from the try-that-again? dept
Copyright troll Mathew Higbee and lawyer Paul Levy, described as “the web bully’s worst enemy”, have been battling back and forth ever since Paul wrote up a thorough trashing of Higbee’s trollish behavior nearly a year ago. Levy recently noted that more and more Higbee victims are coming to him, and that Higbee has actually told Levy that he “enjoys” that Levy is flooded with requests from Higbee’s victims. Levy also notes that, in some cases, there is actual infringement happening, and then the question comes down to what is a reasonable amount to pay, and what will Higbee accept.
One of the key things that Levy has called Higbee out on is his demand for attorney’s fees, even in cases where that’s not allowed under the law. This is often true in cases where the photographer failed to register their copyright, and they may only obtain “actual damages,” rather than statutory damages. Attorney’s fees cannot be counted in actual damages, but Higbee seems to hope that no one notices that. Levy has. In his latest post on all of this, he highlights how Higbee tries to just ignore Levy when called on this point.
Actual damages in a copyright case are, generally speaking, measured either by the profits made by the alleged infringer or the lost license fees of the copyright owner.. In most of the cases in which the Higbee firm is seeking a remedy, the Higbee target did not make significant profits from the use of the image. Moreover, in many of these situations, the graphics whose copyright the Higbee firm seeks to enforce can be found on Getty Images or similar locations, bearing license fees as low as fifty to two hundred dollars, depending on the use.
However, the fact that the standard license fees are so small does not discourage the Higbee firm from demanding payment running upwards of a thousand dollars, even several thousand dollars, from individuals and companies that posted (or linked to) a photo whose copyright was never registered, and from having its ?claims resolution specialists? send one threatening email after another telling the targets that, unless they pay up immediately, the case is going to be ?escalated? to the litigation team. Many of the targets of these letters find the prospect of ?escalation? and ?the maximum justifiable damages? intimidating; they are in no position to hire a skilled intellectual property firm to give them knowledgeable advice or to defend them. The easy course is to pay what is demanded, or to feel successful if they can beg a few hundred dollars off the demand.
Levy notes that some Higbee victims have taken to just sending a check, often for the stated license fee of the image, and that alone (which, at worst would likely be the extent of any “actual damages”). However, Levy, along with lawyers Robert Schwartz and Seth Greenstein, are representing a Higbee victim who actually tried sending a check for twice the stated licensing fee, and Higbee is still demanding much, much more. The circumstances here are quite incredible. The threat went to a tiny non-profit, that apparently used an image in a newsletter nearly a decade ago. No one has looked at that image on the website in well over five years (way beyond the statute of limitations) until Higbee’s team did. And, yet Higbee is still demanding over a thousand dollars.
Levy’s letter to Higbee highlights the problems with Higbee’s approach:
[Society of Emblem Studies treasurer, Elizabeth] Black investigated and ascertained that the applicable license fee is $80. Because she was unsure whether a license fee was paid (given that the person who posted the cartoon is no longer with the Society), Black offered to pay $160, double the license fee, for the Society’s past use of the cartoon. [Higbee employee Sarah] Brant did not deny that $80 is the license fee, but she said that the amount offered was not enough. Rather, she said, your client insists on a payment of $1000.
Hoping to be done with the matter, Black sent your ?rm a check for $160.
Brant has stated, however, that you will either destroy or return the check, and that she has “escalated” the dispute to your firm’s litigation team. The theory is that the Society needs to pay for your client’s “enforcement” costs which, I take it, means covering your firm’s share of the payment. Brant has never explained the basis for her implicit claim that $920 has been spent on enforcement costs.
Even so, the Society has paid $160 and that amount is all that it is willing to pay to avoid litigating your claims. The cartoon was taken down so you have no claim for declaratory or injunctive relief. Because the copyright has never been registered, your client can sue only for actual damages: that means either the Society’s profits from the alleged infringement, if any, or the lost license fee. Your client has no claim for any other monetary relief. The assertion in your initial demand letter that your lawsuit could claim attorneys fees was, therefore, an empty threat. The $160 already sent to your firm, double the license fee, more than covers the amount of any likely actual damages that your client could recover in litigation.
Indeed, although you or your client must have visited the web page in question in 2019, in the course of locating the cartoon there, given the absence of any visits during the five year period beginning in 2014, and considering that the statute of limitations for copyright claims is three years, it is at least arguable that no infringing reproduction took place as a result of the photo sitting on the Society’s web site. The only “infringement” would, then, have been the result of your client’s own inspection of the page. You would look a bit silly litigating an infringement claim based on such facts, and you might well not even be able to collect actual damages.
Even assuming that there is a claim for actual damages, you and I have previously discussed, in connection with other potential cases, your contention that “actual damages” can include enforcement costs, in cases in which 17 U.S.C. § 412 bars copyright owners from recovering attorneys fees because the copyright was not timely registered. I have found no caselaw supporting a claim for enforcement costs as part of actual damages; when I asked you for such authority, you supplied none. Instead, you told me that when you seek enforcement costs in such cases, it would be in hope of finding something in discovery that warrants statutory damages or attorney fees.
In the past Higbee has turned and run away when Levy gets involved, and it wouldn’t surprise me to see him do so again here. But, at the very least, we should call out extortionate behavior for what it is. Anyone who uses Higbee or other copyright trolls is seeking to abuse legal threats as a form of a shakedown.