GORDON v. HOUGHTON MIFFLIN HARCOURT PUBLISHING CO.
MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE L. FELIPE RESTREPO ON 6/23/2015. 6/23/2015 ENTERED AND COPIES E-MAILED.(kp, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
JOEL GORDON, d/b/a JOEL GORDON
HOUGHTON MIFFLIN HARCOURT
L. Felipe Restrepo, J.
June 23, 2015
Presently before the Court is Defendant Houghton Mifflin Harcourt Publishing Co.
(“HMH”)’s Motion to Transfer Venue to the Southern District of New York pursuant to 28
U.S.C. § 1404. For the reasons that follow, Defendant’s Motion to Transfer Venue will be
granted, and the case will be transferred to the United States District Court for the Southern
District of New York.
FACTUAL AND PROCEDURAL HISTORY
Plaintiff Joel Gordon is a professional photographer who resides in New York, New
York. Compl. ¶ 1. Gordon makes his living by creating and licensing his photographs, and
operates under the business name “Joel Gordon Photography.” Id. Defendant HMH is a
Massachusetts corporation, with a principal place of business in Boston, Massachusetts. Id. at
¶ 2. HMH is one of the world’s longest-established publishing houses and largest providers of
pre-K-12 educational textbooks. Id. HMH sells and distributes its publications throughout the
United States, including within the Eastern District of Pennsylvania. Id. at ¶ 3.
At issue in this action is HMH’s use of 71 photographs authored and owned by Gordon
(the “Photographs”). 1 The Photographs have been registered with the United States Copyright
Non-party Susan Lerner is the author and owner of 2 of the 71 photographs, but, prior to this
action, Lerner transferred to Gordon the exclusive right to grant licenses to others to reproduce, distribute,
Office. Compl. ¶ 7; see also Compl. ex. 1. Between 1990 and 2008, Gordon licensed the
Photographs to HMH for use in HMH’s educational publications. Compl. ¶ 8. Each of the
licenses placed certain restrictions on HMH’s use of the Photographs, including the number of
copies, distribution area, language, duration, and/or permissible media. Id.; see also Compl.
The Photographs were licensed to HMH by way of invoice, which generally contained
the terms and conditions of the license on the reverse side of the invoice. Def.’s Mem. of Law in
Supp. 2 n.2. The Photographs were licensed via 35 invoices. Compl. Ex. 1; Def.’s Mem. of Law
in Supp. 2. The parties have thus far located 29 of those invoices, but they have only been able
to locate the complete terms and conditions for a portion of those invoices. Def.’s Mem. of Law
in Supp. at 2. Twenty of the licenses contain what HMH describes a “permissive forum selection
clause.” 2 One of the licenses contains what HMH describes as a “mandatory forum selection
clause.” 3 The terms of the remaining invoices/licenses are unknown at this time or neutral as to
venue. Table 1 (below) summarizes the current state of affairs.
No. of Invoices/Licenses
No. of Photographs/Claims
and display these 2 photographs. Compl. ¶ 6; see also Compl. Ex. 1. Lerner apparently lives and works
in both New York, New York and southern Florida. See Def.’s Mem. of Law in Supp. 6 n.4.
See Def.’s Mem. of Law in Supp. 3 (“This agreement shall be interpreted in accordance with the
law of the State of New York and the parties consent to the jurisdiction of the Courts of New York.”)
(quoting the relevant portion of select invoices attached thereto as Exhibit B).
See Def.’s Mem. of Law in Supp. 2 (“Any suit hereunder shall be brought in the state or federal
courts located in New York City.”) (quoting the relevant portion of an invoice attached thereto as Exhibit
Gordon alleges that shortly after obtaining licenses for the Photographs, HMH exceeded
the licenses and infringed Gordon’s copyrights in various ways, including: (1) printing more
copies of the Photographs than Gordon 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; (5) publishing
the Photographs beyond the specified time limits; and/or (6) publishing and distributing the
Photographs in subsequent editions, foreign language translations, and various other publications
without obtaining authorization. Compl. ¶ 13. Gordon alleges that these infringements were no
mistake – Gordon claims HMH intended at all times to exceed the scope of the licenses and
infringe on Gordon’s copyrights, and deliberately mislead Gordon in the licensing negotiations
to secure a more favorable price for the photographs. Id. at ¶¶ 9-12. Gordon also alleges that
HMH has engaged is a pattern of similar copyright infringement, as evidenced by tens of similar
suits filed across the country by photographers and stock photography agencies against HMH.
