Copyright infringement takes place when someone other than the copyright owner exercises rights associated with copyright ownership. Making copies, translating the work into a new language, or transferring the work into a new medium of expression without first seeking the copyright owner’s permission may all be acts of copyright infringement.
When a copyright owner enforces her copyright against an infringer, she can not only stop the infringer from his illegal activity but can seek monetary damages from him as well for his past illegal acts.
In this module, we’ll learn about the process of copyright enforcement and what a copyright owner must prove to prevent other parties from illegally using her copyright. We also examine what may qualify as infringement and the defenses an alleged copyright infringer can raise in response to a claim of copyright infringement.
Copyright Infringement Lawsuits
All copyright infringement cases must be brought in federal district court.[1] Copyright infringement cases should be filed in the federal district in which the defendant resides or is located.[2] If the defendant is a business entity, infringement actions can be brought in any federal district in which the business was established, is authorized to conduct business or is in fact conducting business.
A copyright infringement lawsuit begins with the filing of a written complaint. The complaint will address the following points:
1.) jurisdiction of the court over the dispute
2.) discussion of proper venue
3.) identification of the copyrighted work and proof of plaintiff’s ownership of that work
4). explanation of the alleged infringement; and
5.) the request for relief.
If the alleged infringement occurred outside of the United States, then the plaintiff can only bring the copyright infringement action in the U.S. federal district courts if the alleged infringer has substantial commercial contacts in the United States and qualifies for U.S. federal court jurisdiction. Absent such jurisdiction, the copyright owner must pursue the claims in the courts of the country in which the infringement occurred.
The first step in copyright enforcement is for a plaintiff to demonstrate that a valid copyright exists for the material in question. This requires proof that the material is eligible for copyright protection and that the copyright hasn’t expired. The most effective way to meet this requirement is for the copyright owner to provide a court with the U.S. Copyright Office certificate of registration, proving that the U.S. government has recognized a copyright for the owner’s work.[3]
Second, the plaintiff must prove that she is either the copyright owner or has legal authority to raise the infringement claim. Again, she’ll rely on the certificate of registration, which also provides effective proof of ownership.[4]
The copyright owner isn’t the only party who can raise an infringement claim. A copyright’s licensee may also initiate an infringement action to the extent that the alleged infringement interferes with his ability to exercise his licensing rights. For example, Russell is a creator of a computer game who grants Electronic Sports, a large technology company, the exclusive right to duplicate and sell the game in the United States. If one of Electronic Sports’ rivals starts to sell the game in the U.S. without Russell’s permission, Electronic Sports, as the licensee, and not just Russell, could sue its competitor for copyright infringement. A licensee attempting to enforce copyright rights must be able to prove that the copyright owner properly granted it with the rights being enforced, doing this by providing the written and executed license as evidence in enforcement litigation.
After demonstrating the existence and ownership of a copyright, the plaintiff in an infringement action must prove that there has been an act violating rights associated with the copyright.[5] For example, if the claim involves unauthorized copying of a protected work, then the plaintiff must prove that such copying did take place. Evidence must be provided sufficient to persuade the court that an alleged infringer violated the plaintiff’s exclusive copyright rights.
A plaintiff must raise a copyright infringement claim within three years from the date when the alleged infringement occurred.[6] Failure to raise a copyright claim within this three-year statute of limitations provides a defense for defendants in copyright infringement cases. If the allegedly infringing activity is ongoing, then the three-year period begins at any time during the continuing period of infringement.
Failure to act promptly could also undermine a copyright owner’s request for a preliminary injunction to stop the use of the material pending the resolution of the claim and could also reduce a compensatory damage award based on an argument that damages associated with the infringement should have been lower had the copyright owner acted sooner.
A common infringement action is based on unauthorized copying. In a 2011 study, Columbia University found that 46% of adults had “bought, copied, or downloaded unauthorized music, TV shows, or movies.”[7] A plaintiff alleging unauthorized copying of protected material must prove two elements: actual access to the copyright protected work and that there is substantial similarity between the protected work and the alleged infringing version.
The issue of access for copyright infringement purposes is a question of fact based on the evidence presented. If, for example, the dispute involves a song’s copyright, relevant evidence of access would include proof that the alleged infringer heard the song or had a reasonable opportunity to hear the song at concerts attended or through publicly distributed recordings.
Similarity
Second, the plaintiff must also prove that there is substantial similarity between the copyright protected work and the allegedly infringing work, also a question of fact. Courts recognize two forms of similarity: literal similarities and non-literal similarities. If a court finds a literal similarity, the two works being compared are identical. The only remaining question is whether the similarity is extensive enough to find infringement.
