Kalfus v. Presbyterian Journal Co., Inc.

Background

Robert Kalfus, described as a New York-based professional photographer, sued God’s World Publications, Inc. over the defendant’s unauthorized reproduction and public display of Kalfus’s photograph of the Lincoln Park Jewish Center on its website. The photograph appeared with an article about antisemitism and the center. Kalfus alleged copyright infringement under Section 501 of the Copyright Act and removal or alteration of copyright-management information under Section 1202(b) of the Digital Millennium Copyright Act.

The defendant removed the photograph after offering to pay a license fee. It later served Kalfus with an offer of judgment, which Kalfus did not accept within the period provided by Federal Rule of Civil Procedure 68. After settlement discussions failed, the defendant moved under Local Civil Rule 54.2 for an order requiring Kalfus to post a $20,000 bond as security for anticipated costs and attorneys’ fees.

Legal analysis

Local Civil Rule 54.2 permits the court to require a party to post a bond or additional security for costs. The court identified several possible factors, including the party’s ability to pay, residency, the merits, the scope of discovery, expected legal costs, and compliance with past court orders. In similar copyright cases, courts had focused particularly on expected legal costs and compliance with prior orders.

The court addressed conflicting decisions about whether Rule 68 permits a nonprevailing copyright defendant to recover attorneys’ fees incurred after an unaccepted offer of judgment. Section 505 of the Copyright Act permits an award of attorneys’ fees to the prevailing party. The court adopted the view that Rule 68 does not allow attorneys’ fees to a nonprevailing defendant in conflict with Section 505. The defendant could potentially recover post-offer costs even if it lost on the merits, but the court would not include anticipated post-offer attorneys’ fees in calculating the bond.

The court did not decide the merits of Kalfus’s underlying claims. It stated that the case appeared to be a standard copyright-infringement case and concluded that Kalfus was unlikely to recover more than the amount the defendant had offered. The court also relied on attorney Richard Liebowitz’s extensive history of sanctions and noncompliance with court orders in the district, finding that a bond was appropriate in part because of the need to deter misconduct and account for litigation resources likely to be consumed.

Ruling

Judge Katherine Polk Failla granted the defendant’s motion for a bond in part. The court rejected the requested $20,000 amount as excessive because it was not considering anticipated attorneys’ fees. It also rejected Kalfus’s proposal to limit the bond to approximately $1,000 in out-of-pocket costs. The court ordered Kalfus to post a $5,000 bond with the Clerk of Court on or before December 4, 2020, and directed the Clerk to terminate the motion at docket entry 21.