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Janik v. SMG Media, Inc.

United States District Court, S.D. New York

January 10, 2018

SMG MEDIA, INC., Defendant.

          OPINION & ORDER


         Plaintiffs Fran Janik and Steven Hirsch brought this action against defendant SMG Media, Inc. ("Spin") alleging copyright violations under Section 501 of the Copyright Act and Section 1202(b) of the Digital Millennium Copyright Act ("DMCA"). (See generally Dkt. No. 26: Am. Compl.) Both plaintiffs voluntarily dismissed their separate claims. (Dkt. Nos. 56, 69.) Presently before the Court is Spin's motion for attorneys' fees and costs as the "prevailing party" under the Copyright Act and DMCA solely against Janik. (Dkt. No. 94.) For the reasons set forth below, Spin's attorneys' fees motion (Dkt. No. 94) is DENIED.


         The Amended Complaint

         While Spin seeks attorneys' fees against Janik, information about co-plaintiff Hirsch is relevant to and intertwined with Spin's fee application.

         Janik and Hirsch are professional photojournalists "in the business of licensing [their] photographs to online, print, and television stations for a fee." (Dkt. No. 26: Am. Compl. ¶¶ 5-6.)

         "In the 1980's Janik photographed the owner of Spin Magazine, Bob Guccione Jr., the eldest son of Penthouse magazine founder Bob Guccione" ("the Guccione Photograph"). (Id. ¶ 8 & Ex. A.) "Janik is the author of the [Guccione] Photograph and has at all times been the sole owner of all right, title and interest in and to the [Guccione] Photograph, including the copyright thereto." (Am. Compl. ¶ 9.) Janik's December 16, 2015 copyright registration for the Guccione Photograph lists the year of completion as 1985. (Dkt. No. 96: Williams Aff. Ex. C: 12/16/15 Registration at 1.) On April 19, 2010 and June 26, 2015, some 25 and 30 years later, respectively, Spin published two online articles that "prominently featured" the Guccione Photograph. (Am. Compl. ¶ 15 & Ex. D.) Spin did not license the Guccione Photograph from Janik, or otherwise have Janik's permission to publish it in the articles. (Am. Compl. ¶ 16.)

         On "February 16, 2016, Hirsch photographed Brandon Kiehm who was accused of stealing thousands of dollars from a woman he met on Tinder" ("the Kiehm Photograph"). (Id. ¶ 11 & Ex. B.) "Hirsch is the author of the [Kiehm] Photograph and has at all times been the sole owner of all right, title and interest in and to the [Kiehm] Photograph, including the copyright thereto." (Am. Compl. ¶ 13; see also id. ¶ 14.) On February 16, 2016, Hirsch licensed the Kiehm Photograph to the New York Post, which published it in an article the same day. (Id. ¶ 12 & Ex. C.) "Hirsch's name was featured in a gutter credit identifying him as the photographer of the [Kiehm] Photograph." (Am. Compl. ¶ 12.) On February 18, 2016, Spin published an article that "prominently featured the Kiehm Photograph." (Id. ¶ 17.) Spin did not license the Kiehm Photograph from Hirsch, or otherwise have Hirsch's permission to publish it. (Id. ¶ 18.)

         Janik and Hirsch sued Spin for copyright infringement (id. ¶¶ 19-26) and intentionally removing copyright management information in violation of the DMCA (id. ¶¶ 27-33).

         Janik's Case Is Dismissed

         At a discovery conference on May 15, 2017, plaintiffs' counsel stated that Janik was "permanently disabled" and lived in Vermont, and as a result could not physically appear for his previously scheduled deposition. (Dkt. No. 64: 5/15/17 Conf. Tr. at 13-14.) Plaintiffs' counsel further stated that Hirsch was unavailable for his previously scheduled deposition because he was traveling. (Id. at 14-15.) I responded that plaintiffs chose to sue in the Southern District of New York and must appear for deposition here (id. at 13-14), so-ordered deposition dates for Janik and Hirsch on May 17 and 19, 2017, respectively, and warned that failure to appear could result in a case dispositive sanction (id. at 15).

         On May 16, 2017, plaintiffs' counsel wrote the Court seeking "leave to file a dismissal without prejudice pursuant to Fed.R.Civ.P. Rule 41(a)(2), " "[i]n light of the developments at the discovery conference[] held on May 15, 2017." (Dkt. No. 44: 5/16/17 Letter at 1.) Plaintiffs' counsel explained:

In that conference, the Court ordered Plaintiffs Fran Janik and Steven Hirsch to appear in person for a deposition to be held on May 17 and May 19, 2017, respectively. As Plaintiff's counsel already explained, Plaintiff Janik cannot be present in New York for a deposition on the date in question due to medical reasons. Plaintiff Hirsch has recent and pressing personal commitments that will make him unavailable on the date of the deposition. Plaintiffs take their discovery obligations seriously and would like t[he] opportunity to fulfill their responsibilities before the Court. Therefore, we would like to take the Court's recommendation to dismiss the case.

