Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991) :: Justia

united states district court, s.d. new york.

*1523 *1524 *1525 *1526 ronald s. Rauchberg, Charles S. Sims, Herman L. goldsmith, jon a. baumgarten, proskauer, rose, goetz & mendelsohn, new york city, for plaintiffs.

You are reading: Basic books v. kinko’s graphics corp.

dean a. old, jeffery a. Handelman, Thomas A. schmidt, kevin j. mcdevitt, willian, brinks, olds, hofer, gilson & lione, chicago, ill., john s. siffert, lankler, siffert & wohl, new york city, for the defendant.

motley, district judge.

Plaintiffs, all major New York City publishers, brought this lawsuit against Kinko’s alleging copyright infringement under the Copyright Act of 1976. 17 U.S.C. § 101, et seq. More specifically, the Plaintiffs allege that Kinko’s infringed their copyrights when Kinko’s copied excerpts from books, to which the Plaintiffs own the rights, without permission and without paying the required fees and sold the copies for a profit. the plaintiffs seek relief in the form of statutory damages, an injunction, a declaratory judgment, and attorneys’ fees and costs.

kinko’s admits it copied the suit excerpts without permission, compiled them into course “packages,” and sold them to college students. It is defended on four grounds. First, Kinko’s claims that the use of the excerpts was “fair use,” specifically provided for in § 107 of the copyright law. Second, Kinko’s allegations that the plaintiffs abused their copyrights by seeking to create an industry standard beyond that established by congressional mandate and that impermissibly prevents any use of the plaintiffs’ works without permission and royalties. Third, Kinko’s assertions that the plaintiffs cannot complain about copying because they have long known about Kinko’s 20-year practice of selling course packages and did nothing about it and Kinko prejudicially relied on their silence. Fourth, Kinko’s argues that, with respect to two of the alleged infringements, the plaintiffs failed to register their copyright before filing this lawsuit, and therefore this court lacks jurisdiction over those two extracts.

This court finds and concludes that the defendant violated copyright law, that the plaintiffs did not misuse their copyright or were prevented from enforcing their rights under copyright. As for the copyrights that were not registered before filing the lawsuit, this court finds them valid. finally, kinko’s has not convincingly demonstrated that the excerpts it appropriated without requesting permission were a fair use of the works in question. this court awards plaintiffs injunctive relief as well as statutory damages in the amount of $510,000, attorneys’ fees and costs.

There are 12 instances of alleged copyright infringement in this case. The 12 excerpts, ranging in length from 14 to 110 pages, were copied from plaintiffs’ previously published books, compiled into five numbered packages (“anthologies”) with excerpts from other books, and distributed by kinko’s. Kinko’s did not seek or obtain permission to copy any of these works. There are two stores where Kinko’s sold the excerpts included in this suit: one at 24 E. 12th Street (serving, among others, students from New York University and the New School for Social Research) and a second at 2872 Broadway (serving Columbia University students). Below is a list of the 5 packages, by number and title, and a list of the titles of the copied works. Next to the last title is the total number of pages *1527 copied, the approximate percentage of the entire book that was copied, and whether the job was out of print or out of print.

This package included 388 pages of copied work[1] taken from 25 books. this course was taught at the new school for social research by professor hoffman; 3 students enrolled. this package sold for $24.00: $21.75 for the copy and $2.25 for the binding.

Pages 62 to 83 (all of chapter 4) of this 15-chapter book were copied. the book has 419 pages of text plus 11 pages of introductory material. It was published in 1985. The amount copied, which encompasses an entire chapter of Bowles and Edwards’ relatively recent book, weighs heavily against the defendant.[2]

Pages 1-22 (all of chapter 1) of this 4-chapter book have been copied. The book has 120 pages. the paperback version shown at the trial is priced at $3.95. The book was published in 1975. This book was out of print and relatively old, however the amount copied weighs heavily against the defendant.

Pages 1 to 33 (chapter 1) of this 6-chapter book were copied. the book has a total of 146 pages. the paperback version shown at the trial is priced at $2.95. It was published in 1973. This book was out of print and relatively old, however, the amount copied weighs heavily against the defendant.

Pages 3 to 21 (chapter 1) and pages 231 to 64 (chapter 8) were copied from this 8-chapter book. the book has 323 pages. the book was published in 1982. the amount copied weighs against the defendant.

This book is 175 pages long plus 21 pages of introductory material. the copied pages were pages 32-45, one of the 8 chapters of the book. the displayed copy of the hardcover book is priced at $7.95. It was published in 1974. The amount copied weighs against the defendant.

pages 11-47 of this book were copied; They include the introduction and an additional chapter. the book has 461 pages. the printed copy is priced at $17.95. It was published in 1986. The amount copied weighs against the defendant.

This package included 383 pages taken from 43 sources. the course was taught at new york university by professor haeseler; 10 students enrolled. this package was sold for $20.07.

kinko copied the following pages from this book: pages 1-17 (chapter 1), 342-45, *1528 224, 225, 238-39, 256-61 and pages 306-13 of this 531-page book. the book has 12 chapters. It was published in 1971. The amount copied weighs against the defendant.

pages 236-55 (less than half of chapter 19 of this book) were copied. the book is 352 pages long plus 23 pages of introductory material. the paperback version shown at the trial is priced at $17.95. This book was published in 1980. The amount copied weighs against the defendant.

This package includes 324 pages taken from 23 sources. This course was taught at Columbia University by Professor Ichniowski. thirty-three students were enrolled. this package sold for $21.50: $16.98 for the copy, $1.50 for the binding, and $1.50 for royalties.

Pages 17-38 (all of chapter 2) of this book were copied. The book has 7 chapters, 159 pages of text and index, and 13 pages of introductory material. This book was published in 1982. The amount copied weighs against the defendant.

This package included 292 pages taken from 22 sources. this course was taught at columbia university by professor lissakers; 48 students were enrolled. the package sold for $17.75: $14.90 for the copy and $1.50 for the binding.

This book contains 728 pages of text (20 chapters) and 23 pages of introductory material. pages 7-43 and 129-191 of the book were copied. this represented chapters 2, 3 and 6. this book was published in 1978 and reprinted in 1983. amount copied weighs against defendant.

pages 177-241 copied. the pages cover chapters 7 and 8, and part of 9. the 12 chapters and the index of the book add up to 376 pages. the paperback sells for $4.95. It was published in 1984. The amount copied, even though this book was out of print, weighs heavily against the defendant.

This package included copies of 212 pages of materials taken from 7 sources. This course was taught by Professor Freeman at Columbia University. he enrolled 132 students. this package sold for $11.00: $8.66 for the copy and $1.50 for the binding.[3]

Chapters 7, 8, and 10 of this 12-chapter book were copied. copied pages were 177-219, 220-62 and 300-23. The book is over 400 pages long, including the preface, foreword, epilogue, author’s postscript, endnotes, and table of contents. It was published in 1976. The amount copied weighs heavily against the defendant, even though the book was out of print.

Each pack has a cover, imprinted with the kinko logo, “Kinko Copies: Teacher’s Publication”, the name of the course and teacher, the designated pack number, and a price list. there is a space in the price list to designate included royalty charges. only one package lists a royalty charge. Inside the front cover of three of the five packets is a sheet titled “Education and Fair Use: Federal Copyright Law.” lists the § 107 fair use factors and displays the teacher’s publication logo and course information. none of the excerpts carry a copyright credit line as required by copyright law.

It is indisputable that kinko’s markets and provides its photocopying services directly to professors and university students. At trial, *1529 Kinko’s submitted company-produced marketing brochures that are distributed by its marketing representatives to university professors and used as the subject of follow-up visits. these brochures openly ask professors for lists of readings they plan to use in their courses. Kinko then copies excerpts, some quite large, and sells them bound with copied excerpts from other books as well. Kinko’s Graphics Corporation’s unaudited financial statements for the years 1988 and 1989 show revenues of $42 million and $54 million, respectively, and net earnings of $200,000 and $3 million, respectively. its assets totaled $12 million in 1988 and $15 million in 1989. (px 25a). Appropriately, the plaintiffs refer to this bound package as an “anthology.” [4] Plaintiffs derive a significant portion of their income from textbook sales and permit fees. kinko’s has been running its teacher publishing business since at least the mid-1980s.

Coined as an “equitable rule of reason,” the fair use doctrine has been around as long as copyright law. It was codified in § 107 of the Copyright Act of 1976, section 17 of the United States Code. the section reads in full:

17 usc § 107 (1976) (emphasis added).

The codification was intended to “reaffirm the current judicial doctrine of fair use, not to change, reduce or expand it in any way.” human resources representative no. 94-1476, 94th congress, 2nd sess. 66 (1976); s.rep. No. 94-473, 94th congress, 1st sess. 62 (1975), us code frozen & admin.news 1976, p. 5659, 5680. Therefore, an exhaustive analysis of the jurisprudence is necessary.

