This article has been written by Paras Gupta. This article provides a comprehensive understanding of copyright infringement in the US, the types of infringement and their elements that make different people liable, the statute of limitation within which the suit for copyright infringement must be made and the standing that gives people the right to sue. This article comprises the punishments that one has to go through for copyright infringement and the defense of fair use that one can take so as to protect himself from being adjudged guilty, along with the landmark case laws, giving an in-depth knowledge of the practicalities of various provisions of copyright infringement. 

Introduction 

The US common law protected printers’ intellectual property rights first (due to the creation of the printing press in the fifteenth century) before authors. The US copyright law is an outgrowth of English Common Law. In 1710, Britain passed the Statute of Anne by which the authors were conferred upon the right to control re-production of their works for 28 years. After 28 years, the author’s work was said to have entered the public domain, permitting anyone to distribute or print the work without paying a royalty to the author for the right to distribute or without obtaining the author’s permission. By the late eighteenth century, however, the protection of intellectual property interests was considered as one of the important means for advancing the public interest, thereby granting monopoly to the originator of the creative work.

For promoting the progress of useful arts and science and recognizing the importance of the protection of intellectual property, the Congress in the USA, passed the first copyright statute in 1790. The statute was substantially revised many times, most notably in 1831, 1870, 1909, 1976, 1998 and 2005. In 1831, musical compositions were granted copyright protection while in 1870, the copyright protection was granted to statues, paintings and other works of fine arts. In 1909, the copyright owners were given the right to renew a copyright for 28 years beyond the initial term of 28 years established by the statute while in 1976, the unpublished works were brought within the ambit of federal copyright law. In 1998, the Digital Millennium Copyright Act (DMCA) was passed and in 2005, the Family Entertainment and Copyright Act was passed by the Congress.

In order to protect the value of academicians, authors’ and researchers’ works and to give the originator of the work the ability to protect it from uncredited and unlicensed usage, the Congress has provided for the remedies of copyright infringement under Chapter 5 of the Copyright Act. Chapter 5 of the Copyright act deals with “Copyright infringement and remedies [501-510]” thereby providing the remedies of injunctions; disposition and impounding of the infringing articles; damages, profits, and attorney’s fees to the copyright owners’ giving them a full-fledged protection against the misdeeds of the infringers. 

What is copyright infringement

A copyright is an exclusive right to publish, reproduce, publish or sell the matter or form of something. A copyright is a type of intellectual property that completely assigns the legal rights of an invention to the originator of the idea or work. It protects the original work of authorship when an author fixes the work in a tangible form of expression. 

A copyright infringement harms what the law seeks to protect, by causing an injury or infringing the exclusive rights of the owners of the copyright. Copyright infringement can be defined as the distribution, reproduction, or display of any work without the consent of the originator. A copyright infringement happens when any of the exclusive rights outlined in § 106 of Title 17 US Code are infringed. This Section states that a copyright infringement occurs when the exclusive rights of the owner of the copyright to reproduce the copyrighted work in phonorecords or copies, to prepare derivative works based upon the copyrighted work, to distribute phonorecords or copies of the copyrighted work to the public by lease, rental or lending or by sale or other transfer of ownership, to perform or display the copyrighted works publicly in the case of musical, literary, choreographic, literary, motion pictures and other audiovisual works or to perform the copyrighted work publicly in the case of sound recordings by means of a digital audio transmission are infringed. A copyright infringement is the production or use of a copyrighted work without the permission or authorization of the copyright holder. 

Types of infringement 

A work is generally copyrighted in order to ensure that those who develop or put their efforts into it can profit from it. However, when a copyrighted work is infringed, the hard work and efforts of the inventors come at stake. In order to fully protect themselves from the infringement that is done by a person directly and from the infringement that is done by some person for the benefit of some other person, the law had categorized copyright infringement in the following two types so as to help the owners of the copyright in opting for  the best legal solution depending on the infringement that is occurred on their rights: 

Primary infringement

A primary infringement is a direct infringement by the infringer. The act of primary infringement does not require the intention or knowledge to infringe on the part of the infringer. An act of primary infringement occurs if a person duplicates the work or issues duplicates of the work, loan or rents the work to the public, play, display or perform the work in the public, make an adaptation of the work or perform the work in the public.

Secondary infringement

A secondary infringement occurs when someone facilitates another in infringing on a copyright. There are two types of secondary infringement, i.e. vicarious and contributory infringement. Under secondary infringement, a third party supports or enables the infringement and the plaintiff also probably needs to show that the third party received a benefit from the infringement. 

