One Bad Apple (or Attorney)

Petapixel and others have warned about Richard Liebowitz, “one of the most prolific copyright infringement lawyers in the state of New York,” who has been fined and disparaged by several federal courts.

But when you look closely at the complaints against him, they have nothing to do with his being a copyright attorney except for the number of infringement cases he has filed. Instead, the violations have been for not showing up in court, not following court orders, and lying to judges. All of these infractions would get any attorney in trouble, especially if they are repeated and rampant.

Attorneys must abide by ethical rules. While they differ slightly by court, they are encompassed in the ABA’s Model Rules of Professional Conduct. Some of the Rules are imperatives, cast in the terms “shall” or “shall not.” These define proper conduct for purposes of professional discipline. Others, generally cast in the term “may,” are permissive and define areas under the Rules in which the lawyer has discretion to exercise professional judgment.   

For example, at the state level, the California Rules of Professional Conduct regulate professional conduct of attorneys licensed by the California State Bar through discipline. Unethical conduct is investigated by the California State Bar’s Office of Chief Trial Counsel. Complaints against attorneys come from many sources, including clients, court officers, insurance companies and other attorneys.   

The rules are similar at the federal level, such as these Guidelines for the Northern District Court of California. Every time an attorney is admitted to appear before a court, the attorney must agree to abide by these kinds of rules.

In sum, it doesn’t matter what area of law Liebowitz practices in, his conduct in court would get him into trouble. So don’t cast aspersions on all copyright infringement attorneys because of one bad apple.

DMCA doesn’t require knowledge of 3rd party future infringement

Emerald Bay, Tahoe – Copyright Carolyn E. Wright

Photographer Gregory Mango sued BuzzFeed, Inc., for infringing one of his photographs and for removing or altering his copyright management information (CMI) in violation of the Digital Millennium Copyright Act (DMCA). Mango had licensed the photo at issue to the New York Post for an article, which included a gutter credit for Mango. A writer for BuzzFeed later used the photo for different article without permission and without Mango’s photo credit.

The U.S. District Court for the Southern District of New York awarded Mango statutory damages. The Court found that Mango’s gutter credit constituted CMI and that BuzzFeed distributed the photo with altered and missing CMI. The court then held that BuzzFeed knew that the CMI had been removed and altered without permission and that “BuzzFeed had reasonable grounds to know that such removal and distribution concealed a[n] . . . infringement.” The district court awarded $3,750 in statutory damages for copyright infringement and $5,000 in statutory damages for violation of the DMCA. It also ruled that Mango was entitled to reasonable attorneys’ fees and costs, awarding $65,132.50 in fees and $1,810.03 in costs under 17 U.S.C. § 505. See Mango v. BuzzFeed, Inc., 397 F. Supp. 3d 368 (S.D.N.Y. 2019).

BuzzFeed appealed to the United States Court of Appeals for the Second Circuit on the DMCA claim, arguing that it did not know that its conduct would lead to future, third-party copyright infringement. The applicable section of the DMCA states:

No person shall, without the authority of the copyright owner or the law . . .

(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

17 USC Section 1202(b).

The 2nd Circuit held that the plain language of the DMCA did not require Mango to prove that BuzzFeed knew that its actions would lead to future, third-party infringement. The court explained:

First, “an infringement” is not limited to the infringing acts of third parties. The plain meaning of the statutory language also encompasses an infringement committed by the defendant himself. This includes the knowing, unauthorized infringement that serves as the basis for establishing the first scienter element of Section 1202(b). In other words, a defendant’s awareness that distributing copyrighted material without proper attribution of CMI will conceal his own infringing conduct satisfies the DMCA’s second scienter requirement.

Second, “an infringement” is not limited to future infringing conduct. Although the word “will” indicates future action, in the context of Section 1202(b), it is used in conjunction with the words “induce, enable, facilitate, or conceal,” not “an infringement.” Id. So the statutory language requires constructive knowledge of future concealment, not future infringement.

[Emphasis added].

