The Pitfalls of Overreaching
in Copyright
Infringement Claims

By Joel Hecker, Esq.



          As you undoubtedly know, a copyright owner who has timely fulfilled the registration requirements under the Copyright Act, is eligible for an award of statutory damages and attorney fees. On the other
 
hand, the Supreme Court of the United States has leveled the playing field by interpreting the Act as permitting, in the trial Court's discretion, an award of attorney's fees to the prevailing party in any copyright infringement action. This means that where the defendant prevails, the plaintiff may be required to pay the defendant's attorneys fees.

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“Never pursue unreasonable claims…”
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         I have always espoused that a copyright owner pursuing a copyright infringement claim should never act unreasonably or pursue unreasonable claims. Not only does that jeopardize the case, it makes a resolution more difficult and, of course, exposes the client to penalties in the event the "unreasonable" claim is denied.

         A photographer and his attorney in a recent decision found out how expensive an unreasonable position taken in litigation can be. The photographer, Kent Baker, had sued Urban Outfitters for copyright infringement based upon sale of inexpensive plastic picture frames in 2000 and 2001 with one of Baker's images included in a paper insert. The use was unauthorized but the total gross profit from the sale of the frames was only $3,896. The defendant offered to settle for $9,096 but Baker and his attorney rejected the offer insisting upon damages in the amount of $260, 000 although he was not eligible for statutory damages or attorneys fees. Bakers claims were dismissed in 2002. Thereafter, his attorney Stephen Weingrad, sued Urban's attorneys for misconduct. He lost with the Court having found that his legal briefs were "replete with rambling, irrelevant, unsupportive assertions of fact and law." He was ordered to reimburse Urban's legal fees in that action in the sum of $19,270.

         Urban then sued both Baker and Weingrad to recover its attorneys fees and costs from the original copyright infringement case since Urban was the prevailing party. The trial Court ordered Baker to reimburse Urban $388,424.54 and Weingrad to reimburse Urban an additional $65,760.50, for legal fees and costs. The Court found that Baker and his attorney had sued in bad faith and refused to resolve the case on a reasonable basis, especially since it was determined early on in the litigation that actual damages were less than $4,000.

         The Court stated that it was awarding these costs and attorneys fees against Baker to deter other
similarly situation plaintiffs from bringing unreasonable claims based upon a cost/benefit analysis which is unrealistic under the circumstances. The award against Baker's attorney was based upon a different federal statute directed at an attorney who exhibits "unreasonable and vexatious conduct." The Court called the attorney's briefs in the original infringement action "rambling and incomprehensive" and found that he knowingly filed improper claims for statutory damages even though Baker had not timely obtained his copyright registration.

         Based upon this decision and the rationale of the Court, this appears to be a classic example of a copyright claimant being unable, for whatever reason, to appreciate the true value of the case and of litigation simply getting out of hand. It need not always be so. It does not occur where people act reasonably under the circumstances.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.


           


           

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