Elements of copyright infringement in the US

There are generally two elements for proving copyright infringement:

Ownership of the copyright

The first and foremost thing that is mandatory for the infringement of copyright is the existence of the copyright. The plaintiff must own some or all of the copyright in order to sustain a claim for the infringement action. For example, in Work For Hire contract, it is the employer and not the creator who is actually the owner of the copyright. If the suit for infringement of the copyright is filed by the creator of the copyright under “Work For Hire Contract,” his suit will not be valid and will be dismissed as he is not the owner of the copyright. 

Unauthorized copying 

For an infringer to be liable for copyright infringement, it is pertinent that he must have copied the work from the owner of the copyright. If the accused infringer can prove that he independently created the work in question, this will be an absolute defense against the infringement. The copyright owner generally has to prove that the two works are substantially similar from the viewpoint of a prudent observer and that the infringer had access to the work. If the copyright owner making the allegations against the person for infringement can prove these two things, the burden will then shift to the accused infringer to prove independent creation of the work in question. The proof of copying is often accomplished through circumstantial evidence when the plaintiff demonstrates that there is a substantial similarity between the works of the plaintiff and the defendant and the defendant had access to the original work.

Procedural issues in copyright infringement actions 

The procedural issue in general means any issue concerning a guideline, process or timing in a suit. The procedural issues in copyright infringement refer to the issues that arise in the suit of copyright infringement that will materially question the capacity of the party to pursue the case. One has to take into consideration the procedural issues of whether the subject matter of their case comes within the subject matter jurisdiction as defined in the US law, whether they have the locus standi to pursue the case, whether the suit comes within the limitation period and whether the said copyright infringement comes within the sovereign immunity or not.

Subject matter jurisdiction

What can be considered under the subject matter of jurisdiction

17 U.S. Code § 102 provides that the subject matter jurisdiction subsists in original works of authorship fixed in any tangible medium of expression. Copyright protection does not only limit itself to the original works but also extends to all the subjects from which the original works of authorship can be reproduced, perceived, or otherwise communicated, either directly with the help of a device or a machine. Further explaining the works of authorship, 17 U.S. Code § 102  provides that the works of authorship include literary, dramatic, and musical works; choreographic and pantomime works; graphic, pictorial, and sculptural works; motion pictures and other audiovisual pictures; architectural works; and sound recordings.

What cannot be considered under subject matter of jurisdiction

§102(b) of Title 17 of the U.S. Code provides that the copyright protection for any original work of authorship does not extend to any procedure, idea, system, process, concept, method of operation, discovery, or principle. The so-said copyright protection does not extend to any procedure, idea, system etc. regardless of the form in which it is explained, described, illustrated, or embodied in such work.

Problem of subject matter jurisdiction in copyright infringement 

The problem of subject matter jurisdiction under the United States Copyright Act, 1976 is said to be one of the “knottiest procedural problems in copyright jurisprudence” when it comes to the subject matter jurisdiction of the federal courts in the USA. The problem is, “when does a copyright claim or issue under the Copyright Act that is factually related to a State law be sufficient enough to provoke federal court jurisdiction?”

The opinion of the United States Supreme Court in Wilson v. Sandford (1850) and American Well Works Co. v. Layne & Bowler (1916) has laid the foundation of the approaches that the federal Courts today take while analyzing the copyright jurisdictional issue.

In Wilson v. Sandford, the issue was whether the federal court had jurisdiction to hear the plaintiff’s appeal from the dismissal of the suit. The court in this case gave interpretation to the last clause of the 17^th Section of the jurisdictional statute, which has granted jurisdiction to the United States Supreme Court in all actions, suits, and controversies on cases arising under any law of the United States, confirming or granting to inventors the exclusive right to their invention. From this case, it follows that an action such as one under the Copyright Act does not arise under any Act of Congress if the action is solely based on the State common law or equitable principles. In addition, the decision suggested the grounds on which a plaintiff’s complaint may be found to arise under an Act of Congress, such as a Copyright Act or a Patent Act.

In  American Well Works Co. v. Layne & Bowler (1916), the plaintiff owned a certain pump, which the defendants falsely and maliciously slandered and libeled by stating that the pump and certain parts of it are infringements on the defendant’s pump. The plaintiff further alleged that the defendant sued some users of the plaintiff’s pump and has threatened suits against others, claiming that the users of the plaintiff’s infringed upon the defendant’s patent. 

