A recent Law 360 story by Tiffany Hu, “2nd Circ. Urged to Undo Fee Denial in Instagram Picture Fight”, reports that the Second Circuit was urged to overturn a New York federal judge's refusal to award attorney fees to a sports publication that beat a copyright infringement lawsuit over an Instagram image of former professional tennis player Caroline Wozniacki. In a 23-page brief, United Sports Publications Ltd. said that U.S. District Judge Allyne R. Ross applied the wrong standard for determining whether photographer Michael Barrett Boesen's litigation claim was objectively reasonable and warranted attorney fees.
Boesen had accused United of infringing his copyrighted image when it embedded an Instagram post from Wozniacki that featured the photo, but the judge in November found that the news site was protected by copyright law's fair use doctrine, though she declined to grant United's request for fees. Under the U.S. Supreme Court's Kirtsaeng v. Wiley ruling on when courts should grant attorney fees in copyright cases, Judge Ross should have analyzed whether Boesen's claim was unreasonable "in light of an obvious instance of fair use," United Sports said.
Instead, the judge improperly focused on the reasonableness of the underlying merits of the infringement, when those claims were "never briefed and were not before the court" on United's motion to dismiss. In doing so, the judge conflated the arguments made in Kirtsaeng, it said. "[W]hile it is possible that the factual circumstances of the underlying case may be unique in light of the ever-changing nature of social media and proliferation of embedding, the legal arguments presented to the court by the parties were focused on the issue of fair use, and the court's inquiry of the relative reasonableness of Boesen's litigation position ought to have ended there," United wrote in its brief.
Moish Pelz of Falcon Rappaport & Berkman PLLC told Law360 in an email that he and his client "believe that the legal and factual circumstances of this case are exactly the type that the Supreme Court has commanded deserve an award of [attorney] fees." "If the Second Circuit were to affirm a denial of fees in this instance it is difficult to imagine a case where a successful defense of a copyright troll case on the pleadings would be awarded fees," Pelz said. "District courts simply need to award attorney's fee awards in circumstances like these so successful copyright troll defendants are able to fight fire with fire."