Drop Innocent Defendants Quickly or Pay Up, Court Tells RIAA

The case raises the issue of when it’s proper to seek secondary infringement liability. RIAA continued its case against Debbie for 7 months after the court granted a default judgment against daughter Amanda, who didn’t file an answer. When RIAA finally filed to dismiss the case with prejudice, West also dismissed Debbie’s motion for a declaratory judgment of noninfringement, leaving attorney’s fees in the air.

West used the Copyright Act to justify attorney’s fees for the elder Foster while denying fees under the more common route of Rule 41(a)(2) of the Federal Rules of Civil Procedure. Awards for defendants under the Copyright Act are more the rule than exception in nearby courts, West wrote, unlike awards under Rule 41, reserved for “exceptional circumstances.”

RIAA’s secondary infringement claim seemed based solely on Debbie’s ownership of the Internet account, West said. But that claim requires not only defendant’s knowledge that someone else was infringing using their resources, but also “substantial participation” in the infringement. RIAA didn’t allege that Debbie even knew about the file-sharing, let alone profited from it, West said. The only court decision that comes close to backing the labels’ claim is Elektra v. Santangelo in White Plains, N.Y., although that court was skeptical that a parent who didn’t “know Kazaa from a kazoo” could be held liable for a child’s covert file-sharing, he added. RIAA’s secondary infringement claims may not be “frivolous or objectively unreasonable, [but] they certainly appear to be untested and marginal,” West said. He questioned RIAA’s “motivations” for pursuing Debbie on the secondary claim, which seemed intended to press her into a settlement after she was determined not to be the primary infringer.

The Foster case is different than every decision RIAA submitted in support of its secondary infringement claim, all of which were “unpublished,” or not included in standard legal print compilations, West said. One addressed only Rule 41 awards. In another, Priority v. Chan, the original defendant was dismissed quickly and was targeted only with a “well-established direct infringement claim,” he said. Similarly, in Virgin v. Darwin, the defendant was hit with direct infringement but dismissed quickly once his roommate was identified as the infringer. The same was true in Elektra v. Perez, with the added difference that RIAA asked for dismissal without prejudice -- the right to bring the case again -- and for which attorney’s fees aren’t available for defendants. West believes RIAA’s secondary claims in Capitol “veer much closer toward the boundaries of the frivolous and the unreasonable” than cases alleging direct infringement.

Foster’s only option without the prospect of attorney’s fees was to “capitulate to a settlement for a violation she insists she did not commit,” which “would not advance the aims of the Copyright Act,” West said. RIAA attorneys must tell the court by Feb. 13 how long they'll need to carry out discovery on the “reasonableness” of Barringer-Thomson’s request for fees. West also denied Foster’s motion for a scheduling order and said he would establish “firm dates” for her to supplement Barringer-Thomson’s original request and RIAA’s reply.

Barringer-Thomson told us the decision was “very, very good… I don’t think any of the courts [RIAA cited in its support] analyzed the facts and the law as closely as Judge West did.” But she added that RIAA seems to have dropped its earlier strategy of bringing claims against owners of Internet accounts as opposed to those traced to usernames in Kazaa and other P2P applications, possibly limiting the impact of West’s decision. Her biggest concern is whether West decides to publish his decision in the Federal Supplement, which contains federal district court decisions each year and whose inclusion of the Capitol decision would help defense lawyers seeking attorney’s fees in similar cases. File-sharing cases are better known now through online posting by P2P defense lawyer Ray Beckerman and others, she said, but those efforts can’t reach every lawyer like the Federal Supplement does.

The decision warns RIAA not to “mouth off about parents being responsible for their kids’ copyright infringement until they find some legal authority for it,” Beckerman told us. West’s reasoning shows the RIAA “driftnet” strategy will provoke “consequences” in other courts, and will encourage P2P defense lawyers and defendants to fight the cases, he said.

The RIAA spokeswoman emphasized that West diverged from his peers’ rulings in “substantially similar motions for attorneys’ fees in virtually identical factual settings.” Debbie Foster did all she could to shield Amanda as the source of infringement, she added: “Such a pattern of behavior on the defendant’s part should not give rise to an award of fees.”