Diary of a Copyright Infringement Lawsuit – 5b (Defendant’s Counterclaim)

As a long overdue entry in the “Diary of a Copyright Infringement Lawsuit” series, a current case shows the risk that an infringement defendant may file a counterclaim against the photographer plaintiff, perhaps as retribution for filing the infringement claim. Counterclaims are claims that could be made by a separate complaint or are brought into a lawsuit between the parties for judicial economy.

For example, in February 2017, photographer Jon Tannen sued CBS Interactive for using 2 of his photos on the website 247sports.com and altering copyright management information for those photos, all without his permission.

In October 2017, CBS sued Tannen in a separate copyright infringement lawsuit claiming that Tannon had “published via social media platforms images copied from the ‘Dooley Surrenders’ episode of GUNSMOKE” without permission. There’s a strong argument that Tannen’s acts were fair use. Some have opined that CBS filed its suit in retaliation for Tannen’s infringement lawsuit

There are two types of counterclaims:

  • Compulsory – if the counterclaim arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim.
  • Permissive – any counterclaim that is not compulsory.

Fed.R.Civ.P 13.

The typical counterclaim in a copyright action is when the alleged infringer files for declaratory judgment action on a copyright infringement claim. See more on “dec actions” in my previous blog. For example, Shepard Fairey did not wait to see whether The Associated Press was going to sue him for copyright infringement over Fairey’s use of the Obama photo. Instead, he filed suit against The AP and Mannie Garcia, asking the court for a declaratory judgment that Fairey’s use of the Obama photo was a fair use. Garcia, the photographer of the Obama photo, filed his Counterclaims with his Answer. Because Garcia’s counterclaims were that Fairey and The AP infringed the Obama photo, his counterclaims were compulsory because they arose out of the transaction or occurrence.

The CBS claim against Tannen is an example of a permissive counterclaim, since CBS’s claim is unrelated to Tannen’s initial action. While both claims are for infringements, they are for different copyrighted works and uses and did not arise out of the transaction or occurrence.

A compulsory counterclaim must be filed with the defendant’s answer in the pending case. A court may allow a party to file a supplemental pleading asserting a counterclaim that matured or was acquired by the party after serving an earlier pleading. Since CBS filed its lawsuit months after Tannen’s, it likely decided to not try to add its claim to Tannen’s action.

Counterclaims are a uncertainty in a lawsuit. But don’t let them discourage you from standing up for your rights.

[Note that the parties in Tannen’s action reported to the court on November 15, 2017, that they had reached a settlement and the case has been closed. The CBS case remains active as of the date of this post.]

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Diary of a Copyright Infringement Lawsuit – 13 (Alternative Dispute Resolution)

African Wild Dog after Kill - Copyright Carolyn E. Wright

African Wild Dog After Kill – Copyright Carolyn E. Wright

Once you have filed a lawsuit, some federal courts will require the parties to select a method of Alternative Dispute Resolution (“ADR”) to try to settle the case without going to trial. For example, in the Central District of California (“CACD”), the Local Rule states:

Policy Re Settlement & ADR. It is the policy of the Court to encourage disposition of civil litigation by settlement when such is in the best interest of the parties. The Court favors any reasonable means to accomplish this goal. Nothing in this rule shall be construed to the contrary. The parties are urged first to discuss and to attempt to reach settlement among themselves without resort to these procedures. It is also the policy of the Court that unless an Alternative Dispute Resolution (ADR) Procedure is selected by the parties, the judge assigned to preside over the civil case (the trial judge) may participate in facilitating settlement.

L.R. 16-15

ADR usually is mandatory for each CACD case and must be completed no later than 45 days before the Final Pretrial Conference that occurs shortly before trial starts. In the CACD, the alternative ADR methods available are:

ADR PROCEDURE NO. 1 – The parties shall appear before the district judge or magistrate judge assigned to the case for such settlement proceedings as the judge may conduct or direct.
ADR PROCEDURE NO. 2 – The parties shall appear before a neutral selected from the Court’s Mediation Panel.
ADR PROCEDURE NO. 3 – The parties shall participate in a private dispute resolution proceeding.

L.R. 16-15.4

Many CACD judges will presumptively refer a case for option 2 or 3. Under General Order 11-10 §3.8 for option 2, the Panel Mediator volunteers his or her preparation time and the first three hours of the mediation session. Thereafter, if the parties choose to continue the mediation, the Mediator may charge his or her market rate. You may select a mediator by specialty, including copyright law. For option 3, the parties must make any necessary arrangements directly with a private mediator, usually paying out of pocket for all of the mediator’s time.

