McGraw Hill LLC v. Doe 1

Background

McGraw Hill LLC, Pearson Education, Inc., and Cengage Learning, Inc. sued Rosa Pineda and Ozodbek Abdulazizov over the sale of allegedly counterfeit textbooks through eBay, Amazon, and other online storefronts. The publishers asserted copyright claims, and McGraw Hill and Cengage also asserted trademark claims. The defendants failed to defend the action, and the court had previously entered a preliminary injunction against them.

The publishers moved for a default judgment, meaning a judgment entered after a defendant fails to defend. The court explained that a default admits well-pleaded factual allegations but does not automatically establish that those facts amount to legal liability or justify the amount of damages requested.

Liability

The court found that the publishers adequately showed ownership of valid copyrights and unauthorized copying. The evidence included purchases of books from the defendants that the publishers determined were counterfeit and evidence that the copies were similar enough to the publishers’ works to cause customers to believe they were buying authentic books.

For the trademark claims, the court found that McGraw Hill and Cengage adequately alleged valid protected marks and use of those marks in a way likely to confuse consumers about the source of the goods. The court also found personal jurisdiction over both defendants based on allegations that they sold and shipped infringing goods into New York.

Damages

The publishers requested $6,150,000 from Pineda and $610,000 from Abdulazizov in statutory damages. The court awarded substantially less than requested. It awarded Pineda $700,000: $200,000 for each of three trademark claims and $100,000 for one copyright claim. It awarded Abdulazizov $93,000: $22,000 for two trademark claims and $7,000 for each of seven copyright claims.

The court relied on evidence that Pineda sold 225 items for $8,000 and that Abdulazizov sold 156 items for $5,590. It considered the value of the publishers’ works, the scope of sales through multiple online storefronts, the defendants’ willful conduct, their use of false names and multiple accounts, and the need for deterrence. For Abdulazizov, the court calculated the award by tripling an estimated $31,000 in lost revenue. The court treated the copyright and trademark violations as separate injuries and allowed recovery under both laws without duplicating recovery for the same injury.

Injunction and Other Relief

The court issued a permanent injunction barring the defendants from directly or indirectly infringing the publishers’ copyrights and trademarks. The injunction also applies to the defendants’ agents and people acting in concert or participation with them who receive actual notice of the order.

The court granted the request to dissolve the automatic stay so the judgment could be enforced immediately. It ordered the defendants to deliver all infringing copies of the publishers’ works for destruction. It released the publishers’ $4,000 bond to their counsel and retained jurisdiction over the parties and the matter to enforce the order.

Disposition

At the beginning of the opinion, the court states that the motion was "granted in part and denied in part." The conclusion, however, states: "The motion for default judgment is GRANTED." The opinion directs the publishers to submit a proposed judgment consistent with the opinion by July 29, 2022. Judge Lewis J. Liman signed the order on July 26, 2022.