The Volokh Conspiracy

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$85,000 fees award against lawyer-plaintiff for frivolous copyright suit


This happened in Choyce v. SF Bay Area Independent Media Center (N.D. Cal. Nov. 3, 2014); the court concluded that plaintiff didn't even credibly allege that he owned the copyright in the work that defendants supposedly infringed—obviously, a necessary component of a copyright claim.

Here is what the court said about why plaintiff's claim was "frivolous[]" and "objectively baseless," which is relevant to whether a losing plaintiff should have to pay defendants' attorney fees (one paragraph break added):

Plaintiff's copyright claim was, to put it bluntly, objectively baseless. At the time Plaintiff filed his complaint, Plaintiff had not even applied for a copyright registration. The Court first dismissed the claim without prejudice, which should have given Plaintiff an opportunity to assess the strength of his claims, and take whatever steps were necessary to ensure that he had a valid claim to assert.

Instead, he filed a registration application which identified himself as the "author" of the image, which he knew he was not. And then, when faced with the argument that he still had no valid ownership interest in any copyright, he resorted to additional meritless arguments: that his registration was prima facie valid (which it was not) and that the image was a work made for hire (which was implausible, unsupported by any evidence, and did nothing to salvage the validity of the registration he had actually obtained).

The Ninth Circuit has upheld an award under the Copyright Act when a party "should have known from the outset that its chances of success … were slim to none." Had Plaintiff's counsel consulted even basic authority regarding copyright law, he would have and should have known that he had no basis to bring a copyright action even against the Doe Defendants who had used the image (to say nothing of Indybay and Layer42). In asserting claims under a statute with a fee-shifting provision, he continued to press his claim at his peril.

And here's the court's summary of the litigation:

This motion arises out of a civil action by Plaintiff Dionne Choyce …, in which he brought federal copyright and state-law defamation causes of action against Defendants SF Bay Area Independent Media Center … and, Inc. …, among other defendants. He alleged that Layer42 provided internet connectivity, hosting and infrastructure to a website operated by Indybay on which unknown Doe Defendants posted false and defamatory articles about him, including a graphic image of him taken from his law firm's website. Additional facts are described in the Court's December 2, 2013 and June 2, 2014 orders. After dismissing the initial complaint without prejudice and granting Plaintiff leave to file a First Amended Complaint ("FAC"), the Court then granted Defendants' motions to dismiss with prejudice, finding as follows:

The FAC, like its predecessor, fails to allege that Plaintiff applied for a copyright in the allegedly copyrighted image. The FAC must be dismissed again for this reason. In his opposition, Plaintiff has attached a Proposed Second Amended Complaint ("PSAC"), in which he finally alleges that he has applied for a copyright, and limits his asserted remedies to those available for post-infringement registration, as the Court previously ordered. The question is whether the Court should provide a second opportunity to amend by allowing Plaintiff to file the PSAC….

Plaintiff makes an unconvincing attempt to blame his adversary for his failure to amend, arguing that Layer42 filed a request for attorney's fees which required opposition over the holiday season, and this task apparently distracted Plaintiff's counsel from adding an allegation to the FAC that Plaintiff had applied for a copyright. This argument is particularly unpersuasive given the fact that Layer42's counsel offered a stipulation to Plaintiff's counsel to alter the deadlines to avoid the holiday season, and received no response. Plaintiff acknowledges that the failure to amend was due to "oversight" on his part….

Even if the Court were to consider the PSAC, it would not salvage Plaintiff's copyright claim. A copyright infringement plaintiff "bears the burden of proving copyright ownership." The PSAC makes the conclusory legal conclusion that "[a]mong the exclusive rights granted to Plaintiff under the Copyright Act are the exclusive rights to reproduce the Copyrighted Work and to distribute the Copyrighted Work to the public." But this legal assertion is not a well-pled factual allegation whose truth the Court must accept at the pleading stage.

