IP Law Daily, COPYRIGHT—S.D. Tex.: Leave allowed to add work for hire defense, but not estoppel in firefighter photo dispute, (May 14, 2024)

By Kevin M. Finson

Leave to add an affirmative defense that a work was produced for hire was granted because there would be no prejudice or delay.

A law firm accused of infringing a copyrighted photograph of a firefighter was allowed leave to amend its affirmative defenses in part to add a work for hire defense, the U.S. District Court in Houston has determined. A defense for which a motion was filed promptly after the party became aware of the facts to support it and which would not cause prejudice was allowed, while other defenses were not (Powers v. Marcos & Associates, PC , No. 4:22-cv-03949 (S.D. Tex. May 9, 2024)).

Erin Powers claimed to own the copyright in a photograph of a firefighter standing in front of a burning staircase. She brought suit for infringement against the Law Offices of Marcos & Associates (Marcos) for infringement. The court set deadlines for discovery, to amend pleadings, and for dispositive motions. Late in and following the close of the discovery period depositions were taken of Powers and of Patrick Lancton, the President of the Houston Professional Firefighters Association (HPFA). Based upon information disclosed in these depositions, Marcos sought leave to amend in order to add the affirmative defenses of estoppel and work for hire, as well as to modify a counterclaim for declaratory judgment in order to correct the statute under which judgment was sought.

Works for hire. Marcos claimed that because Powers had always claimed sole ownership of the work it did not know that the work for hire doctrine might apply until it took Lancton’s deposition and learned that the HPFA also claimed ownership. Although this deposition was taken after discovery had closed, Powers did not object at the time of the deposition and so the issue was not waived. The court also noted that the work for hire doctrine was extensively addressed by both parties in their briefing on Powers’ motion for summary judgment, so there was no prejudice to Powers. The court granted leave to add this defense.

Estoppel. The estoppel defense was brought up in a manner similar to the works for hire defense. Through the deposition of Powers, it became known that Powers was aware of HPFA’s use prior to filing an application to register the copyright. However, the court identified two differences: the motion to add the estoppel defense was filed after five weeks of delay without explanation; and neither party had briefed the estoppel defense, so there would be prejudice to Powers. The court denied leave to add this defense.

Declaratory judgment. The court denied leave to amend the declaratory judgment counterclaim because it found this claim to be moot. The declaratory judgment sought a determination of the very same issue as Powers’s infringement claim.

The Case is No. 4:22-cv-03949.

Judge: Edison, A.

Attorneys: David Michael Stuart Jenkins (Doniger / Burroughs) for Erin Powers. Jason D. Goff for Law Offices of Marcos & Associates, PC.

Companies: Marcos & Associates, PC

Cases: Copyright TexasNews