In this case, the Supreme Court was asked to determine if the plaintiff’s claim was resting within the exclusive jurisdiction of the federal laws because it arose under the patent law. The Supreme Court stated the rule that the suit arises under the law that creates the cause of action. The Court reasoned in the present case that the plaintiff’s suit was one for damages to its business, which resulted from the defendant’s suit and threatened suits under the patent. The Court held that the defendant’s actions were “wrongs” because they caused the plaintiff a business injury. This result was dependent “upon the law of the States where the act is done, and not upon the patent law.” As such, it was held that the United States District Court lacked jurisdiction to hear the case. 

The “Paradigm” Analyzed : T.B. Harms Co. v. Eliscu (1964)

Facts of the case

In this case, the defendant had interests in the copyrighted music. The plaintiff alleged that the defendant had signed a contract under which it had assigned the rights to the music back to its principal stockholder, i.e., Dreyfus on June 30, 1933. When the copyrights in the music were about to expire, the defendant entered into an agreement to assign the renewal rights to Jungnickel on January 19, 1962, pending determination of the defendant’s  ownership. The plaintiffs were told by the defendant’s that they had assigned the renewal rights to someone else. Following this assignment, the defendant came to know that it possessed one-third interest in the renewal rights and demanded an accounting for the same from T.B. Harms. To enforce this request, the defendant initiated an action against the plaintiff in the New York Supreme Court for seeking a declaration that he owed one-third of the interest in the copyrights and forcing T.B. Harms Company to provide an accounting. The plaintiff sued the defendant in reply to the suit, seeking declaratory relief against Jungnickel and the defendant. All the parties were citizens of New York. Jurisdiction was predicated on the Copyright Act, which is a federal law. The district court, however, dismissed the suit for lack of jurisdiction, to which Plaintiff appealed in the Court of Appeals.

Issue of the case

Whether the plaintiff’s claim against the defendant is created by the Copyright Act so as to confer jurisdiction pursuant to 28 U.S.C. Section 1331?

Judgment

The Court of Appeals held that the plaintiff’s claim against the defendant is not created by the Copyright Act. It further observed that the test to determine the federal jurisdiction is whether the suit arises under a law that creates cause of action. There is another test to determine if there is a federal jurisdiction or not, i.e., whether there is a remedy available under the federal law on which the jurisdiction is based. The Court observes that as the issue in the case is whether the defendant assigned his rights to the music to the plaintiff, it does not arise from the Copyright Act as the Act only permits the assignment of such rights.  

Standing

Standing here stands for “Standing to sue” which is derived from the Latin word “locus standi” which means that the person requesting compensation or adjudication against another party by filing a lawsuit must be a “proper party”. In simple words, you have to have a standing in the eyes of law for a lawsuit to be validly filed. Standing is the capacity of a party to bring suit in court. 17 U.S. Code § 501 provides that the beneficial or legal owner of an exclusive right is entitled to institute an action for any infringement of that particular right, that is committed when he or she is the owner of it. Title 17 Section 504 of the US Code further allows suits for the infringement of a copyright, which provides that one who infringes the copyright shall be liable to pay the copyright proprietor, damages. Section 112 of Title 17 U.S. Code (1958) allows “any party aggrieved” to file for an injunction to restrain and prevent the violation of any right secured by the Copyright Act. This Section, however, has been narrowly interpreted so as to require a party to the suit to be the “copyright proprietor.”

Problems in Standing 

As discussed above, only a copyright proprietor can sue for the infringement of the copyright. However, there exist the below-mentioned two cases where the court, while trying to protect the legitimate interest in the copyright, has to simultaneously prevent the multiplicity of proceedings.

Right to sue can’t be conferred to any third person 

The statutory monopoly obtained by the owner of the copyright is legally indivisible, which means, though a composer or an author may obtain a copyright for his work so as to protect it against any republication without his authorization, he cannot sell such an exclusive right of protection to any other person directly if he so desires, so as to confer upon his purchaser the right to sue for any infringement. 

The exclusive licensee of less than the entire copyright is the first protected transferee. He is the first protected transferee, since no one other than him can be legitimately granted the rights that have been granted to him. The exclusive licensee is the “substantial owner” of the copyright and has an implied right to sue. As a result of the divergence between the legal theory of indivisibility and the everyday splintering transactions of the business world, standing to sue in infringement cases has become an increasingly difficult problem. 

