhibit 1-Row 243
Exhibit I -Row 244
Exhibit 1-Row 245
Exhibit I-Row 246
Exhibit 1-Row 247
Exhibit 1-Row 248
Exhibit I-Row 249
Exhibit I-Row 250
Exhibit 1-Row 251
Exhibit I-Row 252
Exhibit 1-Row 253
Exhibit 1-Row 254
Exhibit 1-Row 255
Exhibit 1-Row 256
Exhibit 1-Row 257
Exhibit I-Row 258
Exhibit 1-Row 259
Exhibit I-Row 260
Exhibit I-Row 261
Exhibit I -Row 262
Exhibit 1-Row 263

Exhibit 1-Row 2Q4

X
X
X
X
X
X
X
X
X
X
X
X
X
X

X
X
X
X
X

X

X
X
X
X
X
X

X

X
X

X
X
X
X
X
X

X
X

X
X

X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X

X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X
X

X
X

6

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit 1-Row 265
Exhibit 1-Row 266
Exhibit 1-Row 267
Exhibit 1-Row 268
Exhibit 1-Row 269
Exhibit 1-Row 270
Exhibit 1-Row 271
Exhibit 1-Row 272
Exhibit I-Row 273
Exhibit 1-Row 274
Exhibit 1-Row 275
Exhibit 1-Row 276
Exhibit 1-Row 277
Exhibit 1-Row 278
Exhibit 1-Row 279
Exhibit 1-Row 280
Exhibit 1-Row 281
Exhibit 1-Row 282
Exhibit 1-Row 283
Exhibit 1-Row 284
Exhibit 1-Row 285
Exhibit 1-Row 286
Exhibit I-Row 287
Exhibit 1-Row 288
Exhibit 1-Row 289
Exhibit 1-Row 290
Exhibit I-Row 291
Exhibit 1-Row 292
Exhibit 1-Row 293
Exhibit 1-Row 294
Exhibit 1-Row 295
Exhibit I-Row 296
Exhibit 1-Row 297
Exhibit 1-Row 298
Exhibit I-Row 299
Exhibit I-Row 300
Exhibit I-Row 301
Exhibit I-Row 302
Exhibit I-Row 303
Exhibit 1-Row 304
Exhibit I-Row 305
Exhibit 1-Row 306
Exhibit I-Row 307

Enhiba 1-RQW ;0~

X
X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor
X

X
X
X
X
X
X

X
X

X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X

X
X
X

X
X
X

X
X
X
X
X
X

X
X
X

X

7

Exhibit I-Row 309
Exhibit I-Row 310
Exhibit 1-Row311
Exhibit I-Row 312
Exhibit 1-Row 313
Exhibit 1-Row 314
Exhibit l-Row315
Exhibit I-Row 316
Exhibit I-Row 317
Exhibit I-Row 318
Exhibit 1-Row 319
Exhibit 1-Row 320
Exhibit 1-Row 321
Exhibit 1-Row 322
Exhibit 1-Row 323
Exhibit 1-Row 324
Exhibit 1-Row 325
Exhibit 1-Row 326
Exhibit 1-Row 327
Exhibit 1-Row 328
Exhibit I-Row 329
Exhibit 1-Row 330
Exhibit 1-Row 331
Exhibit 1-Row 332
Exhibit 1-Row 333
Exhibit 1-Row 334
Exhibit 1-Row 335
Exhibit 1-Row 336
Exhibit 1-Row 337
Exhibit 1-Row 338
Exhibit 1-Row 339
Exhibit 1-Row 340
Exhibit 1-Row 341
Exhibit 1-Row 342
Exhibit 1-Row 343
Exhibit 1-Row 344
Exhibit 1-Row 345
Exhibit 1-Row 346
Exhibit 1-Row 347
Exhibit 1-Row 348
Exhibit 1-Row 349
Exhibit 1-Row 350
Exhibit 1-Row 351
I;;ohi9i{ 1-Row 352

