“Prutton offers no further evidence or argument in an attempt to satisfy his burden of proof as to why an attorney (or his adult daughter) taking a photograph that did not belong to him and placing it on his commercial website without permission would have ‘no reason to believe’ that such acts constituted copyright infringement.” – CCB
The Copyright Claims Board (CCB) has issued its first final decision since it was established by law in December 2020, finding in favor of a photographer who claimed a lawyer infringed his copyright by displaying one of his photographs on his law firm website.
David Oppenheimer’s case against Douglas Prutton was referred to the CCB by the U.S. District Court for the Northern District of California in April 2022, two months before the Board opened to receive claims. Oppenheimer said he discovered his aerial photograph of the Ronald V. Dellums Federal Building and U.S. Courthouse in Oakland, California on Prutton’s website in 2018, on a page titled “Where We Work.” Oppenheimer admitted that he copied and displayed the photograph without permission, but said his adult daughter actually found the photo and placed it on his site, and also argued fair use and unclean hands in defending his use of the work.
First, Prutton said that the fourth fair use factor, the effect of the use on the market for the work, weighed in his favor because Oppenheimer had never actually licensed the photo before. Prutton argued that Oppenheimer was unable to show that Prutton’s use had any effect on the market for the work, but the CCB explained that “fair use is an affirmative defense” and the burden is on Prutton to prove that fair use insulates him from liability. But even if this argument had prevailed, the Board said Prutton’s failure to address any of the other three fair use factors was “fatal” to his defense. Furthermore, the CCB could not find any evidence in the record that showed those other three factors weighed in his favor, since his website was commercial in nature, the use was not transformative in any way, Oppenheimer’s photo as creative in nature, and Prutton copied the entire photo.
Prutton also argued that Oppenheimer had “unclean hands” because he is a frequent copyright litigator and was unreasonable in settlement negotiations. But the Board dismissed this argument. “To find that an infringement lawsuit brought by a copyright owner amounts to unclean hands simply due to the volume of other lawsuits by the same owner would take away the right of copyright owners to sue for actual infringements like the one that clearly occurred here,” wrote the CCB.
An Unviable Damages Demand
On the issue of damages, however, the CCB rejected Oppenheimer’s request for $30,000 in statutory damages, calling it “a demand that is not viable for one infringed work.” Instead, two of the three Board members found that $1,000 was an appropriate award, while one member thought the minimum of $750 was appropriate. “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,” said the Board’s majority.
The factors that weighed in favor of this small increase included that “Prutton’s use was commercial in nature and lasted at least a year,” that “the Work is an aerial photograph, which arguably gives it extra value,” and that while the work was not large, “it was clearly larger than thumbnail-sized.” The Board also rejected Prutton’s “innocent infringer” arguments, concluding that “Prutton offers no further evidence or argument in an attempt to satisfy his burden of proof as to why an attorney (or his adult daughter) taking a photograph that did not belong to him and placing it on his commercial website without permission would have ‘no reason to believe’ that such acts constituted copyright infringement.”
Devlin Hartline of the Hudson Institute weighed in on the case on Twitter, suggesting that the decision “shows that the CCB will decide issues and award damages fairly” and that detractors of the CCB who “claimed that it will be a windfall for ‘copyright trolls,’” were wrong.
Hartline added: “To say that I’m thrilled about how the @CopyrightOffice has gone about creating and executing the CCB would be an understatement. Cases like this one are not high dollar-value, but they are extremely important to creators who cannot afford federal district court litigation.”
Image Source: Deposit Photos
Image ID: 111582128