Is the Best Defense to a Copyright Infringement Claim No Defense at All?

by Josh H. Escovedo
The IP Law Blog

We recently discussed a new trend in celebrity copyright litigation on our YouTube channel and podcast (The Briefing on YouTube). Specifically, we discussed celebrities taking a stand and defending copyright claims brought by photographers against celebrities who reposted photos on their social media accounts. Two specific celebs who have taken a stand are Emily Ratajkowski and LeBron James. I am writing today to discuss what may be a new strategy in such copyright litigation. That strategy is defaulting.

When a party is sued in federal court—the exclusive jurisdiction for copyright actions—they have 21 days from the date of service to file a responsive pleading under Federal Rule of Civil Procedure 12(a)(1)(B). If a defendant fails to file a response, the plaintiff can apply to the court for entry of default under Federal Rule of Civil Procedure 55(a). Unless the defendant files an untimely response, the court will likely enter the defendant’s default. Once that occurs, the defendant is deemed to have admitted the well-pleaded allegations of the complaint. The plaintiff can then apply to the court for entry of default judgment. In doing so, the plaintiff requests that the default judgment include all damages that the plaintiff claims to have incurred, attorney’s fees (if applicable), and costs. Of course, the plaintiff has to provide factual and legal support for the damages request. Obviously this isn’t an ideal situation for a defendant given that the plaintiff gets to provide uncontested evidence to the court to support its damages claim while the defendant is deemed liable due to the entry of default. If you ask most attorneys, they would tell you that defaulting is never advisable, unless perhaps you’re judgment proof. But a recent ruling from the United States District Court for the Southern District of New York may cause some attorneys to rethink things.

In the matter of Clint Brewer v. Sofia Vergara Enterprises, Inc. and Sofia Vergara (collectively, “Vergara”) (Docket No. 1:20-cv-4865-AKH), a photographer who licensed a photo that he took of Vergara walking onto the set of America’s Got Talent sued Vergara for copyright infringement after she reposted the photograph on her Instagram account to her 21.2 million followers. Brewer hired the infamous copyright troll Richard Liebowitz, who has been repeatedly sanctioned by the federal courts for filing frivolous litigation and who was recently suspended from practicing law in New York, pending a disciplinary investigation. In short, Brewer claimed that Vergara published his copyright-protected photograph to promote her clothing brand—which she arguably did since she tagged Wal Mart and mentioned her clothing line in the caption. Brewer’s prayer for relief included a claim for $150,000 in statutory damages under the Copyright Act and additional damages under the Digital Millennium Copyright Act for removing the copyright notice. Despite a significant request for damages, Vergara never responded to the complaint. It’s unclear whether this was intentional, but presumably it was given Vergara’s familiarity with litigation.

As a result of Vergara’s failure to respond, the Court entered her default, and Brewer subsequently moved the court for a default judgment. Although Brewer alleged that he was seeking up to $150,000 in statutory damages, his motion only sought $5,000 in statutory damages, $455 in attorney’s fees, and $440 in costs. In determining statutory damages, the court has great discretion to award between $750 and $150,000 per work, depending on whether the infringement was willful.

On February 18, 2021, the court issued its order and entered default judgment. The court exercised its discretion and awarded a mere $750 in statutory damages for the copyright infringement claim and refused to award attorney’s fees and costs. Given the amount in controversy for a violation of the Copyright Act, this is a great outcome, and it’s exponentially better when you consider that Vergara didn’t spend a dime in attorney’s fees or costs, which easily could have exceeded six figures if the matter were contested.

While this was a fantastic outcome for Vergara, I can’t say that I’ll be inclined to suggest to my clients that they simply default in such cases. The risk of doing so is far too great. Sure, the court in the Vergara case found that her conduct wasn’t willful, awarded the statutory minimum in damages, and refused to award attorney’s fees and costs. But it was also possible that a judge could have deemed her conduct willful and awarded the statutory maximum of $150,000 and attorney’s fees and costs. In this instance, the gamble paid off, and I will unquestionably inform my clients of this outcome, but I will not be the one to recommend the default strategy. If a client chooses to roll the dice after being provided with a thorough explanation of the possible outcomes, that is their prerogative. But flatly recommending such a course of action seems imprudent.