For nearly 300 years, American law has protected intellectual property rights through copyright law. Protection derives from the English Statute of Anne (8 Anne c. 19, 1710), the first statute to recognize copyright. Section 106 of the Copyright Act of 1976 states that “[s]ubject to Section [] 107 … the owner of copyright under this title has the exclusive rights … to reproduce the copyrighted work for copyright”. 17 usc § 106. in folsum v. marsh, 9 f. case 342 (c.c.d.mass. 1841) (no. 4901), the history of justice establishes the meaning of fair use that we adhere to today. “In short, we must often… consider the nature and objects of the selections made, the quantity and value of the materials used, and the extent to which the use may impair the sale, or diminish the profits, or replace the objects, from the original work”. ID. at 348.

fair use has been more currently defined as the “privilege of others other than a copyright owner to use copyrighted material in a reasonable manner without its consent, despite the monopoly granted to the owner …” Rosemont Enterprises, Inc. v. random house, inc., 366 f.2d 303, 306 (2d cir. 1966), cert. denied, 385 us 1009, 87f. Connecticut. 714, 17l. 2d edition 546 (1967). Copyright law, through the *1530 fair use doctrine, has furthered the goal of fostering creative expression and integrity by ensuring that those who produce intellectual works can benefit from them. see iowa state university research foundation, inc. v. american broadcasting cos., inc., 621 f.2d 57, 60 (2d cir. 1980).

Courts and commentators disagree on the interpretation and application of the four factors, topics of current debate. see, eg, leval, towards a fair use standard, 103 harv.l.rev. 1105 (1990); weinreb, fair’s fair: a commentary on the doctrine of fair use, 103 harv.l.rev. 1137 (1990); Fisher, Reconstructing the Fair Use Doctrine, 101 harv.l.rev. 1661 (1988). the search for a consistent and predictable interpretation applicable to all cases remains elusive. this is particularly so because any interpretation of customary law proceeds on a case-by-case basis. The two Supreme Court precedents on the issue of fair use, Sony Corp. v. universal city studios, inc., 464 us. uu. 417, 104f. Connecticut. 774, 78l. 2d edition 574 (1984) and harper & row v companies of the nation, 471 u.s. 539, 105f. Connecticut. 2218, 85 l. 2d edition 588 (1985), both were canceled at each revision level.

This case differs in many respects from the previous ones. these are multiple copies. the copy was made by a commercial company that claims an educational purpose for the materials. the copy was just that, copy, and did not “transform” the works in question, that is, interpret them or add any value to the copied material, as would a biographer’s or critic’s use of a copyright-protected quotation or excerpt. Author. Because plaintiffs specifically allege infringement of both, this court is tasked with evaluating copying under the fair use doctrine and the “agreement on guidelines for classroom copying in nonprofit educational institutions” (” classroom guidelines”).

Section 107 specifically states that under this factor we consider “whether [the] use is commercial in nature or for non-profit educational purposes.” 17 usc § 107; see also marcus v. rowley, 695 f.2d 1171, 1175 (9th cir. 1983). The Supreme Court has held that “commercial use of copyrighted material is allegedly an unfair exploitation of the monopoly privilege belonging to the copyright owner.” sony corp., 464 usa at 451, 104s. Connecticut. at 793. Furthermore, the Supreme Court has found that “the distinction between ‘productive’ and ‘unproductive’ uses may be helpful in gauging the balance [of interests].” ID. in 455 no. 40, 104s. Connecticut. in 795 no. 40. Although both are important considerations, neither is decisive.

It has been argued that the essence of “character and purpose” is the transformative value, that is, the productive use, of the secondary work compared to the original. the leval district court judge has noted that, “[t]he use…must employ the subject matter quoted in a different manner or for a different purpose than the original. a citation of copyrighted material is unlikely to just repackage or republish the original to pass the exam.” leval, towards a fair use standard, 103 harv.l.rev. 1105, 1111 (1990) (suggesting balance between justification and scope of expropriation). kinko’s work cannot be classified as anything more than a mere repackaging.

The most disputed cases of copyright infringement are those where the infringer has copied small portions, quotes or excerpts from works and presents them in another form, for example, a biography, a review, a news article or other comment. see, for example, harper & row v companies of the nation, 471 u.s. 539, 105f. Connecticut. 2218, 85 l. 2d edition 588 (1985); new age publications v. carol publishing, 904 f.2d 152 (2d cir.), cert. denied, ___ us uu. ___, 111 sec. Connecticut. 297, 112l. 2d edition 251 (1990); salinger v. random house, inc., 811 f.2d 90 (2d cir.), cert. denied, 484 us 890, 108s. Connecticut. 213, 98l. 2d edition 177 (1987); wright v. warner books, inc., 748 f. support 105 (s.d.n.y. 1990). in this case, there was absolutely no literary effort on Kinko’s part to expand *1531 or contextualize the copied materials. see pacific & south county v. duncan, 744 f.2d 1490, 1496 (11th cir.), cert. denied, 471 us 1004, 105s. Connecticut. 1867, 85l. ed. 2d 161 (1985) (finding infringement by a defendant who neither “analyzes[d] … [nor] improves[d]” the work, noting that “the preamble to section 107 indicates[s] [that ] fair uses are those that contribute in some way to the public welfare.”).[5] the extracts in demand were simply copied, bound in a new form and sold. The plaintiffs refer to this process as “anthology” .the suit copy had productive value only insofar as it put a full semester’s resources into a bound volume for students.it required the judgment of professors to compile, though none of kinko.

the use of the kinko packages, in the hands of the students, was certainly educational. however, use by kinko employees is commercial. kinko claims that his copy was educational and therefore qualifies as fair use. Kinko’s fails to persuade us of this distinction.

kinko’s has not denied that it receives a profit component of the revenue it collects from its anthologies. the amount of that gain is unclear[6]; however, we just need to find that kinko’s intended to make a profit. His professor who publishes promotional materials clearly indicates that Kinko’s recognized and sought out a profitable market segment, admitting that “[t]he enormous sales and profit potential arise from this program.” kinko policies and procedures manual, chapter 9, at 1 (px 11) (further noting that “[t]he orders may be the easiest to execute and the most profitable.” id.).

although kinko’s tries to impress this court with its allegedly altruistic motives, the facts show that kinko’s copy had “the intended purpose of supplanting the commercially valuable right of the copyright holder.” see harper & row, 471 usa at 562, 105s. Connecticut. in 2231 (original emphasis). Kinko’s promotional literature compares its “fast” service to the “ineffectiveness of traditional publishing in meeting the changing needs of teachers and students.” “The Professor’s Publication Bulletin, Fall 1984” (dtx c-d).

in pacific & south county v. duncan, supra, the eleventh circuit denied the fair use defense to a company that videotaped and sold copyrighted portions of a television news program to the featured subject. noting that “every commercial exchange of goods and services involves both the delivery of the good or service and the taking of the purchase price”, the court found character and use against the defendant since “[t]he fact that the news clips TV shows focus on the give rather than the take can’t hide the fact that profit is their main motive for trading.” ID at 1496. The same applies to Kinko’s.

kinko’s offers 10% off if teachers order early, emphasizes *1532 savings for students, convenience and service, all “at no cost to your department” . Kinko’s shows that it is acutely aware of students’ and faculty’s concern with educational costs and provides additional services for doing business: offering campus pickup and delivery and free assistance with copyright clearances. See “Campus Representative Marketing Materials 1988” (px 17). the extent of his insistence that his concerns are educational and not for profit is mind-boggling.

kinko’s has periodically affirmed that it acted following the instructions of the educational institution, that is, as an agent of the schools and has no responsibility. however, kinko’s promotional materials belie this claim particularly because kinko’s assumes responsibility for obtaining copyright clearance while promoting its copyright clearance staff’s expertise (a “service [which] is provided free of charge to all kinko’s customers”). “Copyright Information Letter to Faculty Members,” in Kinko’s Copyright and Faculty Publishing Manual, at 40.

kinko’s is paid directly by the students who go to their stores to buy the packages. teachers do not pay fees; In fact, Kinko’s provides incentives to teachers for choosing their copy center over others. see “Kinko’s Copyright and Teachers’ Publishing Manual” (1988) (for advice on how to avoid delays, the manual suggests that employees “[offer] an incentive or discount to teachers who send their materials to Kinko’s several weeks before classes start.” id. at 8.); ID. at 42 (the kinko sales call follow-up letter sent by the campus reps reads: “I am enclosing your kinko’s faculty club card, which entitles you to a 10% discount on all goods and services at any kinko’s across the country”).

while financial gain “will not prevent [the] use from being fair”, new york times co. v. Roxbury Data Interface, Inc., 434 F. support 217, 221 (d.n.j.1977), consideration of commercial use is important.

“the crux of the distinction between for-profit and non-profit purposes is not whether the sole motive for use is monetary gain, but whether the user benefits from the exploitation of the copyrighted material without paying the usual price” . harper & row, 471 usa at 562, 105s. Connecticut. at 2231. This is precisely the concern here and why this factor weighs so heavily in favor of the plaintiffs.

