United States District Court, S.D. New York
OPINION & ORDER
J. PECK, UNITED STATES MAGISTRATE JUDGE
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.
Spin seeks attorneys' fees against Janik, information
about co-plaintiff Hirsch is relevant to and intertwined with
Spin's fee application.
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.)
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. ¶
"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.)
and Hirsch sued Spin for copyright infringement (id.
¶¶ 19-26) and intentionally removing copyright
management information in violation of the DMCA (id.
Case Is Dismissed
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).
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.)
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
characterized this lawsuit as an example of plaintiffs'
counsel's "[v]exatious [l]itigation
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
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.
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
Case Is Dismissed
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.)
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.)
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
MS. TSYVKIN: Can I dismiss the case?
THE COURT: Yes.
(6/14/17 Conf. Tr. at 14-15.)
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.)
Attorneys' Fees Motion
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.
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
(Dkt. No. 96: Williams Aff. Ex. I: Blackwell Dep. at 118-20.)
Of course, virtually all of this ...