By comparison, the District Court for the Southern District of New York does not order the parties to mediate, but gives them the option to do so. Specifically, pursuant to Local Civil Rule 83.9 and the Mediation Program Procedures, the assigned District Judge or Magistrate Judge may determine that a case is appropriate for mediation and may order that case to mediation, with or without the consent of the parties, at any time. Alternatively, the parties may notify the assigned Judge at any time of their desire to mediate.

Each district court in the United States handles ADR differently. When you file a lawsuit, research your ADR options for possible ways to resolve your matter more quickly and usually less expensively.

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Diary of a Copyright Infringement Lawsuit – 5 Updated (The Defendant’s Answer)

Jumping Bear Cub-Copyright Carolyn E. Wright

When someone infringes your copyright, the time that you have to make your claim is limited. This is based on the legal principle called “statute of limitations.”

Statutes of limitation, in general, are laws that prescribe the time limits during which you can file lawsuits. The deadlines vary with the type of claim and — at times — they depend on the state where you live.

The purpose of such statutes is to reduce the unfairness of defending actions after a substantial period of time has elapsed. They allow people to go on with their lives, regardless of guilt, after a certain time.

The “Last Act” of Infringement

Because copyrights are governed by federal law, there is only one statute of limitations for copyright-related claims. Copyright infringement claims have a three-year statute of limitations from the date of the “last act” of the infringement.

What constitutes the last act can vary. If your image is published in a newspaper without your permission, for example, you have at least three years from the date that the newspaper was distributed to file your claim in court.

However, if the infringement continues, such as when the photograph remains on the newspaper’s website, the “last act” has not occurred until your photo is removed from the site.

Can Laches Shorten the Time to Sue for Copyright Infringement?

As a follow to the prior post on the Defendant’s Answer, one of the Affirmative Defenses that a Defendant may plead is laches. Laches are “a doctrine in equity that those who delay too long in asserting an equitable right will not be entitled to bring an action.” Some courts have considered whether laches could shorten the time within which a Plaintiff could sue for copyright infringement. But we now have an answer.

Today, the U.S. Supreme Court held in the case of Petrella vMetroGoldwynMayerInc., that: “Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window.”  The Court explained:

The Copyright Act provides that “[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” 17 U. S. C. §507(b). This case presents the question whether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within §507(b)’s three-year limitations period. Section 507(b), it is undisputed, bars relief of any kind for conduct occurring prior to the three year limitations period. To the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period, however, courts are not at liberty to jettison Congress’ judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window. As to equitable relief, in extraordinary circumstances, laches may bar at the very threshold the particular relief requested by the plaintiff. And a plaintiff ’s delay can always be brought to bear at the remedial stage, indetermining appropriate injunctive relief, and in assessing the “profits of the infringer . . . attributable to the infringement.” §504(b).1

Petitioner Paula Petrella, in her suit for copyright infringement, sought no relief for conduct occurring outside §507(b)’s three-year limitations period. Nevertheless, the courts below held that laches barred her suit in its entirety, without regard to the currency of the conduct of which Petrella complains. That position, we hold, is contrary to §507(b) and this Court’s precedent on the province of laches.

Complete Your Copyright Registration Prior to Filing Suit

The Supreme Court also clarified that “[a]lthough registration is ‘permissive,’ both the certificate and the original work must be on file with the Copyright Office before a copyright owner can sue for infringement.” §§408(b), 411(a). So get your registrations filed before filing suit against your infringers!

HT: Leslie Burns

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Diary of a Copyright Infringement Lawsuit-1b (Declaratory Judgment)

Gunslinger-Copyright Carolyn E. Wright

In the wild, wild west, a gunslinger sometimes would point a gun at another. But before the gunslinger could shoot, the other would draw and shoot first.

Similarly, when you make a claim for copyright infringement, the alleged infringer may preempt your possible infringement lawsuit by filing a lawsuit for declaratory judgment that the use is not an infringement.  This may involve you in a legal action for which you may need legal counsel in a jurisdiction (court location) where you don’t want to litigate.

