Copyright Infringement and Remedies

Copyright infringement occurs when a party violates any of the copyright owner’s exclusive rights. Assuming ownership of a valid copyright and no applicable authorization, infringement requires both of the following:

  • the alleged infringer, as a factual matter, copied from the copyright owner’s work in a manner that implicates the copyright owner’s exclusive rights (eg, reproduction, public performance); and
  • the alleged infringer appropriated enough of the copyright owner’s original expression to give rise to liability.

Application of these requirements in any particular case can vary widely depending on the nature of the defendant infringer’s activity. In a traditional case focused on a single work, where the defendant did not copy the plaintiff’s work literally or in its entirety, there may be a substantial factual question as to whether the defendant even knew of the plaintiff’s work, and even assuming the fact of copying, as to whether the defendant copied a sufficient amount of the plaintiff’s work to consider the works ‘substantially similar’. In a case involving the legality of an unlicensed online service, it is typically not disputed that the plaintiff’s works were used in their entirety; the questions typically are, instead, whether the service is of a type that implicates the copyright owner’s exclusive rights and whether the service provider is legally responsible for the activity.

Vicarious and Contributory Liability

Does secondary liability exist for indirect copyright infringement? What actions incur such liability?

Secondary liability for indirect copyright infringement has been established by case law, although it is not specifically prescribed by statute. Secondary liability can be found under several theories:

  • vicarious liability, when the defendant has the ability to supervise the infringing conduct and benefits financially from the infringement;
  • contributory infringement, when the defendant has knowledge or reason to know of the infringement and contributes to, authorizes or induces the infringement; and
  • inducement as discussed in the Supreme Court’s Grokster decision, when the defendant acts with the object of promoting infringement, as shown by clear expression or other affirmative steps taken to foster infringement.

Available Remedies

What remedies are available against a copyright infringer?

Remedies for copyright infringement can include:

  • payment to the copyright owner of any profits the infringer received and of any losses suffered by the copyright owner or, in some circumstances, ‘statutory damages’ as an alternative to actual profits and losses;
  • a court order restraining the infringer from continuing the infringing activity;
  • confiscation and destruction of the infringing items; and
  • attorneys’ fees.

Limitation Period

Is there a time limit for seeking remedies?

The statute of limitations for bringing a civil copyright infringement claim is three years (and five years for criminal actions). It is measured from the time the claim accrued. In most courts, a claim is considered to accrue at the time the plaintiff knew or had sufficient reason to know that the infringement occurred. However, some courts may view a claim as accruing at the time the infringement occurred. If, at the time of suit, the infringement has been ongoing for more than three years since the claim accrued, the copyright owner will at least be able to pursue remedies for the infringements occurring within the past three years. However, where the essence of a copyright claim is a dispute concerning ownership of the copyright, courts have rejected the assertion of an ongoing wrong and have dismissed the claim if it was brought more than three years after it accrued.

Monetary Damages

Are monetary damages available for copyright infringement?

Monetary damages are available for copyright infringement. A party found liable for copyright infringement may be found liable for either the copyright owner’s actual damages and any additional profits of the infringer or statutory damages within a prescribed range, as provided by the Copyright Act. However, statutory damages are available only if registration for the infringed work was obtained within certain time requirements.

Attorneys’ Fees and Costs

Can attorneys’ fees and costs be claimed in an action for copyright infringement?

Both costs and attorneys’ fees can be claimed in a copyright infringement action. They may be awarded to a prevailing party at the court’s discretion if the work was registered with the US Copyright Office within certain time requirements.

Criminal Enforcement

Are there criminal copyright provisions? What are they?

The Copyright Act has criminal provisions. It is a criminal offence to willfully infringe a copyright if the infringement was committed:

  • for either commercial advantage or private financial gain;
  • by the reproduction or distribution, including by electronic means, during a 180-day period, of one or more copies or phonographic records of one or more copyrighted works that have a total retail value of more than US$1,000; or
  • by the distribution of a work being prepared for commercial distribution by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution.

Title 18 of the United States Code (18 USC section 2319C) specifies an additional infringement-related criminal offence: willfully, and for purposes of commercial advantage or private financial gain, providing to the public a digital transmission service with the primary purpose of making infringing public performances of copyrighted works.

