Higbee Threatens Copyright Enforcement of Stale Claims (and Other Turns for the Worse)

Over the past few years, since I started to pay attention to copyright infringement demand letters  sent by the law firm of Mathew Higbee, and after we filed a few declaratory judgment actions on behalf of discussion forums whose users had posted images or inline links to images, I thought I had perceived an improvement in the Higbee firm’s practices. The firm stopped sending demand letters to forum hosts, and the amount of damages being demanded in the opening letter was lowered so that the demands were no longer outlandish. Indeed, some letters did not even specify an amount; the purpose appeared to be to open a discussion.

Because I have written a few articles about his trolling practices, I frequently hear from the targets of his demand letters, and for a period of time, I was finding that almost all of them had no serious defenses, and that the only real question was, what was their financial exposure. So I would usually tell them to ask for the copyright registration to make sure that the copyright was registered timely; with that knowledge they could figure out their likely exposure and negotiate a resolution. And I have routinely said, I don’t lack sympathy for photographers whose business model has been hurt by the readiness of too many people to use their creative works without paying for a license.

Long-Outdated Infringement Claims

More recently, I have focused on the fact that, like CopyCat Legal, representing the former Higbee client Prepared Food Photos a/k/a/ AdLife Marketing, the Higbee firm has been showing a persistent tendency to send demand letters claiming infringements that allegedly took place several years ago, even a decade ago or more.

Evading the statute of limitations of three years, the contention is that the copyright owners only discovered the infringement in recent months by running reverse image searches. But there is no reason why those image searches could not have been conducted years ago. And, in fact, the Higbee firm has been running reverse image searches for a decade or more – in this 2019 interview, Mathew Higbee described the growth of his copyright infringement practice from 2009 to 2014, using reverse image searches, and a 2015 demand letter discussed here  reflects the use of reverse image search technology. Moreover, the alleged infringements on which the Higbee demand letters are based took place openly on the internet, implicating the single publication rule  under which courts generally hold that the statute of limitations for claims sounding in tort runs from the date of first publication, and does not begin anew simply because the publication remains online to be seen by new viewers.

The so-called “discovery rule”  can be used to avoid limitations defenses when a plaintiff not only did not discover, but also could not reasonably have discovered, a violation of its rights; courts generally hold that the discovery rule applies to copyright cases (a recent amicus brief urges the Supreme Court to reject this line of cases).  But as my letter explains, outside the copyright area, courts refuse to recognize the discovery rule when a publication was on the mass media or a generally available location online. There is no reason why this principle should not equally hold when copyright plaintiffs invoke the discovery rule.

Indeed, some judges have begun refusing to allow “seasoned litigators” of copyright infringement claims (a polite euphemism for copyright trolls). After all, given that they run reverse image searches as part of their practices, there is no excuse for not having located a given alleged infringement until several years after it began.

As a result, citing cases expounding these two lines of authority, we have recently responded to the Higbee firms on behalf of several targets of its infringement claims over long-ago uses– Renee Ellory, a blogger who interprets images to assess the psychological implications of the body language and facial expressions depicted (so she has a fair use defense as well), and from whom the Higbee firm demanded more than $4,000; Organic Growers School, an Asheville-area NGO that guides local farms, from which the Higbee firm demanded $3,700; and MHBI, the proprietorship of a DC area home inspector from whom $6,500 was demanded.  These targets have declined making any payments to the clients on whose behalf the Higbee firm sent demand letters, unless the Higbee firm can present a persuasive argument that it can surmount their objections.

Mathew Higbee responded to my letter, and I sent a rejoinder in turn.  Our dialogue continued by email, but nothing he has said has seemed to me persuasive.  And his inaction in the month that followed our exchanges tells me that HE was persuaded that he does not have enough chance of prevailing to make any of these cases worth litigating.  Other targets of his threats to sue over long-ago alleged infringements should take heart.

He has complained that the statute of limitations arguments prevents photographers from enforcing their rights, but of course that is not so.  There are plenty of current infringements around for which his clients can recover infringement damages, and my suggestion would be to focus on those.  And when a copyright claim is brought many years after the alleged infringement, there are equitable considerations on the defendants’ side as well.  For example, I have seen a number of cases in which the target of a demand letter believes that it had permission but no longer has records from the time when its license was acquired.

