United States District Court, D. Colorado
RECOMMENDATION OF UNITED STATES MAGISTRATE
JUDGE
NINJA
Y. WANG UNITED STATES MAGISTRATE JUDGE
Magistrate
Judge Nina Y. Wang This action comes before this court for
recommendation on the following three issues:
(1) The amount of statutory damages to be awarded to
Plaintiff pursuant to the Order dated January 4, 2019, [#27],
entered by the presiding judge, the Honorable Marcia S.
Krieger;
(2) Plaintiff's Motion for Rule 11 Sanctions, and Points
and Authorities in Support Thereof (“Motion for
Sanctions”) [#26, filed January 4, 2019]; and
(3) Plaintiff's Motion to Exclude Expert Testimony of
Joshua T. Martin (“Motion to Exclude”) [#47,
filed March 29, 2019].
These
matters were referred to this Magistrate Judge pursuant to 28
U.S.C. § 636(b), the Order Referring Case dated August
13, 2018 [#5], and the Memoranda dated February 13, 2019
[#36] and March 29, 2019 [#48]. On March 19, 2019, in
anticipation of an evidentiary hearing on the issue of
statutory damages, this court convened a Status Conference
during which the Parties and the court discussed the
witnesses to be presented, including expert witnesses. [#45].
That same day, Defendants Aerogelic Ballooning, LLC
(“Aerogelic Ballooning”) and Shane Cory
(“Mr. Cory”) (collectively,
“Defendants”) filed a “Motion to Certify
Joshua T. Martin as an Expert Rule 702.”
[#44].[1] The court held an evidentiary hearing on
the issue of statutory damages on March 21, 2019, and
entertained oral argument on the issue as well as the Motion
for Sanctions. [#46]. Being fully apprised of the premises,
this court respectfully RECOMMENDS that
Plaintiff be AWARDED $3, 500 in statutory
damages; that the Motion for Sanctions be
DENIED; and that the Motion to Exclude be
GRANTED IN PART and DENIED IN
PART.[2]
BACKGROUND
Plaintiff
Blaine Harrington III (“Plaintiff” or “Mr.
Harrington”) is a professional photographer, and
initiated this action for copyright infringement on August 9,
2018, based on Defendants' use of a photograph from a hot
air balloon (“Copyrighted Work”) without
permission. [#1]. On September 28, 2018, Defendants filed an
Answer to the Complaint. [#12]. The disputes between the
Parties began almost immediately. After this court set a
Scheduling Conference for October 18, 2018, see
[#7], Plaintiff filed a Motion to Participate in Initial
Scheduling Conference by Telephone (“Motion to Appear
by Telephone”), see [#13]. Defendants
objected, see [#14], and, in the Response,
Defendants articulated several bases for such objection,
including opposing counsel's failure to confer;
Plaintiff's demand of a disproportionate amount of
damages; a delay in providing a proposed Scheduling Order;
“Plaintiff's Counsel is not properly admitted to
this Court”; and “Federal Courts are deluged with
‘Professional Photographer' cases including
pornography cases where alleged artists plant unlabeled
pictures and movies on the internet, then track innocent
downloaders, then attempt to extort thousands of dollars for
an innocent click of a button.” [Id. at 1-2].
Defendants' Response to the Motion to Appear by Telephone
also included a statement that “[d]enying
Plaintiff's ill pled and false Motion may help to defuse
this type of Complaint for the public good.”
[Id. at 2]. Plaintiff then filed a Reply, entitled
“Plaintiff's Response to Defendant's Opposition
to Motion to Participate in Initial Scheduling Conference by
Telephone and Proposed Order, ” in which Plaintiff
sought to rebut Defendants' statements reflected in their
Response. See [#15]. This court granted the Motion
to Appear by Telephone, but converted the Scheduling
Conference to a Status Conference due to the Parties'
failure to submit a proposed Scheduling Order by the deadline
set in its original Minute Order. See [#17]. The
following day, Plaintiff submitted a proposed Scheduling
Order, see [#18], and the court proceeded to
consider scheduling during the Status Conference on October
18, 2018, see [#19].