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
X
X

X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X

X
X
X
X
X
X
X
X
X
X
X
X
X

X

X
X

X

X
X
X
X

X
X
X
X
X
X
X
X
X
X
X

X

8

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit 1-Row 353
Exhibit 1-Row 354
Exhibit 1-Row 355
Exhibit 1-Row 356
Exhibit 1-Row 357
Exhibit 1-Row 358
Exhibit 1-Row 359
Exhibit 1-Row 360
Exhibit 1-Row 361
Exhibit 1-Row 362
Exhibit 1-Row 363
Exhibit 1-Row 364
Exhibit 1-Row 365
Exhibit 1-Row 366
Exhibit 1-Row 367
Exhibit 1-Row 368
Exhibit 1-Row 369
Exhibit I-Row 370
Exhibit I-Row 371
Exhibit 1-Row 372
Exhibit 1-Row 373
Exhibit 1-Row 374
Exhibit 1-Row 375
Exhibit 1-Row 376
Exhibit 1-Row 377
Exhibit 1-Row 378
Exhibit 1-Row 379
Exhibit 1-Row 380
Exhibit 1-Row 381
Exhibit 1-Row 382
Exhibit 1-Row 383
Exhibit 1-Row 384
Exhibit 1-Row 385
Exhibit 1-Row 386
Exhibit 1-Row 387
Exhibit I-Row 388
Exhibit 1-Row 389
Exhibit 1-Row 390
Exhibit 1-Row 391
Exhibit 1-Row 392
Exhibit 1-Row 393
Exhibit 1-Row 394
Exhibit 1-Row 395

Summary
Judgment Granted
in McGraw-Hill's
Favor

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X
X
X
X
X
X

X
X
X

X

X
X
X
X
X
X
X
X
X
X
X
X

X
X
X
X
X

X
X
X
X
X
X
X
X
X

X
X
X
X
X
X

X

X

X
X

Eahibit I-Row J9G
9

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit I-Row 397
Exhibit I-Row 398
Exhibit I-Row 399
Exhibit I-Row 400
Exhibit 1-Row 401
Exhibit 1-Row 402
Exhibit I-Row 403
Exhibit 1-Row 404
Exhibit 1-Row 405
Exhibit 1-Row 406
Exhibit 1-Row 407
Exhibit 1-Row 408
Exhibit I-Row 409
Exhibit 1-Row 410
Exhibit I-Row 411
Exhibit 1-Row 412
Exhibit I-Row 413
Exhibit 1-Row 414
Exhibit 1-Row 415
Exhibit I-Row 416
Exhibit 1-Row 417
Exhibit 1-Row 418
Exhibit 1-Row 419
Exhibit I -Row 420
Exhibit 1-Row 421
Exhibit 1-Row 422
Exhibit 1-Row 423
Exhibit 1-Row 424
Exhibit 1-Row 425
Exhibit 1-Row 426
Exhibit I-Row 427
Exhibit I-Row 428
Exhibit 1-Row 429
Exhibit 1-Row 430
Exhibit 1-Row 431
Exhibit 1-Row 432
Exhibit 1-Row 433
Exhibit 1-Row 434
Exhibit 1-Row 435
Exhibit 1-Row 436
Exhibit 1-Row 437
Exhibit 1-Row 438
Exhibit 1-Row 439

X
X
X
X
X
X

E?ihibit 1-RQW 440

X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X
X
X
X
X
X
X
X

X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in Pelaez's favor on
Liability

X
X
X
X

X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X

X
X

X

X
X
X
X

X

X
X
X
X
X
X
X

10

Exhibit I-Row 441
Exhibit I-Row 442
Exhibit I-Row 443
Exhibit I-Row 444
Exhibit I-Row 445
Exhibit I-Row 446
Exhibit I-Row 447
Exhibit I-Row 448
Exhibit I-Row 449
Exhibit 1-Row 450
Exhibit I-Row 451
Exhibit 1-Row 452
Exhibit 1-Row 453
Exhibit 1-Row 454
Exhibit 1-Row 455
Exhibit I-Row 456
Exhibit I-Row 457
Exhibit I-Row 458
Exhibit 1-Row 459
Exhibit 1-Row 460
Exhibit I-Row 461
Exhibit I-Row 462
Exhibit 1-Row 463
Exhibit 1-Row 464
Exhibit 1-Row 465
Exhibit 1-Row 466
Exhibit I-Row 467
Exhibit I-Row 468
Exhibit I-Row 469
Exhibit I-Row 470
Exhibit I-Row 471
Exhibit 1-Row 472
Exhibit I-Row 473
Exhibit 1-Row 474
Exhibit 1-Row 475
Exhibit I-Row 476
Exhibit 1-Row 477
Exhibit 1-Row 478
Exhibit 1-Row 479
Exhibit 1-Row 480
Exhibit 1-Row 481
Exhibit 1-Row 482
Exhibit 1-Row 483
E~hil1it 1-Row 484