The courts’ consideration of the profit factor often arises because the allegedly infringing work competes in the same market as the copyrighted work, making “commerciality” more damaging to the copyright owner. Copyright. see marcus v. rowley, 695 f.2d at 1175; haberman v. hustler magazine, inc., 626 f. support 201, 211 (mass deceased 1986). In cases where a defendant claims fair use of a critique, comment, or other scholarly research, courts are more likely to determine fair use based on this factor. in new age publications v. carol’s publication, 904 f.2d at 156, the second circuit found fair use under the character and use factor as the on-demand publication was not a cheap exploitation of the original work but a legitimate critical biography. in that case, a critic and biographer of l. Ron Hubbard and the Church of Scientology defended his use of quotes from 48 of Hubbard’s works.

a potentially widespread use that was notably non-commercial has been deemed fair use. at sony corp. v. Universal City Studios, 464 U.S. 417, 104f. Connecticut. 774, 78l. edition 2d 574 (1984), viewers recorded plaintiffs’ television programs on home video recorders, doing nothing to improve the program simply by copying them for later viewing. the court decided that this “change of time” was fair use and emphasized the fact that viewers were not selling their copies of these shows for profit. ID. at 454-55, 104f. Connecticut. in 795.

The second factor concerns the nature of the copyrighted work. courts generally hold that “the scope of fair use is greater with respect to factual than non-factual works.” new age publications v. carol publishing group, 904 f.2d at 157. *1533 factual works, such as biographies, reviews, critiques, and commentaries, are believed to have greater public value and, therefore, uses of them may be better tolerated under copyright law. See Salinger v. Random House, Inc., 811 F.2D at 96. Works containing information in the public interest may require less protection. see consumers’ union v. general signal corp., 724 f.2d 1044, 1049 (2d cir. 1983), cert. denied, 469 us 823, 105f. Connecticut. 100, 83l. 2d edition 45 (1984). works of fiction, on the other hand, are often based closely on the subjective impressions of the author and therefore require more protection. these are general rules. the books infringed in the lawsuit were factual in nature. this factor weighs in favor of the defendant.

“There are no absolute rules about how much of a copyrighted work you can copy and still be considered fair use.” maxtone graham v. burtchaell, 803 f.2d 1253 (2d cir.), cert. denied, 481 us 1059, 107f. Connecticut. 2201, 95 l. 2d edition 856 (1987). this third factor considers not only the percentage of the original used but also the “substantiality” of that portion in the work as a whole; that is, the courts must evaluate both the qualitative aspects and the quantity of material copied. view new era posts int’l v. carol editorial group, 904 f.2d at 158. a short piece that is “the heart of” a work may not be fair use and a longer piece that is pedestrian in nature may be fair use . the balance of the four factors must be complete, without depending solely on any one factor. the purpose of the use can be balanced against the amount and importance of the use. for example, “[a]n substantial citations could qualify as fair use in a review of a published work.” see harper & row, 471 usa at 564-65, 105f. Connecticut. in 2232-33.

Courts have determined that relatively small quantitative uses are fair use. see, eg, new age publications, 904 f.2d at 158 ​​(court found fair that defendant used a “tiny” number of 25 works: 5-6% of 12 works, 8% or more of 11 works “each of the 11 being only a few pages long.”); iowa state university research found., inc. v am broadcasting cos., inc., 621 f.2d at 61-62 (court ruled 8% of videotape never before broadcast unfairly copied); maxtone-graham, 803 f.2d at 1263 (fair inclusion of 4.3% of work); salinger, 811 f.2d at 98-99 (finding this factor weighed “very much” in salinger’s favor, court found no fair use of quotations and paraphrases totaling one-third of 17 letters and 10% of 42 letters) ; harper & row, 471 usa at 564-65, 105f. Connecticut. at 2232-33 (the 300 copyrighted words appropriated for the times article were an insubstantial part of the work, but “essentially the heart of the book”).

also, “reference to the availability of a work is appropriate”. wright v. warner books, inc., 748 f. support at 112. therefore, longer portions copied from an out-of-print book may be fair use because the book is no longer available. (This has been thought to be true because, presumably, copying has little effect on the market. However, the plaintiffs in this case convincingly argue that the harm to out-of-print works may, in fact, be greater, since permission fees may be the only income for authors and copyright owners).

this court finds and concludes that the copied parts were critical parts of the copied books, since that is the probable reason why the university professors used them in their classes. see harper & row, 471 usa at 565, 105s. Connecticut. at 2233 (“the fact that a substantial part of the infringing work has been copied word for word is evidence of the qualitative value of the material copied”). while it may be impossible to determine, as the court in harper & row, that the cited material was “essentially the heart of” the copyrighted material, id. at 565, 105s. Connecticut. in 2233, it can be inferred that they were important pieces.

See Also: JoAnn Ross – Book Series In Order

this factor, quantity and substantiality of the assigned portions, weighs against the defendant. in this case, the passages copied ranged from 14 to 110 pages, representing 5.2% to 25.1% of the works. see findings of fact, supra, for a discussion of the amount of copying. In one case, Kinko copied 110 pages of someone’s work and sold it to *1534 132 students. even for an out-of-print book, this amount is far out of line with accepted fair use principles.

In almost every case, the defendant copied at least one entire chapter from the plaintiff’s book. this is substantial because they are obviously intended to stand alone, that is, as a complete representation of the concept explored in the chapter. this indicates that these excerpts are not supplemental material to the assigned course material but to the assignment. therefore, the extracts, in addition to being quantitatively substantial, are qualitatively significant.

The fourth factor, the market effect, also fails the defendant. it has been argued that this factor is “arguably the most important element of fair use”. harper & row, 471 usa at 566, 105s. Connecticut. at 2233. “To deny fair use, one need only show that if the challenged use ‘became widespread, it would adversely affect the potential market for the copyrighted work.'” id at 568, 105s. Connecticut. at 2234 (citing Sony Corp., 464 U.S. at 451, 104 s. ct. at 793, emphasis added).

kinko’s confirms that it has 200 stores across the country, serving hundreds of colleges and universities enrolling thousands of students. the potential for widespread copyright infringement by the defendant and other commercial copiers is great. In this case, Kinko’s has admitted[7] that its market for these anthologies or packages is college students. The packages were compiled as a result of requests from professors at Columbia University, New York University, and the New School for Social Research about what readings they needed to provide their courses.[8] In this case, Kinko’s easily wins the competition for “student dollars” and produces 300-400 page packages that include substantial portions of copyrighted books at a cost of $24 to the student. package #34 contained excerpts from 20 different books, totaled 324 pages, and cost $21.50. (px18). while reading the packets may whet students’ appetite for more information from the authors, purchasing the packets is more likely to prevent purchasing the full texts. this court has determined that plaintiffs derive a significant portion of their income from textbook sales and permits. This Court further finds that Kinko’s copying adversely affects Plaintiffs’ book sales and collection of permit fees. This impact is felt most strongly by authors and copyright owners of out-of-print books, for whom permission fees are a major source of income. this factor weighs heavily against the defendant.

In this case, an important additional factor is the fact that the defendant has effectively created a new nationwide business in alliance with the publishing industry by usurping the copyrights and profits of the plaintiffs. this cannot be sustained by this court as its result is the complete defeat of the intent of copyright law which has been the protection of intellectual property and, more importantly, the encouragement of creative expression. Due to the breadth and transient nature of their business (kinko’s has 200 stores across the country that are typically located near colleges), it has become difficult for plaintiffs to challenge defendant.

*1535 In addition, the classroom rules express a specific prohibition on anthologies. the fact that these excerpts have been collected and sold in anthologies weighs against the defendant.

kinko states that “[t]he evidence shows that course packages are of tremendous importance to teaching and learning, and are in widespread and extensive use in schools across the country” and that “[ A] court order against the educational photocopies in question would pose a serious threat to teaching and the welfare of education.” Respondent’s Proposed Conclusions of Law, at 23. This appears to be a “necessary fair use” argument. kinko’s has failed to prove this central argument, which is that prohibiting them from pirating plaintiffs’ copyrights would stop the educational process.

kinko’s did not produce any teacher testifying that he or she uses course packages and could not teach effectively if kinko’s could not copy without paying permission fees. the defendant presented a witness, dr. Bruce Johnson, who testified about the results of a survey he conducted that showed the widespread use of course packages by university professors and the reasons for this use.[9] (dtx l-z). Despite professors’ complaints about expensive original materials, rapid change in course subject matter, and inadequate current offerings, which are all good reasons for wanting anthologies, defendant’s witnesses did not present evidence to explain why they could not. seek and pay permission to create these anthologies. dr Johnson’s survey does not. this argument also fails.

the classroom guidelines, titled “agreement on guidelines for classroom copying in nonprofit educational institutions,” are part of the legislative history of the copyright act of 1976. h.r. rep. No. 1476, 94th congress, 2nd sess. 68 (1976). These guidelines were the result of negotiation and agreement between the Ad Hoc Committee of Educational Institutions and Organizations on the Revision of Copyright Law, the Authors League of America, Inc., and the Association of American Publishers.[ 10]id. at 67. one commenter confirms the guidelines as an act of compromise that “was necessitated by the widespread availability of reprographic technology that removed much of the copyright owner’s control over the reproduction of his or her work.” Patry, The Fair Use Privilege in Copyright Law at viii (1985). Legislative history acknowledges “the longstanding controversy over issues related to fair use and reproduction (mainly by photocopying) of copyrighted material for educational and scholarly purposes.” house report, at 66, us code uu. frozen & admin.news 1976, p. 5679. This indicates that the congress saw that the maelstrom was beginning to stir and sought to clarify, through a broad mandate, its intentions.