Refusal to Provide Copyright Registrations

There has been another disappointing development in the Higbee firm’s demand letter practice – a consistent refusal to respond to requests for the copyright registrations of photographs whose copyright was allegedly infringed. When I first started engaging with the Higbee firm several years ago, his demand letters would typically include the registrations for the photographs in question. Or, if not included, if the target of the demand letter asked to be shown the registration, the Higbee firm would generally provide a prompt response, either attaching the registration or saying, the copyright is not yet registered but that doesn’t matter because the client can register if it decides to sue (because registration is required before suit can be filed).

So when Higbee targets asked me for help addressing demand letters, the first thing I would suggest is that they look for the registration. That matters for two reasons – if the target sees the registration, she can be more confident that the Higbee client on behalf of whom the demand is sent really owns the copyright. But it also matters in assessing the target’s financial exposure, because if the copyright was registered in a timely fashion (generally, before the target’s use began, or at least within three months of first publication), the copyright owner can sue for an award of statutory damages, which begins at $750 per infringed work and can go considerably higher. And, the owner can sue for an award of attorney fees. But if registration was not timely, then the damages are limited to actual damages which, in most of the situations at which the Higbee firm directs demand letters, is only the lost license fee which, for most stock photos, is likely to be $100 or less. So the date of the registration tells the target of the demand what her financial exposure is – and, in effect, how much risk she will run if she refuses to pay the sum demanded.  In past years, the Higbee firm would candidly acknowledge that the copyright was not yet registered, while noting that the client could register, and then sue for actual damages.

But over the past couple of years, the Higbee firm has stopped providing a candid response to a request for the registration. Instead, the canned response has been, “we are just negotiating over the actual damages to be paid; but if you won’t pay what we demand, we will ask our client for the registration and sue based on what we find.” (paraphrase).  Mathew Higbee explains his new practice by saying that, because the damages claims he asserts for his clients generally make federal court litigation too expensive for his clients, they would likely file claims at the Copyright Claims Board, which can award statutory damages regardless of the time of registration.  But that makes no sense whatsoever — if the registration is not timely, why would the respondent to a CCB claim accept the administrative body’s jurisdiction?  And it is inconsistent with his demand letters, which consistently say that if the target does not pay the demanded amount, the Higbee firm will “go to court” and “ask the court to order [you] to pay attorney fees and court costs.”

Moreover, from what I have seen, the so-called actual damage figures on which the Higbee firm claims to be basing its settlement posture can be completely unrealistic. Renee Ellory’s experience shows that. When she asked for evidence of the license fees typically charged for the AP photos in question, the Higbee firm sent her a price chart purporting to show charges of several hundred dollars. But she had also done her own investigation by asking the Associated Press what the cost of licensing photos for her blog, and she was promptly told that the price would be $35 per photograph! So the difference between her financial exposure—that is, the risk of an adverse judgment that she would face if she defied the Higbee firm to sue in the face of her fair use and statute of limitations defenses, depending on whether and when the copyrights were registered—was quite substantial.

And there was another indication that the Higbee firm itself was pulling its actual damages claims out of thin air. After doing some of her own research, Ellory found that there was reason to question whether one of the photographs identified in the May 15 2023 demand letter had even been taken by the Associated Press. The original demand letter is here. Near the end of June, she pointed this problem out to the Higbee staffer who had been charged with dunning her, and in response the staffer admitted that Ellory was right, and sent her a new demand letter, still dated May 15, and still signed by Mathew Higbee, but now stating a figure $250 lower, with four allegedly infringing blog posts attached, not five. (Did Mathew Higbee really sign both letters, one of them with a phony date?) But if the demand amount for five photos was $500 per photo, why did the demand amount only go down by $250 when one was dropped? Plainly, these are Mickey Mouse numbers, not really market values.

As a practical matter, it seems to me that the firm is effectively seeking settlements based on a threat to seek statutory damages based on phantom registrations that the firm refuses to provide. My guess is that in litigation a judge would find that posture unreasonable – which could bear both on the amount of statutory damages as well as consideration of attorney fees (even assuming they were awardable based on the time of registration).

This is an aspect of the Higbee firm’s practice that it could easily clean up without significant damage to its mission of protecting photographers against misuse of their work.

Leave a Reply

Your email address will not be published. Required fields are marked *