This happened when Shepard Fairey did not wait to see whether the Associated Press was going to sue him for copyright infringement. Instead, Fairey filed suit against the AP asking the court for a declaratory judgment that Fairey’s use of the AP photo was a fair use. Lloyd Shugart was on the receiving end of a declaratory judgment action but won $1.3 million for his counterclaim for copyright infringement in that case. Agence France Presse (“AFP”) likewise filed a declaratory judgment lawsuit against Daniel Morel for non-infringement and license (AFP also included a claim for commercial defamation) after Morel’s attorney sent a cease and desist (“C&D”) letter. But the jury awarded Daniel Morel maximum damages for his counterclaim for copyright infringement and DMCA violations.

A photographer risks being brought into a lawsuit after sending a C&D letter because the alleged infringer can ask the court to determine whether a violation has occurred. The plaintiff/alleged infringer thus asks the court to “declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 USC 2201.

The pros to a declaratory judgment action is that plaintiff/alleged infringer pays the filing fee ($350) and has the burden of going forward in the lawsuit. In response, the photographer can file counterclaims for copyright infringement.The potential cons are that plaintiff/alleged infringer chooses the forum (in which court to file the suit) that might be inconvenient and not the most favorable to the photographer (but the court must have jurisdiction over the photographer) and the photographer then has to defend his claim in court.  While the photographer (if a sole proprietor) can represent himself, it’s usually not wise. Therefore, the photographer has to pay the attorneys’ fees and expenses.

So before you make a claim for copyright infringement against another, make sure that you’re ready to fight to the end.

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Diary of a Copyright Infringement Lawsuit – 12 (Offer of Judgment) (Updated)

Jumping Mountain Lion-Copyright Carolyn E. Wright

Courts do what they can to encourage parties to resolve disputes and limit litigation costs. So the Federal Courts adopted Rule 68, which provides:

(a) At least 14 days before the date set for trial, a party defending against a claim may serve on an opposing party an offer to allow judgment on specified terms, with the costs then accrued. If, within 14 days after being served, the opposing party serves written notice accepting the offer, either party may then file the offer and notice of acceptance, plus proof of service. The clerk must then enter judgment.

If the plaintiff refuses the Offer of Judgment and if the judgment that the plaintiff finally obtains is not more favorable than the unaccepted offer, the plaintiff must pay the costs incurred after the offer was made. In a copyright case, in a minority of circuits, those costs can include attorneys’ fees incurred after the offer was made, even though the plaintiff is still the prevailing party in the case (17 U.S.C. § 505 says that a winning party may be awarded reasonable attorneys’ fees).

Even in those circuits that do not include attorneys’ fees, an Offer of Judgment puts pressure on the plaintiff to guess whether it will be awarded more after a jury trial. Costs can add up, even without including the defendant’s attorneys’ fees. The plaintiff risks losing the case or not being awarded more than the Offer. In every case, it is important to evaluate all your options with your attorney before deciding to accept or reject an Offer of Judgment.

In 2009, Car-Freshner Corporation sued Getty Images for licensing photos that included Car-Freshner’s trademarked trees.  After the court made some preliminary rulings that weren’t favorable to Getty, Getty made a Rule 68 Offer of Judgment. Car-Freshner accepted the offer to finalize/settle the matter. Was it the right thing to do? We’ll never know for sure, but the parties then were allowed to move forward and put the lawsuit behind them.

–Thanks to Leslie Burns for adding the notes about Offers of Judgment for copyright cases!

 

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Diary of a Copyright Infringement Lawsuit – 11 (Motion to Compel)

Badger at Monument Valley-Copyright Carolyn E. Wright

During the discovery period of a copyright infringement lawsuit, the parties propound written discovery and take depositions. The receiving party often will refuse to respond to some of the discovery relying on objections, such as the request is vague, argumentative, ambiguous, overbroad, burdensome, oppressive, or not likely to lead to admissible evidence. If a respondent asserts an objection, the parties must try to resolve the dispute whether the discovery request is appropriate, often called a “meet and confer.” For example, Central District of California’s Local Rule 37-1 requires a “Pre-Filing Conference of Counsel”:

Prior to the filing of any motion relating to discovery pursuant to F.R.Civ.P. 26-37, counsel for the parties shall confer in a good faith effort to eliminate the necessity for hearing the motion or to eliminate as many of the disputes as possible. It shall be the responsibility of counsel for the moving party to arrange for this conference. If both counsel are located within the same county of the Central District, the conference shall take place in person at the office of the moving party’s counsel, unless the parties agree to meet someplace else. If both counsel are not located within the same county of the Central District, the conference may take place telephonically. Unless relieved by written order of the Court upon good cause shown, counsel for the opposing party shall confer with counsel for the moving party within ten (10) days after the moving party serves a letter requesting such conference. The moving party’s letter shall identify each issue and/or discovery request in dispute, shall state briefly with respect to each such issue/request the moving party’s position (and provide any legal authority which the moving party believes is dispositive of the dispute as to that issue/request), and specify the terms of the discovery order to be sought.