The Copyright Act specifies various other copyright-related criminal offences:

  • placing a fraudulent copyright notice on any article, or publicly distributing or importing for public distribution any article bearing such fraudulent notice;
  • removing or altering any notice of copyright appearing on a copy of a copyrighted work with fraudulent intent;
  • knowingly making a false representation of a material fact in an application for copyright registration, or in any written statement filed in connection with the application; and
  • willfully and for purposes of commercial advantage or private financial gain violating the provisions of the Act concerning circumvention of technological protection measures or those concerning protecting the integrity of copyright management information.

Online Infringement

Are there any specific liabilities, remedies or defenses for online copyright infringement?

Yes. Section 512 of the Copyright Act provides a conditional safe harbor for online service providers by shielding them from money damages and limiting injunctive relief for certain acts of direct and secondary liability when they meet certain requirements. In particular, safe harbours are provided for transitory digital network communications, system caching, storage of information at the direction of a user, and the provision of information location tools, subject to detailed requirements for each safe harbour and certain generally applicable requirements.

Prevention Measures

How may copyright infringement be prevented (including, for example, customs enforcement measures and any technological notable developments)?

Copyright owners in the US employ a mix of strategies to control copyright infringement, including:

  • discouraging infringement by applying to their works a statutory copyright notice and sometimes other warnings against infringement, and by registering their works with the Copyright Office;
  • employing technological protection measures to frustrate infringement;
  • recording their works with US Customs and Border Protection to try to keep infringing copies out of the US market;
  • policing the market to identify infringements, including sometimes by hiring specialized contractors to identify online infringements;
  • invoking statutory or informal notice and takedown procedures to remove infringing material from online services;
  • sending ‘cease-and-desist’ letters demanding that infringers stop infringing activity;
  • bringing civil actions; and
  • in appropriate circumstances, working with law enforcement authorities concerning possible criminal enforcement.

Trade associations and collecting societies representing copyright owners also take various measures on a collective basis to control infringement, including:

  • supporting programs to educate and inform the public concerning copyright compliance and legitimate sources of copyrighted material;
  • operating telephone ‘tip lines’ and investigating infringements;
  • facilitating collective enforcement action; and
  • working with US government trade officials to resolve significant infringement issues abroad.

Copyrights

The legal heart of any creative production is its copyright. When a playwright (or author or filmmaker or other creator) composes material, they write down the specific dialog, or describes the scene, and chooses the precise words to use. Copyright law does not protect the general ideas and themes. Copyright does protect against the unauthorized use of how those ideas and themes are expressed in writing. The author owns the series of words written that form the work.

A copyright is a type of protection provided by federal law to authors of intellectual works, such as literary works, drama, music or artistic works. Intellectual works can also include choreography, sculptures, movies, sound recordings and architectural designs. Some things that can’t be copyrighted are works that aren’t in a tangible fixed form (such as performances that aren’t recorded or written), slogans, titles, names, ideas, procedures, discoveries, and works that consist only of common property (such as standard calendars).

The holder of a copyright on a book, painting, play, song or other work of art is the only one who can reproduce the work, perform the work publicly, distribute or display the work. Unauthorized use of any work protected by copyright is a violation of federal law.

In order to obtain a copyright, no action with the federal Copyright Office is needed. A copyright is automatically secured when the work is created. When a work is published, the author may choose to place a notice of copyright on the work to notify the public that the work is copyrighted. The notice varies among art forms, however, it usually includes the symbol ©, the year of publication of the work and the name of the owner of the work.

Many people also wish to register their copyrights with the Copyright Office. Although registration is not required in order to be protected by a copyright, registration has several advantages. Most importantly, registration establishes a public record of the copyright. Registration is necessary before a copyright infringement suit can be filed. If a copyright is registered and it is then infringed, statutory damages and attorney’s fees are available. Otherwise, if the copyright is not registered, only an award of actual damages and profits is allowed. Registration also allows the copyright owner to record the copyright with the U.S. Customs Service, which will help protect against importation of infringing copies.

In order to register a copyright, some basic information is needed. When was the work created? When was the work originally published? Is this an original work or a derivative work? Was the work created for hire (i.e., done by an employee)? Is the work entirely original? When was the work completed?

Amy can assist an author or creator of a work in registering a copyright. Once the copyright has been obtained, I will work with the owner to ensure the copyright is properly retained and enforced. I can also help with any legal issues that arise under the Digital Millennium Copyright Act, which has adapted copyright law to keep pace with a digital world. The DMCA protects service providers from copyright liability that may arise from the infringement by their users.

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