The Court of Appeals thus found that the district court had properly awarded damages. Click to see the full opinion below:

This case is good news with respect to the knowledge requirement of the DMCA, which has been difficult for photographers to prove. This court’s explanation of the knowledge requirement paves the way for more successful claims.

Get Professional Help!

In the early years of this blog, I would end each entry with the words: “Take my advice; get professional help.” That’s because there’s a lot of misinformation on the Internet about the law for photographers, including copyright law. With lots of great resources available for free from attorneys who practice in this area, you don’t have to rely on non-attorneys to get guidance. Here are a few:

Unfortunately, a recent article, written by someone who admits he’s not an attorney, makes incorrect or incomplete assertions. I haven’t identified the article or author here as the point is to correct the information. Here are some examples:

Assertion: If you are employed by someone to take images, then the employer owns the copyright. 

Clarification: In the United States, if photos are taken by an employee (a w2 employee) within the scope of employment, then the photos are a “Work Made For Hire” (WMFH”) and the employer is both the “author” and owner of the copyrights. If the photographer is an independent contractor (who has provided w9 and receives a 1099), the photographer owns the copyrights unless the photographer first agreed in writing and the work falls into one of 9 statutory categories. Learn more from Circular 9 from the U. S. Copyright Office. See also 17 USC 101.

Assertion: Whether you register or not, you can still legally go after someone who steals your work. But your settlement will be limited to actual damages.

Clarification: You don’t have to register your copyright with the U.S. Copyright Office to demand damages for an infringement, but you first must register your copyright (hopefully before but at least after the infringement) with the U.S. Copyright Office to be able to file a lawsuit. (If you created the photo in another country that is a signatory to the Berne Convention, you do not have to register to file an infringement lawsuit in the U.S.).

When a photo is not registered with the U.S. Copyright Office prior to the infringement (or within three months of the first publication of the photo), a copyright owner may recover only “actual damages” for the infringement (pursuant to 17 U.S.C. 504 (b)), not statutory damages. Courts usually calculate actual damages based on your normal license fees and/or industry standard licensing fees. You also may recover the profits the infringer made from the infringement if they aren’t too speculative. For example, if someone uses your photo on a t-shirt, then you likely would be able to get the profits made from t-shirt sales.

Assertion: If you do register your image, you can go after statutory damages, which could be considerable.

Clarification: You photo must be timely registered for an infringement to be eligible for statutory damages of up to $150,000 per willful infringing use for each photograph. See 17 USC Section 504(b) and (c). Legal fees and costs also may be recovered from the infringer. See 17 USC Section 505. Timely registration is that which is done prior to the infringement or within three months of the first publication of the photo (not 90 days). See 17 USC Section 412.

Because the statute does not allow for statutory damages when “any infringement of copyright in an unpublished work commenced before the effective date of its registration,” then you don’t have the 3 month window to register your photograph after an infringement if your work was unpublished at the time of the infringement.

Assertion: Unless you are a famous photographer and your stolen image ends up on the cover of a magazine, it’s not going to be worth the trouble to sue.

Clarification: My law firm helped photographers for 15 years with their infringement claims on a contingency fee basis, making non-suit demands and filing many lawsuits when necessary. I am now retired but some of my colleagues are continuing the good work.

Even if you haven’t registered your infringed photo, sometimes the actual damages are significant and/or you may be entitled to DMCA damages in addition to the infringement claims. DMCA claims arise when the infringer removes your copyright management information (“CMI”), such as a watermark, or provides false CMI to hide the infringement. More information is available in my blog entry here.

Check here for a list potential damages that you can recover. Check here for what you can do when infringed.

And take my advice; get professional help.

Take Survey on State Copyright Infringement

From the Copyright Alliance:

The Copyright Alliance recently launched a new survey to gather information on the extent to which copyright owners are experiencing infringement by states. Your response will help us inform the U.S. Copyright Office as it seeks input for its sovereign immunity study to determine how widespread this issue is. Please help us by spending a few minutes to take this survey, and share it with fellow creators. The deadline for completing the survey is Friday, August 7. Thanks in advance for your assistance!