For a proper analysis, initial consideration must be given to the question of what comprises educational copying and whether kinko’s status as a for-profit corporation, and its intent to make a profit, makes it * 1536 is left out of a review of the guidelines. we think so.

kinko’s believes that it plays an important role in the educational process by providing prompt and cost-effective service to educational institutions. if they did not provide this service to colleges and universities, they claim, these institutions and their students would suffer educationally and financially. however, kinko’s is in the business of providing photocopying services to anyone willing to pay for them, and as evidenced in this case, college and university students are willing to pay for them.

This trade copy may be contrasted with the library copy. at williams & wilkins co. v. united states, 487 f.2d 1345, 203 ct.cl. 74, aff’d, 420 u.s. 376, 95f. Connecticut. 1344, 43l. edition 2d 264 (1975), the court found the library copy to be fair use. In that case, the Department of Health, Education and Welfare, through the National Institutes of Health (NIH) and the National Library of Medicine (NLM) copied articles from medical journals and disseminated them to researchers and staff who requested them. libraries set rules regarding page limits, frequency, and number of copies, and did not charge a copy fee. see identification at 1347-49. The NLM reproduced each copy with a statement that read: “`This is a unique photostatic copy made by the National Library of Medicine for study or research purposes in lieu of loan of the original.'” 487 f.2d at 1348. classroom and library copies are viewed more sympathetically “since they generally do not involve commercial exploitation and … [have] socially useful goals … [t]his is not the case with photocopies, which they reproduce for profit”. nimmer, § 13.05[e], at 13-9313-94, & north. 69.

this court finds and concludes that even if kinko’s copy warranted a review under the classroom guidelines, it is excessive and violates the requirements of the guidelines.[11]

Controversy exists as to whether the guidelines represent a maximum or minimum number of copies allowed. The guidelines state their intended meaning as follows: “[t]he purpose of the following guidelines is to establish the minimum and not the maximum standards of educational fair use under section 107 of hr 2223.” ID. at 68. the guidelines make clear that, notwithstanding their enactment, fair use standards may be more or less permissive[12] depending on the circumstances and based on equitable considerations. see also nimmer, § 13.05[e], at 13-96 (courts can decide if use in excess of guidelines may be fair use and use in guidelines may exceed fair use; courts must balance the interests involved). this court finds that the copy in the lawsuit clearly deviates from the letter and spirit of the guidelines.

In the “multiple copies for classroom use” section, the stated premise is that “[m]uple copies (not to exceed in any case more than one copy per student in a course) may be made by or for the teacher giving the course for classroom use or discussion…” h.r.rep. No. 1476, at 68 (emphasis added), us code frozen & admin.news 1976, p. 5682.[13] The guidelines state that a teacher may make multiple copies of copyrighted material if the copy meets the tests of brevity, spontaneity, and cumulative effect and provided “each copy includes a copyright notice.” ID. at 68, us code frozen & admin.news 1976, p. 5682. It has already been found that kinko’s *1537 did not include copyright notices in any of the works in demand.

brevity, in prose, is defined as “an entire article, story, or essay of less than 2,500 words” or an excerpt of “no more than 1,000 words or 10% of the work, whichever is less.” ID. the defendant does not meet this requirement.

spontaneity requires that “the inspiration and decision to use the work and the timing of its use for maximum didactic effectiveness [are] so close in time that it would be unreasonable to expect a timely response to a request for permission “. ID. at 69, us code frozen & admin.news 1976, p. 5682. Because the kinko cheating coincided with the start of each semester and was triggered by kinko getting a list of course materials from the professors, we find that the suit cheating cannot be considered spontaneous. anthologies were created to last the entire semester, or at least several weeks, as they averaged 200 to 400 pages per course pack.

Furthermore, while it is true that modern teaching methods present copyright dilemmas by requiring frequent updating of information from various sources, the excerpts in question were not copied from current publications. the most recent publication date among the costume books was 1985.

cumulative effect prohibits more than “nine instances of multiple copying for a course during a class period”, limits copied material to a single course, and to no more than one work per author. house report, on 69, usa code cong uu. & admin.news 1976, p. 5683. the defendants fail in this requirement. Of the five course packs that contain 7, 22, 23, 25, and 43 multi-copy instances, four of them clearly exceed the allowed nine instances.

anthologies. In addition to these tests, most of which the defendant has failed, Kinko’s conduct appears to violate a specific mandate of the classroom guidelines:

identification. en 69-70 (emphasis added), us code uu. frozen & admin.news 1976, p. 5683. The plaintiffs argue that, despite the “safe harbor” provided in the spontaneity, brevity, and cumulative effect requirements of parts i and ii, part iii of the guidelines “absolutely and unequivocally prohibits” copying of the type of claim . Plaintiffs’ Post-Trial Memorandum of Law, at 21 [“Plaintiffs’ Post-Trial Memorandum”]. the defendant urges the court to seek a less rigid view of the meaning of the guidelines. we are convinced that this is the more prudent path than a bright line pronouncement and we refuse to hold that all non-consensual anthologies are prohibited without fair use analysis. however, the fact that these excerpts have been placed in anthologies weighs heavily against the defendant.[14]

Finally, the plaintiffs argue that “even without examining the classroom guidelines, § 107 itself, read in light of legislative history, clearly makes unauthorized anthology (especially when performed for profit) is outside the limits of fair use”. plaintiffs’ post-trial memorandum, at 21. this court is not prepared to hold it. While we agree that Congress expressed specific apprehension about the use of anthologies, it is not clear that Congress intended strict enforcement of this prohibition without balancing fair use.

kinko’s alleges that the plaintiff publishers have collectively attempted to “impede *1538 and ban educational copying for classroom use made by kinko’s on behalf of teachers” and have “combined with each other to enact as a so-called ‘industry standard’ with respect to photocopying a ‘fair use’ version that is contrary to section 107 of the copyright law enacted by Congress”. Respondent’s Proposed Conclusions of Law, at 34-35. In general, it has been held that there is no defense of copyright misuse through violation of antitrust laws. see nimmer, § 13.09[a], at 13-142.1 13-143; see also orth-o-vision, inc. v. home locker, 474 f. support 672, 686 (s.d.n.y.1979) (violation of antitrust laws is not a defense to copyright infringement); Peter Pan Fabrics, Inc. v. candy frocks, inc., 187 f. support 334, 336 (s.d.n.y.1960) (same).

In many cases, the claim has been recognized but not sustained. see, eg, housing supermarket, et. Alabama. v. san fernando valley board of regents, 786 f.2d 1400 (9th cir.1986) (alleged discriminatory conduct failed to establish copyright misuse); streaming music, inc. v. cbs, [1983-2] trade case. (cch) ¶ 65,551, 1983 wl 1136 (s.d.n.y.1983) (copyright abuse defense unlikely to succeed).

However, some courts have held that “copyright misuse, in violation of antitrust laws, may be invoked as a defense in cases of copyright infringement.” united telephone company of missouri v. johnson pub. co., 855 f.2d 604, 611 (8th cir. 1988). The patent misuse defense has been recognized as a defense against patent infringement if the patent is used to restrict competition, in particular through “binding clauses” that require that, in order to obtain a license for a product, the buyer should also buy another . See United States v. loew’s, inc., 371 u.s. 38, 83f. Connecticut. 97, 9l. 2d edition 11 (1962); United States v. Paramount Pictures, Inc., 334 U.S. 131, 68f. Connecticut. 915, 92l. edition 1260 (1948); morton salt co. v.g.s. suppiger co., 314 u.s.a. 488, 62f. Connecticut. 402, 86l. edition 363 (1942). the patent misuse doctrine is “an extension of the equitable ‘dirty hands’ doctrine to the field of patents.” U.S. plaster company v. National Gypsum Co., 352 U.S. 457, 77f. Connecticut. 490, 1l. 2d edition 465 (1957). patent and copyright doctrine can be compared on this point.

