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Norbert Wu, Individually and On v. Pearson Education Inc

June 7, 2011

NORBERT WU, INDIVIDUALLY AND ON
BEHALF OF ALL SIMILARLY SITUATED
PERSONS, PLAINTIFFS,
v.
PEARSON EDUCATION INC., DEFENDANT.



The opinion of the court was delivered by: James C. Francis IV United States Magistrate Judge

MEMORANDUM AND ORDER

These related cases are putative class actions in which a photographer, Norbert Wu, alleges that Pearson Education Inc. ("Pearson") has infringed his copyrights and those of other photographers by including their images in its academic publications without obtaining the proper licenses. Mr. Wu now moves for an order enjoining Pearson from communicating with class members, compelling Pearson to produce all communications it has had with class members, and imposing sanctions on Pearson for allegedly misrepresenting the nature of its communications with class members. For the reasons that follow, the plaintiff's motion is denied.

Background

Mr. Wu contends that Pearson has "engaged in direct settlement negotiations with members of the proposed class, including both photographers and stock photography vendors who were not represented by counsel, attempting to settle and otherwise compromise precisely the claims that are at issue in this action." (Memorandum of Law in Support of Plaintiff's Motion for a Preliminary Injunction and Other Relief ("Pl. Memo.") at 2). Further, the plaintiff asserts that Pearson has attempted to mislead the Court by initially denying that any such communications took place and then, when the communications were revealed, arguing that they were not improper. (Pl. Memo. at 1-2).

The plaintiff has proffered evidence of two instances in which Pearson had contact with members of the putative class. In the first, Carla Nolan, a Photo Permissions Editor for Pearson, sent an e-mail to Mark Gibson requesting "an extension to a license granted in 2006 for [Mr. Gibson's] image of the California state flag in the Elementary Social Studies Leveled Readers." (E-mail from Carla Nolan to Mark Gibson dated Dec. 3, 2010 ("Nolan 12/3/10 E-mail"), attached as Exh. A to Exh. 9 to Declaration of Danial A. Nelson dated March 18, 2011 ("Nelson Decl.")). Attached to the e-mail was a draft letter agreement stating that it "expresses our entire understanding and replaces any and all former understandings oral or written, relating to the subject matter hereof." (Letter Agreement dated Dec. 3, 2010, attached to Nolan 12/3/10 E-mail).

Also attached was a license request that identified the image at issue and characterized the anticipated usage as "Reuse (New Edition)." (License Request, attached to Nolan 12/3/10 E-mail). According to that document, the proposed license would authorize an unlimited print quantity. (License Request).

Audrey Gibson is the wife of Mark Gibson and the co-owner with him of Gibson Stock Photography, the entity that licenses his work. (Declaration of Audrey Gibson dated Feb. 10, 2011 ("Gibson Decl."), attached as Exh. B to Exh. 9 to Nelson Decl., ¶¶ 2-4). Upon receiving the e-mail from Ms. Nolan, Ms. Gibson became concerned about the reference to an unlimited print quantity and asked for information about Pearson's prior use of the image. (Gibson Decl., ¶¶ 6-7). Ms. Nolan responded with an e-mail indicating that she would provide the requested information only after the Gibsons entered into a confidentiality stipulation. The relevant portion of the e-mail states:

Pearson considers manufacturing information as proprietary and confidential. Please confirm that any discussions that take place between you and Pearson (or your representatives) shall remain strictly confidential, including information regarding manufacturing practices. Please confirm that you agree not to publish, publicize or allow disclosure of the discussions or information to others in whole or in part for any other purpose. In the event you and Pearson fail to settle any claims that result from these discussions, please know that any settlement-related discussions (whether written or oral) shall be inadmissible for any legal proceedings.