Evolution of an overall interest approach

The overall interest approach says that only those who have sufficient interest in the copyrighted work have the authority to sue. What is “sufficient interest” however, varies from case to case. The overall interest approach in problems related to standing to sue in copyright can be said to have begun from the case of Tully v. Triangle Film Corp. (1916), wherein the plaintiff was a copyright owner who had kept with himself the motion picture rights and transferred the stage rights to the third party. The defendant has allegedly infringed on the plaintiff’s copyright through the production of a motion picture. Tully joined the assignee of the stage rights as a result of the said infringement, whereupon the defendant filed for the motion to dismiss on the grounds of the mis-joinder. Agreeing in favor of the defendant and dismissing the complaint, the Court held that the assignee of the stage rights has no interest with respect to the presentation by motion picture and hence the complaint was dismissed. 

In the above said case, the Court has regarded as, irrelevant, a suggestion that the motion picture presentation of the copyrighted work would be financially injurious to the assignee of the stage rights. However, economic injury has in, recent times, been given great weight in determining what amounts to legitimate interest.  

Where copyright has been transferred but some interest in it is retained

The standing to sue becomes a problem when copyright has been transferred, but something akin to royalty interest is retained. The standing to sue becomes a matter of adjudication when the authority to use the copyrighted work has been given to some other party while retaining the royalties that are coming from other sources. Although the legal title to the copyright rests with one person, and he has not transferred any part of it, it may be shown that he holds the title as trustee for a third party having beneficial ownership. The owner of the equitable title has the ability to sue in his own name, but the equitable title-holder will have to face a threshold jurisdictional problem that did not have to be faced by a licensee. In order to avoid multiplicity of proceedings, the Court will have to first determine whether the person suing is an equitable owner or a licensee and thereupon determine if he is entitled to sue for the infringement of the copyright or not.

Statute of limitations

A suit for the claim of the copyright infringement must be made within three years of the copyright infringement, as per 17 U.S.C.§ 507(b). In order to determine when the claim begins to accrue, the federal courts have adopted two tests, i.e., the discovery rule and the injury rule.

Discovery rule

Under the discovery rule, the statute of limitation begins only when the plaintiff comes to know or should have reasonably known that his or her copyright has been infringed. All acts of the defendants accrue simultaneously under this rule, beginning when the plaintiff is aware or should be aware of the violation of his or her copyright. The Courts in the Eleventh Circuit utilize the discovery rule so as to determine the timeliness of filing a suit for copyright infringement.

Injury rule 

Under the injury rule, each act of infringement accrues separately. Under this rule, regardless of whether the plaintiff had any knowledge of such an act of infringement of his copyright or not, each act of infringement begins at the time when the infringement occurs. Under this rule, while applying the statute of limitations, the acts of infringement that occur within a period of three years period of the statute of limitations are timely, while each act of infringement occurring more than three years prior to the filing of suit is time-barred. 

Duration of copyright

For the statute of limitations, it also becomes pertinent to know the duration of the copyright, as the infringement of the copyright will be considered only if it is committed during the existence of the copyright.  The duration of copyright protection is governed by the Sonny Bono Copyright Term Extension Act of 1998 in the United States of America. If any person without the consent of the original author uses his work in any way, such person will be liable for copyright infringement and, hence, punishment. The provisions under the Sonny Bono Copyright Term Extension Act of 1998 depend on when the work was created and when it was published. According to the time of publication, the duration of the copyright can be divided into the following sub-heads:

Works registered, created or published before 1978

The works registered, created, or published before 1978 are governed by 17 U.S.C. § 304. This Section generally deals with the copyrights whose first term is subsisting on January 1, 1978. Under this Section, the copyright whose first term is subsisting on January 1, 1978, shall endure for 28 years from the date it was originally secured. During the last year of the first term, the copyright shall be eligible for renewal and if the application for the same is made to the copyright office within 1 year before the expiration of the term, the copyright will be renewed.

In the case of a post-humous work or any cyclopedic, periodical, or other composite work upon which the copyright was originally secured, or in the case of any copyrighted work of a corporate body, the proprietor is entitled to the extension and renewal of the copyright for a further term of 67 years. The Section further provides that if the author of the work is living or if the author is not living, the widow, widower, or children of the author, and in their absence, the author’s executors, can renew and further extend the copyright for a further term of 67 years. 

Works created but not published or registered before January 1, 1978

The works created but not copyrighted or created before January 1, 1978 are governed by 17 U.S.C. § 303. It provides that the work created but not copyrighted or created before January 1, 1978 shall in no case expire before December 31, 2022, and if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.