Id. at ¶¶ 16-20. Gordon alleges that HMH’s business model is “built on a foundation of
pervasive and willful copyright infringement, [and that HMH’s conduct] deprived Gordon and
hundreds of other photographers and visual art licensor of their rightful compensation and
unjustly enriched HMH with outlandish profits in the process.” Id. at ¶ 16. HMH denies
Gordon’s allegations. See generally Def.’s Answer.
Gordon filed the Complaint in this action on August 11, 2014. ECF No. 1. Following an
extension of time to answer the Complaint, HMH timely filed the pending Motion to Transfer
Venue on October 22, 2014, and timely filed its Answer to the Complaint on October 24, 2014.
ECF Nos. 7-8. Gordon filed a Response in Opposition to the Motion to Transfer on November 5,
2014. ECF No. 10. HMH filed a Reply in Support of the Motion to Transfer on November 12,
2014. ECF No. 11. The Court held oral argument on the Motion to Transfer on December 16,
2014. ECF Nos. 15-16. 4
“For the convenience of the parties and witnesses, in the interest of justice, a district court
may transfer any civil action to any other district or division where it might have been brought or
to any district or division to which all parties have consented.” 28 U.S.C. § 1404(a).
“Analysis of a request for a § 1404(a) transfer has two components.” Family Financial
Centers LLC v. Cox, 2015 WL 790038, at *3 (E.D. Pa. Feb. 25, 2015). First, both the original
venue and the requested venue must be proper. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879
(3d Cir. 1995). Second, “the Court is required to undertake a balancing test in deciding whether
the ‘interests of justice [would] be better served by a transfer to a different forum.’” Family
Financial Centers LLC, 2015 WL 790038, at * 3 (quoting Jumara, 55 F.3d at 879).
With respect to the first component, the Complaint sets forth a single count of Copyright
infringement, and asserts no other federal or state law claims. Compl. 8-9. Accordingly, venue
for this action is governed by a specific venue provision, 28 U.S.C. § 1400(a), which reads:
“Civil actions, suits, or proceedings arising under any Act of Congress relating to copyrights or
exclusive rights in mask works or designs may be instituted in the district in which the defendant
or his agent resides or may be found.” Venue for this action is also governed by the general
venue provision, 28 U.S.C. § 1391(b), which states that venue is proper in: “(1) a judicial district
in which any defendant resides . . . ; (2) a judicial district in which a substantial part of the events
During oral argument, counsel for the parties indicated that there was an above average chance
that this matter could be settled by the parties in the near future. Unfortunately, the parties subsequently
informed the Court that this matter could not be settled and that an adjudication of the Motion to Transfer
Venue would be required to advance this action. Accordingly, the Motion to Transfer Venue is now ripe
or omissions giving rise to the claim occurred . . . .” For all venue purposes, when a business
entity like HMH is a defendant, it shall be deemed to reside in any judicial district in which such
defendant is subject to the court’s personal jurisdiction with respect to the civil action in
question. 28 U.S.C. § 1391(c)(2). In addition, a corporation that is subject to personal
jurisdiction at the time the action is commenced shall be deemed to reside in any district in that
state within which its contacts would be sufficient to subject it to personal jurisdiction if that
district were a separate state. 28 U.S.C. § 1391(d). The parties do not dispute that HMH has
sufficient contacts with the Eastern District of Pennsylvania to establish this Court’s personal
jurisdiction over the Defendant. Furthermore, HMH’s registered agent in Pennsylvania “resides”
and “may be found” in the Eastern District of Pennsylvania, as set forth by 28 U.S.C. § 1400(a). 5
Accordingly, HMH resides in the Eastern District of Pennsylvania for venue purposes. Thus,
venue is proper in the Eastern District of Pennsylvania.
