Copyright Claim Backfires; Photographer Ordered to Pay $388K

A photographer whose $260,000 copyright infringement claim was tossed out of court in 2002 has been ordered to reimburse the defendant by $388,424.54 in legal costs. Stephen Weingrad, the attorney who represented the photographer in that case, has been ordered to reimburse the defendants an additional $65,760.50 in legal costs.

In a decision handed down in May, U.S. District Judge Loretta A. Preska excoriated British photographer Kent Baker for suing in bad faith with improper motives, and for making unreasonable demands. Weingrad, who was sanctioned several years ago for his conduct in other cases, was again lambasted for acting in bad faith, and for making "improper, unreasonable, and vexatious claims."

The trouble began when Urban Outfitters, a home furnishings retailer, sold 862 inexpensive plastic picture frames in 2000 and 2001 that included one of Baker's images on a paper insert. The picture showed a man in a cowboy hat leaping from one boxcar to another, a photo Baker shot on a road trip along Route 66. Baker had not authorized the use in the picture frames.

Baker's agent contacted Urban Outfitters, and after unsuccessful attempts to negotiate a retroactive license fee, the retailer removed the frames from its shelves in March 2001 and replaced the inserts, according to court documents.

Meanwhile, Baker had hired photographer Peter B. Kaplan, who billed himself as "The Copyright Cop," to help him pursue an infringement claim. Kaplan contacted Weingrad, and according to court records, "Kaplan stated [in an April 2001 letter to Weingrad] that he thought Baker's case is 'great' because it involves 'a lot of STUPID, obstinate, deep pocketed, WILLFUL INFRINGERS.' Kaplan also suggested that both he and Weingrad would benefit from the case, as 'you would hit many news stories or should I say WE.'"

On behalf of Baker, Weingrad filed a claim against Urban Outfitters in June 2001, alleging copyright infringement, violation of the Digital Millenium Copyright Act, and "misappropriation of goodwill," which is actionable under state law.

Early on, Urban disclosed that its gross profit from the sale of the frames was $3,896, according to court records. The company offered to settle for $9,096, but Baker rejected the offer, insisting instead upon damages of $260,000.

Baker's various claims were dismissed in 2002. Afterwards, Weingrad sued Urban's attorneys for misconduct. His briefs in that claim were "replete with rambling, irrelevant, unsupported assertions of fact and law," Preska noted. He lost, and was ordered to reimburse Urban $19,270 in legal fees for the misconduct claim.

Urban then sued Baker and Weingrad to recover attorneys' fees and costs for the original infringement claim. Under copyright statutes, courts may award fees and costs to the prevailing party at their discretion, after considering factors such as frivolousness, motivation, and objective unreasonableness.

Judge Preska found against Baker on those factors, concluding that "?rather than pursuing resolution of a fairly minor dispute in good faith, the record suggests that Baker (and his counsel) filed and maintained this suit in an attempt to extract a significant payment from perceived 'deep pocketed' defendants (and in an attempt to garner publicity for Baker's agent and for his lawyer)."

The evidence for that included Kaplan's letter to Weingrad, some intentionally false allegations Baker had made in his claim against Urban, the disdain Baker expressed for Urban's settlement offer and his insistence on $260,000 in damages when the actual damages?and the only damages he was entitled to under the law?were determined early on to be less than $4,000.

Judge Preska also said she was awarding costs and attorneys' fees to Urban "to deter [Baker], and other similarly situated plaintiffs, from bringing unreasonable claims based on a cost/benefit analysis that tells such plaintiffs that they can score big if they win and that there will be no adverse consequences if they lose."

Urban Outfitters' claim against Weingrad was based on a federal statute that holds attorneys personally responsible for costs and fees resulting from "unreasonable and vexatious conduct."

Judge Preska called Weingrad's briefs "rambling and incomprehensible," and concluded that he engaged in unreasonable, vexatious conduct by knowingly filing improper claims against Urban Outfitters on behalf of Baker. For instance, he filed for statutory damages even though Baker was ineligible for actual damages only because he hadn't registered his copyright prior to the infringement. "Weingrad was well aware of the law in this area," Preska wrote in her decision.

She added, "Weingrad was also unreasonable and vexatious in maintaining Baker's claim for actual damages of $260,000."

Efforts to locate Baker were unsuccessful. Weingrad and attorneys for Urban Outfitters did not immediately return phone calls for comment.

Kaplan, meanwhile, says he doesn't recall the details of the case, or the letter he sent to Weingrad. "It was from many years ago." He adds, "I'm not doing that Copyright Cop thing anymore. It was a lot of wasted time and energy. The amount of time I put in and money I got back?it wasn't worth it."