Sunday, August 16, 2009

Can you sue in state small claims court over copyright infringement? Sorry, but no.

The West Seattle Blog has an interesting post about a case of copyright infringement of a photo. Here's the story in a nutshell: a photojournalist named Christopher Boffoli took a photo of a restaurant called Beato, which ran in the WSB last November. The building that housed Beato was subsequently put on the market, and the online real estate listing contained Boffoli's photo. This, despite that the real estate firm had not obtained permission. And, "This situation was made more odious by the fact that, when I discovered my image online, it was being used with a Commercial Broker’s Association (CBA) copyright flag on it," Boffoli told the WSB.

Sounds like a slam-dunk case of copyright infringement. Not the worst case in the world, one that would involve huge damages, but certainly Boffoli deserves redress. He tried to get some from the listing agent, who he says ignored his demands. And so Boffoli filed suit in small claims court in King County, Washington. And he won: the judge awarded him $1,000 in damages (the amount he demanded), plus court costs.

I'm glad Boffoli got his redress, and the infringer her comeuppance. And I hate to rain on the parade. But the fact is that the small claims judge had no authority to hear this case, and the defendant has a solid argument on appeal (assuming it wasn't waived) that the case should be dismissed. Federal law is clear: only federal courts may hear copyright infringement cases:
The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.
28 U.S.C.
§ 1338(a) (emphasis mine). One commenter to the WSB post addresses the jurisdictional issue by arguing:

For those arguing the jurisdiction of [small claims court], you need to separate the claims correctly. Chris was making a claim about the unlawful use of his property, not the copyright. The fact that it was copyrighted in this case is just support for his ownership claims.... The claim against theft is completely independent of a copyright claim in that it can (and did) stand alone.

Nice try, but that argument doesn't work. You can call the defendant's actions "theft," unfair competition, fraud, or whatever label you can come up with, but the bottom line is that Boffoli is complaining about the fact that the defendant copied and displayed his photograph. Thus any equivalent state claims are preempted by the federal Copyright Act. See 17 U.S.C. § 301. (This is an oversimplification of the very messy preemption doctrine, but I think this is a pretty clear case.)

So that's what the law actually is. But should it be so? While I haven't fully thought through the implications, I can certainly see an argument that state courts, including small claims courts, should be permitted to adjudicate small-dollar copyright cases. If the photographer says he just wants to recover his normal license fee of a few hundred or a few thousand dollars, why not? A federal case is a pretty blunt (and expensive) instrument for minor disputes, and I think it's certainly worth exploring alternatives to full-blown federal lawsuits for incidents like the one in which Boffoli found himself embroiled. Cf. Mark Lemley & R. Anthony Reese, Reducing Digital Copyright Infringement Without Restricting Innovation, 56 Stanford L. Rev. 1345 (2004) ("An alternative proposal to reduce the cost of enforcement is to create some sort of quick, cheap arbitration system that enables copyright owners to get some limited relief against abusers of p2p systems.").


  1. Some type of small claims court or alternate dispute resolution was one of the proposals made as part of the Copyright Office Orphan Works study (pdf)

    "We are sympathetic to the concerns of individual authors about the high cost of litigation and how, in many cases, the individual creator may have little practical recourse in obtaining relief through the court system. We believe that consideration of new procedures to address this situation, such as establishment of a “small claims” or other inexpensive dispute resolution procedure, would be an important issue for further study by Congress." page 27

    The idea was strongly recommended by Professional Photographers of American(PPA) and endorsed in principle by the American Society of Media Photographers (ASMP)

    There was also a March 2006 hearing on Remedies for Small Copyright Claims before the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property.

    If Orphan Works legislation is resurrected we can be sure the proposal will again be put forward

  2. Thanks, David -- that's very interesting information. In case it wasn't clear to everyone from my post, there is currently no such thing as federal small claims court.

    1. Contingency. There are a handful of copyright lawyers in the US that take cases on contingency. I know I doubted it too. But it's real.
      Check attornies in California and Texas. Google it.

  3. There was a big congressional push a couple of years ago trying to open up small claims court for copyright infringement. There were hearings to, if my memory serves. Frankly, I don't see it. I think it could be a good idea, but when statutory damages are what the need for consistenty is too great.

  4. I have to wonder how the analysis would change if the infringer had been an arm of state government, and not a private real estate company (assuming, of course, that the state did not pursue the "nuclear option" of waiving sovereign immunity, thus forcing the issue into federal court)?

    Obviously there may be state laws that prevent a small claims court from exercising jurisdiction over suits against the state, and particularly claims likely dependent upon a state equivalent of the 5th Amendment.

  5. Actually, Boffoli isn't making any claims about copying or displaying (the folks that displayed the image are not part of his claim, and the realtor disputes who made the copy) only that the realtor mis-represented her ownership to a third party, causing Boffoli financial harm.

  6. A few days ago I received a check for the full judgment in this case: $1035. So the question about whether or not this case should have been adjudicated in small claims is probably mute. For $35 in court costs (which I recovered) it seemed a reasonable risk. And my primary motivation was to hold the real estate agent responsible in some way. Causing her the trouble to show up for court and be accountable was half the victory. Winning the case and collecting a judgment was just the gravy.

  7. Good for you, Christopher. I may have to do the same thing. I just discovered an online "research exchange network" is selling my copyrighted thesis as a down loadable pdf for $10 a pop! I wrote them a cease and desist email today as a first step and informed them of my 1987 copyright via Library of Congress. That company didn't even exist in 1987 and the only right I signed was for libraries to obtain a microfilm version--but not for resale!

  8. Way to go, Chris. You did the right thing!! You deserved to win..

  9. Ben, I'm no lawyer but I think you are being a bit simplistic.

    If a photo is stolen is it a copyright issue?

    Copyright infringement is often theft. Intellectual property is property.

    Would if someone stole a framed photo and thumb drive with another photo on it from my house? Is that a federal copyright issue?

    If he takes the said file on the tumb drive, transfer it to a disk of other stolen images and sells or gives this "disk" to another person...

    Is this not the transfer of stolen property?

    There are many many avenues to pursue the theft of intellectual property other than the federal route.


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