AOL Fined in Purcell Case

174

October 2, 1998

Carl and Ann Purcell have won an initial round in their $5 million

copyright infringement suit against AOL that is scheduled to go to trial in

U.S. District Court in San Francisco on November 16th. America Online has

been fined $20,050 for failing to provide legitimate information and

thwarting the discovery process.

In August 1997, Carl and Ann Purcell filed suit against AOL charging that

AOL had allowed more than 18,500 uncontrolled and unauthorized downloads of

the Purcell images.

The Purcells had operated a forum on AOL between 1994 and 1997. It was

summarily terminated by AOL on June 30, 1997, but AOL continued to allow

unrestricted use of the images after the termination. More than 8,000

images were available on the AOL site. It is unclear how many different

images were downloaded. In addition, after the termination they

discovered that 742 of their images

had been included, without their permission, in another AOL area that

offered developers of Web sites free clip art.

In the past the Purcell's have been able to license rights to their images

for as much as $15,000 when they could guarantee exclusivity to the buyer.

Now that many of their best images have been placed in the public domain

none of them can be offered for exclusive use in the future. Any of those

people who downloaded the images while they were available on AOL might

decide at any time in the future to use them, and the Purcell's have no

control over those uses.

In his order relating to the discovery process, U.S. Magistrate Judge,

James Larson said,

"This sanction goes beyond the mere expenses of filing a motion, as

elsewhere provided in Rule 37, and includes the costs of the lengthy

wrangling necessitated by AOL's deliberately obstructive tactics and

frivolous objections. Not only is AOL's conduct unjustified, but it has

already taken up the time of one other magistrate judge, who previously

warned counsel about improper objections to deposition questions."

"AOL has indulged itself in treating discovery as a game, rather than a

means to progress toward a fair trial. By requesting an extension of time

to respond to discovery and then serving not one single response, but only

blanket objections, AOL violated both the spirit and the letter of the

rules governing discovery."

"By re-working plaintiff's discovery requests to suit itself and then

responding to the new requests, AOL has stretched the rules to the breaking

point."

"By objecting to almost every question during days of depositions of

several different individuals, requiring the intervention of another

magistrate judge, AOL has unjustifiably taxed the court's resources."

According to Carl, AOL has claimed that "by uploading images into our

forum, we had abandoned our copyright and they now owned our pictures."

The Purcells had a contractual agreement with AOL that specifically said

they retained the copyright to all images they placed on their forum. In

addition the rules for access to their forum clearly stated that the

images were only allowed to be used for "personal non-commercial" use.

This language enabled the Purcell's to continue to license exclusive

commercial use to any of the images that appeared on the site. When AOL

made these images available, without restrictions, it appropriated a huge

potential value that these images might have had in the future. This

case could establish important precedents for creators when dealing

with Internet providers.

AOL has recently countersued the Purcell's for trademark infringement. The

Purcell's acknowledge that they initially forgot to remove the AOL

reference from their web site (www.purcellteam.com), but deleted it as soon

as the matter was brought to their attention.

Purcell's attorney, Karl Olson of Levy, Ram & Olson in San Francisco said

AOL wasn't hurt by the Purcell's "inadvertent" continued use of its name.

The Purcell's have an archive of over 670,000 capitioned color slides shot

in 98 countries, and their photos have appeared on 200 book and magazine

coveres. The couple run a company called Words and Pictures. Their images

are also available on Corbis and PictureQuest (PNI's network).

For more information about this case see

stories 83 Purcell's Dumped by AOL

and 100 Purcell & AOL - Update.

301-251-0720, fax 301-309-0941, e-mail: jim@chd.com.

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