Calling it a case of “blatant infringement,” attorneys for HarperCollins have asked the court for a permanent injunction blocking Open Road from publishing its unauthorized e-book edition of Jean Craighead George’s Julie of the Wolves, as well as more than $1.1 million in damages and attorney costs.
The request comes after HarperCollins's recent win in its copyright suit against Open Road, and after the parties were unable to come to a voluntary settlement to resolve the case. Under a court order, Open Road is set to file its opposition brief no later than June 20.
In its motion, filed on May 23, HarperCollins attorneys asked the court for a minimum of $30,000 in damages, notably declining to ask for the $150,000 maximum for willful infringement. But, noting an element of "willfulness," attorneys asked the court to add to its $30,000 request at its discretion.
“HarperCollins initially was not inclined to seek enhanced statutory damages based on willful infringement,” the motion reads. “However, Open Road’s continued infringing conduct following the Court’s summary judgment ruling has led HarperCollins to believe that a statutory damages award should incorporate a willfulness component.”
As recently as May 1, Harper attorneys state, Open Road's Julie of the Wolves e-book remained available for sale, although they acknowledge, Open Road "appears to have instructed its retailers to cease actually selling" the e-book.
HarperCollins attorneys said a meaningful damage award was necessary to “deter Open Road, and others, from arrogating to themselves the new-media publication rights of legitimate licensees like HarperCollins,” and to bolster “an orderly market" for electronic publication rights.
“This case will surely be looked to as an important precedent in this area,” the brief states. “Hence, a sizable statutory damage award, coupled with the other remedies sought in this motion, will send an appropriately strong message to digital publishers.”
On that note, HarperCollins also asked the court for attorneys’ fees in the amount of $1,089,371.50 and costs in the amount of $7,040.62. That figure represents 70% of HarperCollins’ total fees of $1,556,245.00.
An Open Road spokesperson told PW that HarperCollins's motion was "not a surprise," and that Open Road will "respond accordingly."
In seeking the fees, Harper attorneys argue that Open Road’s actions meet the standard of being “objectively unreasonable,” noting that the court readily found for HarperCollins on little more than “a plain reading of the contractual language,” and, that litigation ensued after HarperCollins had strongly asserted its rights in “repeated” conversations with both Open Road, and with George's agent, Ginger Knowlton.
There had been speculation that a final settlement to the case would seek to turn Open Road’s unauthorized edition into an authorized edition. But the request for a permanent injunction suggests that outcome, as expected, will be a difficult one to achieve.
First, the parties in the case cannot on their own agree to a license as part of a resolution. The contract requires that any deal gain the consent of the author's estate (George passed away in May of 2012).
Second, this case is at its heart more of a contract dispute than a copyright case, driven primarily by digital royalty rates. The author opted to go with Open Road for a 50% e-book royalty, while HarperCollins is said to have offered a digital edition, but refused to match the 50% royalty.
It seems unlikely that HarperCollins would have chosen to undergo the expense and uncertainty of litigation with Open Road only to enter into a license agreement with Open Road after winning.
It also seems unlikely that George's estate would agree to take a lesser royalty with HarperCollins. In an earlier filing in the case, George was said to have deemed HarperCollins's e-book royalty rate "fundamentally unfair to authors." Given the increasing industry-wide pressure to raise e-book royalties, and the apparently lackluster sales of Open Road's digital edition, there is surely no need for George's estate to rush into a new e-book deal on terms it feels are unfair.
While current sales figures were not provided, in its filing Harper attorneys note that Open Road's Julie of the Wolves e-book sales were "relatively small."
George’s agent, Ginger Knowlton, declined to comment, and would not confirm whether she had even been approached about a revised licensing deal for the e-book edition as part of any settlement.
In asking for a permanent injunction, HarperCollins argued against being made into a “forced licensor" of Open Road.
Harper’s proposed injunction would: enjoin Open Road from publishing and discontinue all sales of the work; Require Open Road to "delete or destroy" all copies; Remove the book from “sales catalogs, websites, and any other sources” that list works available for sale or download; Require Open Road to notify all third parties. And, it would expressly prevent Open Road from “publishing, or contracting to publish” any other work for which HarperCollins holds the exclusive right to publish “in book form.”
The suit was filed by HarperCollins in December of 2011. HarperCollins had argued that two clauses in the contract gave the publisher the exclusive right to license an electronic edition—albeit, with the permission of the author. Open Road, however, believed there to be no explicit grant of e-book rights in the contract, and offered to publish the digital edition, and to indemnify George and her agency, Curtis Brown.
In March, judge Naomi Reice Buchwald granted summary judgment for HarperCollins, finding the contract language "sufficiently broad to draw within its ambit e-book publication."
HarperCollins signed George’s Julie of the Wolves in 1971, for a $2000 advance and standard royalties. It has since sold over 3.8 million copies in print.