(Id.) Plaintiffs' counsel reiterated that Janik-"a permanently disabled Plaintiff located in Vermont"-"would like the opportunity to reconsider his chosen forum if he is to be physically present at a deposition and other appearances." (Id. at 2.) Hirsch also desired "the opportunity to refile the case because he cannot be physically present at his deposition." (Id.) Plaintiffs' counsel disingenuously added: "[D]iscovery has just begun. We have exchanged some documents and interrogatories but there have been no depositions and no trial preparation, therefore the Defendant's effort and expense have been minimal." (Id. at 3.)

         On May 17, 2017, Spin opposed the motion, arguing that "Plaintiffs did not inform Defense counsel of Janik's purported disability until May 15, 2017 - two days before the scheduled deposition. The deposition was noticed on April 19, 2017, " and Janik did not object to the date or location at that time. (Dkt. No. 46: 5/17/17 Letter at 2.) Spin further argued that Hirsch's personal commitments could not excuse his presence at a court-ordered deposition. (Id.)

         Spin characterized this lawsuit as an example of plaintiffs' counsel's "[v]exatious [l]itigation [c]ampaign":

Plaintiffs' lawsuit is part of a mass-litigation campaign orchestrated by their counsel [the Liebowitz Law Firm]. His law firm has filed approximately 250 similar, low value, cases in this district alone. It appears that his litigation strategy is to threaten defendants with the expenses and burdens of discovery and litigation in order to force them to consider unreasonable settlement demands. However, when it comes time for his clients to produce discovery, sit for depositions and truly invest in the case, they would prefer to withdraw their claims while holding onto the ability to re-file them if their settlement demands are not met.

(Id. at 3.) Spin claimed that discovery was "on the edge of completion" and that dispositive motions were "only a few weeks away." (Id.) Spin argued that it would be unjust to permit plaintiffs to dismiss their case without prejudice, as it would deprive Spin of its chance to pursue attorneys' fees as the prevailing party under the Copyright Act and expose it to further lawsuits on the same claims. (Id.) As such, Spin argued, "[a] default judgment under Rule 37 or dismissal with prejudice under Rule 41(b) is a more appropriate way to resolve this case." (5/17/17 Letter at 3.)

         On May 23, 2017, I held a conference to deal with plaintiffs' application, and stated my preliminary view that "the choice is a dismissal with prejudice or getting Mr. Janik and Mr. Hirsch in ASAP for their depositions." (Dkt. No. 82: 5/23/17 Conf. Tr. at 2.) As to Hirsch, plaintiffs' counsel stated they were "definitely capable of producing" him for a deposition. (Id. at 6, 9.) However, plaintiffs' counsel indicated that Janik could not appear here for his deposition under any circumstances due to health issues. (Id. at 9-10.) I adhered to my view that Janik could "[d]ismiss or show up for deposition." (Id. at 10.) I instructed plaintiffs' counsel: "[Y]ou have until close of business tomorrow to file a notice of dismissal with prejudice, and I will grant that. And if you do that for Janik and Hirsch shows, then that's the way you want to proceed, I don't have a problem with that." (Id. at 12.) Alternatively, I ordered that Janik and Hirsch would be deposed in New York on May 31 and June 1, respectively, in the event they chose to pursue this case. (Id.)

         On May 24, 2017, plaintiffs' counsel filed a letter motion requesting a with-prejudice dismissal of Janik's claims against Spin. (Dkt. No. 55: 5/24/17 Letter.) Plaintiffs' counsel stated that they would, "however, produce Plaintiff Hirsch for a deposition on June 1, 2017 as ordered and hence are not dismissing his claim against the Defendant." (Id.) I granted Janik's motion that day and dismissed his claims against Spin with prejudice. (Dkt. No. 56.) The Clerk of Court entered partial judgment against Janik on May 31, 2017. (Dkt. No. 57: 5/31/17 Judgment.)

         Hirsch's Case Is Dismissed

         On June 7, 2017, Spin wrote a letter stating that, although plaintiffs were ordered on May 8, 2017 to produce all requested documents by May 12, 2017 (see Dkt. No. 51: 5/8/17 Conf. Tr. at 5), "Hirsch testified [at his June 1, 2017 deposition] that he did not attempt to locate the documents and was not even aware of the Court's order" (Dkt. No. 63: 6/7/17 Letter at 1). According to Spin, "Mr. Hirsch also testified that he intentionally deleted and failed to preserve electronically stored information that was highly relevant to this case." (Id.) Hirsch further "testified that even though he had signed his interrogatory responses, he did not fully read them." (Id. at 2 n.3.) Spin requested a default judgment and monetary sanctions. (Id. at 1, 3.)

