PUBLIC CITIZEN LITIGATION GROUP
1600 20TH STREET. N.w.
WASHINGTON, Dc. 20009-1001

(202) 588-1000

BY EMAIL TO mhigbee@higbeeassociates.com
November 8, 2019

Matthew Higbee, Esquire
Higbce Associates

Suite 112

1505 Brookhollow Drive
Santa Ana, California 92705

Dear Mr. Higbee:

1 write in response to your demand letter to the Society for Emblem Studies and the repeated
threats to ?le suit against it despite its having paid double the license fee for a cartoon that previously
appeared on the Society?s web site.

The Society is a very small non-pro?t corporation, holding tax-exempt status under section
501(c)(3), that fosters the study of emblem books and related materials in literature and the visual
arts, and of their origins and in?uence on other cultural forms, in all periods, countries and
languages. Emblem books are a phenomenon of renaissance civilization; the Society has a small
membership around the world, including teachers and students of literature, art-historians, librarians,
archivists, and collectors of antiquarian books. Members are supposed to pay annual dues but often
do not. Its annual budget is usually a couple of hundred dollars, except when it holds its triennial
conference; in those years, its budget reaches about two thousand dollars. Given its size, it files a
postcard return rather than a full 990 form, a fact that you can verify using GuideStar.

Your demand letter, sent on behalf of an English company called CartoonStock Ltd, charged
the Society with copyright infringement because a cartoon was placed in a November 201 
newsletter, a copy of which remained on the Society?s web site until recently. The letter demanded
payment of $1320, justifying that amount as including not only the license fee but also ?the costs
incurred in detecting and pursuing the unauthorized use.? As soon as the Society?s treasurer,
Elizabeth Black, a faculty member at Old Dominion University who is the only Society officer
located in the United States, learned from your letter of the infringement claim, she ensured
that the web page containing the cartoon was removed.

Despite that prompt response, Black has received repeated threats from your staff member,
Sarah Brant, to ?escalate? the demand to your firm?s litigation team unless the Society paid money
as demanded. Brant ignored the fact that the cartoon had been removed. In fact, she said, her client
did not care about the fact, reported to her by Black, that the page on which the cartoon appeared had
not received a single visit by an Internet user in the previous ?ve-year period from 2014 to the end

n-hww? PrInled on Recycled Paper

Mathew Higbee, Esquire
November 8, 2019
page 2

of 20 1 8. Rather, your law ?rm is only interested in collecting money because your client?s property
was supposedly ?taken.? And, Brant insisted, paying the license fee was not enough. Brant admitted
that the copyright has never been registered and that you would have to register before you could sue.

Black investigated and ascertained that the applicable license fee is $80. Because she was
unsure whether a license fee was paid (given that the person who posted the cartoon is no longer with
the Society), Black offered to pay $160, double the license fee, for the Society?s past use of the
cartoon. Brant did not deny that $80 is the license fee, but she said that the amount offered was not
enough. Rather, she said, your client insists on a payment of $1000.

Hoping to be done with the matter, Black sent your ?rm a check for $160.

Brant has stated, however, that you will either destroy or return the check, and that she has
?escalated? the dispute to your ?rm? 3 litigation team. The theory is that the Society needs to pay for
your client?s ?enforcement? costs which, I take it, means covering your ?rm?s share of the payment.
Brant has never explained the basis for her implicit claim that $920 has been spent on enforcement
costs.

Even so, the Society has paid $160 and that amount is all that it is willing to pay to avoid
litigating your claims. The cartoon was taken down so you have no claim for declaratory
or injunctive relief. Because the copyright has never been registered, your client can sue only for
actual damages: that means either the Society?s pro?ts from the alleged infringement, if any, or the
lost license fee. Your client has no claim for any other monetary relief. The assertion in your initial
demand letter that your lawsuit could claim attorneys fees was, therefore, an empty threat. The $160
already sent to your ?rm, double the license fee, more than covers the amount of any likely actual
damages that your client could recover in litigation.

Indeed, although you or your client must have visited the web page in question in 2019, in
the course of locating the cartoon there, given the absence of any visits during the ?ve year period
beginning in 2014, and considering that the statute of limitations for copyright claims is three years,
it is at least arguable that no infringing reproduction took place as a result of the photo sitting on the
Society?s web site. The only ?infringement? would, then, have been the result of your client?s own
inspection of the page. You would look a bit silly litigating an infringement claim based on such
facts, and you might well not even be able to collect actual damages.

Even assuming that there is a claim for actual damages, you and have previously discussed,
in connection with other potential cases, your contention that ?actual damages? can include
enforcement costs, in cases in which 17 U.S.C. 412 bars copyright owners from recovering
attorneys fees because the copyright was not timely registered. 1 have found no caselaw supporting
a claim for enforcement costs as part of actual damages; when I asked you for such authority, you
supplied none. Instead, you told me that when you seek enforcement costs in such cases, it would

Mathew Higbee, Esquire
November 8, 2019
page 3

be in the hope of ?nding something in discovery that warrants statutory damages or attorney fees.

1 ask you again for supporting authority for seeking $920 in enforcement costs as part of the
actual damages. Certainly, if you identify a legal and factual basis for this argument, we will
consider that. If you have none, yet ?le suit seeking more than the doubled license fee that has
already been sent to your ?rm, we reserve the right not only to present all applicable defenses, but,
in addition, to argue that your decision to sue meets the standards for award of fees to a defendant
under Kirtsaeng v. John Wiley Sons, 136 S. Ct. 1979 (2016). Copyright bullies and trolls are
facing increasing impatience from the judges before whom they bring needless litigation seeking
excessive monetary relief. Lee v. WArchitecture and Landscape Architecture, 2019 WL 2272757,
at *2 (E.D.N.Y. May 28, 2019); Pereira 12. 307254] Canada, 2018 WL 5999636, at *2 (S.D.N.Y.
Nov. 15, 2018).

Despite our qualms about whether your client has any viable claims for damages, the Society
is not ready to stop payment on the check that it has sent you. But its patience with your bullying
is not in?nite. I strongly suggest that you take what the Society has generously given you and drop
your other claims.

If not, the Society is located in Virginia; I am cc?ing our Virginia co-counsel. We hope that
our client does not receive a lawsuit but we are ready to respond if you ?le.

Sincerely -

Paul AgL-m L?Evy
cc: Robert Schwartz, Esquire 
Seth Greenstein, Esquire