HMH’s requested venue for the action, the Southern District of New York, is also proper.
HMH undoubtedly “resides” in the Southern District of New York on account of its substantial
operations in New York, New York. Furthermore, a substantial part of the events giving rise to
Gordon’s claim occurred in the Southern District of New York, as the relevant licenses were
negotiated and granted by Gordon while he operated in that district, and HMH allegedly violated
Gordon’s copyright by distributing infringing works in that district as well.
Having established that the first component of the § 1404 transfer analysis is satisfied, the
Court must now undertake the more complicated task of balancing the various public-interest
and private-interest factors that inform the transfer decision. As for public-interest factors, the
Court of Appeals has directed consideration of the following: (1) the enforceability of the
According to the Pennsylvania Department of State, HMH’s registered office address in
Pennsylvania is “C T CORP System,” located in “Philadelphia.”
judgment; (2) practical considerations that could make the trial easy, expeditious, or inexpensive;
(3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the
local interest in deciding local controversies at home; (5) the public policies of the fora; and (6)
the familiarity of the trial judge with applicable state law in diversity issues. Jumara, 55 F.3d
879-80. The private-interest factors to be considered include: (1) plaintiff’s forum preference as
manifested in the original choice; (2) the defendant’s forum preference; (3) whether the claim
arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and
financial condition; (5) the convenience of the witnesses – but only to the extent that the
witnesses may actually be unavailable for trial in one of the fora; and (6) the location of books
and records – but only to the extent that the files could not be produced in the proposed forum.
Id. at 879. This is not an exhaustive list of the factors that may be considered, and the district
court must utilize a case-specific approach to balancing the relevant interests. Id. at 878
(discussing the majority opinion in Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22
(1988)). Having considered the public-interest and private-interest factors implicated by the
facts and circumstances of this action, and for the reasons set forth below, the Court finds that
transfer to the United States District Court for the Southern District of New York is appropriate.
As preliminary matter, this Court agrees with HMH that the private-interest factors for
the claim based on the 2008 license must be regarded as weighing entirely in favor of transfer to
the Southern District of New York. When faced with a mandatory forum selection clause, such
as the one in the 2008 license, the Supreme Court has clearly dictated the required approach:
“When parties agree to a forum-selection clause, they waive the right to challenge the
preselected forum as inconvenient or less convenient for themselves or their witnesses, of for
their pursuit of the litigation. A court accordingly must deem the private-interest factors to
weigh entirely in favor of the preselected forum.” Atlantic Marine Constr. Co. v. U.S. Dist.
Court for the W. Dist. of Texas, 134 S. Ct. 568, 582 (2013). Accordingly, the private-interest
factors for the claim based on the 2008 license weigh entirely in favor of transfer.
Plaintiff’s Forum Preference
Most recently, Gordon has expressed a clear preference for litigating this action in the
Eastern District of Pennsylvania, as evidenced by his decision to file the Complaint with this
Court, and his opposition to HMH’s motion to transfer venue. Generally, a Plaintiff’s forum
preference is given great weight, and “should not be disturbed lightly.” In re Amkor Tech, Inc.
Sec. Litig., 2006 WL 3857488, at *3 (E.D. Pa. Dec. 28, 2006) (quoting Weber v. Basic Comfort,
Inc., 155 F. Supp. 2d 283, 285 (E.D. Pa. 2001). Courts in this district, however, have long
recognized that little or no deference is warranted where none of the operative facts occurred in
the plaintiff’s selected forum. See, e.g., Synthes, Inc. v. Knapp, 978 F. Supp. 2d. 450, 459 (E.D.
Pa. 2013); Lindley v. Caterpillar, Inc., 93 F. Supp. 2d. 615, 617 (E.D. Pa. 2000); Fid. Leasing,
Inc. v. Metavec Corp., 1999 WL 269922, at *2 (E.D. Pa. Apr. 29, 1999); Rowles v. Hammermill
Paper Co., Inc., 689 F. Supp. 494, 496 (E.D. Pa. 1988). Here, Plaintiff does not reside in this
district, and few (if any) of the operative facts occurred in this district.
