As you may already know, Heitner Legal is one of the most well-known law firms (for good reasons) when it comes to defending against copyright infringement claims. We are contacted almost daily to defend against claims and lawsuits brought by all of the popular plaintiff copyright firms, including but not limited to Doniger / Burroughs, Garbarini Fitzgerald, Kushnirsky Gerber, Aird Berlis, Sanders Law Group, CopyCat Legal and, of course, Higbee & Associates.
Traditionally, these plaintiff copyright firms would begin with a strongly worded demand letter and, if ignored, escalate cases to litigation in federal court, with the Southern District of Florida often being a favorite venue for plaintiffs. However, since the creation of the Copyright Claims Board for small copyright disputes, we have seen more and more matters being brought in that new forum, where the filing fees are lower than with federal court but it requires the consent of both parties to proceed within that alternative tribunal.
Now is a good time to note that if you are involved in a case where there is a need for defending against a copyright infringement claim, then feel free to contact us about your particular matter. We strive to keep communications confidential, we do not charge for initial consultations, and we tend to respond very quickly to inquiries.
Back to the theme of this post, which is to provide an update on the Copyright Claims Board. It took a while, but the Copyright Claims Board has finally issued its first opinion. Believe it or not, there have been more than 375 matters brought to the Copyright Claims Board before this first decision was handed out. Let’s examine what the decision was and what the takeaways may be.
The Final Determination was made in the case of David G. Oppenheimer v. Douglas A. Prutton and it was issued on February 28, 2023. It revolved around an allegation of copyright infringement brought by Oppenheimer, a professional photographer, who took an aerial photograph of the Ronald V. Dellums Federal Building and U.S. Courthouse in Oakland, California, and believed he was damaged based on Prutton using the image without consent on his law firm website.
There was no dispute about the fact that the photograph was used without permission. Instead, Prutton focused his argument on a claim that Oppenheimer is a “copyright troll” (i.e. that he is a frequent copyright litigator). He sought to use fair use and unclean hands defenses to push the damages calculation below the typical bottom of the range ($750) when statutory damages are considered.
Unfortunately for Prutton, he completely failed to address the first 3 factors of the 4-factor fair use analysis and thus the Board presumed that those factors weighed in favor of Oppenheimer. Furthermore, the Copyright Claims Board ruled that Prutton’s law firm is commercial in nature and that the use of the image was not transformative (highlighting the first factor), that the photograph was creative in nature (addressing the second factor), and that Prutton used the entirety of the photograph (focusing on the third factor). As to the fourth factor, while Oppenheimer could not show that he had ever sold or licensed a single copy of the photograph, that alone does not mean that the final factor weighs in Prutton’s favor given that Oppenheimer does make the photograph available for license on a public website and thus someone could license it. This factor tends to focus on potential and not just actual market harm.
Separately, the unclean hands defense was dismissed given that it is rare for a tribunal to recognize the presence of same and that even Oppenheimer being labeled a “copyright troll” would not rise to the level of determining unclean hands in this situation.
But the most important portion of the decision undoubtedly rests with the damages calculation. Unlike in federal court, the most amount of damages that the Copyright Claims Board can award is $15,000 per works timely registered and $7,500 for works not timely registered. Here, the work appeared to be timely registered. Oppenheimer asked for $30,000 in damages, which was above the tribunal’s limit.
Prutton asked the Copyright Claims Board to award only $200, referencing Section 504’s “innocent infringer” defense. This effort failed with the Copyright Claims Board noting, “the burden placed upon Prutton, an attorney, to prove that he ‘was unaware and had no reason to believe that his or her acts constituted an infringement of copyright’ is clearly not satisfied here.”
Ultimately, the Copyright Claims Board awarded Oppenheimer slightly more than the statutory minimum of $750. It issued an award of $1,000, which was a bit surprising to me given the facts of the case and the lack of a licensing history. I would have guessed an award of $750, but $1,000 is still not a major win for the plaintiff. Interestingly, one member of the Copyright Claims Board wanted to only provide damages in the amount of $750 whereas the other two members chose the $1,000 figure.
“While some of the factors courts often look at are not present here—or relate to willfulness, which is outside of the Board’s ability to address—the totality of the ‘circumstances of the infringement’ justify a small increase from the minimum,” stated the Board. “However, Prutton’s use was commercial in nature and lasted at least a year. The Work is an aerial photograph, which arguably gives it extra value. The size of the image placed on his law firm website was not large, but it was clearly larger than thumbnail sized. On balance, the damages awarded should exceed the minimum of the statutory range.
Reading into the decision, it seems that the use of a thumbnail would help a defendant argue the absolute bottom of the range of damages and that would also be true if the use was noncommercial in nature. Furthermore, it seems that the Copyright Claims Board believes an aerial photograph makes the nature of the work a bit more valuable.
Overall, this first decision provides a lot of insight for recipients of copyright infringement demands and lawyers who practice in the realm of copyright law.