Hirsch v. Spin Media LLC
1:16-cv-07308
| S.D.N.Y. | Jan 10, 2018Background
- Plaintiffs Fran Janik and Steven Hirsch (professional photographers) sued Spin Media, Inc. for copyright infringement and for removal of copyright management information (CMI) under the DMCA based on Spin's online uses of two photographs.
- Janik alleged he took the “Guccione Photograph” in the mid-1980s, retained copyright, and that Spin used it in 2010 and 2015 without a license; Janik registered the work on December 16, 2015.
- Hirsch alleged Spin used a 2016 photograph (the Kiehm Photograph) without license; discovery revealed discovery lapses and alleged deletion of ESI.
- Janik and Hirsch each voluntarily dismissed their claims with prejudice after the court ordered in-person depositions and imposed discovery sanctions; Judge Koeltl found Spin a prevailing party under Rule 54 and § 505, and fees were sought by Spin.
- Spin moved for attorneys’ fees under the Copyright Act and the DMCA against Janik (renewed motion), arguing claims were objectively unreasonable, frivolous, and motivated by settlement leverage; the magistrate judge denied the fees motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Janik's copyright claim was objectively unreasonable / frivolous | Janik contends he authored and retained rights in the Guccione Photograph and that Spin exceeded any limited license | Spin contends Guccione (or Spin) was a co-owner or licensee and that Janik’s claim lacked factual/legal basis | Court: Not objectively unreasonable or frivolous on this record; genuine factual disputes about authorship, license scope, and intent preclude fee award |
| Whether Janik's claimed statutory damages and fees were barred by § 412 (registration timing) | Janik asserts he could have sought actual damages and only later would have elected statutory damages; Am. Compl. drafting was imprecise | Spin argues infringement commenced before registration, so statutory damages/fees were barred and seeking them was frivolous | Court: Did not find Janik’s damages theory objectively unreasonable given the record and counsel’s representations that actual damages were pursued; decline to deem frivolous |
| Whether Janik stated a viable DMCA (§1202) claim (existence/removal of CMI) | Janik pointed to a contact sheet bearing his name given to Guccione and argued that constituted CMI conveyed in connection with the work | Spin argued there was no CMI on the Photograph and no basis to allege removal | Court: Contact-sheet attribution can qualify as CMI; absence of a copy with visible CMI in the record does not make the claim objectively unreasonable; not frivolous |
| Whether fees should be awarded as compensation/deterrence given discovery abuses and plaintiffs’ counsel’s litigation practices | Janik said dismissal was due to his medical inability to travel and that claims were brought in good faith | Spin highlighted discovery failures, last-minute excuses, and plaintiffs’ counsel’s mass-litigation reputation, arguing deterrence and compensation favor fees | Court: Considered totality of circumstances; discovery mismanagement warranted no additional fees because plaintiffs already faced sanctions and dismissals; deterrence/compensation do not favor awarding fees here |
Key Cases Cited
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (sets discretionary framework and nonexclusive factors for awarding fees under the Copyright Act)
- Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (2016) (reaffirms district court discretion and guidance on fee-award factors; cautions against mechanistic treatment of reasonableness)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality standard: minimal creativity suffices)
- Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) (tests for joint authorship and the requirement of mutual intent)
- Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998) (joint authorship inquiry and evidentiary indicia of intent)
- 16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015) (joint owner immunity from suit; coauthorship standards)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (license law: effect of nonexclusive and exclusive licenses)
- Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 2000) (scope-of-license principles and infringement where license is exceeded)
- Medforms, Inc. v. Healthcare Mgmt. Sols., Inc., 290 F.3d 98 (2d Cir. 2002) (fee awards are discretionary, not automatic)