In evaluating Plaintiff’s forum preference, the Court must also consider the permissive
forum selection clauses that apply to 46 of the 71 works that are at issue in this action.
Necessarily, “[p]ermissive forum selection clauses are given less weight than mandatory ones
because they do not exclusively limit the appropriate venue for litigation.” De Lage Landen Fin.
Servs., Inc. v. Elite Tech. (N.Y.), Inc., 2009 WL 3152163, at *3 (E.D. Pa. Sept. 30, 2009) (citing
Feldman v. Google, Inc., 513 F. Supp. 2d 229, 245-46 (E.D. Pa. 2007)). Nevertheless,
permissive forum selection clauses have been viewed as a “manifestation of the parties’
preferences as to a convenient forum.” Jumara, 55 F. 3d at 880; see also Cancer Genetics, Inc. v.
Kreatech Biotechnology, B.V., 2007 WL 4365328 (D.N.J. Dec. 11, 2007) (viewing a permissive
forum selection clause as a manifestation of the parties preferences that weighs in favor of
transfer). In light of the foregoing, the Court views the permissive forum selection clauses
applicable to 46 of the claims at issue as a fact that deserves meaningful consideration.
Having considered all of the facts and circumstances relevant to this factor, the Court
affords Gordon’s current forum preference for the Eastern District of Pennsylvania the very little
weight it deserves.
Defendant’s Forum Preference
Typically, the defendant’s forum preference is “entitled to considerably less weight that
Plaintiff’s, as the purpose of a venue transfer is not to shift inconvenience from one party to
another.” EVCO Tech and Dev. Co. v. Precision Shooting Equip. Inc., 379 F. Supp. 2d 728, 730
(E.D. Pa. 2003) (citations omitted). Nevertheless, HMH’s preference for litigating in the
Southern District of New York is noted and, considering the import of the permissive forum
selection clauses and the other private interests recognized below, is given the modest weight it
Where the Claim Arose
“Typically the most appropriate venue is where a majority of the events giving rise to the
claim arose.” In re Amkor Tech., 2006 WL 3857488, at *5 (citation omitted). “When the
chosen forum has little connection with the operative facts of the lawsuit, such that retaining the
action conflicts with the interests in efficiency and convenience, other private interests are
afforded less weight.” Cancer Genetics, Inc., 2007 WL 4365328, at *5 (citations omitted).
Here, there is no credible argument that the majority of the evens giving rise to Gordon’s
claim arose in the Eastern District of Pennsylvania. While Gordon could say that some of the
alleged infringement took place here, the same could be said for every district in which HMH
distributed materials containing one of more of the Photographs. Having reviewed the
allegations in the Complaint and the exhibits attached to HMH’s motions to transfer, it is clear
that the Southern District of New York has a substantial connection to nearly all of the events
that gave rise to Gordon’s claim: Plaintiff resides and operates his business exclusively in the
Southern District of New York; all of the Photographs were licensed by Gordon to HMH from
the Southern District of New York; all of the payments from HMH to Gordon were sent to
Southern District of New York; and HMH operates at least one office in the Southern District of
New York. 6 This factor strongly favors transfer.
Convenience of the Parties
With respect to the fourth private-interest factor, the Third Circuit has directed this Court
to consider “the convenience of the parties as indicated by their relative physical and financial
condition.” Jumara, 55 F.3d at 879.
It appears that transfer to the Southern District of New York would be more convenient
for both of the parties in this action. Gordon resides in New York, New York, so a courthouse
that is a mere NYC Subway or Metro North ride away would certainly be more convenient for
him than a courthouse that requires him to travel nearly 100 miles to Philadelphia. The Southern
District of New York would also be more convenient for HMH and any of its party witnesses
There is some evidence to suggest that the District of Massachusetts also has a substantial
connection to the events that gave rise to Gordon’s claim. For example, HMH is headquartered in that
district, the relevant invoices were accepted in that district, and any decision by HMH to exceed the terms
of the corresponding licenses (and thus infringe on Gordon’s copyrights) would have presumably been
made in that district. However, nobody has sought transfer to the District of Massachusetts, and even if
someone had, the Southern District of New York appears to have a greater connection to the relevant
events in this action.