Copyright Office Wants Feedback on State Sovereign Immunity for Copyright Infringement – UPDATE!

Update: The U.S. Copyright Office is extending the deadline for the submission of comments in its study on state sovereign immunity from copyright infringement suits. Comments are now due by 11:59 p.m. eastern time on September 2, 2020. In addition, the Office is announcing a second round of comments to allow members of the public to respond to initial comments and to submit any relevant empirical research. Written reply comments and empirical research studies must be received no later than 11:59 p.m. eastern time on October 2, 2020.

The ultimate remedy for copyright infringement is to sue infringers in federal court. But if the infringer is the government, you may be out of luck because the government (a/k/a the “sovereign), may not be sued unless it has specifically agreed to be sued. This legal concept is called “Sovereign Immunity.”

Fortunately, the federal government has specifically waived its immunity from copyright infringement lawsuits. 28 USC 1498(b) provides, in part:

[W]henever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims [not a district court] for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504 (c) of title 17, United States Code . . . .

Whether state governments have immunity from copyright infringement suits is not so clear. The Copyright Remedy Clarification Act (“CRCA”), at 17 U.S.C. 511(a) states that:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal Court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation under this title.

However, most courts have held that Congress did not have authority to waive a state’s immunity because the statute violates the Eleventh Amendment of the U.S. Constitution:

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

and Congress did not have the authority to exercise the power to waive that immunity under section 5 of the Fourteenth Amendment.

For example, the court prevented Richard Bell from recovering on his infringement claim against the University of Indiana because of state sovereign immunity. See more at https://www.photoattorney.com/court-confirms-sovereign-immunity-state-government-employees/.

Now, the U.S. Copyright Office has announced that it will study the extent to which copyright owners are experiencing infringement by states without adequate remedies under state law. The Senate Judiciary Committee’s Subcommittee on Intellectual Property requested the study following a Supreme Court decision earlier this year holding that states are immune from liability for copyright infringement. To assist the Office in preparing a report for Congress as it considers possible legislation in this area, the notice requests written comments from the public on a number of questions.

The requested information is listed in the Federal Register notice. For additional information, including instructions for submitting comments, please visit the Office website. Comments must be received no later than 11:59 p.m. eastern time on August 3, 2020 September 2, 2020.

Copyright Notice at Bottom of Web Page = Willful Infringement

Richard N. Bell is an attorney and photographer who regularly defends his copyrights. On April 5, 2018, Mr. Bell discovered that Joan Mattox had published his photo of the Indianapolis skyline from December 2015 (or earlier) through February 2020 on her website at http://www.readymadestaffing.com without authority. Ms. Mattox did not credit Mr. Bell for the photo on her website. Instead, she posted “Copyright 2012 – Ready Made Resources” at the bottom of her web pages.

Mr. Bell filed suit against Ms. Mattox for copyright infringement of his photo. Ms. Mattox failed to respond to the complaint, so the court entered default judgment against her. [Learn more about default and default judgment at https://www.photoattorney.com/diary-of-a-copyright-infringement-lawsuit-%e2%80%93-5a-default-and-default-judgment/.]

In its default judgment order, the court held:

By placing the statement “Copyright 2012 – Ready Made Resources” at the bottom of the website that included the Indianapolis Photo, Ms. Mattox represented that she possessed the copyright for all content found on the website,  including the Indianapolis Photo. She would have known that representation was false when she made it. This deliberate action by Ms. Mattox of placing such common copyright language on the bottom of her website plainly asserts that she possessed the rights to Mr. Bell’s copyrighted photograph. Her failure to distinguish her copyrighted material and that of the owner of the Indianapolis Photo supports a finding of willfulness in this case.

Bell vMattoxNo1:18cv01677SEBDLP, 2019 WL 590147 (S.D. Ind. Feb. 12, 2019).

Not all courts have agreed that a copyright notice at the bottom of a website’s page constitutes such an intentional act, but this court’s ruling is encouraging for photographers.