If the parties can’t resolve their differences, the party requesting the discovery can ask the court for assistance through a motion to compel the discovery pursuant to Fed.R.Civ.P. 37. The motion may be made if:

(i) a deponent fails to answer a question asked under Rule 30 or 31;

(ii) a corporation or other entity fails to make a designation under Rule 30(b)(6) or 31(a)(4);

(iii) a party fails to answer an interrogatory submitted under Rule 33; or

(iv) a party fails to respond that inspection will be permitted—or fails to permit inspection—as requested under Rule 34.

Examples of Motions to Compel are available here and here along with an Opposition. An example of a court’s order on such a motion is available online here.

Rule 37 provides that, if the motion is granted—or if the disclosure or requested discovery is provided after the motion was filed—the court must, after giving an opportunity to be heard, require the party or deponent whose conduct necessitated the motion, the party or attorney advising that conduct, or both to pay the movant’s reasonable expenses incurred in making the motion, including attorney’s fees. But the court must not order this payment if:

(i) the movant filed the motion before attempting in good faith to obtain the disclosure or discovery without court action;

(ii) the opposing party’s nondisclosure, response, or objection was substantially justified; or

(iii) other circumstances make an award of expenses unjust.

If the motion is denied, the court may issue any protective order authorized under Rule 26(c) and must, after giving an opportunity to be heard, require the movant, the attorney filing the motion, or both to pay the party or deponent who opposed the motion its reasonable expenses incurred in opposing the motion, including attorney’s fees. But the court must not order this payment if the motion was substantially justified or other circumstances make an award of expenses unjust.

If the motion is granted in part and denied in part, the court may issue any protective order authorized under Rule 26(c) and may, after giving an opportunity to be heard, apportion the reasonable expenses for the motion.

 

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Diary of a Copyright Infringement Lawsuit – 10 (Other Discovery-Depositions)

Red Fox Stare-Copyright Carolyn E. Wright

As discussed previously, the parties may conduct “discovery” of the case to prepare for trial. In sum, the goal is to learn what are the other side’s strengths and weaknesses, which may prompt settlement before trial.

In addition to the written discovery tools available, a party may, by oral questions, depose any person, including a party, according to Federal Rule of Civil Procedure 30. The deponent’s attendance may be compelled by subpoena under Rule 45.

During a deposition, the lawyer asks questions the deponent answers under oath. The testimony may be recorded by audio, audiovisual, or stenographic means. Unless otherwise stipulated or ordered by the court, a deposition is limited to 1 day of 7 hours.

An objection at the time of the examination—whether to evidence, to a party’s conduct, to the officer’s qualifications, to the manner of taking the deposition, or to any other aspect of the deposition—must be noted on the record, but the examination still proceeds; the testimony is taken subject to any objection. A person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3).

Many excerpts of depositions taken by video are available on YouTube, the format of some of which should be avoided, such as this one:

[youtube]ZIxmrvbMeKc[/youtube]

and some deponents can be difficult:

http://www.youtube.com/watch?v=-bi6CycM3mE

with some questions being inappropriate:

http://www.youtube.com/watch?v=oRIk1zEiGwM

and others being out of control:

http://www.youtube.com/watch?v=VAIN_w026aY

Regardless of the absurdity of some depositions, they can be an effective tool to learn about your copyright infringement case.

 

 

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Federal District Courts Increasing Filing Fees

Calf Rescue - Copyright Carolyn E. Wright

You must file your copyright infringement claims in federal district court. Check this blog entry for more information.  Unfortunately, the costs to file suit are increasing.

Specifically, the Judicial Conference initiated a new general administrative fee for civil cases filed in the district courts. The new $50 general administrative fee is in addition to the current $350 filing fee for civil cases and becomes effective May 1, 2013. So it’s going to cost $400 to initiate your copyright infringement case. Hopefully, you’ll be eligible for statutory damages and be able to recover your costs from the infringer.