traveling from its Boston headquarters, as the two courthouses in the Southern District of New
York are closer to Boston than the U.S. Courthouse in Philadelphia. Counsel of record for HMH
is located in Philadelphia, but HMH’s motion shows that they have also retained attorneys in
New York City and Chicago to represent them in this matter. Accordingly, transfer is neutral
with respect to HMH’s attorneys, as HMH will have experienced counsel nearby whether this
action remains in this district or is transferred to the Southern District of New York. This Court
recognizes that transfer would be slightly less convenient for Gordon’s counsel, as Mr. Harmon’s
office is slightly closer to Philadelphia than it is to the Southern District of New York. This
Court perceives no convenience difference for Mr. Kerr, as the difference between traveling to
Philadelphia and traveling to the Southern District of New York for an attorney located in
Wyoming appears negligible. 7
Having considered the foregoing, the convenience of the parties and their attorneys
militates slightly in favor of transfer to the Southern District of New York.
Convenience of the Witnesses
The fifth private-interest factor considers “the convenience of the witnesses – but only to
the extent that the witnesses may actually be unavailable for trial in one of the fora.” Jumara, 55
F.3d at 879. So far, the parties have only identified one non-party witness – Susan Lerner. Ms.
Lerner appears to live and work in both New York City and southern Florida. If Ms. Lerner can
be found in New York City, then she is subject to the subpoena power of the Eastern District of
Pennsylvania and the Southern District of New York. 8 If Ms. Lerner can only be found in
The Court also recognizes that Messrs. Harmon and Rice may be slightly inconvenienced by
transfer to the Southern District of New York if such transfer would require them to seek pro hac vice
admission to practice in that court.
Ms. Lerner’s purported New York City address (300 W. 17th Street, New York, New York,
10011) is within 100 miles of the U.S. Courthouse located at 601 Market Street, Philadelphia, PA, 19106.
southern Florida, then neither the Eastern District of Pennsylvania nor the Southern District of
New York would be able to compel her appearance at trial. Neither district has an advantage
over the other with respect to witness availability. Accordingly, this factor is neutral as to
Location of the Books and Records
The final private-interest factor requires consideration of the location of the books and
records relevant to the claim in this action, but such consideration is “limited to the extent that
the files could ne be produced in the alternative forum.” Jumara, 555 F.3d at 879. Given the
current state of technology with respect to copying, scanning, and electronically exchanging
relevant documents, this Court perceives nothing about the anticipated evidence in this case that
would militate for or against transfer. The Court anticipates that the relevant books and records
would be equally available to the parties whether this action proceeds in the Eastern District of
Pennsylvania or the Southern District of New York. Accordingly, this factor is neutral as to
Enforceability of the Judgment
The first public-interest factor concerns the enforceability of any potential judgment
obtained in the original forum versus the proposed new forum. Jumara, 55 F.3d at 879.
Ultimately, a judgment obtained in the Eastern District of Pennsylvania would be equally
enforceable against HMH as a judgment obtained in the Southern District of New York. Both
Accordingly, she would be subject to deposition and trial subpoenas issued by this Court pursuant to Rule
45(c)(1)(A) of the Federal Rules of Civil Procedure.
judgments could be registered and subsequently enforced in any other federal district pursuant to
28 U.S.C. § 1963. Accordingly, this factor is neutral as to transfer. 9
Practical Considerations for Trial
The second public-interest factor requires the consideration of “practical considerations
that could make the trial easy, expeditious, or inexpensive.” Jumara, 55 F.3d at 879. For the
reasons discussed above with respect to the fourth, fifth, and sixth private-interest factors, trial in
the Southern District of New York would likely be slightly easier, more expeditious, and less
expensive than trial in the Eastern District of Pennsylvania. In addition, with respect to Ms.
Lerner, though she would be equally “available” in both districts, if she does indeed reside in
New York City, it would undoubtedly be easier for her to participate in a trial held in the
Southern District of New York. Accordingly, this factor weighs slightly in favor of transfer.
