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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