Copyright infringement may occur even in instances when there is no literal similarity between the two works in question. In cases involving non-literal similarities, the two works are not precisely identical and instead, they contain substantial similarities. The key question of fact in cases involving non-literal similarities is the issue of whether the similarities between the two works are substantial enough to find infringement.
The basic standard of determining if there are literal or non-literal similarities is whether a reasonable person, after examining the copyright protected work and the allegedly infringing work, would conclude that the accused work is so similar to the copyrighted work that it reflects the total “concept” and “feel’ of the copyrighted work.[8] The more direct and substantial the similarities, the more likely there will be a finding of infringement.
In Sid & Marty Krofft TV Prods. V. McDonald’s Corp., the plaintiff brought a copyright infringement action arguing that McDonald’s McDonaldland advertising campaign violated its copyright to the H. R. Pufnstuf television show, introduced on NBC in September 1969. The series included several fanciful costumed characters, as well as a boy named Jimmy, who lived in a fantasyland called “Living Island,” inhabited by moving trees and talking books.[9] McDonald’s then started the McDonaldland advertising campaign and the court viewed representative samples of both the H. R. Pufnstuf show and McDonaldland commercials.
It agreed with the plaintiffs that McDonald’s infringed upon the Krofft copyrights because it had captured the “total concept and feel” of the Pufnstuf show with their ads. Like Living Island, McDonaldland was an imaginary world inhabited by talking plants and animals and other creatures. Additionally, both works feature a forest with talking trees that have human faces and characteristics.
A defendant can raise multiple defenses to those allegations. First, he can argue that the work is not eligible for copyright protection. Claiming this defense is not likely to be successful if the plaintiff has registered the copyright for the work in question with the Copyright Office.
The second potential defense is that the plaintiff does not own the copyright in question and has no legally recognizable claim to raise the copyright claim. Again, if a plaintiff can provide proof of registration from the Copyright Office, then that registration is evidence of copyright ownership.
Third, the defendant can contest the issue of similarity between the copyrighted work and the allegedly infringing work. If there are literal similarities, this defense may be difficult. If, however, the literal similarities are limited, or the similarities involved are non-literal, then a reasonable defense involving a challenge to the scope of the similarities involved in the case can be effective.
A defendant can claim the potential defense of fair use, which permits certain limited use of copyright protected material without approval from the copyright owner. Fair use is only available as a defense if the use of the copyrighted material has important value for the public interest, such as uses involved in news reporting and research.
Remedies for Copyright Infringement
A plaintiff will seek one of three remedies when enforcing his copyrights: an injunction, damages, or criminal sanctions.
An injunction is a court order compelling the defendant to cease all use of the copyright protected material.[10] One form of injunctive relief often sought in infringement cases is a temporary restraining order, referred to as a “TRO”. A court will issue a TRO without a hearing and a TRO is valid for only a short period of time, generally until the court issuing the TRO can hold a hearing on whether to issue a preliminary injunction.[11]
If a court grants a preliminary injunction, it remains effective for the duration of the trial, until the court makes its final determination on the infringement claim.[12] If the court finds infringement, part of its final ruling may involve issuing a permanent injunction to extend permanently the bar on the infringing use of the copyrighted material first established by the TRO and the preliminary injunction.
A court is often reluctant to issue a TRO, despite a plaintiff’s eagerness for one, because it is an action taken without the benefit of a hearing at which the defendant can make any of her arguments. A preliminary injunction hearing can involve extensive evidentiary input for the court from the plaintiff and the defendant. Prior to issuing a TRO or preliminary injunction, courts may require the plaintiff to post a bond which would be used to compensate the defendant if it suffers damages resulting from the injunction and if the court ultimately determines that there has been no copyright infringement.
A request for a TRO and preliminary injunction must persuade the court that the immediate injunctive relief is necessary to prevent substantial and irreparable harm to the copyright owner. More specifically, a court must find that the plaintiff has demonstrated that it has a likelihood of ultimate success on the merits at trial or has raised sufficiently significant questions on the merits of the dispute to make them fair ground for litigation that the plaintiff has demonstrated that it is likely to suffer irreparable injury in the absence of the injunction.[13]
The standards of proof for both a TRO and preliminary injunction are extremely high because these injunctions are issued before the full evidence offered at trial can be presented to the court. The court is making these determinations based on incomplete evidence without the benefit of full input from the defendant. Accordingly, courts are extremely reluctant to issue these injunctions in advance of the full trial and will only do so when persuaded that this type of extraordinary action is required because of significant immediate potential harm to the copyright owner.
