IP Law Daily, COPYRIGHT—W.D. Wash.: Food photo licensing company’s voluntarily dismissal of infringement action must be with prejudice, (Oct 2, 2024)

By Cheryl Beise, J.D.

A defendant suffers legal prejudice if deprived of the ability to pursue attorney fees when copyright claims are dismissed without prejudice.

A company that licenses stock photographs of food was not entitled to voluntarily dismiss a copyright infringement suit without prejudice against a pool and spa seller, the federal district court in Seattle has ruled. The pool seller would suffer legal prejudice if the dismissal was without prejudice because it would be deprived of prevailing party status, which is required to obtain attorney fees under the Copyright Act’s fee shifting provision. It did not matter that the defendant may not actually be awarded attorney fees due to pro bono representation. The plaintiff was ordered to dismiss the case with prejudice or continue with the litigation (Prepared Food Photos, Inc. v. Pool World, Inc., No. 2:23-cv-00160-TOR (E.D. Wash. Sept. 30, 2024)).

Prepared Food Photos Inc., f/k/a Adlife Marketing & Communications Co., Inc. (PFP) licenses professional photographs for the food industry. PFP, a frequent copyright litigant, filed suit against Pool World, Inc., for unauthorized use of a copyrighted photo titled “ProduceVegetableGrilled002,” which depicts skewers of vegetables laying diagonally on a grill. Pool World sells pools, spas, and outdoor appliances, including grills.

PFP originally made the photo available for licensing on iStock, a subsidiary of Getty Images that allows users to purchase licenses to royalty-free images. In 2010, PFP purchased a license to use the subject image for a fee of no more than $12.00 and published the photo on its website to advertise its grills. However, after obtaining a copyright registration for the image in 2016, PFP pulled all of its photos from iStock and began making its images available through an alternative subscription service that allows access to its entire photo library for $999 per month.

PFP sent a demand letter to Pool World, seeking $35,964 in statutory damages. When its demand was not met, PFP sued Pool World for copyright infringement. The parties participated in a court-mediated settlement a conference but were unable to reach an agreement.

Before the court was PFP’s motion to voluntary dismiss its claims without prejudice and without the requirement of paying Pool World’s attorney fees.

Voluntary dismissal. Pool World argued that it would suffer legal prejudice if the dismissal was without prejudice because it would be deprived of prevailing party status, which is required to obtain attorney fees under Section 505 of the Copyright Act, 17 U.S.C. § 505. The Ninth Circuit in Cadkin v. Loose, 569 F.3d 1142, 1149 (9th Cir. 2009) held that a voluntary dismissal of copyright claims with prejudice confers prevailing party status on defendants under the Copyright Act while a dismissal without prejudice does not. The court agreed that a defendant suffers legal prejudice if deprived of the ability to pursue attorney fees when copyright claims are dismissed without prejudice.

PFP argued that Pool World would not suffer legal prejudice even if deprived of the prevailing party status because it incurred no legal fees as its legal representation was on a pro bono basis. PFP also referenced a South Florida district court case, Affordable Aerial Photography, Inc. v. Abdelsayed et al., Case No. 9:21-cv-81331-AMC (S.D. Fla.), where the court orally held defendant suffered no legal prejudice from a voluntary dismissal without prejudice under the Copyright Act for the very reason that defendant had incurred no attorney fees. (It’s worth noting that the Eleventh Circuit affirmed this decision earlier this year, but on different grounds, and a petition for certiorari in that case is currently pending before the Supreme Court, seeking clarification on whether a copyright owner’s dismissal without prejudice of an infringement suit that reestablishes the pre-suit status quo make a defendant the "prevailing party" under the Copyright Act).

The court was not persuaded by PFP’s argument or one district court case in another circuit. “Depriving Defendant of the ability to pursue attorney fees under the Copyright Act is the legal prejudice, not whether Defendant will actually be awarded fees,” the court said. “The issue of attorney fees for pro bono representation is an argument to be made when a motion for fees is before the Court.”

Concluding that Pool World would suffer legal prejudice under the Copyright Act if the action were dismissed without prejudice, the court held that PFP must either move to dismiss the action with prejudice or continue with litigation.

The Case is No. 2:23-cv-00160-TOR.

Judge: Rice, T.

Attorneys: Lauren M. Hausman (CopyCat Legal PLLC) for Prepared Food Photos Inc. Paul Alan Levy (Public Citizen Litigation Group) for Pool World Inc.

Companies: Prepared Food Photos Inc; Pool World Inc.; Pool World Inc.

Cases: Copyright WashingtonNews