IP Law Daily, COPYRIGHT—E.D. Mich.: T-shirt company must pay attorney fees for infringement of artist’s designs, (Apr 7, 2023)

By Matthew Hersh, J.D.

But the attorney’s hours were cut by one third for unreasonable expenditures of time and block billing.

An artist who prevailed in a copyright infringement lawsuit against a T-shirt company was entitled to attorney fees because she acted reasonably to protect her copyrights and because the company did not move quickly enough to take down infringing designs that were added to its collection even after the lawsuit began, the federal court in Ann Arbor, Michigan has held. But the court, in awarding attorney fees to the artist, cut the main attorney’s fee by roughly 35% because that attorney failed to accurately describe her billing on individual tasks and engaged in conduct that unreasonably increased the amount of time she had to expend on the litigation (White v. Sports and Custom Tees, Inc., April 6, 2023, Levy, J.).

The lawsuit involved three pieces of artwork by Hillary White, which she named “Coven of Trash Witches,” “My Eyes Are Up Here,” and “Fluffin’ Meowgical.” (Some of the artist’s work can be seen on her Instagram page). The artist sued Tee Shirt Palace, a manufacturer and vendor of pre-designed and custom-made shirts. The artist alleged that products using her designs were being sold on the website.

The case was eventually resolved after the artist made, and the T-shirt vendor accepted, an offer of judgment under Rule 68. That offer excluded any agreement on attorney fees, leading the artist to make this motion.

Attorney fees. The court granted the motion for attorney fees. In doing so, the court noted, courts are instructed by Supreme Court doctrine to consider four nonexclusive factors, including “frivolousness, motivation, objective unreasonableness[,] and the need in particular circumstances to advance considerations of compensation and deterrence.” Although the factors did not all point the same way, the court noted, an award of attorney fees was warranted.

The two factors that weighed strongest in favor of an award, the court noted, were the artist’s motivation and the need for compensation and deterrence. Motivation was easily resolved, the court noted. Indeed, the T-shirt company conceded that the artist “has not acted unreasonably in seeking to protect her copyrights.” As to the other two factors, those also weighed in favor of fees. Among other things, the court noted, the tee shirt company had failed to take down the infringing content even after the artist filed claims under the Digital Millennium Copyright Act.

“Reasonable compensation for Plaintiff’s counsel in this case,” the court noted, “ensures that Plaintiff will be able to continue protecting her work with assistance from counsel when parties, such as Defendant, fail to timely respond” to such takedown requests. The need for deterrence pointed the same way. In the middle of the litigation, the court noted, the artist noted that several other designs of hers appeared to be infringed as well—yet the T-shirt company did not move quickly to take them down. “An award of attorney fees in this case, the court noted, “will ensure that Defendant remains compliant with its DMCA obligations and timely responds to reports of infringement before further damages are incurred.”

Amount of fees. Although the court granted the request for attorney fees, it declined to grant the entire amount sought. The main attorney in the case engaged in so-called block billing—namely, the combining of multiple activities within the same day’s bill, without distinguishing between time devoted to which task. Moreover, the court noted, she insisted on communicating with opposing counsel solely by email, a more cumbersome approach than telephone calls. Thus, a 35% reduction in her hours was appropriate.

The case is No. 5:22-cv-10218-JEL-JJCG.

Attorneys: Edmund S. Aronowitz (Aronowitz Law Firm PLLC) and Emily Alexa Danchuk (Danchuk Law, LLC) for Hillary White. Kory Mark Steen (Dickinson Wright PLLC) for Sports and Custom Tees, Inc. d/b/a Tee Shirt Palace.

Companies: Sports and Custom Tees, Inc. d/b/a Tee Shirt Palace

Cases: Copyright TechnologyInternet GCNNews