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

Summary
Judgment Granted
in Pelaez's favor on
Liability

X

X

X
X

X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

X
X
X

X
X

X
X
X
X
X

X
X

X
X

X
X

X
X
X
X
X
X

X
X

X
X
X
X

X

X

11

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages
Exhibit I-Row 485
Exhibit I-Row 486
Exhibit 1-Row 487
Exhibit 1-Row 488
Exhibit 1-Row 489
Exhibit 1-Row 490
Exhibit 1-Row 491
Exhibit 1-Row 492
Exhibit 1-Row 493
Exhibit I-Row 494
Exhibit 1-Row 495
Exhibit 1-Row 496
Exhibit I -Row 497
Exhibit 2-Row l
Exhibit 2-Row 2
Exhibit 2-Row 3
Exhibit 2-Row 4
Exhibit 2-Row 5
Exhibit 2-Row 6
Exhibit 2-Row 7
Exhibit 2-Row 8
Exhibit 2-Row 9
Exhibit 2-Row 10
Exhibit 2-Row 11
Exhibit 2-Row 12
Exhibit 2-Row 13
Exhibit 2-Row 14
Exhibit 2-Row 15
Exhibit 2-Row 16
Exhibit 2-Row 17
Exhibit 2-Row 18
Exhibit 2-Row 19
Exhibit 3-Row 1
Exhibit 3-Row 2
Exhibit 3-Row 3
Exhibit 3-Row 4
Exhibit 3-Row 5
Exhibit 3-Row 6
Exhibit 3-Row 7
Exhibit 3-Row 8
Exhibit 3-Row 9
Exhibit 3-Row 10
Exhibit 3-Row 11

X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor
X
X
X
X
X

X
X
X
X

X
X
X

X

X

X
X
X
X
X
X
X
X
X

X
X
X
X
X

X

E?\hibit J-Row 12
12

Summary
Judgment Granted
in Pelaez's favor on
Liability

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit 3-Row 13
Exhibit 3-Row 14
Exhibit 3-Row 15
Exhibit 3-Row 16
Exhibit 3-Row 17
Exhibit 3-Row 18
Exhibit 3-Row 19
Exhibit 3-Row 20
Exhibit 3-Row 21
Exhibit 3-Row 22
Exhibit 3-Row 23
Exhibit 3-Row 24
Exhibit 3-Row 25
Exhibit 3-Row 26
Exhibit 3-Row 27
Exhibit 3-Row 28
Exhibit 3-Row 29
Exhibit 3-Row 30
Exhibit 3-Row 31
Exhibit 3-Row 32
Exhibit 3-Row 33
Exhibit 3-Row 34
Exhibit 3-Row 35
Exhibit 3-Row 36
Exhibit 3-Row 37
Exhibit 3-Row 38
Exhibit 3-Row 39
Exhibit 3-Row 40
Exhibit 3-Row 41
Exhibit 3-Row 42
Exhibit 3-Row 43
Exhibit 3-Row 44
Exhibit 3-Row 45
Exhibit 3-Row 46
Exhibit 3-Row 47
Exhibit 3-Row 48
Exhibit 3-Row 49
Exhibit 3-Row 50
Exhibit 3-Row 51
Exhibit 3-Row 52
Exhibit 3-Row 53
Exhibit 3-Row 54
Exhibit 3-Row 55
Exhibit 3-Row 56

X
X
X
X
X
X
X
X
X
X
X
X
X

Summary
Judgment Granted
in McGraw-Hill's
Favor

X
X

X

X

X
X
X
X
X
X
X
X
X
X
X
X
X

X

X

X

.

X
X
X
X
X
X
X

13

Summary
Judgment Granted
in Pelaez's favor on
Liability

Ineligible for
Ineligible for
Statutory and/or
Statutory Damages Actual Damages

Exhibit 3-Row 57

X

14

Summary
Judgment Granted
in McGraw-Hill's
Favor

Summary
Judgment Granted
in Pelaez's favor on
Liability