United States District Court, W.D. Wisconsin
D. PETERSON, District Judge
Scott Boehm and David Stluka move the court to hold defendant
Nicolas Martin in contempt for violating the court's
order for preliminary injunction, Dkt. 107, and to order
Martin to show cause as to why the court should not impose
remedial and punitive sanctions. Dkt. 635. Martin concedes
that he violated the preliminary injunction and that a
finding of contempt is appropriate. The only issue for the
court to resolve is the appropriate sanction.
September 2015, the court issued an order for preliminary
injunction enjoining defendants from “[c]reating,
displaying, selling, or distributing” any of 343
photographs in which plaintiffs had registered their
copyrights “in any medium.” Dkt. 107, at 4.
Martin admits that he copied Boehm's photograph of
Soldier Field from another website and posted it as a
full-screen background on a page of his website, in violation
of the preliminary injunction. But he claims that this
violation was simply a mistake. Martin was searching for an
image of Soldier Field on Google. He filtered his search for
images that were “labeled for reuse.” He found an
image of Soldier Field, clicked on it, and then clicked on
the “view more” link to find a similar image of
Soldier Field, which he then copied and posted as the
background on a page of his website. He mistakenly believed
that because he originally filtered his search for images
that were “labeled for reuse, ” the image he
ended up using was available for use without the need to
obtain permission. But he was wrong: the image was
Boehm's photograph, which was not only not available for
use without permission but was covered by the preliminary
injunction. Plaintiffs contend Martin did not simply make a
mistake but willfully violated the court's order for
preliminary injunction, as this is the second time Martin has
violated the preliminary injunction by using the same Soldier
Field image. Plaintiffs ask the court to (1) award attorney
fees and costs associated with bringing their motion against
Martin; (2) impose a monetary fine against Martin; and (3)
enter judgment of willful copyright infringement against
court has previously explained, punitive or criminal
sanctions are not appropriate because plaintiffs have not
shown beyond a reasonable doubt that Martin's violation
of the injunction was willful. Dkt. 242, at 6. Although this
is Martin's second violation of the injunction concerning
the same photo, that fact alone does not prove
beyond a reasonable doubt that he willfully and deliberately
violated the injunction.
leaves civil contempt sanctions, the aim of which is to
coerce compliance and to remediate any non-compliance.
S.E.C. v. Hyatt, 621 F.3d 687, 692 (7th Cir. 2010).
Martin now appears to be in compliance with the injunction:
he removed the offending image within 24 hours of
plaintiffs' notification of the violation. See
Dkt. 637-2, at 3. Plaintiffs argue that a coercive sanction
is nonetheless necessary to deter future violations, given
that this is Martin's second violation of the injunction
and the fifth violation of the injunction by any defendant.
But any sanction intended to deter future violations would
not be coercive-it would be punitive: coercive sanctions
allow the person sanctioned the opportunity to correct their
conduct and end the sanction, something Martin cannot do,
because he has already corrected his conduct. No coercive
sanctions is possible here.
remedial sanctions, plaintiffs propose only an award of
attorney fees and costs, and they have not shown how any
sanction beyond attorney fees would remediate any harm
suffered by plaintiffs. The court will order Martin to pay
plaintiffs' reasonable actual attorney fees incurred in
bringing the contempt motion. To recover any of their fees,
plaintiffs must adhere to the court's guidance regarding
fee requests. See Dkt. 203, at 5-6, 42. Failure to
follow the court's instructions will result in rejection
or significant reduction of the fee award. Plaintiffs should
not assume that the court will award the full amount of their
fees. The court will be prepared to reduce the fees in light
of inefficiencies, redundancies, or unnecessary or excessive
submissions. The parties are encouraged to reach agreement as
to the fees award, which would spare the parties and the
court the effort and expense of litigating the amount.
the court will not enter judgment against Martin for willful
copyright infringement of Boehm's Soldier Field image.
There is no dispute that Martin infringed Boehm's
copyright in this image, but whether he did so willfully is
an open question. Plaintiffs can point to no evidence that
Martin knew his conduct was an infringement or acted in
reckless disregard of Boehm's right. See Video Views,
Inc. v. Studio 21, Ltd., 925 F.2d 1010, 1020 (7th Cir.
1991) (abrogated on other grounds). Plaintiffs are not
entitled to judgment that Martin willfully infringed this
image, although his conduct will be an appropriate factor to
consider if the court is asked to set damages.
IT IS ORDERED that:
Plaintiffs Scott Boehm and David Stluka's motion for
finding of contempt, Dkt. 635, is GRANTED in part, as
provided in this order.
Plaintiffs must file documentation supporting the attorney
fees that they incurred in bringing their contempt motion by
November 22, 2016. Any opposition or ...