A plaintiff in a copyright infringement suit can also ask the court is issue a writ of seizure.[14] This is a court order compelling federal marshals to seize and impound merchandise that infringe on copyright and manufacturing equipment used to produce the infringing merchandise. A court will require a plaintiff who seeks a writ of seizure to post a bond equal to at least twice the value of the material to be seized.
Monetary Damages
Another key remedy in copyright infringement actions is court-awarded monetary damages, which are payments a defendant must provide to the copyright owner if the court ultimately concludes that she infringed on his copyright.
One category of monetary damages is actual damages. Actual damages include the provable value of the harm caused to the copyright owner by the infringing conduct. For example, if a company successfully proves that a defendant sold a pirated version of its copyrighted software product, actual damages for that activity would include revenues the defendant earned from the sale of the pirated version of the software.
A second type of damages available are statutory damages. Established by federal law, statutory damages can be awarded at the court’s discretion without the plaintiff demonstrating actual damages. In a copyright infringement case, the federal court can award statutory damages between $750 and $30,000 as the court sees fit, and if the court determines that there has been willful infringement, it can award $150,000 in statutory damages.[15]
A court may also award the plaintiff her attorney fees and court costs.[16] Those amounts can only be awarded if the plaintiff properly registered her copyright and are again within the court’s discretion.[17] The United States Supreme Court determined that attorney fees and court costs can be awarded to both plaintiffs and defendants who prevail in copyright infringement litigation, at the discretion of the court.[18]
Finally, in some instances, criminal penalties can be imposed on a defendant. For example, the Piracy and Counterfeiting Amendments Act of 1982 introduced felony penalties for criminal copyright infringement of sound recordings or audiovisual works.[19] These penalties are primarily aimed at punishing copyright pirates, and criminal sanctions can only be pursued by federal prosecutors. In cases where there has been a civil law judgment of copyright infringement, the prevailing plaintiff may request that a federal prosecutor initiate an action for forfeiture of equipment used to manufacture the infringing products, however, such actions are entirely at the discretion of the federal prosecutor.[20]
Copyright Enforcement without Litigation
To save time and money, parties may prefer to resolve copyright disputes without litigation. Generally, the first step in the process of copyright dispute resolution is the presentation of a “cease and desist” letter, a communication sent from the copyright owner to the alleged infringer. In most cases, the cease and desist letter identifies the copyrighted work at issue and presents a valid claim of ownership to that property. The cease and desist letter also specifically describes the alleged infringement and the rights of the copyright owner regarding the infringement. The communication should also specifically demand that the infringing conduct cease immediately and that the alleged infringer provide an accounting of all infringing activities.
The goal of the cease and desist letter is to persuade the alleged infringer to stop the infringing conduct immediately and to begin negotiations with the copyright owner regarding appropriate licensing and other compensation for use of the copyrighted material. The cease and desist letter puts the alleged infringer on notice of the copyright claim and can serve as an important prelude to copyright infringement litigation if the alleged infringer fails to modify its conduct regarding the copyrighted material.
In addition to litigation, a copyright infringement dispute can be resolved via alternative dispute resolution methods. With the agreement of all involved parties, arbitration and mediation processes can be used to resolve copyright disputes. In some instances, federal courts handling copyright infringement lawsuits encourage the parties to participate in alternative dispute resolution proceedings to solve the problem without the time and expense of a trial in federal court.
[1] 28U.S.C. §1338
[2] 17U.S.C. §1400
[3] 17U.S.C. §410
[4] 17 U.S.C. §410
[5] 17U.S.C. §501
[6] 17U.S.C. §507
[7] “Copyright Infringement and Enforcement in the US,” The American Assembly, Columbia University, http://piracy.americanassembly.org/wp-content/uploads/2011/11/AA-Research-Note-Infringement-and-Enforcement-November-2011.pdf
[8] Bucklew v. Hawkins, Ash, Baptie & Co.LLP, 329 F.2d 923 and Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F. 2d 607
[9] Sid & Marty Krofft TV Prods. v.McDonald’s Corp., 562 F.2d 1157 (1977).
[10] 17U.S.C. §502
[11] Fed. R.Civ. P. 65(b)
[12] Fed. R. Civ. P. 65(a)
[13] Salinger v. Colting, 607 F.3d 68
[14] 17 U.S.C. §501
[15] 17U.S.C. §504
[16] 17 U.S.C. §507
[17] 17U.S.C. §412
[18] John C, Fogerty v. Fantasy, Inc., 510 U.S. 517
[19] 97 P.L.180, 96 Stat. 91, 97 P.L. 180, 96 Stat. 91
[20] 17U.S.C. §509