It has been difficult to convince the courts of the misuse defense. in cbs v. American Society of Composers, 400 f. Support 737 (S.D.N.Y.1975), CBS defended a claim of copyright infringement attacking the ASCAP and BMI General License Agreements as copyright misuse. The court held that CBS was unable to prove copyright misuse because it failed to show that the defendants “refused or would refuse to license their compositions…or [had] otherwise used their collective influence to compel cbs to license the rights to the music it didn’t want to license. 400 f. support in 782. in f.e.l. Publications, Ltd. v. Catholic bishop, 506 f. support 1127 (n.d.ill.1981), revised for other reasons, 214 u.s.p.q. 409, 1982 wl 19198 (7th cir.), cert. denied, 459 us 859, 103f. Connecticut. 131, 74l. edition 2d 113 (1982), the circuit court reversed the district court’s decision and held that the plaintiff’s license agreement, which required licensees to pay for the 1,400 songs in his hymnal, regardless of how many songs were copied, did not constitute a violation of the sherman law. ID. at 413-16. At United Phone, Supra, Defendant increased its license fee by 500% to 49 cents, but only after offering Plaintiff the opportunity to license its phone listings at 10 cents per entry. The court rejected Defendant’s copyright abuse defense because Defendant had initially been offered the lowest price and because Defendant had failed to show that Plaintiff’s telephone list was a monopoly since Defendant could traverse the city ​​and develop your own list. 855 f.2d in 612.

kinko’s claims that the plaintiffs have misused their copyright by “extend[ing] or extend[ing] the monopoly of [their] copyright in an effort to restrict competition.” Respondent’s Proposed Conclusions of Law, at 33-34. however, the facts of this case do not support a legal finding of copyright abuse. they show no agreement between the plaintiffs to uphold any industry standard that exceeds fair use. Plaintiffs’ efforts to restrict Kinko’s competition are simultaneously an effort to prevent Kinko’s from infringing their copyrights. *1539 plaintiffs have acted reasonably in doing so, not collusively for any illegal and monopolistic purpose. consequently, kinko’s claims fail.

defendant makes other arguments in favor of copyright misuse. allege plaintiffs “arbitrarily and capriciously refused to grant permission to kinko’s” while granting others, plaintiffs understaffed their permitting departments to delay processing, and in some cases did not process at all .

kinko’s first dispute is barred as he did not seek permission for any of the lawsuit excerpts.

kinko’s fails to establish its second argument on two counts. the plaintiffs convincingly claim that they are in this business to make money and want to collect permit fees. therefore, it is unlikely that the plaintiffs, in an attempt to spite kinko, are intentionally delaying their permitting process. furthermore, this court is not convinced that a slow or backward permitting department constitutes copyright abuse.[15] Kinko’s argues that not only the timing, but also the cost of obtaining these permits presents obstacles for copiers and universities. kinko was also unable to prove this.[16]

Similarly, Kinko fails in his dirty hands defense. Respondent unconvincingly reaffirms its “anti-competitive scheme” argument in support of this defence.

the ninth circuit court in hampton v. paramount pictures corp., 279 f.2d 100 (9th cir.), cert. denied, 364 U.S. 882, 81f. Connecticut. 170.5L 2d edition 103 (1960), established the elements of the estoppel defense. the plaintiff must be aware of the offending conduct of the defendant; the plaintiff must intend that his conduct be acted upon or must act in a manner that the party asserting the estoppel is entitled to believe was so intended; the defendant must be ignorant of the true facts; and the defendant must rely on the plaintiff’s conduct to his detriment. ID. at 104. These four elements were adopted in Lottie Joplin Thomas Trust v. crown publishers, inc., 456 f. support 531 (s.d.n.y. 1977), aff’d, 592 f.2d 651 (2d cir. 1978); rohauer v. Killiam Shows, Inc., 379 F. support 723 (s.d.n.y.), revised for other reasons, 551 f.2d 484 (2d cir.1977).

*1540 the plaintiff may be prevented from enforcing its rights under a copyright if the plaintiff has aided or induced the defendant to infringe or has committed covert acts such as “hiding…by silence or inaction”. nimmer, § 13.07, at 13-134 (recognizing that such passive acts are rarely performed). “the plaintiff’s acquiescence in the defendant’s infringing acts may, if continued for a sufficient period of time and if manifested by obvious acts, result in an abandonment of copyright.” ID. at 13-135. in such a case, the estoppel “destroys the right invoked” and will be a defense for all acts occurring after the acquiescence. identification.

in new age publications int’l. v. Henry Holt & co., 873 f.2d 576 (2d cir. 1989), cert. denied, ___ us uu. ___, 110 sec. Connecticut. 1168, 107l. edition 2d 1071 (1990), the court denied the plaintiff’s request for a permanent injunction on the grounds of laches. Before suing for an injunction, the plaintiff waited two years after protesting to the defendant and obtaining an outright refusal to cooperate. at that time, 12,000 copies of Defendant’s book, the subject of the lawsuit, had been printed, packaged, and shipped to stores. the court found an “inconceivable delay” that would cause a hardship to the defendant resulting in serious prejudice. ID. at 584-85.

Respondent cites the testimony of one of Plaintiff’s witnesses in which he admits to having continued knowledge of kinko anthologies since 1984[17] and his “general” perception that kinko copying is infringing. he sees testimony from richard rudick, senior vice president and general counsel of john wiley & amp; sons, tr. 96-101. Kinko’s argues that “kinko’s continued and open expansion of educational photocopying without protest by plaintiffs created kinko’s detrimental reliance.” Defendant’s Proposed Conclusions of Law, at 33. Kinko’s convincingly asserts that it has invested much time and energy in its teacher publishing business and “has continued to expand its educational photocopying … over the years in accordance with their [own] policies and procedures ….” identification. at 32. however, this does not rise to the level of harmful dependency.

The plaintiffs argue that they did not know that kinko’s was infringing, only that they were copying. once they realized that kinko’s was copying without permission, they complained and demanded fees.[18] The plaintiffs insist that it was only through discovery that they became aware of the extent of Kinko copying without permission. The defendant has not adduced any evidence to the contrary. Furthermore, Kinko’s has not shown that the Plaintiffs intended their inaction to be construed as a “license” to infringe their works or that any action by the Plaintiffs would give Kinko’s the right to believe that it has such a license. the plaintiffs have denied such intent.

Lastly, the extent of the damage experienced by kinko’s works does not hold any substantial damage against you. her disadvantage is that she will have to ask permission the next time she wishes to copy and publish her editorial anthologies of professors.

pursuant to 17 u.s.c. § 205(d), Kinko’s challenges the court’s jurisdiction over two of the works involved in this case: *1541 Lyndon Johnson and the American Dream and the Money Market. plaintiffs harper & row and jones-irwin affirm that they have valid copyright in these works. Respondent argues that Plaintiffs’ failure to register the instruments of transfer for these two works prior to filing their original complaint on April 25, 1989 prevents them from filing a lawsuit.

Section 205(d) requires the registration of works protected by copyright before initiating any claim on the matter.[19] at the beginning of the trial, during the initial argumentation of this matter, this court ruled that the filing of a complementary claim would remedy the jurisdictional defect caused by the untimely registration. see tr. 3-11; fed.r.civ.p. 15(d). the plaintiffs registered the instruments on June 26, 1990 and August 23, 1989, months after the original lawsuit was filed. the plaintiffs filed a supplementary claim in accordance with said judgment. the plaintiffs now argue that any jurisdictional defect is remedied by filing their supplemental claim. plaintiffs’ post-trial memorandum of law, at 15, n. 7.

the defendant argues that “the law is well established that a litigant cannot cure a jurisdictional defect by alleging facts that occurred only after the action was brought.” Respondent’s Proposed Conclusions of Law, at 30-31 (emphasis original). the defendant is wrong. while acknowledging that proper recording is a jurisdictional prerequisite to suing for copyright infringement, defendant fails to see that plaintiffs’ recording problem was addressed by their supplemental filing which was permitted by this court pursuant to fed.r.civ.p. 15(d). the courts have held that this is the proper procedure. “there is no question that permission should be granted to serve supplemental argument if it cures a jurisdictional defect.” dan-dee imports, inc. v. manufacture of well-made toys. corp., 524 ff. support 615, 619 (ed.n.y. 1981) (citing mathews v. diaz, 426 u.s. 67, 96 s. ct. 1883, 48 l. ed. 2d 478 (1976)).

file a supplemental complaint, pursuant to fed.r.civ.p. 15(d), may be related to the original filing to remedy a jurisdictional defect. see, for example, security insurance co. of newhaven v. united states, 338 f.2d 444, 449 (9th cir. 1964) (supplementary claim relating to past to not bar lawsuit by statute of limitations, even though supplement was filed more than a year after original suit); dan-dee imports, inc. v. manufacture of well-made toys. corp., 524 ff. support at 619-20 (amended and supplemental complaint accepted for filing when no detriment to respondent is shown). see also kenbrooke fabrics, inc. v. soho fashions, inc., 690 f. support 298, 302 (s.d. n.y. 1988) (plaintiff who filed 8 months after filing was not prevented from asserting his rights because he filed before hearing); wales industrial inc. v. Hasbro Bradley, Inc., 612 f. support 510, 514-15 (s.d.n.y. 1985) (taping 5 weeks after filing cured any jurisdictional shortcoming because taping occurred before hearing on motion); Metafilm Associates, Inc. v. mca, inc., 586 f. support 1346, 1351-52 (c.d.ca. 1984) (subsequent presentation of transfer corrected jurisdictional and subsequent related defect); co-opportunities, inc. v. National Broadcasting Company, 510 f. support 43, 49 (n.d.ca. 1981) (later recording is allowed to relate).

Although the plaintiffs filed their supplemental lawsuit after the start of the trial, the plaintiffs had registered their instruments of transfer months before. the defendant was unable to prove any harm, even if he had alleged it, since he had extensive knowledge of the plaintiffs’ allegations with respect to the two books to make the discovery. this court holds that the plaintiffs’ supplemental claim is related to the original claim, which is sufficient to satisfy § 205(d). Plaintiffs’ cases with respect to these two books stand and jurisdiction rests with this court.

