Artist Left with Heavy Fees by Copyright Troll Law Firm
Artist Left with Heavy Fees by Copyright Troll Law Firm
Facts of the Case & Fair Use
On September 18, the 5th Circuit decided in Keck v. Mix Creative Learning Center that using copyrighted artwork to teach children how to make art in a similar style does not constitute copyright infringement. The case adds to the well-developed jurisprudence that teaching with copyrighted materials is often protected by fair use.
This case was initially filed in 2021 by plaintiff’s counsel, Mathew Kidman Higbee, a known and prolific copyright litigation firm sometimes accused of troll-like behavior. During the pandemic, the defendant sold a total of six art kits (out of the six kits sold, two were purchased by the plaintiff) that included images of the plaintiff's dog-themed artworks, biographical information, and details on her artistic styles. Additionally, the kit included paint, paintbrushes, and collage paper. The plaintiff’s side argued that including the artworks in teaching kits constituted willful copyright infringement and therefore demanded $900,000 in damages—to make up for the $250 the defendant made in sales.
The district court dismissed all infringement claims in 2022; and last month, the 5th Circuit court affirmed that including copies of plaintiff’s artwork in a teaching kit is fair use.
The courts found the first and fourth fair use factors to favor the defendant. Under the first factor, even though the defendant’s use was commercial in nature, by accompanying the artworks with art theory and history, the teaching kit transformed the original decorative purpose of the dog-themed artworks. The 5th Circuit distinguished this case from Warhol by pointing out that, in the Warhol case, the infringing use served the same illustrative purpose as the original work, while in this case, “the art kits had educational objectives, while the original works had aesthetic or decorative objectives.”
Under the fourth factor, courts explained that they cannot imagine how the market value of plaintiff’s dog-themed artworks could decrease when included in children’s art lesson kits. The 5th Circuit Court further pointed out that there was no evidence that a market for licensing artworks for similar teaching kits exists now or is ever likely to develop.
Because these “two most important” factors favored the defendant, the defendant's use was fair use.
Fee Shifting: Plaintiffs Beware of Copyright Troll Law Firms!
The final outcome of the case: the plaintiff was ordered to cover $102,404 in fees and $165.72 in costs for the defendant.
Even though we are happy for the defendant and her counsel that, after a prolonged legal battle, this well-deserved victory is finally won, it is nevertheless disheartening to see the plaintiff-artist left alone in the end to face the high legal fees of this ill-conceived lawsuit. The plaintiff’s counsel not only failed to advise the plaintiff to act in her own best interest (whether it is to settle the case at the right moment or to pursue more plausible claims), but also conjured up willful infringement claims that were clearly meritless to any trained eye. Even the 5th Circuit Court lamented over this in its opinion, as it begrudgingly upheld the district court’s decision based on the abuse of discretion standard it must follow:
It is troubling that Keck alone will be liable for the high fees incurred by Defendants largely because of Higbee & Associates’ overly aggressive litigation strategy. From our review of the record, the law firm lacked a firm evidentiary basis to pursue hundreds of thousands of dollars in statutory damages against Defendants for willful infringement. Nevertheless, we cannot say, on an abuse of discretion standard, that the district court erred by determining that there was insufficient evidence that the firm’s conduct was both unreasonable and vexatious. … But we warn Higbee & Associates that future conduct of this nature may well warrant sanctions, and nothing in this opinion prevents Higbee & Associates from compensating its client, if appropriate, for the fees that she is now obliged to pay Defendants.
This should serve as a cautionary tale for would-be plaintiffs: copyright lawsuits, like any other type of litigation, are primarily meant to address the damages plaintiffs actually suffered, and the final settlement should make plaintiffs whole again—that is, as if no infringement has ever occurred. Copyright lawsuits (or the threat to sue) should not be undertaken as a way to create brand new income streams, such as was the case in the lawsuit described above.
When someone aggressively enforces dubious copyright claims with the sole purpose of collecting exorbitant fees rather than protecting any underlying copyrights, they are called a “copyright troll.” Regrettably, beyond the disreputable law firms that are enthused to pursue aggressive claims, many services now exist to tempt creators into troll-like behavior by promising “new licensing income.” The true aim of these services is solely to collect high representation charges from creators, when users of the creators’ works are harassed into paying exorbitant settlements. Many victims often agree to pay just for the nuisance to stop. This predatory business model has been repeatedly exposed by creators and authors, including famously by Cory Doctorow.
Needless to say, copyright trolls are harmful to the copyright ecosystem. Obviously, innocent users are harmed when slapped with unreasonable demand letters or even frivolous lawsuits. Worse, creators are misled into supporting this unethical practice while deluded into believing they are doggedly following the spirit of the law—sometimes, as was in this case, they are left to face the inevitable consequences of bringing a frivolous lawsuit, while the lawyer or agent that originally led them into the mire gets off free, upward and onward to their next “representation.”
It was very unfortunate that the district court did not fully study the plaintiff’s counsel’s track record and issue appropriate disciplinary orders against him. The problem of copyright trolls will have to be addressed soon in order to preserve a healthy copyright system.