Tips for Handling Photograph Copyright Troll Claims
Defending Against Photograph Copyright Troll Infringement Cases
In February 2022, I published a tongue-in-cheek, parody post about how to be a copyright troll entitled, Copyright Troll Step-By-Step Guide: How to Make Thousands as a Hobbyist Photographer. What follows is an equally step-by-step guide to defending against these kinds of cases.
Identifying Photograph Copyright Trolls
Generally, these cases begin with a demand letter demanding a large “fee” for the use of an allegedly copyrighted image along with a threat that if a settlement is not reached quickly the infringer could be liable for substantial statutory damages as well as attorney’s fees. Because the alleged infringer must pay its own attorney’s fees plus risk paying the trolls fees and damages, these points provide a troll with significant settlement leverage at the onset.
In addition to straight copyright infringement, these demands frequently include parallel claims under the Digital Millennium Copyright Act (DMCA) for removing a copyright notice symbol, which may also include statutory damages and attorney’s fees. Some rightsholders have taken it to a higher level by including a payment form along with their initial demand.
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Important Caveat – This article is devoted strictly to copyright infringement cases involving photographs, usually posted on a website or in social media, brought by a copyright troll. This is not a discussion of defending ordinary copyright infringement cases such as software or counterfeiting matters or cases by brought by ordinary copyright owners with legitimate interests.
By “copyright troll,” I am referring to a specific kind of plaintiff claiming ownership in a copyright with the intent to monetize it by cease-and-desist campaigns after the photograph becomes “available” on the Internet. Over the years, I have become suspicious that some of these plaintiffs purposely position images to be copied by naïve Internet users and use electronic files that can be detected by Internet crawlers to find potential infringers, then send demand letters seeking excessive payments.
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Practical Steps for Defending Photograph Copyright Troll Infringement Claims
So what should you do when you receive one of these demands? The following is a series of steps to consider as part of a resolution strategy. This does not constitute legal advice, and you should seek representation from competent counsel after receipt of an infringement cease-and-desist letter. With these caveats, here are some thoughts on resolution strategy.
Step 1: Document and Preserve All Relevant Evidence
Most cease-and-desist letters contain a demand that the alleged infringement stop immediately. This creates a possible dilemma of limiting potential damage exposure versus risking destroying evidence, which can lead to a spoliation claim later. As a first step, you may want to consider preserving all relevant documents and information before taking down the offending image:
Make a copy of the website page as well as the image
Research how the image was originally found and used
Determine whether vendor involved in use of the image that may owe indemnity
Information showing when the image was first published and which URL(s)
Determine traffic to the URL on which the image was published
Determine if the image and the URL hosting the image was involved in any kind of sales or ecommerce
Step 2: Cease Use of the Offending Image
After relevant information is preserved, consider removing the image. The cease-and-desist letter typically points out that removal of the image will not remedy past infringement. But removal can be used to limit future potential damages (assuming there is actual liability and damages) as well as demonstrate show good-faith behavior, which can be important later to defend against a claim for attorney’s fees.
Step 3: Request a Copy of the Copyright Registration, Deposit Specimen, and Attorney Authority
As with an intellectual property claim, it is prudent to confirm the chain of title for the asserted IP, so requesting a copy of the copyright registration, deposit specimen, and attorney authority are good initial steps. Most cease-and-desist letters include this information at the outset. The registration in a copyright case is critical to whether a lawsuit can be filed and also whether the rightsholder can recover attorney’s fees and statutory damages. If the alleged infringement began before the registration, attorney’s fees and statutory damages generally cannot be recovered.
Another consideration is whether the actual image at issue matches the specimen filed with the copyright application. I have seen a lawyer file a copyright enforcement lawsuit over software. It was later determined that the specimen filed with the Copyright Office did not match the software provided to the lawyer by his client. Mistakes happen. Best to investigate this at the outset.