(E-mail from Carla Nolan to Audrey Gibson dated Dec. 8, 2010, attached as Exh. C to Exh. 9 to Nelson Decl.). When neither Ms. Gibson nor her husband responded, Julie Orr, Manager of Image Permissions for the Curriculum Group at Pearson, called and left a telephone message indicating that Pearson was operating under a deadline and would replace Mr. Gibson's photo with a different image if it did not receive an executed license agreement promptly. (Gibson Decl., ¶ 10; Declaration of Julie Orr dated Feb. 18, 2011 ("Orr Decl."), attached as Exh. A to Exh. 10 to Nelson Decl., ¶¶ 1, 13). According to Ms. Gibson, Ms. Orr further stated that "Pearson 'certainly wants to settle and make good on what's been done in the past as far as this image is concerned.'" (Gibson Decl., ¶ 10). When the Gibsons did not execute a license, Mr. Gibson's photo was removed from the publication. (Orr Decl., ¶ 14).

Previously, on August 27, 2010, the Gibsons had received an e-mail from a different permissions editor at Pearson requesting a license to use one of Mr. Gibson's images in a new edition of Pearson's "Sidewalk Reader." (Gibson Decl., ¶¶ 11-12; Orr Decl., ¶¶ 3-6). At that time as well, Ms. Gibson requested information about prior use of the photo, and Pearson had asked for a stipulation of confidentiality. (Gibson Decl., ¶¶ 12-14; Orr Decl., ¶ 7). When the Gibsons did not agree to confidentiality, Pearson did not provide the requested information, and when the Gibsons did not respond to the request for a new license, Pearson omitted Mr. Gibson's photo from the publication. (Orr Decl., ¶ 8).

The second instance of communications with a putative class member involved the photographer Carl Schneider. Mr. Schneider apparently initiated contact with Pearson, demanding that it cease and desist from using his photographs without permission and seeking payment for a retroactive license that would cover the allegedly unauthorized use. (E-mail from Kieran Doyle to Carl Schneider dated Dec. 30, 2010 ("Doyle 12/30/10 E-mail"), attached as Exh. E to Exh. 9 to Nelson Decl.; E-mail from Carl Schneider to Kieran Doyle dated Dec. 30, 2010 at 8:21 p.m. ("Schneider 1st 12/30/10 E-mail"), attached as part of Exh. B to Exh. 10 to Nelson Decl.; E-mail from Carl Schneider to Kieran Doyle dated Dec. 30, 2010 at 9:52 p.m. ("Schneider 2nd 12/30/10 E-mail"), attached as part of Exh. B to Exh. 10 to Nelson Decl.). Initially, counsel for Pearson resisted Mr. Schneider, indicating that because of the pendency of this case, Pearson could not negotiate with him until a class certification determination had been made unless he was represented by counsel. (Doyle 12/30/10 E-mail).

Mr. Schneider, however, would not be put off. He derided Pearson's suggestion that he retain counsel (Schneider 1st 12/30/10 E-mail) and stated:

Since Pearson is refusing to comply with my cease and desist demands, I will make another demand. I demand that Pearson immediately hold all revenues and profits from the sale of all textbooks and other publications that contain my photographs (without my permission) in a trust bank account for my benefit, until this is resolved. (Schneider 2nd 12/30/10 E-mail). After Pearson's attorney again advised Mr. Schneider that it would be necessary for him to retain counsel before an agreement could be negotiated, Mr. Schneider responded that "you need to make sure that your client is aware that Pearson will be paying for all of my legal fees and expenses." (E-mail from Carl Schneider to Kieran Doyle dated Jan. 5, 2011 ("Schneider 1/5/11 E-mail"), attached as part of Exh. B to Exh. 10 to Nelson Decl. (emphasis omitted)). Mr. Schneider went on to threaten legal action, arguing that "fighting my claims in federal court will cost Pearson many times what it would cost for a simple retroactive license." (Schneider 1/5/11 E-mail (emphasis omitted)).

Pearson's counsel finally agreed to negotiate in light of Mr. Schneider's "unrelenting insistence" that it do so without requiring him to retain a lawyer and in light of the fact that any retroactive license would be granted to Mr. Schneider's agency, Ultimate Group, LLC, rather than to him individually. (E-mail from Kieran Doyle to Carl Schneider dated ...


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