By Kelli L. Sager and Jonathan Segal
A federal judge in Los Angeles has confirmed an award of more than $265,000 in attorneys’ fees and costs to the Los Angeles Times in its successful defense against a copyright infringement lawsuit from a freelance celebrity photographer. The photographer, who had been under contract to the Times, sued for statutory damages that could have ranged into the millions of dollars, claiming that more than 150 photographs had been published by the Times and related Tribune companies in violation of his copyrights. On Jan. 15, 2014, Judge Consuelo B. Marshall confirmed an arbitration award the Times received last year after its successful arbitration of a years-long dispute over the use of photographs taken behind-the-scenes during the filming of various feature films.
Freelance photographer David Strick brought a lawsuit for copyright infringement against the Times and the Tribune Company in May 2011, which he filed in federal district court despite the provision in his contract with the Times requiring any disputes to bee arbitrated. Judge Marshall granted the Times’ motion to compel arbitration in October 2011; Mr. Strick subsequently initiated an arbitration with JAMS in December 2011.
The arbitration clause in Mr. Strick’s contract, however, required that any dispute be submitted to arbitration within 90 days of sending an initial demand letter. Because Mr. Strick’s counsel did not initiate the arbitration within 90 days of the date an initial demand letter was sent, the Times and Tribune moved to dismiss the lawsuit, arguing that his failure to timely initiate the arbitration barred his claim under statute of limitations principles.
Mr. Strick’s counsel argued, among other things, that his copyright claims could not be barred because the Times had not yet published the photographs at issue at the time of his counsel’s initial demand letter, even though the letter made clear there was a dispute about the parties’ respective rights under the Agreement. Mr. Strick also argued that a copyright claim could not be subject to a contractual limitations period at all, because the Copyright Act has a statutory limitations period that should preempt any contractual limitations period.
The Arbitrator rejected Mr. Strick’s arguments, and adopted the Times’ position. He found that Mr. Strick “cannot avoid the agreed upon limitation period regarding his waiver of arbitration rights by asserting that his claims are rooted in copyright and therefore require and mandate a longer limitation period.” The Arbitrator cited Entous v. Viacom, 151 F. Supp. 2d 1150 (C.D. Cal. 2001), among other authorities, which held that “the Copyright Act does not forbid the parties from varying or altering the accrual time period by contract.” In Entous the court enforced a six-month contractual statute of limitations for bringing copyright claims that was included in a submissions release, barring a plaintiff’s suit for copyright infringement. Id. at 1155.
After the Arbitrator issued a final order dismissing Mr. Strick’s claims, the Times and Tribune moved to recover their fees and costs under the Copyright Act. Mr. Strick opposed the Times’ fee motion as well, claiming that the Times and Tribune were not the “prevailing parties” because the case had been dismissed on procedural grounds (a statute of limitations defense) rather than on the “merits” of the contract. The Arbitrator rejected this argument, citing Goldberg v. Cameron 2011 U.S. Dist. Lexis 89376 (N.D. Cal., August 11, 2011), in which the court awarded fees in a copyright action after a party won on a statute of limitations defense.
Mr. Strick also argued that it was inappropriate for an Arbitrator to award fees, claiming that any such award had to be made by the district court. The Arbitrator rejected that argument as well, holding that “no court has limited the award of fees and costs per section 505 of Title 17 to that of a District Court judge alone,” citing Kamakazi Music Corp. v. Robbins Music Corp. 684 F.2d 228, 231 (2d Cir. 1982), in which the Court enforced an arbitrator’s fee award in a copyright case.
Finally, the Arbitrator ruled that “an attorneys’ fee award for the Times furthers the purpose of the Copyright Act because it encourages defendants to litigate meritorious defenses. Additionally and central to the purpose of the Copyright Act, if the Times is compensated for defending its licensing agreements it will be able to rest on the consistency and legality of its licensing agreements when entering into future agreements with other professional (still) photographers who are not only copyright holders but licensors as well. It would serve no useful purpose to treat the holder and licensor of the copyright with greater statutory dignity than its licensee and distributor.”
The judgment against Mr. Strick is now final.