The third public-interest factor addresses “the relative administrative difficulty in the two
fora resulting from court congestion.” Jumara, 55 F.3d at 879. HMH concedes that “there is
little difference between this Court and the Southern District of New York in terms of court
congestion.” Def’s Mem. of Law 7. In support of this assessment, HMH attached Tables C-1
and C-5 from the United States Courts’ report detailing Federal Judicial Caseload Statistics for
Since HMH has personnel, physical assets, and, presumably, financial assets located in the
Southern District of New York, Gordon could enforce any judgment obtained there without the minimal
burden of registering it in a district where HMH has such assets. In contrast, any judgment obtained by
Gordon in the Eastern District of Pennsylvania would likely require registration in a second district, since
HMH has no personnel or offices in Pennsylvania. However, this difference does not impact the legal
enforceability of any judgment obtained, and even if it did, the administrative task of registering the
judgment is so minimal that it does not impact this Court’s analysis.
the 12-month period ending December 31, 2013. See Def.’s Mem. of Law Exs. F-G. 10 Having
considered the total caseloads of both districts, the median time to disposition for civil cases in
both districts, and the number of operating judges and judicial vacancies in both districts, this
Court agrees with HMH that there is little difference between the two districts with respect to
court congestion. Accordingly, this factor is neutral as to transfer.
The Local Interest
The fourth public-interest factor weighs “the local interest in deciding local controversies
at home.” Jumara, 55 F.3d at 879. No matter how small an interest the Southern District of New
York has in resolving this controversy, it must trump the interest possessed by the Eastern
District of Pennsylvania. As noted elsewhere, this district has almost no connection to this
action. In contrast, the Southern District of New York could rightly be considered the “home” of
this dispute in light of: (1) Gordon being a citizen of the State of New York; (2) Gordon
operating his business exclusively in of the Southern District of New York; (3) HMH having
offices and personnel in the Southern District of New York; and (4) all of the licenses for the
Photographs being either transmitted from or to the Southern District of New York during the
contracting process. While Gordon alleges that HMH infringed his copyrights by distributing
infringing works throughout the country, to the extent that this controversy has a local
connection, that local connection is within the jurisdictional boundaries of the Southern District
of New York. Accordingly, this factor weighs in favor of transfer.
Public Policies of the Fora
The fifth public-interest factor concerns “the public policies of the fora.” Jumara, 55
F.3d at 879. The parties did not address this factor in a meaningful way in their written
Updated tables reflecting information for the 12-month period ending March 31, 2014, are now
available at: http://www.uscourts.gov/statistics-reports/federal-judicial-caseload-statistics-2014-tables.
The Court reviewed these updated tables in addition to the versions presented by HHM.
submissions, and the parties did not elaborate on the application of this factor during oral
argument. As a result, and because this Court has not independently identified any relevant
public policy of either fora implicated by the instant motion, this factor is neutral as to transfer.
Familiarity with State Law
The sixth public-interest factor addresses “the familiarity of the trial judge with the
applicable state law in diversity cases.” Jumara, 55 F.3d at 879-80. Though this case is based on
federal question jurisdiction and not diversity jurisdiction, questions of New York state law will
be relevant to the interpretation of the licenses implicated by Gordon’s copyright claim. While
this Court is confident that it could ably interpret and apply New York law to the extent that it
becomes relevant to this action, a United States District Court Judge sitting in the Southern
District of New York would undoubtedly have more experience with New York law than this
Court. See, e.g., Landmark Bldg. Systems, Inc. v. Whiting-Turner Contracting Co., 2003 WL
21293812, at *2 (E.D. Pa. Apr. 21, 2003) (recognizing that judges in the District of Maryland
have more familiarity with Maryland law than judges in the Eastern District of Pennsylvania).
To the extent that this factor may be considered, it weighs slightly in favor of transfer.
Having considered the public-interest and private-interest factors as outlined above, and
in light of all the facts and circumstances presented to the Court by way of pleading, motion, and
oral argument, in the interest of justice the Defendant’s motion to transfer venue to the Southern
District of New York will be granted.
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