Step 4: Offer a Reasonable Amount to Settle
When the demand is made in the initial letter, a good plaintiff’s lawyer will analyze the risk-reward spectrum in calculating the initial demand and the “walk away” numbers. The specter of attorney’s fees and statutory damages for willful infringement (up to $150,000 per work infringed) are used as negotiating leverage to drive a higher settlement price. I think it is worth considering making a reasonable settlement offer early to demonstrate good-faith behavior.
Obviously, an early settlement reduces litigation costs and the hassle of defending a lawsuit. It also establishes a pattern of conduct that may be helpful later if litigation ensues, the alleged infringer is found liable, and a judge is considering a motion for an award of attorney’s fees. For example, if liability is determined but the damages are only $5,000 and the defendant can show that they offered $5,000 or more to settle before suit was filed, that may be enough to convince the judge to deny or at least limit a fee award. With anything legal, there are no guarantees, but this tactic is worth considering.
Step 5: Do Nothing
At this point, relevant evidence has been preserved, the alleged infringement has been taken down, and a reasonable settlement offer has been communicated. In most cases, either settlement negotiations will continue or a lawsuit will be filed. Having taken these actions, the ball is now in the rightsholder’s court.
Step 6: If a Lawsuit Is Filed, Consider Making an Offer of Judgment Before Filing an Answer
Federal Rule of Civil Procedure 68 is somewhat of a hybrid between a settlement and a decision on the merits. The Rule provides that if a timely pretrial offer of settlement (made no later than 14 days before trial) is made and accepted, a judgment is entered against the defendant according to the terms of the offer. If the offer is not accepted and the judgment finally obtained by the offeree is not more “favorable” than the offer, the offeree must pay the “costs” incurred after the making of the offer. The plain purpose of Rule 68 is to encourage settlement and avoid litigation.
Because the Copyright Act defines “costs” to include attorney’s fees, there is the possibility that a defendant may recover fees despite being found liable. An offer of judgment in copyright cases is a complicated legal matter, particularly because there is a split of authority between circuits. You can find significant information about this in our post, Rule 68 Offers of Judgment in Intellectual Property Cases.
If a pre-lawsuit settlement offer is rejected, an actual Offer of Judgment can be made with the strategy that the offer inclusive of attorney’s fees, expenses, and liability is at a higher amount than the plaintiff can later recover. If not accepted, this potentially opens the door to mitigating costs and even possibly recovering attorney’s fees later. Put another way, this starts a poker game. Defendants can also consider making more than one Offer of Judgment at a higher amount as the case proceeds. This can put substantial settlement pressure on a copyright troll plaintiff.
Step 7: Make Continuing the Lawsuit Unattractive to the Copyright Troll
Paying $5,000 to settle a case worth $500 plus $1,000 in attorney’s fees encourages more troll activity. While this settlement may be justified by the cost-benefit analysis to the defendant, looking at the bigger picture, these types of settlements make the troll business more lucrative.
In addition to the steps outlined above, taking discovery of past licenses and litigation could be ripe to generate facts supporting defenses. Another focus of discovery could be how the copyrighted image got into the public domain in the first place, how the image had its copyright notice removed, and how and when the troll discovered the alleged infringement. Efficient discovery coupled with a proactive settlement strategy can lead to an earlier and less expensive resolution.
Some trolls will demand that an alleged infringer sign a “license agreement” for use of the image and pay a fee. These agreements are then used against future targets to force a higher settlement number. If you cannot resolve the case with a typical settlement number because the troll insists on a license agreement, you may want to consider requiring a much lower fee in lieu of a standard settlement payment.
For more information about copyright infringement defense services, see our Software Protection & Copyrights Services and Industry Focused Legal Solutions pages.
This article has been provided for informational purposes only and is not intended and should not be construed to constitute legal advice. Please consult your attorneys in connection with any fact-specific situation under federal law and the applicable state or local laws that may impose additional obligations on you and your company. © 2023 Klemchuk PLLC