         At a conference on June 14, 2017, I stated that Hirsch had been ordered "to comply with the document requests by a fixed date" and that "[h]e clearly did not do that" based on his deposition testimony. (Dkt. No. 84: 6/14/17 Conf. Tr. at 2.) I further noted that Hirsch "didn't even read the interrogatory answers that he signed, " and "[h]e deleted e-mails during the pendency of the litigation or while litigation was anticipated." (Id. at 3-4.) As a sanction, I ordered plaintiff to pay Spin's attorneys' fees related to the Hirsch deposition; when asked for a figure, Spin's counsel responded: "What I had asked for in the letter was not just the cost of the deposition, but also preparing various letters and attending various conferences which I have calculated." (Id. at 11.)

         Spin's counsel stated that "[t]he total number between May 13 and today dealing with these particular specific issues, which only includes half the time for the deposition, is something over $15, 000." (Id.) Plaintiffs' counsel responded that the sanction requested was "very onerous"; I responded: "Dismiss the case if you wish and I won't impose any financial sanctions." (Id. at 12.) Spin's counsel also stated that, in addition to the fees incurred defending against Hirsch's claims, he sought fees for Janik's failure to appear at his deposition. (Id. at 13; see also 6/7/17 Letter at 3 n.6.) I had the following colloquy with counsel:

MR. WILLIAMS [Spin's counsel]: . . . . I would just say that the number I gave, the $15, 000 number was specific to Mr. Hirsch. If you include the deposition and prep time for Mr. Janik, that is another $4, 820.00. . . . .
THE COURT: Monty Hall, "Let's Make a Deal, " [is] $10, 000.00, satisfactory to both sides?
MR. WILLIAMS: Yes, your Honor, I will accept the $10, 000.00.
THE COURT: Satisfactory?
MS. TSYVKIN [plaintiffs' counsel]: I have no choice.
THE COURT: You have the choice of making him make a motion, at which point it will probably be 15, 000 plus the cost of the motion.
MS. TSYVKIN: Can I dismiss the case?

(6/14/17 Conf. Tr. at 14-15.)

         Plaintiffs' counsel dismissed Hirsch's case with prejudice. (Id. at 15; see also Dkt. No. 69: 6/14/17 Consent Order of Dismissal.) I concluded the conference by stating: "[C]ase dismissed with prejudice. The only remaining costs is your firm [i.e., plaintiffs' counsel] is paying for this transcript." (6/14/17 Conf. Tr. at 15.)

         Spin's Attorneys' Fees Motion

         Following dismissal, Spin moved for attorneys' fees and costs as the prevailing party under the Copyright Act and DMCA. (Dkt. No. 74.) The Court denied fees as to Hirsch in its discretion, noting that "[i]mplicit in today's conf. & decisions was that plaintiffs were avoiding all fees by dismissing with prejudice." (Dkt. No. 78.) Spin renewed its motion for fees as to Janik. (Dkt. No. 94; see also Dkt. No. 95: Spin Br. at 18.) The parties' briefs and exhibits provide useful background information regarding Janik's relationship with Spin, the Guccione Photograph and this lawsuit.

         Spin's 30(b)(6) witness described the origin of the Guccione Photograph as he understood it:

Bob [Guccione] recounted a story where Janik was in his office that was around 1985 or 1984, and Janik at that time was working for Spin. Whether or not he was an [full-time employee] ¶ 1099 contractor I'm unclear on but he was given the title Director of Photography. It's on Google Books, I haven't looked at this anyone could look at the mas[t] head and see if his name is on there. I also looked back into Spin's history that I have. We only went as far back as 2007. So he took this photograph obviously at this point in time there was no digital photography, obviously Bob took the photograph and came back a couple of days later and gave it to him. The photograph that Bob has said you know he has had it I don't know how the photograph became digitized. I can't speak to that. I also don't know if Bob signed a release for this photograph as a subject. So that would also so I don't have a ton of line of sight into it. His interpretation of it, he was given the photograph and was able to use as he saw fit. As an employer of Janik, [full-time employee] ¶ 1099 contractor, Janik was working for Spin and working for Spin with a lot of regularity. I think from there Bob mentioned that he had done an interview for New York Mag in 2005, that's the 20th anniversary of Spin and he seems to think that New York Mag used that photograph then his opinion was more or less that the photograph has been used in a couple of different capacities. What his recount is the photograph was Janik coming in, taking it of him, printing it up and handing it to him that's all I know about it. . . . Aside from the 2010 usage from the photograph and print he also thinks it was used in the section of the magazine called Top Spin back in the 80's. I haven't gone into Goggle Books to see around it's not my place. So you know the photograph, you know has a thirty-two year history, the subject of the photograph and the photographer seem to appear to have different opinions on how the photograph was to be used.

(Dkt. No. 96: Williams Aff. Ex. I: Blackwell Dep. at 118-20.) Of course, virtually all of this ...

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