The
court entered the Scheduling Order on October 18, 2018, with
a number of edits. See [#20]. The Scheduling Order
contained the following deadlines with respect to expert
disclosures: the Parties were required to disclose experts
and comply with Rule 26(a)(2)(B) or (C) for disclosures for
affirmative experts no later than March 1, 2019, rebuttal
experts no later than March 22, 2019, and close expert
discovery on or before April 12, 2019. [Id. at 5].
During the Scheduling Conference, counsel for Defendants
indicated his intent to raise certain defenses. To that end,
Defendants filed “Defendants' Motion for Summary
Judgement [sic]” on October 29, 2018. [#22]. Plaintiff
then filed an Opposition to Motion for Summary Judgment,
[#23], and Defendants filed a Reply, [#24].
On
November 29, 2018, Judge Krieger issued an Opinion and Order
Denying Motion for Summary Judgment. See [#25]. In
it, Judge Krieger not only denied Defendants' Motion for
Summary Judgement, but included an Order to Show Cause as to
“why the Court should not grant summary judgment to Mr.
Harrington on the question of liability on his claim of
copyright infringement, leaving only the question of the
appropriate amount of statutory damages to be addressed in a
future evidentiary hearing.” [Id. at 4-5].
On
January 4, 2019, Plaintiff filed the instant Motion for
Sanctions. [#26]. That same day, having not received any
response to the Order to Show Cause by Defendants, Judge
Krieger entered an Order granting summary judgment in favor
of Plaintiff and setting an evidentiary hearing on the issue
of statutory damages for January 24, 2019. See
[#27]. Defendants then filed a “Motion to Continue
Evidentiary Hearing to February, 2019 or Close the Case,
” [#28], which Judge Krieger granted in part as to the
rescheduling of the evidentiary hearing to January 28, 2019,
and denied in part as to any substantive relief requested by
Defendants. [#29]. Defendants then filed a Second Motion to
Continue on January 16, 2019, [#30], which Judge Krieger
granted the following day, see [#31]. Then, on
January 21, 2019, Plaintiff filed a Motion to Continue the
evidentiary hearing, [#32], which Judge Krieger granted,
vacating the February 4, 2019 hearing, see [#35]. On
February 13, 2019, Judge Krieger referred both the issue of
statutory damages and the Motion for Sanctions to this
Magistrate Judge for Recommendation. [#36].
On
February 21, 2019, this court set the evidentiary hearing as
to the appropriate amount of statutory damages for March 21,
2019. [#38]. The court also set deadlines for submission of
proposed witness and exhibits lists for March 7, 2019, and
for objections to such designations no later than March 14,
2019. [Id.]. On March 7, 2019, Defendants submitted
their proposed witness and exhibit lists. [#39]. On March 8,
2019, Plaintiff submitted his proposed witness and exhibit
lists. [#40]. No. objections were raised or filed by either
party by March 14, 2019.
Nevertheless,
having reviewed the proposed witness and exhibit lists and
finding defense counsel listed as a witness on each
side's witness list, this court convened a Status
Conference on March 19, 2019. [#45]. It was during this
conference that Plaintiff's counsel first raised an issue
with the testimony of either of Defendants' expert
witnesses, Joshua T. Martin and Lewis Brande. [Id.].
This court indicated its intent, given its referral role, to
take testimony from any individual offered as an expert and
then have Plaintiff file a Motion to Exclude no later than
March 29, 2019, with a Response by Defendants filed no later
than April 12, 2019, so that Judge Krieger could have a
complete record to review with any Recommendation and/or
Order. [Id.].
The
Parties appeared for the Evidentiary Hearing on the issue of
statutory damages on March 21, 2019. [#46]. At the hearing,
Plaintiff testified on his own behalf, but did not offer nor
seek to admit any other evidence, including any of the
exhibits listed on his Exhibit List. Compare [#49]
with [#40]. Defendants elicited testimony from Mr.
