Rockefeller Photos sells photographs to food and beverage businesses throughout the country. It had licenses, which included exclusivity in certain areas, to photographs from Prepared Food Photos, Inc., an agency that employs photographers to create food-related images. Rockefeller said that Dorchester’s Boston Pizza used two such photographs, of a Chicken Caesar wrap and a roast beef wrap, on its Facebook page on three occasions in 2022 without permission. After Boston Pizza ignored multiple requests to take down the photos or to pay the requisite license fees, Rockefeller filed suit. When Boston Pizza failed to respond to the complaint, the court entered default against it.
In seeking default final judgment, Rockefeller elected statutory damages, saying that Boston Pizza’s failure to appear and provide information made actual damages impossible to determine. Rockefeller asserted that, had Boston Pizza sought a license, Rockefeller would have required it to license the entire Rockefeller image library (about 18,000 images) at a cost of $999 per month with a one-year minimum (which it says are its “standard licensing terms”), totaling $11,988 per year. Covering the three-year period of time raised the amount to $47.952, and Rockefeller sought to have that doubled due to the willfulness of the infringement, for a grand total of $95,904. Rockefeller justified these rates on the grounds that it offered geographic exclusivity to its licensees, ensuring that a restaurant down the block will not be using the same photographs as its licensees.
Judge Burroughs found that the essential requirements of proving infringement were met in the complaint (which, because Boston Pizza defaulted, were deemed admitted). She was much more skeptical, however, as to the damages sought. She noted that Rockefeller’s only evidence to support such a high award was its own professed “standard license terms,” but that it had presented no evidence that any business who might in any way be competitive with Boston Pizza had ever actually taken such a license. It further had provided no evidence of any lost business that could be attributed to the infringement and had provided no evidence of the costs associated with the creation (or licensing-in) of the two images. She determined that basing damages on license fees for the entire Rockefeller catalog would result in an improper windfall for the company, pointing to a prior D. Mass. decision in which a bar was not held to pay the cost for music-licensing entity BMI’s entire catalog for its infringing use of three songs only two occasions because such a license would have permitted the bar to “publicly perform millions of songs countless times,” which would naturally be worth far more than the actual three songs that were played only twice. Judge Burroughs noted that courts are not bound by the pricing models brought by plaintiffs in determining statutory damage amounts, and noted several decisions and treatises on “copyright trolls” who sought exorbitant statutory damages for minor infringements of mundane, low-value photographs, including Prepared Food Photos, the original source of the images-in-suit. Noting that there were no allegations that the images were republished by Boston Pizza or that the Facebook posts were continuously viewed by Facebook users following their initial posting, Judge Burroughs determined that the minimum statutory damage amount, $750 per infringement, was a more appropriate guideline. Accordingly, she entered judgment in the amount of $1500 in damages and $525 in costs, and enjoined Boston Pizza from further use of the images without a license.
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