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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