Cory and Mr. Joshua Martin, and sought to tender Mr. Joshua
Martin as an expert. [#49]. Defendants also offered a series
of exhibits, which did not-in this court's
review-directly correlate to the proposed exhibits listed in
Defendants' Exhibit List. Compare [#46-1 through
#46-16] with [#39 at 2]. The court then allowed the
Parties to make limited argument with respect to both the
issue of statutory damages and the Motion for Sanctions, and
took these matter under advisement for the purposes of this
Recommendation.
Plaintiff
filed the instant Motion to Exclude on March 29, 2019, [#47],
and on April 15, 2019, Defendants filed
“Defendants' Motion to Convert Plaintiff's
Motion to Exclude Expert Testimony of Joshua T. Martin to a
Reply to Defendants' Motion to Certify Joshua T. Martin
as an Expert Rule 702 and Accept this Filing as a Response to
Plaintiff's Reply” (“Defendants' Response
to the Motion to Exclude”).[3] [#50]. Accordingly, these
matters are ripe for Recommendation.
LEGAL
STANDARDS
I.
Copyright Damages
An
infringer of copyright is liable for either the copyright
owner's actual damages or statutory damages under 17
U.S.C. § 504. In his Complaint, Mr. Harrington seeks
only an award of statutory damages, see [#1 at 5],
which Judge Krieger recognized in her Order granting summary
judgment on liability in favor of Plaintiff, see
[#27].
The
Copyright Act provides that statutory damages ordinarily may
be awarded in the sum of not less than $750 or more than $30,
000. 17 U.S.C. § 504(a). However, if the infringer
sustains the burden of proving, and the court finds, that the
infringer was not aware and had no reason to believe that his
or her acts constituted an infringement of copyright, the
court may exercise its discretion to reduce the award of
statutory damages to a sum of not less than $200.
Id. § 504(c)(2). The statute makes clear that
an award of statutory damages is for all infringements
involved in an action, with respect to any one work.
Id. § 504(c)(1) (emphasis added). Put another
way, “[a] single infringer of a single work is liable
for a single amount [now between $200 and $150, 000],
[4] no
matter how many acts of infringement are involved in the
action and regardless of whether the acts were separate,
isolated, or occurred in a related series.” Melville B.
Nimmer et al., Nimmer on Copyright, 14-135 §
14.04[E][2][a][i] (quoting H. Rep. p. 162
and 17 U.S.C. § 504(c)(1)).
As
noted by Judge Krieger in her Order Denying Summary Judgment,
“[t]he question of the appropriate amount of statutory
damages to award involves consideration of a wide array of
factors by the Court, from the degree of willfulness or
inadvertence by the infringer to the deterrent purposes of
the Copyright Act and the typical license fees charged for
the use of the work.” [#25 at 4 (citing Girlsongs
v. 609 Industries, Inc., 625 F.Supp.2d 1127, 1130-31 (D.
Colo. 2008))]. Other factors include “the expenses
saved, and profits earned, by the infringer, ” and
“the revenue lost by the copyright holder.”
Bryant v. Media Right Prod. Inc., 603 F.3d 135, 144
(2d Cir. 2010). These last two factors allow the court to
account for the extent of infringement. Arista Records
LLC v. Lime Group LLC, 784 F.Supp.2d 313, 317 (S.D.N.Y.
2011).
II.
Rule 11 of the Federal Rules of Civil Procedure
Plaintiff
moves for sanctions pursuant to Rule 11 of the Federal Rules
of Civil Procedure. Rule 11(b) provides that:
Representations to the Court. By presenting to the court a
pleading, written motion, or other paper-whether by signing,
filing, submitting, or later advocating it-an attorney or
unrepresented party certifies that to the best of the
person's knowledge, information, and belief, formed after
an inquiry reasonable under the circumstances:
(1) it is not being presented for any improper purpose, such
as to harass, cause unnecessary delay, or needlessly increase
the cost of litigation;
(2) the claims, defenses, and other legal contentions are
warranted by existing law or by a nonfrivolous argument for
extending, modifying, or reversing existing law or for
establishing new law;
(3) the factual contentions have evidentiary support or, if
specifically so identified, will likely have evidentiary
support after a reasonable opportunity for further
investigation or discovery; and
(4) the denials of factual contentions are warranted on the
evidence or, if specifically so identified, are reasonably
based on belief or a lack of information.
