Expert Witness

Expert Testimony on Branding Disallowed in Copyright Infringement Case

Written on Tuesday, November 17th, 2020 by T.C. Kelly
Filed under: Expert Opinions, Research & Trends, Working with Experts

A company called Afropunk produces music festivals. It paid photographer Mamba Bayoh $1,200 for photographs. According to Bayoh, the photographs were to be used on Afropunk’s website and Instagram account to promote a festival in Brooklyn. Bayoh complained that Afropunk improperly used the photographs in other marketing materials.

After selling the photographs, Bayoh registered the photographs with the Copyright Office. Bayoh then sued Afropunk for copyright infringement. The belated registration prevented Bayoh from seeking statutory damages.

To prove actual damages from the copyright violation, Bayoh relied on two expert witnesses. Afropunk filed a motion to exclude the testimony of Bayoh’s experts. After applying a Daubert analysis, the court granted the motion.

Brand Consultant Expert Testimony

Robert Wallace is a brand consultant. He believed Bayoh’s photographs were “distinctive” and “compelling.” Wallace compared the photographs that Afropunk used before it acquired Bayoh’s photographs and concluded that the earlier photographs were less effective in branding the company. Wallace also concluded that the Bayoh photographs influenced the look of the photographs that Afropunk used subsequently.

Wallace concluded that Bayoh’s photography style is “highly unique, recognizable” and protectable intellectual property. He opined that Afropunk’s brand success was attributable in part to its use of Bayoh’s photographs and to the influence of those photographs on its marketing designs.

To validate his opinions, Wallace surveyed individuals who had purchased tickets for and attended recent African American cultural events. He showed Bayoh’s photographs to half of the survey participants and showed photographs that Afropunk used in marketing prior to acquiring Bayoh’s photographs to the other half.

While 86% of survey participants said that Bayoh’s photographs made them more likely to attend an Afropunk event based exclusively on the imagery, only 74% said that non-Bayoh photographs made them more likely to attend. Participants who saw the Bayoh photographs were also more likely to attend other Afropunk events and to purchase related merchandise.

Infringement Valuation Expert Testimony

Weston Anson chairs a firm that values and monetizes trademarks and copyrights. Anson calculated a figure he assumed to the Afropunk’s profits over a four-year period. Although Afropunk claimed a loss in three of the four years, Anson subtracted an operating expense category from total expenses that he assumed would represent salaries paid.

After deciding that the industry-wide licensing rate for intellectual property is about 6%, Anson calculated a “brand value” attributable to the photographs for each year. He concluded that Afropunk’s brand value increased by about $4 million from 2015 to 2018.

Daubert Analysis

The court concluded that Wallace could not testify about Afropunk’s alleged intent to infringe Bayoh’s copyright. Wallace has no expertise in discerning intent. Nor could he express the conclusion that Afropunk actually violated Bayoh’s intellectual property rights. That was a question for the jury to decide.

The court also excluded Wallace’s opinion that Bayoh’s photographs contributed to the success of Afropunk’s brand. The court faulted Wallace for not studying “the extent to which Bayoh’s photographs were used in marketing a particular Afropunk festival or the extent to which those photographs contributed to the revenues of that festival (as opposed to other marketing materials or the popularity of the festival performers).”

The court concluded that Wallace’s survey did not provide evidence that was relevant to the infringement claim. The fact that survey participants were more engaged by Bayoh’s photographs than other photographs did not prove that the alleged infringement caused an actual loss to Bayoh. Wallace’s analysis would require the jury to speculate on the impact Bayoh’s photographs might have had on Afropunk’s revenues.

The court decided that Anson’s testimony did not close that analytical gap. Anson’s opinions did not provide a causal link between Afropunk’s revenue and the alleged infringement. In the absence of evidence that Afropunk’s revenue increase was caused by Bayoh’s photographs rather than other factors, Anson’s calculation of increased revenues was not relevant. Neither Anson or Wallace employed a methodology to established that “brand value” accounted for the revenue increase.

Finally, the correct measure of actual damages for a copyright infringement is the fair market value of a license covering an infringing use of the copyrighted works. Bayoh offered no evidence of the fair market value of a license for his photographs. Wallace’s analysis focused on brand value rather than the fair market value of a license.

Since neither Wallace nor Anson used a methodology that created relevant evidence, the court excluded the testimony of both expert witnesses. Although Bayoh cannot prove damages, he has argued that he is still entitled to an injunction prohibiting Afropunk from using his photographs in the future.

About T.C. Kelly

Prior to his retirement, T.C. Kelly handled litigation and appeals in state and federal courts across the Midwest. He focused his practice on criminal defense, personal injury, and employment law. He now writes about legal issues for a variety of publications.

About T.C. Kelly

Prior to his retirement, T.C. Kelly handled litigation and appeals in state and federal courts across the Midwest. He focused his practice on criminal defense, personal injury, and employment law. He now writes about legal issues for a variety of publications.

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