A plaintiff must demonstrate liability and the threat of continuing violation to be entitled to an injunction. universal city studios, inc. v sony corp. of america, 659 f.2d 963, 976 (9th cir. 1981), revised for other reasons, 464 u.s. 417, 104f. Connecticut. 774, 78l. 2d edition 574 (1984); nimmer, § 14.06[b]. “[t]he injunction is not the automatic consequence of the infringement”, but the result of a fair consideration. new age publications int’l v. henry holt co., 884 f.2d 659 at 661 (2nd cir.1989).

Copyright law gives the court discretion to “grant temporary and final injunctions on such terms as it deems reasonable to prevent or restrain copyright infringement.” 17 usc § 502(a). in general, this discretion is believed to extend to prohibiting infringements that may occur with works “which may in the future be owned by the plaintiff.” nimmer, § 14.06, at 14-61. This possibility raises two questions before the court.

First, the plaintiffs are entitled to an injunction against future infringements of the works at issue. Second, plaintiffs are entitled to an injunction against future infringement of works that may now be out of copyright or even exist but, in the future, may be copied by the defendant.

we answer yes to both questions. when liability has been determined and there is a history of continuing infringement and a significant threat of future infringement, a court must prohibit infringement of future copyrighted works. orth-o-vision, inc. v. home locker, 474 f. support at 685-86 (infringement persisted from 1974 to 1978 when orth-o-vision sued alleging antitrust violations); See also Wainwright Securities, Inc. v. wall street transcript corp., 558 f.2d 91, 94 (2d cir.), cert. denied, 434 us 1014, 98s. Connecticut. 730, 54 litres. 2d edition 759 (1978) (preliminary injunction affirmed after finding that irreparable harm can be presumed when copyright is infringed).

in this case, liability has been determined and a significant threat remains that kinko’s will continue to infringe plaintiffs’ copyrights given the nature of teacher publishing and kinko’s historical willful blindness to the law of copyright. Although there is little established history on record of Kinko’s infringement of these publishers’ copyrights prior to 1989, this Court has determined that Kinko has carried on its faculty publishing business since at least the mid-1980s. 1980. The nature of teachers’ publishing makes it particularly susceptible to infringement due to the sheer volume of copying it produces and the additional threat created by anthologization. moreover, the defendant’s willfulness exhibited in this case convinces this court that “there is a strong possibility that defendant [] will engage in continuing copyright violations unless an injunction is issued.” encyclopedia britannica educational body. v. thieves, 542 f. support 1156, 1187 (September 1982). For these reasons, this Court finds it prudent and equitable to grant Plaintiffs’ request for injunctive relief and will prohibit Defendant from future anthologizing and copying of Plaintiffs’ works without permission and advance payment of fees as shown. , in violation of the concept of fair use as demonstrated in this case, and including similar works that do not currently exist but may in the future be owned by the plaintiffs and to which the plaintiffs have not consented.

the plaintiffs request an injunction against all non-consensual anthologies. this court refuses to do so for the simple reason that some anthologies may fall within fair use requirements. this court is not in a position, for example, to prohibit uses that are fair as determined by the guidelines and set forth in copyright law.

plaintiffs ask this court to declare “that kinko’s infringes when it copies, anthologizes and sells extracts of plaintiffs’ works without permission.” Plaintiffs’ Post-Trial Law Memorandum at 54.

*1543 for a declaratory judgment, a dispute must be “of a justiciable nature, thus excluding an advisory decree on a hypothetical state of affairs.” Ashwander v. Tennessee Valley Authority, 297 U.S. 288, 325, 56f. Connecticut. 466, 473, 80l. edition 688, 699 (1936). Title 28 of the United States Code requires that there be an “actual dispute.” 28 usc § 2201. “the existence of another adequate resource does not prevent the issuance of a declaratory judgment in the cases in which it proceeds.” fed.r.civ.p. 57. The test for determining when an actual dispute exists was established by the Supreme Court in Maryland Casualty Co. v. pacific coal & oil company, 312 usa 270, 273, 61s. Connecticut. 510, 512, 85 litres. edition 826 (1941):

id; see also salomon bros., inc. v. carey, 556 et seq. support 499, 501 (s.d.n.y.1983).

the second circuit has held that:

broadview chemical corporation. v. loctite corp., 417 f.2d 998, 1001 (2d cir.), cert. denied, 397 us 1064, 90s. Connecticut. 1502, 25 litres. 2d edition 686 (1970) (citing borchard, declaratory judgments 294, 299 (2d ed. 1941)). finally, it is up to the discretion of the court to determine when the declaratory judgment proceeds; Equitable principles govern this discretion. declaratory judgment is inadmissible in this case.

Plaintiffs say they are entitled to a declaratory judgment in any and all cases of copying or “anthologizing” without the author’s permission. this is not so the fact that congress has established a statement in its classroom guidelines that anthologization is prohibited does not require this court to paint with the broad brush that the plaintiffs suggest. declaring all anthologies published without permission to be infringing would preclude fair use analysis of any excerpt included in an anthology. if congress intended to anthologize to nullify a fair use analysis, it would have expressly said so. the guidelines state that some instances of copying that exceeds their limits may, in fact, be “permitted under the fair use criteria.” house report, at 68, us code frozen & admin.news 1976, p. 5681. The declaratory sentence is denied.

The copyright owner may choose to recover statutory damages instead of actual damages. 17 usc § 504(c)(1). the plaintiffs have made that choice. once the plaintiff elects statutory damages, that remedy is generally exclusive. oboler v. goldin, 714 f.2d 211, 213 (2d cir. 1983).

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title 17 united states code section 504(c)(2) provides statutory damages of up to $100,000 for each violation when a violation is intentional. plaintiffs have the burden of proving the defendant’s “willingness” to receive statutory damages. plaintiffs can demonstrate willfulness by showing that the defendant recklessly disregarded plaintiffs’ rights. wow & flutter music v. Len’s Tom Jones Tavern, Inc., 606 F. support 554, 556 (semester 1985); textile company lauratex v. Allton Knitting Mills, 519 F. support 730, 733 (s.d.n.y.1981). plaintiffs also bear their burden by showing that the defendant knew or “should have known” that he was infringing their copyright. failed c. new literary gazette corp., 568 ff. support 1172, 1173 (s.d.n.y.1983). voluntary does not mean “malicious”, but rather means “knowingly”, whether actual or constructive. see fitzgerald publishing co., inc. v. baylor publishing co., inc., 807 f.2d 1110, 1115 (2d cir. 1986), aff’d, 862 f.2d 304 *1544 (1988) (“an actual defendant or the constructive knowledge proves willfulness”).

In failing, the court found that the publisher of a copyrighted newspaper should have been aware “that its unauthorized republication of a Washington Post article constituted copyright infringement.” 568 ff. support in 1173; see also warner bros., inc. v. dae rim trading, inc., 677 f. support 740, 764 (s.d.n.y.1988), aff’d in part, rev’d in part, 877 f.2d 1120 (2d cir. 1989) (defendant’s actions were unintentional when “they were unaware and had no reason to believe that their actions constituted copyright infringement'”). Similarly, in Engel v. Wild Oats, Inc., 644 ff. support 1089 (s.d.n.y.1986), the court found that the defendant deliberately copied a photograph when the art director “knew or should have known that the unauthorized reprinting of a photograph was copyright infringement”. ID. at 1092. Although the court was unable to find evidence of actual knowledge, it found that the defendant had a reckless disregard for the plaintiff’s rights. identification.

When deciding an award of statutory damages, the court must consider a number of factors. In the past, courts have used a wide range of criteria: fair market value of the rights infringed, fifth v. legal times of washington, 511 f. support 579, 582 (dc 1981); Plaintiff’s Lost Earnings and Defendant’s Earnings, Boz Scaggs Music v. knd corp., 491 f. support 908, 914 (d. conn. 1980); the mental state of the offender, id.; and deterrence of future infringements. see failure c. new literary gazette corp., 568 ff. support at 1174 (doubling the fair market value of the infringed right to arrive at an amount sufficient to deter a willful infringer because “[a] willful infringer … should be liable for a substantial amount in excess of the market value of a legitimate license .”); textile company lauratex v. Allton Knitting Mills, 519 F. support 730, 733 (s.d.n.y. 1981) (court arrived at $40,000 statutory damages based on $5,000 actual income for violator and defendant’s will); textile company lauratex v. Allton Knitting Mills, 517 F. support 900, 903-04 (necessary deterrence in case there was evidence of numerous trials in which president allton was a defendant and negative inference drawn from his refusal to testify).

kinko’s maintains that, in any case, it is an innocent infringer. the statute sets an amount of damages of $200.00 if the defendant proves that he was unaware and had no reason to know that he was infringing. 17 usc § 504(c)(2). the defendant bears the burden of proving this good faith and that his belief was reasonable. copyright nimmer § 14.04[b][2], at 14-40.1 14.40.2. see also peer international corp. v. pause records, 909 f.2d 1332, 1336 (9th cir.1990), cert. denied, ___ us uu. ___, 111 sec. Connecticut. 1019, 112l. 2d edition 1100 (1991) (defendant must show reasonable good faith belief to rebut evidence of intentional infringement). the minimum damage figure is mandatory, not discretionary, if the court finds good faith. ID. at 14-40.2 14-40.3. Kinko’s has failed to prove that he was an innocent infringer by failing to demonstrate his good faith. Kinko’s should have known that he was infringing on the plaintiffs’ copyrights.

