252 THE SMALL CLAIMS ALTERNATIVE
September 28, 1999
If an infringement is small it may be more practical to seek redress in
Small Claims Court rather than to bringing an action in Federal Court.
A company scaned one of Davis Barber's pictures off his promo card and used it
in an ad. At the time he discovered the use he had not registered the
image. Consequently, he chose to sue for misappropriation in small claims court.
This avoided invoking federal law and a much more costly
and complex legal process of suing copyright infringement.
The infringer was a small roller hockey company. Barber's first step was to
contact the company's marketing department. They refused to pay, saying they
got the picture from a player's wife, and therefore didn't have to pay.
When Barber explained that the wife didn't have rights to release the picture
for advertising use the marketing executive became
argumentative and demanded to know how much Barber wanted for the use. As Barber
tried to explain how calculated he would calculate the license fee for such a use
the marketing executive interupted him, yelled "your never going to work for
Mission," and hung up.
At this point, as Barber says, "the gloves came off," and he became determined
to collect for this usage. After several months of bills and letters to the
company that were ignored, (and one more use of the picture discovered) Barber
filed in court.
Essentially, he treated the picture as a piece of property that was stolen,
rather than a creative work. He concluded that a judge might not buy a
laymen's argument about copyright law, but could easily understand the
concept of stolen and misused property.
While each courthouse has it's own small claims form, somewhere on it will be
a sentence to the effect of "defendant owes me the sum of _______,
not including court costs, because: (describe claim, date and location)
- In the first blank Barber put $5,000, which is the limit in small claims in
California (this varies from state to state). You must be able to justify
the whole amount, or the judge will either
reduce it to actual damages or throw it out altogether. Thus it is
important to have sent the user an invoice or settlement offer for the
license fee. (If you triple you normal fee for a settlement offer,
be aware that a small
claims judge may not allow such penalties. Thus, it is better to wrap such
additional compensation into the base fee.).
- In the second blank he put: "August, 1998; October 1998; November 1998;
Appropriation, misappropriation, conversion, infringement, theft of my
property for advertising."
The dates were when the ad ran. Appropriation is (all definitions according
to Blacks Law Dictionary) The act of appropriating. Then, to appropriate is
to "make a thing one's own; to make a thing the subject of property, to
exercise dominion over an object to the extent, and for the purpose, of
making it subserve one's own proper use or pleasure"
The defintion goes on, but this is the most important part. They took the
picture and used it for their own purposes.
The definition of misappropriation is: "the unauthorized, improper, or
unlawful use of funds or other property for purpose other than that for
which intended." In Barber's case, the picture was scanned off a promo card
and used for a purpose that he had not intended, or authorized.
Conversion is: "An unauthorized assumption and exercise of the right of
ownership over goods or personal chattels belonging to another, to the
alteration of their condition or the exclusion of the owner's rights."
- Then of course there is the infringement, and the identity of the photograph
as a piece of property. The fact that by using it for advertising
their product was all of the above stated things (appropriation, etc).
This strategy was not developed by a lawyer. Barber settled before trial
so there is no guarantee it will work before a judge or in your situation.
It is important to develop and write a simple timeline as to what
happened. It doesn't matter why or how, just that it did. Stick to the
absolute facts. Your likely to be asked by the judge in a very matter of
fact way "and then what did you do?", etc. It's helpful to know the
sequence and to answer everything directly.
Before you file, you need the name of the responsible person for the company
if the infringer is not an individual. This is usually the president, or CEO. This
information is found at the Secretary of State office in your area. In
California they charged Barber $6 to look it up and give him a printout of
the information. Aside from driving into downtown LA, the whole processs
took less than ten minutes to file.
Small Claims Court can be a hideous place to be all day. Judges also hate
being there. Ask for a trial date at the start of
a week, rather than a Thursday or Friday, after the judge has had several
days of petty or ridiculous cases to wade through. Get them while they're
There is no substitue for registering your work with
the copyright office. Barber says it took him awhile to make it habit, but
it's easy once he had gone through the process a couple of times.
If you have questions feel free to e-mail Barber at: firstname.lastname@example.org.
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Rules for supplying feedback
Barber's approach was clever. When I was an editorial director (i.e.,
business manager) for a publishing firm, we were sued in small claims court for
unauthorized use of an image. Unfortunately, the freelancers who had put
together the special edition in question were in Europe during this event. I
had no idea where they had obtained the picture, although most others had come
from "publicity stills" provided by entertainment companies at no charge as long
as the company name and project is listed in the caption or photo credit. Some
of these are available in shops in Hollywood for a few dollars each.
However, we had no invoice, letter or other backup. I was stuck with
representing the firm (lawyers cannot represent clients in California small
claims court) with no background on the item. My professional opinion was that
we should always get clear licenses, and pay for rights, but the company would
spend $500 to save a nickel.
The company's lawyers said I should argue that the case could not be heard in
small claims because the photographer claimed copyright infringement on the
small claims form, and copyright is strictly the jurisdiction of federal court.
In this case, the judge (a lawyer assigned to work this beat) told me that If I
pursued that line and he dismissed the case, it would mean I would give up all
right to bring the matter in another court. I tried to explain that I wasn't the
plaintiff, but he ignored the entire argument, made chitchat with the
photographer and his wife, who were mutual friends of his wife's brother, and
awarded them $500.
So justice was done, but technically the argument about federal jurisdiction
over copyright is correct (it's on the first or second page of the Copyright
booklet form the Library of Congress). However, the argument about misappropriation,
etc. is a beautiful way around the problem, and avoids all the complicated areas
of copyright ownership versus ownership of a picture, etc.
This was a good story that helps reinforce some of the best reasons
for going to Small Claims -- it is virtually immediate (no depositions,
interrogatories, or other lawyer 'business') and it is affordable (no retainers
or other huge expenses). I have been to Small Claims in NYC many times and won
each time except the first. Now that I insist on deposits and check out the
client thoroughly my trips have dropped off dramatically.
A few things were left out of the story. Here in NY you (and the defendant) have
two choices when your case is called: trial by "the court" (the judge) or going
directly out to an arbitrator, where your case will be heard that night. If you
(or your opponent) chooses the judge the case most surely will not be heard that
night or even the next time you appear. There are hundreds of cases on the
docket each night and usually only one or two judges. There are possibly 6-12
arbitrators (volunteer lawyers acting as "lay" judges). Having a case tried by a
judge involves a court stenographer and slightly more 'procedure' than the
arbitrator. A judge can only try perhaps two to five cases per night, so you see
where the backlog comes from. The cases tried that night will all be 'holdovers'
from earlier weeks, you rarely if ever see a 'current' case tried the night you
Why take one over the other? This is the critical difference: if you go before
the judge and one party is unhappy with the results he can appeal. That can
really mess you up -- here in NY there is no mechanism to ensure that the
appealing party is actually doing something. So you can win your case before the
judge and sit there for years waiting for action. You should know that no one
can force you to 'go out' to an arbitrator. If you feel more comfortable with a
judge and a transcript then that is your right by law. If you choose the
arbitrator the other party must agree to that as well -- you can't force him to
Finally, if your case is heard by the arbitrator there is NO appeal. You will
get a decision mailed to you in a few weeks and it will be final! Then you have
to deal with collection, a whole separate issue. All of this is covered in some
excellent books put out by Nolo Press.