A federal jury returned a $1.2 million verdict last week against a Glen Arm-based company that used a competitor’s copyrighted photographs in its marketing materials without permission.
The photographs used by Exterior Design Inc. were taken by Frances White, president of Under a Foot Plant Co., to market her company’s product line of perennial plants for walkways and lawns, called Stepables.
White discovered her photos in use by a Exterior Design’s Treadwell product line in 2011 and contacted the Maryland company, which promised the images would be removed from its websites and brochures, according to Jan I. Berlage, a lawyer for the plaintiffs. But White again found her photographs used to market Treadwell in 2011, this time at a trade show, and was again assured the company would stop.
After finding a third infringement in 2014, White sent a cease-and-desist letter then filed suit in U.S. District Court in Oregon, where her company is based. The case was removed to U.S. District Court in Maryland, where the jury came back with its verdict Thursday night after deliberating for approximately five hours.
“She’s gone to them three different times and they never did what they were supposed to,” said Berlage, of Gohn Hankey Stichel & Berlage LLP in Baltimore. “No one in the world wants to end up in litigation. You do everything to avoid it.”
The images were what gave White a competitive advantage, according to Berlage, because while there was nothing patentable about the idea of designing plants for walkways and high-traffic areas, White had a large catalog of photos showing the product in use.
Berlage said the jury’s award, which includes $900,000 in actual damages and $300,000 in statutory damages, is relatively large for a copyright lawsuit for photographs.
An expert witness testified during the four-day trial before Magistrate Judge Beth P. Gesner that Exterior Design infringed 24 of Stepables’ photographs a total of 133 times between 2011 and 2017. The expert identified the types of licenses Exterior Design would have had to purchase from White to use her photographs in their marketing and how much those would be worth, including a consideration that Stepables and Treadwell were competing products and White’s company would be unlikely to have agreed to a license under any circumstances.
“This was to stop the unlicensed use of photos, not about making money,” Berlage said, who called the jury award “very fair and reasonable.”
Berlage was assisted by Oregon-based attorney Michael Dell Long of Long Law PDX.
Exterior Design was represented by Charles A. Arcodia a Phoenix, Maryland solo practitioner, and Joshua A. Glikin of Bowie & Jensen LLC in Towson. Arcodia did not return a call seeking comment Tuesday.
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Under A Foot Plant Co. v. Exterior Design Inc.
Court: U.S. District Court
Case No.: 1:15-cv-00871-BPG
Judge: Magistrate Judge Beth P. Gesner
Proceeding: Jury trial
Outcome: $1.2 million verdict for plaintiff; $300,000 in statutory damages, $900,000 in actual damages
Incident: 2011 to 2017
Suit filed: Aug. 26, 2014
Verdict: May 11, 2017
Plaintiff’s Attorneys: Jan I. Berlage of Gohn Hankey Stichel & Berlage, LLP in Baltimore and Michael Dell Long of Long Law PDX in Portland, Oregon.
Defendant’s Attorneys: Charles A. Arcodia, Phoenix, Maryland solo practitioner, and Joshua A. Glikin of Bowie and Jensen LLC in Towson.
Count: Copyright infringement