One method of evaluating Kinko’s willingness is through the training that Kinko provided to its employees regarding fair use requirements. at trial, the defendant presented kinko’s “policies and procedures” manual (exhibit k), his “teacher’s copyright and publication manual” (exhibit h),[20] his “manual of co-workers” (exhibit b) and a “kinko copyright training video transcript” (exhibit a-s (1)). These documents show that Kinko’s intentionally and as a market strategy targeted college buyers and aggressively pursued their business through its faculty publishing business.

*1545 in the “classroom guidelines” section of the handbook, provides:

manual, page 14. By stating this, kinko’s appears to have exempted itself from the scope of the guidelines entirely. to the contrary, being beyond the scope of the guidelines, to this court, still makes kinko subject to fair use law. Kinko’s never acknowledges that its role as a commercial enterprise might in any way affect a determination of fair use, even though § 107 expressly states that commercial use must be considered and Supreme Court precedent states that it is “allegedly…unfair.” see sony corp., 464 usa at 451, 104s. Connecticut. in 793.[21]

kinko’s instructions to his workers possessed little of the nuance of copyright law. they did not provide hypothetical situations or any factual summary of the current state of the law. the facts of the sony case, the salinger case, the harper & row of cases or others that may illustrate some of the complexities of this doctrine. This can hardly be considered a “good faith” effort on Kinko’s part to educate their employees. rather, it seems more like a way to “cover” themselves while the kinko remained voluntarily blind to the consequences of their activity.

this court also finds and concludes that substantial damages are necessary to deter kinko’s from repeating the conduct proven in this case. As noted above, Kinko’s has substantial income and assets: in 1989, net income of $3 million and assets of $15 million. all cases of copying were made with the same motive and intention. therefore, this court will assess statutory damages in the amount of $50,000 for nine of the 12 violations, and $20,000 for three[22] of the violations for a total of $510,000. here we are not trying to measure the financial loss for the plaintiff, but to deter the defendant from future infringing copies.

The defendant claims that he acted as an agent for the educational institutions when he copied the excerpts from the lawsuit. Section 504(c) provides that the court “shall award statutory damages…where an infringer believed and had reasonable cause to believe that his use of the copyrighted work was fair use… ., if the violator was (i) an employee or agent of a nonprofit educational institution…” 17 u.s.c. §504(c)(2). Kinko claims to demonstrate his role as an agent through several factors: the teacher selects the works to be copied, directs Kinko to copy them, and requests permission to copy on behalf of the teacher. In addition, the teacher signs an order form that says:

Since the law does not define “agent,” we will use state law to guide us on this issue.

s.e.c. v. american bd of commerce, inc., 654 f. support 361, 366 (s.d.n.y.), affirmed in part, dismissed in part, 830 f.2d 431 (2d cir. 1987) (citing the agency’s (second) reformulation § 1 comment b (1977)). new york common law principles state that the agency is a fiduciary relationship “resulting from the manifestation of the consent of one person to another that the other shall act on his behalf and be subject to his control, and the consent of the other to act”. meese v. Miller, 436 n.y.s.2d 496, 499, 79 a.d.2d 237 (app.div. 4th dept. 1981). “[n]ot there can be an agency relationship in which the presumed principal has no right of control over the presumed agent.” mazart v. state, 441 n.y.s.2d 600, 605, 109 misc.2d 1092 (n.y.ct.cl.1981). however, every detail need not be determined by the presumed director. an agency may exist where the principal retains the right “to make management and policy decisions affecting the agent”. identification.

This court has confirmed the soundness of these principles. see Ahn v. rooney, pace inc., 624 f. support 368, 370-71 (s.d.n. y.1985) (“submission” element is essential for agency). the second circuit agrees. In in re shulman transportenterprises, inc., 744 f.2d 293 (2d cir. 1984), the court held that the essential elements of an agency relationship are direction and control. ID. at 295 (citing the agency’s (second) reformulation § 1(1) comment b, § 14 (1958)).

Plaintiffs contend that Kinko’s did not present any testimony at the trial from the universities involved that any agency relationship existed to demonstrate the required element of direction and control. Because Kinko’s has not shown that the teachers exercised a sufficient level of control over the relationship, we agree with Plaintiffs that this defense is not available to Kinko’s.

even if kinko’s could prove an agency relationship, it has not shown that its behavior was intended by congress and excused under section 504(c).[23] Implicit in section 504(c) is something that shows that the defendant was an innocent actor. the agency relationship requires that the defendant lack control over his actions. this type of actor, understandably, must be protected. Kinko’s wasn’t such an innocent party.

kinko’s had control over the permitting process: determining whether a passage required permission or was fair use; whether permission was requested after the fair use determination; and when and how permission was requested. The teachers simply handed over the signed form, taking responsibility, but actually ceded several key aspects of control to Kinko’s. therefore, kinko’s has not shown that it should be awarded damages.

We will not discuss here whether it was reasonable for kinko’s to believe that their copy was fair use, as the finding that there is no agency relationship precludes a determination *1547 for remission of damages under The status.

Attorneys’ fees and costs may be awarded pursuant to 17 u.s.c. § 505. “fees and costs in copyright infringement cases, like statutory damages, are matters left to the discretion of the court, to be awarded with a view to encouraging the pursuit of plausible copyright claims and deter further infringements. engel v. wild oats, inc., 644 f. support 1089, 1093 (s.d.n.y.1986). see also oboler v. goldin, 714 f.2d at 213 (“such award ensures equal access to the courts, provides a financial incentive to challenge violations, and sanctions the losing party”). “Because section 505 is intended in part to encourage the assertion of plausible copyright claims and deter infringement, fees are generally awarded to prevailing plaintiffs.” diamond v. am-law publishing corp., 745 f.2d 142, 148 (2d cir. 1984). see also Caprice, Inc. v. rubies costume co., inc., 891 f.2d 452, 457 (2d cir. 1989) (“prevailing plaintiffs are routinely awarded fees”); roth v. pritikin, 787 f.2d 54, 57 (2d cir. 1986) (prevailing plaintiff generally entitled to fees).[24] furthermore, “[b]ecause the award of fees has a legal basis, a subjective bad faith determination is not necessary.” diamond, 745 f.2d in 148.

nimmer asserts that, although the law does not require a finding of guilt, “the mere fact that the plaintiff won at trial means that the defendant has been found ‘guilty of infringement.’ That finding, even in the absence of an additional finding of ‘willful infringement’ establishes a kind of culpability on the part of the defendant”. nimmer, § 14.10[d][2], at 14-84.10. accordingly, we award plaintiff’s attorneys’ fees and costs.

some courts have required some evidence of intent. in failing, the court found that the defendant’s “willful” infringement was a deciding factor in allowing attorneys’ fees. 568 ff. support in 1174. later in bourne co. v. mpl communications, inc., 678 f. support 70, 72 (s.d.n.y. 1988), the court refused to award fees to plaintiff’s counsel due to the novelty of the issues involved in the case and the defendant’s lack of bad faith.

As discussed below, the issues involved in this case have a certain degree of novelty. although conciliation agreements have been signed, so far there has been no judicial determination of a copy shop case. see px. 59, 60, 61. The copy made in previous cases has been a copy from a library or telephone book. however, the fair use doctrine itself is not new. Koenig’s testimony on fair use failed to acknowledge the kind of critical analysis necessary to make these assessments. He showed no evidence that Kinko struggled with the determinations of the extracts in demand. As a result, this court has found that Kinko’s copying was deliberate. Under these circumstances, this court finds it reasonable to award attorneys’ fees and costs to plaintiffs.

This court finds that the excerpts copied by Defendant Kinko are not a fair use of Plaintiffs’ copyrights and therefore constitute infringement. Furthermore, Kinko’s defenses of copyright misuse, dirty hands, and legal estoppel fail. the plaintiff is awarded statutory damages, injunctive relief, and attorneys’ fees and costs. file the order with 15 days notice to the defendant.

so ordered.

[1] kinko’s uses two-sided pages. This means that, in this case, Kinko used 194 pages of copy paper to reproduce 388 pages of material. In this case, as in most others involved, Kinko’s was also able to copy 2 pages of copyrighted material from each side of the paper. so, for example, 10 pages of copy paper could potentially infringe 40 pages of copyrighted material.

[2] this assessment is based on the quantity and substantiality factor in the fair use analysis, see below.

[3] these charges, which are not added correctly, are reflected as in the package itself.

