Unauthorized use: Photographer can seek actual damages

A photographer who sued for unauthorized use of his photograph of a landmark University of Virginia building can seek actual damages on his copyright infringement claim.

Senior U.S. District Judge Norman K. Moon noted the photographer didn’t disclose his actual damages in his Rule 26 disclosures, but the defendant was aware the photographer was seeking such damages, had information regarding such damages well before trial and could not show it was prejudiced.

“Given the circumstances of this case, statutory damages and attorney’s fees are not available to [plaintiff] on his copyright infringement claim, but he is entitled to seek actual damages,” Moon wrote.

Moon authored the opinion in Proimos v. Marotta Wealth Management Inc. (023-3-089) for the U.S. District Court for the Western District of Virginia, Charlottesville Division.

Background

This copyright infringement matter stems from a photograph that Australian commercial photographer Alex Proimos took of the Rotunda at the University of Virginia.

Proimos published the photograph on Flickr.com, a website photographers use to showcase their work, sometime between June 2011 and September 2013.

Marotta Wealth Management used the photograph in a blog post on its website in December 2019. Later that month, Proimos registered the photograph with the copyright office and made several demands to Marotta Wealth Management to remove the photograph from its website.

In May 2022, Proimos filed suit against Marotta Wealth Management, alleging copyright infringement.

Cross motions for summary judgment were filed by the parties in December 2022, with the defendant seeking a ruling that Proimos “is barred from recovering statutory damages (and a reasonable attorney’s fee), as well as actual damages.”

‘Southern States’ factors

Moon evaluated the issues individually, beginning with statutory damages or reasonable attorneys’ fees. Proimos acknowledged neither were available here.

The photograph was published on Flickr.com “no later than 2013” and Marotta Wealth Management began using the photograph before Proimos registered the photograph with the copyright office.

“Therefore, because Defendant first commenced his use of the Photograph years after its first publication and before the date of its registration, and because such registration was not ‘made within three months after the first publication of the work,’ statutory damages and attorney’s fees are not available to Plaintiff,” Moon wrote.

Actual damages, however, was a different matter.

“There is no dispute that Proimos’ Rule 26(a)(1)(A)(iii) disclosures did not contain any computation of actual damages claimed by Proimos, nor did they include documents, materials or information upon which Proimos’ actual damages claim is now based,” Moon noted.

Rather, Proimos’ disclosures provided to Marotta in July 2022 merely stated statutory damages sought in the action.

The judge then considered the Southern States factors and whether the nondisclosure of Proimos’ actual damages calculation and evidence was “substantially justified or harmless.”

“Even though Proimos’ disclosures should have provided information about calculation of actual damages, the record in this case demonstrates that there was little, if any, surprise to Marotta, by either Proimos’ demand for actual damages or the evidence supporting actual damages,” Moon wrote. “Indeed, it was clear from the outset of the case that Proimos sought an award of ‘actual and/or statutory damages for Defendant’s copyright infringement in an amount to be determined at trial.’”

“The record in this case demonstrates that there was little, if any, surprise to Marotta, by either Proimos’ demand for actual damages or the evidence supporting actual damages. Indeed, it was clear from the outset of the case that Proimos sought an award of ‘actual and/or statutory damages for Defendant’s copyright infringement in an amount to be determined at trial.”

— Senior U.S. District Judge Norman K. Moon

Proimos’ counsel also provided the range for license fees of the photograph was communicated to Marotta 26 days prior to the close of discovery, adding that that figure was used in Proimos’ motion for summary judgment to calculate the actual damages sought.

“[N]otwithstanding Proimos’ failure to reference actual damages or the basis for its calculation thereof in his initial disclosures, Marotta can claim little if any surprise by Proimos’ request for actual damages at this time or the basis for such damages,” Moon wrote.

The second Southern States factor — dealing with the ability to cure — also weighed in Proimos’ favor.

“Marotta should have long had a copy of the apparently one exhibit Proimos intends to introduce on the issue of actual damages,” Moon wrote. “Proimos identified that exhibit well in advance of trial in his pre-trial disclosures — filed just over three weeks before trial.”

The judge noted the third and fourth Southern States factors — “the extent to which allowing the evidence would disrupt the trial” and “the importance of the evidence” — were crucial for Proimos.

“Without the availability of statutory damages in this case, Proimos’ ability to present evidence of actual damages is the only way he may secure monetary relief should Marotta be found liable,” Moon wrote. “While evidence of actual damages appears discrete and relatively limited in scope, it is quite important to Proimos’ case, without which he would secure at most nominal damages.”

While the final Southern States factor, dealing with the “non-disclosing party’s explanation for its failure to disclose the evidence,” weighed in Marotta’s favor, evaluating all the factors led the court to conclude that Proimos’s failure to provide the calculations in his disclosure was “harmless.”

As such, Moon denied that portion of Marotta’s summary judgment motion, allowing claims for actual damages to proceed.

Coda

According to court records, Moon denied Proimos’ motion for summary judgment two days after the case was referred to mediation before U.S. Magistrate Judge Joel C. Hoppe. The case ultimately settled and was dismissed with prejudice prior to a scheduled jury trial.