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All infringements aren’t equal

Mark Sableman June 6, 2017

Are all copyright infringements created equal? Or should courts distinguish between different levels of intent, significance, and harm? Results in two recent cases suggest that circumstances have significant effects on damages and attorneys’ fee awards. 

The two recent cases involve strikingly different circumstances of infringement. In one case, a company sued a competitor that had used its product photos (perennial plants) in the competitor’s catalog. The copyright owner discovered the competitor’s infringement in 2011 and warned the competitor to stop. But the infringement continued, with use of the plaintiff’s photos 133 times from 2011 to 2017.

In another case, a blogger who ran a relatively obscure blog used two photos without permission from the copyright owner. The copyright owner made no takedown demands, but sued as a first step. The blogger then immediately took down the photos. But the litigation continued for more than two years, until the blogger offered a judgment of “$7,500, plus costs and attorneys’ fees as set by the court,” and the plaintiff accepted it.

If you believe the threats in photo copyright cease-and-desist letters, you might assume that defendants found guilty of infringement are usually hit with judgments of $150,000 in statutory damages per photo, plus attorneys’ fees. But that didn’t happen in these cases. The copyright damages statute directs courts to impose damages based on principles of equity, and the precedents on attorneys’ fees call for consideration of all of the circumstances of the case. Those principles led to quite different results, in each case tailored to the circumstances of the case.

In the case where the competitor used the plaintiff’s photos in its competing catalog, Under a Foot Plant Co. v. Exterior Design, Inc., in the District of Maryland, the plaintiff’s evidence included testimony by Professor Jeff Sedlik, a leading expert on the photography marketplace, as to standard licensing costs, and licensing premiums when photos are used competitively. The court awarded the plaintiff $900,000 in actual damages — about $60,000 for each of the 11 photos that were copied. The jury also found the infringement willful, which may affect the court’s ruling on plaintiff’s request for attorneys’ fees.

In the blogger case, BWP Media USA Inc. v. Mishak NYC LLC, in the Eastern District of New York, the damages of $7,500 that defendant offered, while equivalent to about $3,000 a photo, represents a relatively small award for the plaintiff, considering that the case went on more than two years. So the plaintiff there probably hoped to recover its attorneys’ fees, which the defendant’s confessed judgment left for the court to decide.

U.S. Magistrate Lois Bloom, however, found no equities favoring plaintiff on the attorneys’ fee issue. She found the defendant’s only “transgression” was “posting of two BWP photographs on its relatively unknown blog.” The $7,500 judgment was “a very reasonable offer” that “is sufficient to compensate plaintiff and deter infringement.”

Especially given defendant’s immediate takedown after the case was filed, the magistrate noted, “One wonders whether a cease and desist letter to plaintiff would have better served the Copyright Act’s objectives and obviated the need for this lawsuit.” The magistrate recommended that plaintiff receive none of the $45,000 it requested in attorneys’ fees. The district court agreed, so plaintiff walked away with an award for only $7,900 (the confessed damages and its $400 filing fee).

It turns out that all infringements aren’t created equal. The equities of the situation matter a lot when it comes to determining damages and attorneys’ fee awards.

Mark Sableman is a partner in Thompson Coburn's Intellectual Property group.