Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. John Wiley & Sons, Inc., No 12 C 10003, Slip Op. (N.D. Ill. Sep. 2, 2014) (Feinerman, J.).

Judge Feinerman granted in part plaintiff Panoramic’s partial summary judgment motion and denied defendant Wiley’s partial summary judgment motion as to Panoramic’s fraud and contributory copyright infringement claims in this copyright case regarding nine stock photographs.  The Court also set a trial date.

Wiley contends that Panoramic lacks the necessary evidence for its fraud claim proving that when Wiley said it wanted the photograph at issue for use in 15,000 volumes, it knew that it intended to use the photograph in more editions that that.  The Court, however, held that Panoramic offered evidence sufficient to infer the necessary intent.  Panoramic had documents showing that prior editions had been larger than 15,000 volumes and that Wiley was forecasting 30,000 volumes.  The Court also held that Panoramic put forth evidence that it was injured by the allegedly false statement beyond the scope of the copyright infringement because it was deprived of the licensing fee at the time of the license, beyond any award for copyright infringement.

The Court also denied Wiley summary judgment as to Panoramic’s contributory copyright infringement claim.  First, Wiley, in its reply, failed to respond to certain of Panoramic’s arguments.  So, the motion was denied on that ground alone.  Furthermore, the fact that Panoramic’s claim may be duplicative of its direct infringement claim was not fatal because parties are allowed to plead in the alternative.  The Court did, however, acknowledge that even if Panoramic succeeded at trial on both claims, it would not receive a double recovery.

The Court denied Wiley’s motion for summary judgment as to a statute of limitations for all claims before December 9.  But because the Seventh Circuit had approved the discovery rule and Panoramic had evidence that it did not know of Wiley’s alleged infringement until sometime in the three years before filing suit, the suit was not time barred.  And there was a dispute of fact as to whether Panoramic should reasonably have been aware of its claims when it learned of similar suits regarding the same issue

The Court granted Panoramic that it owned valid copyrights in the images that it individually registered, as Wiley conceded.  But denied summary judgment as to images that were filed as part of compilations.  While the Court had previously held that a copyright owner held copyrights in the original components of its copyrighted compilations, the evidence Panoramic cited in its Local Rule 56.1 statement of facts, did not sufficiently support its ownership claims in these works.

The Court denied Panoramic summary judgment that Wiley exceeded the usage limits set forth in the parties agreements because Wiley had evidence suggesting a practice that allowed the parties to exceed those limits as part of the normal course of their business.

Because of the factual issues described above, summary judgment was not appropriate for either party as to Wiley’s affirmative defenses of statutes of limitations, implied license/course of dealing, and invalidity/unenforceability.

The Court denied Panoramic summary judgment as to Wiley’s lashes defense because it could not determine which were subject to a three year limitation on the record before the Court.