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Diary of a Copyright Infringement Lawsuit – 9 (Written Discovery)

The time between filing the lawsuit and the trial is used to prepare for trial. To prepare a case for trial, the litigants may conduct “discovery.” Parties may obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense—including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. The goal is to learn everything that you can about your opponent’s case, even if it may not be admissible at the trial, as long as the discovery appears reasonably calculated to lead to the discovery of admissible evidence.

Some of the discovery is obtained via written methods, which will be addressed here. Discovery via other means will be addressed in a future blog entry.

As previously discussed, federal courts require the parties to provide “Initial Disclosures” to each other at or within 14 days after the parties’ Rule 26(f) conference unless a different time is set by stipulation or court order. After that, each party decides what discovery tools it will use.

Written discovery may be conducted through:

  • Rule 31. Depositions by Written Questions – This seldom-used discovery tool is like an oral deposition except the questions and responses are in writing. While it’s a cheaper method to obtain information from someone who isn’t a party to the case, your attorney can’t follow up on questions and the respondent may take time to carefully craft a response. But if you need information that is fairly straight-forward, this can be a useful method.
  • Rule 33. Interrogatories to Parties – This discovery method is to ask other parties to answer questions in writing. Unless otherwise stipulated or ordered by the court, a party may serve on any other party no more than 25 written interrogatories. Each interrogatory must, to the extent it is not objected to, be answered separately and fully in writing under oath. Interrogatories are a great way to obtain preliminary information from another party.
  • Rule 34. Producing Documents, Electronically Stored Information, and Tangible Things, or Entering onto Land, for Inspection and Other Purposes – This discovery tool allows a party to ask other parties or anyone else to produce and permit the requesting party to inspect, copy, test, or sample any designated documents or electronically stored information—including writings, drawings, graphs, charts, photographs, sound recordings, images, and other data or data compilations—stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form or any designated tangible things.  The kinds of documents requested in a copyright infringement lawsuit are copies of the infringements, correspondence, and business records.
  • Rule 36. Requests for Admission – While technically not a discovery method, this tool is used to ask the other party to admit to certain things so to eliminate issues that are not in dispute, so that further discovery can be directed to only those matters need to be resolved at trial. If a matter is not admitted, the answer must specifically deny it or state in detail why the answering party cannot truthfully admit or deny it. A denial must fairly respond to the substance of the matter; and when good faith requires that a party qualify an answer or deny only a part of a matter, the answer must specify the part admitted and qualify or deny the rest. For example, a photographer plaintiff may ask the defendant to admit that it published a photograph in a book. The remaining issue for trial may then be whether the use was a fair use.

Objections – Those who are responding may object to any discovery requests on certain grounds, such as the request is vague, argumentative, ambiguous, overbroad, burdensome, oppressive, or not likely to lead to admissible evidence. The grounds for objecting to an interrogatory must be stated with specificity. If a respondent asserts and objections, the parties must try to resolve the dispute whether the discovery request is appropriate. If they can’t resolve their differences, the party requesting the discovery can ask the court for assistance through a motion to compel the discovery.

Effective use of written discovery tools allows the parties to determine the other side’s case so that each can prepare more effectively for trial. In the process, it may encourage the parties to settle when they uncover the pros and cons of their case.

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Diary of a Copyright Infringement Lawsuit – 8 (Discovery; Initial Disclosures)

 

After the parties have their Rule 26 meeting as described in the prior post, they may start the discovery process. The purpose of discovery is to learn about the other party’s case. Federal Rule of Civil Procedure 26(b)(1) provides that “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense—including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter.”

The courts allow for a variety of discovery tools. First, federal courts require that the parties serve “Initial Disclosures” to get the process started, usually before or soon after the Scheduling Conference, pursuant to Fed. R. Civ. P. 26 (a):

(i) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;

(ii) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;

(iii) a computation of each category of damages claimed by the disclosing party—who must also make available for inspection and copying as under Rule 34 the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered; and

(iv) for inspection and copying as under Rule 34, any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.

The Initial Disclosures are “served” to the other party but are not filed with the court unless they become an issue in the case. From the Initial Disclosures, the parties can learn more about the case by using other discovery methods, such as:

  • Rule 30. Depositions by Oral Examination
  • Rule 31. Depositions by Written Questions
  • Rule 33. Interrogatories to Parties
  • Rule 34. Producing Documents, Electronically Stored Information, and Tangible Things, or Entering onto Land, for Inspection and Other Purposes
  • Rule 36. Requests for Admission

These discovery tools will be covered in future blog entries.

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