IP Law Daily, COPYRIGHT—N.D. Tex.: Photographer’s motion to strike website’s defenses partially granted, (Nov 8, 2021)

By Ursula Furi-Perry, J.D.

Affirmative defenses, including fair use, were stricken, while the implied defense was adequately pleaded.

A photographer can pursue claims of copyright infringement against the owner of a website providing “positive and inspirational content,” the federal district court in Dallas has determined. The court granted the photographer’s motion to strike several affirmative defenses, but allowed the defense of implied license to stand. The court also denied the website’s motion for judgment on the pleadings, holding that the action was not time-barred on the face of the complaint, and that it was premature to dismiss the claim for statutory damages (Pickersgill v. Neely, November 5, 2021, Starr, B.).

Background. A photographer, Eric Pickersgill, filed suit against Inspire More, LLC, and its owner, a website which seeks to provide positive content. According to the company, since 2014, InspireMore has reached more than 500 million people around the world with positive news and inspirational content.

At the heart of the case was Pickersgill’s photo series, titled Removed, which depicts portraits of individuals who appear to be holding personal devices, although the devices have been physically removed from the individual’s hand. The photographer sued the website in the federal district court in Dallas, claiming copyright infringement. The website responded with a number of affirmative defenses, and the photographer moved to strike those, as applied to copyright law.

Motion to strike. The district court first addressed the photographer’s motion to strike several of the affirmative defenses brought by the website under Rule 12(f) of the Federal Rules of Civil Procedure. The photographer asserted that five of the website’s affirmative defenses were insufficient as a matter of pleading and two were insufficient as a matter of law.

The court struck the first defense, in which the website claimed its conduct was not willful. While willfulness may be relevant in determining statutory damages, it is not an affirmative defense to liability for copyright infringement, the court held. Next, the website argued a defense of waiver, estoppel, and laches. The court compared this to the defense of abandonment in copyright law, and held that they were insufficient as a matter of pleading, having failed to provide fair notice of the defense of abandonment. Likewise, on the next defense of fair use, the court held that the website did not provide fair notice, striking the affirmative defense.

The website’s defense of an implied license, however, was allowed to stand by the court. The website asserted that its amended answer contained sufficient evidence to imply a license, and that more will come through discovery. The court held that the photographer had ample notice of this affirmative defense.

Motion for judgment on the pleadings. The website moved for judgment on the pleadings, arguing that the photographer’s claims were time-barred, and alternatively, that he was not entitled to statutory damages.

The website first asserted that the photographer’s claims were time-barred. The photographer claimed that he first discovered the defendants’ infringement in or around the summer of 2020. However, the website argued that he knew or should have known about the allegedly infringing acts no later than January 27, 2016, the date the site posted the photographs to its social media. The court declared that this was a fact-intensive inquiry, and it could not grant judgment on this issue at this stage.

Alternatively, the website argued that it was entitled to judgment on the photographer’s claim for statutory damages and attorney fees because the alleged infringement occurred before the photos were registered and he waited almost seven months to register the photos after their first publication. The court declined to grant this motion, agreeing with the photographer that the website created a material dispute of fact in its answer by asserting the affirmative defense of implied license.

“Although the pleadings show that Pickersgill registered his copyright on July 5, 2016, and it is clear that Pickersgill is not entitled to any statutory damages for infringement that commenced before this date, the Court finds that judgment on the pleadings is not appropriate at this time,” the court said. “If the infringement actually commenced when suit was filed, Pickersgill may be entitled to statutory damages. But the Court cannot decide these questions now.”

Conclusion. The photographer’s motion to strike affirmative defenses was partially granted and partially denied. The court also denied the website’s motion for judgments on the pleadings and the photographer’s motion for leave to file surreply.

The Case is No. 3:21-cv-00773-X.

Attorneys: Robert Buckner (McKinney Law Office of Buck McKinney PC) for Eric Pickersgill. Thera Aschanta Cooper (Lasater and Martin PC) for Robert B. Neely and Inspire More LLC.

Companies: Inspire More LLC

Cases: Copyright GCNNews TexasNews