Hirsch v. Rehs Galleries, Inc.

Background

Steven Hirsch, a professional photographer, sued Rehs Galleries, Inc. under the Copyright Act. He alleged copyright infringement and removal or alteration of copyright-management information involving a photograph of Joseph Gibbons. According to the amended complaint, Rehs Galleries published the photograph on its website on or about July 16, 2015, without Hirsch’s permission, after copying it from a New York Post story. Hirsch alleged that Rehs Galleries knowingly removed the credit identifying him as the photographer.

Hirsch alleged that he did not discover the alleged infringement until about December 11, 2018. He filed this action on December 17, 2018. He had retained the Liebowitz Law Firm on or about February 6, 2016, and alleged that the firm searched the internet for infringement. The opinion states that these allegations were assumed true for purposes of the motions and were not findings about their truth.

Motion to Dismiss

Rehs Galleries moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal for failure to state a legally sufficient claim. It argued that Hirsch’s claims were barred by the Copyright Act’s three-year statute of limitations. Rehs Galleries did not argue that Hirsch actually knew about the alleged infringement more than three years before filing. Instead, it argued that he should have discovered it earlier through reasonable diligence.

The court applied the discovery rule used by the Second Circuit: a copyright claim accrues when the plaintiff discovers, or with due diligence should have discovered, the relevant infringement. The court held that this rule also applies to Hirsch’s claim concerning copyright-management information because the same statutory limitations provision covers civil actions under the Copyright Act.

The court rejected Rehs Galleries’ arguments that Hirsch’s earlier lawsuit involving another photograph, his retention of the Liebowitz firm, or the alleged notoriety of the photograph and related story established that he should have discovered this infringement earlier. Even using the earlier discovery dates proposed by Rehs Galleries—March 27, 2016, or February 6, 2016—Hirsch’s December 17, 2018 filing would still have been within three years. The court also stated that copyright owners do not have a general duty to monitor the internet for infringement.

Because the amended complaint did not clearly establish that the claims were barred as a matter of law, and because there was doubt about whether dismissal was warranted, the court denied Rehs Galleries’ motion to dismiss. The court ordered Rehs Galleries to answer the amended complaint within 14 days after entry of the opinion and order.

Motion to Disqualify Counsel

Rehs Galleries also moved to disqualify Hirsch’s counsel under the advocate-witness rule. That rule can require a lawyer to stop representing a party when the lawyer’s testimony will actually be needed at trial. The party seeking disqualification bears a heavy burden to show that it is necessary.

Rehs Galleries argued that the Liebowitz firm would be a necessary fact witness because Hirsch retained it to investigate his copyright claims. The court found that the relevant limitations question was whether Hirsch discovered, or should have discovered, the infringement before December 17, 2015—three years before he filed suit. Hirsch retained the firm on February 6, 2016, and nothing in the record showed that the firm assisted him before that date. Rehs Galleries also did not provide evidence showing that the firm had information relevant to the limitations defense or that its testimony would be required at trial.

The court therefore denied Rehs Galleries’ motion to disqualify Hirsch’s counsel. Judge Vernon S. Broderick denied both motions and directed the Clerk of Court to terminate the motions at Documents 17 and 18.