Consolation Prize: Barcroft Media and the Case for a Copyright Small Claims Court

• Author: Walter G. Lehmann
• Position: Walter G. Lehmann is managing partner of the art, entertainment,and museum law firm Lehmann PLC (formerly Lehmann Strobel PC),where he has advised creative professionals and cultural institutionson intellectual property issues including copyright fair use for morethan 20 years. He can be reached at walt@lehmannplc.com.
• Pages: 39-43

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©2019. Published in Landslide®, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or

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Consolation Prize

Barcroft Media and the Case for

a Copyright Small Claims Court

By Walter G. Lehmann

Imagine you have a client who is in the business of licensing photos of Hollywood celebri-

ties. She discovers that a company that runs celebrity gossip and entertainment websites is

using her photos without paying her a licensing fee or otherwise getting her permission. She

asks you to help her enforce her copyrights. You send a cease and desist letter and attempt

to negotiate a licensing agreement that includes a retroactive licensing fee. After lengthy

negotiations, the infringer deletes the infringing photos from its websites but refuses to

compensate your client for illegally using the photos. Reluctantly you le a lawsuit—in federal

court, of course, because this is a copyright claim after all—and you incur considerable time and

expense prosecuting it. When you nally get to court, the judge summarily rejects the infringer’s

fair use defense and awards your client a reasonable licensing fee. You’ve won the case—time to

pop open the champagne, right? But wait, the total award is barely more than the $10,000 maxi-

mum typically allowed in a conciliation court case. And while the judge allows you to submit a

request for attorney fees, she is skeptical that you will be able to demonstrate that you are entitled

to them. Discouraged, the next time your client calls about enforcing her copyrights, you tell her

that you are sorry but there is really very little you can do to help her.

This is essentially what happened in Barcroft Media, Ltd. v. Coed Media Group, LLC.1 The case

illustrates a frustrating reality of current copyright practice. While the threat of litigation can often

be an effective way to get a defendant to settle a dispute, in the world of copyrights this is not usu-

ally the case. Because the costs of bringing an infringement claim very often far exceed the likely

damage award, such threats are frequently ignored. Sending a cease and desist letter can be effec-

tive in getting an infringer to stop the infringing use (by taking down a photo from a website, for

example), but it is next to impossible to get an uncooperative infringer to voluntarily agree to com-

pensate the copyright owner for that infringing use, much less reimburse the costs of enforcing the

copyright owner’s rights. As a result, copyright owners are forced to play “whack-a-mole” against

infringing users at their own considerable expense, or simply give up on enforcing their copyrights.

The facts of Barcroft and the court’s ruling in that case clearly illustrate the problem.

One possible solution is to establish a “small claims” court to adjudicate low-value, uncom-

plicated copyright infringement claims in a more efcient and cost-effective manner. A copyright

small claims court would help to level the playing eld and correct the imbalance in negotiating

power between copyright owners and users, making fair settlements more likely. Barcroft makes a

compelling case for the creation of a small claims court—or some other form of alternate dispute

resolution—to handle straightforward copyright infringement cases.