Oppenheimer v. DCB And Associates, LLC Et Al. (D. Mass. 25-cv-10363).

Photographer David Gordon Oppenheimer accused DCB and Associates ("DCB") (a Century 21 business) and DCB's manager and another employee of infringing his copyright in an aerial picture of Boston, as well as removal of his copyright management information in violation of the DMCA. Oppenheimer is a frequent plaintiff in similar suits alleging infringement of copyright in a photo that someone found on the internet and placed on a Facebook post or some other form of social media, seeking injunctive relief, statutory damages and attorneys' fees. DCB fired back, counterclaiming for violation of Massachusetts' unfair competition statute Mass. G.L. c. 93A. DCB asserts that it found the picture that it used on-line in a format that did not identify a copyright holder or have a watermark or the like and appeared to be free for use, and that Oppenheimer does so for the purpose of trapping people into using the photograph and subjecting themselves to copyright lawsuits and unwarranted damages. Following discovery, Oppenheimer moved for summary judgment of infringement and moved to dismiss the 93A counterclaim.

Judge Burroughs denied Oppenheimer's motion for summary judgment of infringement. To prove infringement or violation of the DMCA, Oppenheimer would have to show (among other things) that the image that DCB used was, in fact Oppenheimer's photograph. Oppenheimer asserted that his images aways appear with either a clear copyright notice on the photograph itself and a statement of copyright in the caption accompanying the photograph, or with a watermark bearing his company's name and a copyright notice in the caption. DCB. On the other hand, asserted that the image it used was a "free, generic aerial photograph of Boston" that lacked any copyright warnings or other markings, that the website through which it was obtained did not indicate that the images could not be freely used, and that the photograph was not Oppenheimer's. Judge Burroughs pointed to this discrepancy and determined that, based on the information presented by the parties, there remained a fact dispute as to whether the photograph was Oppenheimer's, and that this dispute precluded summary judgment on both counts.

Judge Burroughs did agree to dismiss the 93A counterclaim. Importantly, however, she found that such a counterclaim could be validly pled, noting that the incurrance of legal fees as a result of an act or practice in violation of 93A was sufficient actual damages to state a 93A claim even absent independent financial damages. Oppenheimer's filing of the lawsuit was also a sufficient pleading of a but-for causation act as well.

She determined, however, that the counterclaim failed to plead the actual unfair or deceptive act required by the statute. She found that the alleged placement of unmarked photographs online, along with images bearing the copyright notices, was not enough, as Oppenheimer's right to pursue copyright infringement is protected under federal copyright law, and no further conduct by Oppenheimer was alleged that might push the matter into an unfair business practice. She also rejected DCB's argument that the litigation itself was groundless or motivated by a purpose other than winning the suit. She accepted that DCB had pled other cases in which Oppenheimer's threats of litigation were allegedly used to coerce unreasonably large settlements (and I would note that DCB pled that Oppenheimer had been found by the District Court for the Southern District of South Carolina to have earned more than $400,000 from litigation settlements versus less than $5000 from license and print sales in 2017), but noted that DCB had not pled any such coercive activities in this case. Given this factual deficiency, Judge Burroughs dismissed the counterclaim and did not reach Oppenheimer's argument that the counterclaim was pre-empted by the Copyright Act.

In my opinion, from a factual perspective, it is difficult to say for certain whether the image on DCB's site was actually Oppenheimer's photograph. The Oppenheimer photo is looking down Marlborough Street towards the city center, from about the Mass Ave bridge to just beyond the Boston Common, covering eight blocks along with the Common and some of the buildings beyond, and has a clear indication of copyright and of Oppenheimer's name in the lower right corner; the image used by DCB, while appearing to be taken from at least a similar angle and direction, is just a small slice, perhaps a single block, and is cropped (assuming it was Oppenheimer's photograph) in a way that would have entirely omitted the watermark. It would, of course, also be difficult to determine who actually cropped out the watermark (again, assuming it was Oppenheimer's photograph),

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