[4] an anthology, according to webster’s third new international dictionary (unabridged), is a “representative collection of selected literary pieces or passages or of selected pieces in any art form”. (1967)

[5] but see weinreb, fair’s fair: a commentary on the doctrine of fair use, 103 harv.l.rev. 1137, 1143 (1990) (arguing that the usefulness of “transformative” value as a criterion is overstated, positing that “[a] use can serve an important and socially useful purpose without being transformative, simply by making copied material available.” ) .

he further states:

one may wonder if the publication of material in a new “package” may not itself constitute a transformative use. For example, the publication of a volume of Salinger’s letters would have an entirely different purpose from the one that motivated Salinger to write and send the letters contained in the volume. Preparing the collection involves effort and, perhaps, judgment of a kind that is often enough to keep a copyright.

identification. in 1143, b. 29. rejects the legal judge’s emphasis on transformative use as nothing more than a “limiting test, fit for uses that demonstrably serve neither a public nor a socially recognized private purpose” that limits the evaluation of other relevant factors. ID. at 1144. the effort used in this case was questionable at best and the level of judgment virtually non-existent.

[6] This is true because Kinko’s financial statements do not separate the faculty publishing segment of the business from its other income. however, the statements show that the company made a substantial profit in 1988 and 1989, respectively: $27 million and $35 million gross profit (before operating expenses) and $200,000 and $3 million net income. (pixel 25a).

[7] in defendant’s proposed findings of fact, kinko’s admits that:

As part of its service to the educational community, Kinko’s operates a program identified as “teacher publishing.” Under the Faculty Publishing Program, Kinko’s photocopies excerpts from selected materials at the request of college professors and teachers for educational use in the classroom. kinko’s has been operating its teacher posting program for nearly 20 years.

determinations of fact proposed by the defendant, at 2.

[8] “instead of reproducing the material himself and distributing it to the class, the teacher takes the material to kinko’s or has it picked up. kinko’s then photocopies the material…and sells it directly to the students. …” the teacher is the one who determines which materials are to be copied. Respondent’s Proposed Findings of Fact, ¶¶ 4, 6, and 9.

[9] This telephone survey of 81 professors at the University of California, Santa Barbara, conducted in August 1990, showed that: 52% of the total provided “personalized” packages for their students; 98% of them did so because a suitable book was not available; 29% did so because it would be too costly for students to purchase all the fonts; and 95% did so because they stated that their field was changing rapidly and they needed updated materials. “Survey of College Professors on Personalized Packages” in 15, Corporation for Economic Analysis (1990).

[10] there was testimony presented at trial by professor peter jaszi that the guidelines were not a compromise, but rather a forced concession to educators. tr. 837-39. this testimony was admitted but, for the reasons stated here, limited reliance is placed on it by this court. this is a likely claim by either party to a compromise. A compromise is just that, one party giving up some of its demands in exchange for concessions from the other party. This court is not in a position to retrospectively assess the quality of the debate and analysis of privileges and responsibilities during the deliberations of Congress or these groups. the congressional record should speak for itself.

[11] we have assessed kinko’s acts in accordance with the requirements of the guidelines because we find the circumstance of cheating for college students to be particularly compelling in this case, even though kinko’s is not a teacher or other educational institution and we have not found any agency. relationship between kinko’s and the university professors involved. see agency discussion below.

[12] “there may be instances where copying that does not conform to the guidelines set forth below may nevertheless be permitted under fair use criteria.” human resources representative no. 1476, at 68, us code frozen & admin.news 1976, p. 5681.

[13] expressly, this court’s decision does not consider copying made by students, libraries, or copy shops on campus, whether for profit or not.

[14] the 1966 house report noted: “education is the only market for textbook publishers, and … many authors receive their main income from licensing reprints in anthologies and textbooks.” text; if an unlimited number of teachers could prepare and reproduce their own anthologies, the cumulative effect would be disastrous”. hour. rep. No. 2237, 89th Congress, 2nd Sess. in 62 (1966).

[15] the defendants allege that the publishers’ lack of immediate response “creates serious problems for both teachers and students, causing considerable disruption and interference in the educational process.” the findings of fact advanced by the defendant, at 20. however, the defendants did not present any such testimony from a teacher or student. At a meeting of the National Association of College Stores, Kurt Koenig gave a slide show addressing “the well-known problem of unreasonable delays and turnaround times” on permit applications. In preparation for that meeting, it was alleged that Koenig had made “pencil” tabulations of it, but the computer records of the tabulations were “destroyed.” (p. 352). The anecdotal testimony Kinko claimed he would present at trial never materialized. Kinko’s provided deposition testimony from plaintiffs’ permit department staff regarding their permit turnaround times. at mcgraw-hill, response time averaged 3 to 4 weeks or 2 to 3 months if there was a delay (dtx j-h, at 18-19); morning had a one month turnaround time with some backlogs remaining in Nov 1989 from March 1989 (dtx i-w, on 24-28); penquin averaged 1 week to 2 months (dtx i-z, at 32); and wiley averaged 2-4 weeks or 5-6 weeks if late (dtx i-t, at 17-19).

[16] the evidence presented at trial shows the fees that kinko paid to harper & queue for permission to copy his works. royalties ranged from 50 cents to $5.00 per copy cost to the student, before copy costs (usually about 4 cents per page). (p. 357). those permits that cost $5.00 per copy, instead of 50 cents, usually include a larger number of copied pages of 200 to 300 or 500 pages or maybe a whole book. a cursory analysis of the exhibit shows that the price of permits is often a multiple of the number of copies requested, that is, the number of students provided. For example, 40 copies of an excerpt from the book Living With Change: The Semantics of Coping by Wendell Johnson and Dorothy Moeller cost a permit of $120.00. that particular request included 214 pages of this book (there was no notation to indicate if it was the entire book). For comparison, 20 copies of an extract from the history of African civilization by e. jefferson murphy brought a permit price of $80. this request included 400 pages, the complete work. Although there is no established formula evidenced by these or other examples, there is also no evidence of exorbitant prices or a discriminatory scheme.

[17] In a memo dated September 1984, a copy of Kinko’s bulletin was sent to Richard Rudick of Wiley. the newsletter promoted kinko’s “publishing on demand” service to university users and characterized the traditional publishing industry as “inefficient”. (dtx cd). in december 1984, the president of the association of american publishers, inc., wrote a letter to paul orfalea, president of kinko graphics corporation, “expressing…concern over misleading statements and related omissions with copyright issues on kinko promotional material.” (px52). Specifically, Townsend criticized Kinko’s cavalier depiction of his responsibility under copyright law and classroom guidelines, and his inappropriate characterization of publishers as “uncooperative or inefficient.” identification.

[18] For example, in August 1988, McGraw-Hill complained to Kinko’s about a 23-page excerpt copied from one of his books for a class of 96 students. Kinko paid McGraw-Hill $2,000.00 in settlement of the dispute. Kurt Koenig, in a letter accompanying the check, commented that the McGraw-Hill permitting department had “provided excellent service in the past.” (p. 62).

[19] When the 1988 amendment to § 205(d) went into effect on March 1, 1989, the Bern Convention effectively eliminated the pre-registration requirement. however, the public law then in effect provides that “any cause of action arising under title 17 … prior to [March 1, 1989] shall be governed by the provisions of said title in effect when the cause arose.” of action.” pub.l. 100-568, § 13(b) (1988) (emphasis added). This public law reactivates the prior registration requirement for the instances in litigation.

[20] The Kinko Teachers’ Copyright and Publication Handbook (“Handbook”) states that “[a] copyright notice and credit line must appear on the first page of each work protected by copyright reproduced in a faculty publication package, regardless of whether permission was obtained or a royalty fee was required.” page 10. It is questionable how seriously Kinko’s took its own proceedings as this line of credit did not appear on any of the five packages presented at trial.

[21] in his capacity as legal counsel for kinko’s, in the trial kurt koenig was qualified as an expert in order to testify on the issue of fair use. he explained each of the four factors and his understanding of their application. He testified extensively about the company’s policy on fair use and the training of Kinko employees. tr. 330-541. However, Koenig admitted that, given a hypothetical situation, he had no way of knowing the fair use analysis that a Kinko employee would apply. tr. 604.

[22] this court awards lesser damages for violations of the understanding of capitalism, lower living, and group dynamics: the behavioral psychology of small groups because the copying was lesser.

[23] by analogy, article 108 of the house report, entitled “reproduction by libraries and archives”, provides that:

It would not be possible for a nonprofit institution, through contractual agreements with a commercial copying company, to authorize the company to perform copying and distribution functions that would be exempt if performed by the nonprofit institution itself.

rep.h.r. No. 94-1476, 94th congress, 2nd sess. 74 (1976), us code frozen & admin.news 1976, p. 5688. This comes as close to the present circumstance as anything clearly established in legislative history and persuasively supports Plaintiffs’ argument that Congress did not intend to allow Kinko’s to act as an agent for the Bars to perform the volume of copies shown in this suit.

[24] other circuits have held that attorneys’ fees should not be awarded as a rule in all cases. see annotation, award of attorneys’ fees under secs. 101 et seq. of copyright law, 17 uscs § 505 modern cases, 85 alr fed. 435, § 3[b], at 455 (1987).

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