IP Law Daily, COPYRIGHT—D.D.C.: The hoary defense of ‘it wasn’t me’ works for seven Proud Boys lawyers, (Sep 20, 2023)

By Matthew Hersh, J.D.

The lawyers could not be held responsible for the alleged infringement by the lawyer for a co-defendant.

Lawyers for four criminal defendants who were tried together on charges related to the events of January 6, 2021, could not be held liable for copyright infringement on the grounds that the lawyer for a fifth co-defendant put an allegedly unlicensed document into the public court record, the federal court for the District of Columbia has held. The court, in rejecting the unusual copyright infringement claim against the lawyers and their related law firms, found that the claim failed on the pleadings and therefore sidestepped the more fact-intensive analysis needed to decide whether the use of the document in litigation would constitute fair use (In Lux Research v. Hull McGuire PC, September 19, 2023, Boasberg, J.).

The copyright infringement dispute arises out of the federal prosecution of Joseph Biggs, Ethan Nordean, Zachary Rehl, Henry “Enrique” Tarrio, and Dominic Pezzola—each a member of the right-wing group known as the Proud Boys—for their role in the January 6, 2021, insurrection. In the leadup to the trial, the five Proud Boys members moved for a change of venue for the trial, contending that they could not get a fair and impartial trial in Washington, DC. In order to bolster that argument, the lawyer for Joseph Biggs engaged a jury consultant to prepare a study about attitudes of potential jury members in the District of Columbia toward the Proud Boys. That attorney, John Daniel Hull—acting ostensibly on behalf of all of the Proud Boy defendants—then filed the report as a supplement to the transfer motion. The transfer motion was denied and then, as most followers of the news are likely aware, the Proud Boys were later convicted.

That may have been the end of the line for the Proud Boys, but their lawyers now faced another hurdle. The jury consultant, In Lux Research, contended that it had not been paid for the report. The consultant and its owner sued the five law firms and eight individual lawyers involved in the Proud Boys case for breach of contract, unjust enrichment and—in the case of Joseph Biggs attorney John Daniel Hull—intentional misrepresentation and promissory fraud. But in an ostensible effort to make a federal case out of the matter, the jury consultant also alleged that by filing the report and therefore having it reproduced and distributing via the public docket, the attorneys committed copyright infringement.

All attorneys except for Hull and his law firm moved to dismiss the claims against them, leading to this opinion.

Copyright infringement. The court granted the motion and dismissed the complaint against the attorneys. The court turned first to the copyright infringement claims and then took up the remaining claims.

The court found that the jury consultant had not stated an infringement claim against the attorneys for a simple reason—they were not the ones who had put the report into the record. As the docket record unambiguously showed, the court noted, only attorney Hull—representing Proud Boy Biggs—had made the supplemental filing with the allegedly unlicensed report. To be sure, the court observed, the attorney who made the filing claimed to have done so on behalf of all of the Proud Boys, and not merely his own client. But “a lawyer representing one defendant cannot file a motion on behalf of a co-defendant who is represented by a different lawyer based solely on the first lawyer’s say-so that he speaks for the co-defendant,” the court observed. Nor did the other attorneys later formally join the filing at issue on behalf of their clients, those attorneys pointed out—they joined only the initial motion to transfer venue, but not the actual supplemental filing with the report. “In other words, Moving Defendants rely on the oldest defense in the book: ‘It wasn’t me,” the court noted. “Hoary as it may be, the Court agrees that they are correct.”

Nor could the other attorneys be secondarily liable for the allegedly infringing conduct of their co-counsel. To show that those attorneys contributed to the alleged infringement, the court noted, the jury consultant would have to show they “substantially” participated in it. The jury consultant argued that even if the other attorneys did not formally join in the filing at issue, they nonetheless contributed to it by joining the underlying motion to transfer, attending the hearing where the motion was argued, and making no attempt to disclaim the filing. But “those acts are just the stuff of litigating a case,” the court noted—hardly enough to meet the threshold for secondary infringement. Nor did the complaint make out a plausible case for vicarious copyright infringement, the court noted, because the moving attorneys had no right or ability—“let alone right and ability,” the court emphasized—to supervise the attorney who made the filing at issue. “With co-equal counsel, it cannot be said that any one supervised another,” the court reasoned.

In light of the fact that the copyright infringement claim was dismissed on the pleadings, the court noted, it was able to sidestep another defense raised by the lawyers—that of fair use. In a comment accompanying Section 107 of the Copyright Act, Congress listed numerous examples of activities that courts might regard as fair use under the circumstances, including “reproduction of a work in legislative or judicial proceedings or reports.” Many courts have come to the same conclusion and found that the use of copyrighted materials in litigation constitutes fair use. That said, the court noted, in light of the dismissal of the claim on the pleadings it would not be necessary to enter into the “highly fact-intensive” analysis that this defense, like any defense grounded on fair use, might require.

Other allegations. With the copyright infringement dismissed as against the lawyers, the court found it easy to dismiss the remaining claims for lack of subject matter jurisdiction. Federal district courts are given supplemental jurisdiction over state law claims that “form part of the same case or controversy” as federal claims over which they have original jurisdiction. By the same token, they may decline to exercise supplemental jurisdiction over such claims where the claim giving rise to federal jurisdiction in the beginning—in this case, the copyright infringement claim—has been dismissed. Here, the court noted, the case had not progressed in federal court beyond the motion to dismiss stage, and “the Court has developed no familiarity with the issues presented beyond the copyright claim it dismisses.” Thus, the court noted, there would be “no undue inconvenience or unfairness to the litigants” that would result from declining to exercise supplemental jurisdiction.

The Case is No. 1:23-cv-00523-JEB.

Attorneys: Bryan D. Hoben (Hoben Law) for In Lux Research. John Daniel Hull, IV (Hull Mcguire PC) for Hull McGuire PC.

Companies: In Lux Research; Hull McGuire PC; David B. Smith, PLLC; Law Offices of Nayib Hassan, P.A.; Metcalf & Metcalf, P.C.; Jauregui Law, P.A

Cases: Copyright DistrictofColumbiaNews GCNNews