"Under the copyright laws, the registration of a copyright certificate constitutes prima facie evidence of the validity of a copyright in a judicial proceeding commenced within five years of the copyright's first publication." The PSAC alleges that the Copyright Office issued Plaintiff a registered copyright in the image on October 23, 2013, after the first motion to dismiss in this actionSince Plaintiff has used the image in his marketing since 2005, he cannot avail himself of this prima facie presumption.

The PSAC therefore must contain additional well-pled factual allegations from which it is plausible to conclude that Plaintiff himself owns a valid copyright in the photographic image. But, as Plaintiff's counsel acknowledged at oral argument, and as Plaintiff himself has testified in a sworn declaration, the image was not created by Plaintiff; it is an image of Plaintiff. It was taken by a professional photographer. Therefore, any copyright in the image "vests initially in the author or authors of the work," which would be the photographer of the image, not Plaintiff. Even if the Court gave Plaintiff leave to file the PSAC, it would still fail to state a claim for copyright infringement, rendering leave to amend futile.

Nonetheless, out of an abundance of caution, the Court has further considered the possibility that Plaintiff might be able to finally plead a viable copyright claim if given a fourth opportunity to do so. Faced with Indybay's arguments that he is not the author of the image, Plaintiff stated in his opposition brief that, if the PSAC also fails to state a claim for copyright infringement, further "leave to amend should be granted" to allege facts that state a claim.

But in his brief, Plaintiff does not even hint at what facts he would plead in a Second Proposed Second Amended Complaint that would salvage his claim. He provides no explanation of how he owns the rights to the image. He does not state that he acquired the rights from the original photographer, and neither does he explain that the work was made for hire. And he does not explain how he could have a valid registration in an image he did not author, since the certificate of registration he obtained in the copyright states that he, himself, is the "author." …

But—again, out of an abundance of caution—at oral argument the Court gave Plaintiff's counsel a second opportunity to explain why the Court should give him a fourth opportunity to replead. Plaintiff's counsel explained that the image was, contrary to the certificate of registration Plaintiff obtained, actually a "work made for hire," and that Plaintiff will at some point apply to the Copyright Office to correct his certificate. But a work made for hire is, with exceptions not here relevant, "a work prepared by an employee within the scope of his or her employment." For this category to apply, the photographer must be a regular employee rather than an independent contractor or a specially commissioned photographer. It simply is not plausible to infer that when Plaintiff "started [his] own practice as an attorney in or about 2005," and "had a professional photograph taken of [him]," he employed a professional photographer as a member of his regular staff.

This action has been pending for nearly a year, and Plaintiff has yet to plead a valid federal cause of action in any of his proposed complaints, or explain how he might at any point in the foreseeable future. Given the numerous opportunities Plaintiff has had to state a claim of copyright infringement, and Plaintiff's failure to explain to the Court how the copyright claim might be rendered plausible on further amendment, the Court concludes that further leave to amend would be futile. Since there has been unjustified and undue delay, because the Court previously granted leave to amend, and because the Court needs to control the pace of its docket, further leave to amend will not be provided. The copyright claim is dismissed with prejudice.

Since the only jurisdiction Plaintiff invoked over the action was federal-question jurisdiction over to the copyright claim, the Court declined to exercise supplemental jurisdiction over Plaintiff's state-law claims and closed the file….

The court also rejected plaintiff's argument that "the Court's ruling that Plaintiff failed under FRCP 12(b)(6) to allege facts sufficient to state an infringement claim is nothing more than a de minimis victory on a technical point"; the court concluded that,

Defendants obtained dismissal with prejudice of the copyright claim. This altered the "legal relationship of the parties." It is an "enforceable judgment on the merits," since Defendants will presumably be able to rely on it if sued again for their alleged actions infringing on Plaintiff's copyright.

The court awarded the defendants 75 percent of their requested fees and costs, for a total of over $85,000.

Thanks to the Media Law Resource Center MediaLawDaily for the pointer.