The
Rule (and this District's Local Rules of Civil Practice)
specify procedures for a motion for sanctions, as well as
limitations on the nature of any sanctions. First, a motion
for sanctions under Rule 11 must be served under Rule 5 of
the Federal Rules of Civil Procedure, but it must not be
filed or be presented to the court if the challenged paper,
claim, defense, contention, or denial is withdrawn or
appropriately corrected within 21 days after service or
within another time that the court sets. Fed.R.Civ.P.
11(c)(2). See also Kazazian v. Emergency Serv.
Physicians, P.C., 300 F.R.D. 672, 677 (D. Colo.
2014) (quoting Fed.R.Civ.P. 11(c)(2)). In addition, Local
Rule 54.3 requires the movant to support the motion by
affidavit, and the contents of the motion must include a
summary of the relevant qualifications and experience for
each attorney seeking fees, as well as a detailed description
of the services rendered, the amount of time spent, the
hourly rate charged, and the total amount sought.
See D.C.COLO.LCivR 54.3(a), (b). Second, a sanction
imposed under Rule 11 must be limited to what suffices to
deter repetition of the conduct or comparable conduct by
others similarly situated. Fed.R.Civ.P. 11(c)(4). In
addition, a court may not impose monetary sanctions against a
represented party for violation Rule 11(b)(2). Fed.R.Civ.P.
11(c)(5).
III.
Experts
A.
Required Disclosures
Affirmative
experts as contemplated by the District of Colorado's
form Scheduling Order are typically experts designated by a
party who bears the burden of proof on an issue. See
Anderson v. Seven Falls Co., Civil Action No.
12-cv-01490-RM-CBS, 2013 WL 3771300, *6 (D. Colo. July 18,
2013) (citing Advisory Comm. Notes to 1993 Amendments to
Fed.R.Civ.P. 26). Rebuttal witnesses are those who are
“intended solely to contradict or rebut evidence on the
same subject matter identified” by affirmative experts.
Fed.R.Civ.P. 26(a)(2)(D)(ii); E.E.O.C. v. JBS USA,
Inc., No. 10-cv-02103-PAB-KLM, 2013 WL 3302429, at *6
(D. Colo. July 1, 2013). Specially-retained experts are
required to provide written reports that reflect a complete
statement of all opinions the witness will express and the
basis and reasons for them, the facts or data considered by
the witness in forming them, any exhibits that will be used
to summarize or support them, the witness's
qualifications, including a list of all publications authored
in the previous 10 years, and a statement of the compensation
to be paid for the study and testimony in the case.
Fed.R.Civ.P. 26(a)(2)(B). An expert witness who is not
specially-retained for the purpose of trial is still required
to make a disclosure of the subject matter on which the
witness is expected to present evidence un Federal Rule of
Evidence 702, 703, or 705, and a summary of the facts and
opinions to which the witness is expected to testify to.
Fed.R.Civ.P. 26(a)(2)(C).
Failure
to disclose, or to properly provide information required by
Rule 26(a), is subject to Rule 37(c) of the Federal Rules of
Civil Procedure. Under Rule 37(c), a party is not permitted
to use that information or witness to supply evidence on a
motion, at a hearing, or at a trial, unless the failure was
substantially justified or is harmless. Fed.R.Civ.P. 37(c).
In addition to or instead of preclusion, the court may impose
other sanctions upon motion and after giving opportunity to
be heard. Id.
B.
Substantive
Requirements Under the ...