Works created on or after 1978

This is dealt with in 17 U.S.C. § 302. §302(a) provides that the copyright in a work created on or after January 1, 1978 shall subsist from its creation and endure for a term consisting of the life of the author and 70 years after the author’s death. Where the work is created or prepared by two or more authors, §302(b) provides that the copyright endures till the life of the last surviving author and 70 years after the death of that last surviving author. §302(c) provides that the copyright endures for a term of 95 years from the year of its first publication and 120 years from the year of its creation in the case of a pseudonymous work, an anonymous work, or a work made for hire, whichever expires first. 

Sovereign immunity

Sovereign immunity is a doctrine that makes State entities and States immune from lawsuits under federal law in the USA. In 1990, the Congress sought to eliminate sovereign immunity in the copyright context by enacting the Copyright Remedy Clarification Act, 1990 (CRCA) under the authority of the Intellectual Property Clause of the Constitution (Article 1, Section 8 Clause 8). 

The validity of CRCA was recently examined by the U.S. Supreme Court in Allen v. Cooper (2020) in which the Court held that the Congress lacks authority to abrogate sovereign immunity under the Intellectual Clause, holding CRCA invalid in this regard.

Sovereign immunity under the Constitution of USA

The roots of the doctrine of sovereign immunity go back to the Eleventh Amendment of the Constitution, which states that the judicial power of the United States shall not extend to any suit in law or equity that is prosecuted or commenced against one of the United States by subjects or citizens of any foreign State or by citizens of another State. 

The Court in Ex Parte Young (1908) clarified the meaning of “any suit” under the Eleventh Amendment to the Constitution and held that suits seeking injunctive relief against State officers in their official capacity may be brought in federal court. The ruling means that an injunction may be obtained against a State official so as to end a continuous violation of a federal law by a State entity, even when the State cannot be sued directly.

Basis for suits against states

It’s not that a State is completely protected from any and every copyright infringement under all circumstances. The State can be sued in federal court in the following cases:

Waiver of sovereign immunity

A State can be sued for damages in federal court if it abandons or waives its sovereign immunity under the Eleventh Amendment of the Constitution. A State can waive its immunity by either entering into a consensual agreement with one or more other States under the Compact clause of the U.S. Constitution or through its legislation or Constitution. Actions by properly authorized State officials may also constitute waivers, such as removing a case from State court to federal court, appearing in federal litigation or agreeing in a contract to have disputes resolved in federal court.

Though the plaintiffs have argued that the States have constructively waived their immunity in the absence of an action signifying waiver or an express waiver, the U.S. Supreme Court in Edelman v. Jordan (1974) rejected the theory of constructive denial, ruling that the State cannot constructively waive its immunity by simply participating in a federal program. The Court held that constructive consent is not a doctrine commonly associated with the surrender of constitutional rights. In deciding whether a State has waived its constitutional protection under the Eleventh Amendment, the waiver can only be held by an express language or by such overwhelming implications from the text that will leave no room for any other reasonable construction.    

Congressional abrogation of sovereign immunity 

There was another way by which a State could be sued for damages in federal court, i.e., if Congress abrogated States’ sovereign immunity, but the same seems to end after the ruling in Allen v. Cooper (2020). 

The Allen v. Cooper Decision (2020)

Facts of the case

This case goes back to Pirate Teach (known as Bleackbeard), who, in 1717, captured a French vessel in the West Indies and renamed it as Queen Anne’s Revenge. When the ship hit a sandbar one mile off the coast of North Carolina and sank in 1718, he abandoned the ship, whose wreck was discovered by a marine salvage company, Intersal, in 1996. In order to recover it, the Department of Natural and Cultural Resources signed an agreement with Intersal. A photographer named Rick Allen was retained by Intersal so as to document the salvage effort.

Allen later got his videos and photographs registered for copyright. In 2013, when the Department posted some of the images taken by Allen online, he accused the Department of copyright infringement, and the Department moved to dismiss the suit based on State sovereignty.

The District Court held that the Congress had validly abrogated State sovereign immunity under Section 5 of the Fourteenth Amendment, thereby denying dismissal of  the motion. On appeal, the Fourth Circuit reversed the decision of the District Court, holding that Congress could not rely on the IP clause to abrogate sovereign immunity and that the Copyright Remedy Clarification Act swept too broadly to be valid legislation to enforce the Fourteenth Legislation. Rick Allen thereby appealed to the U.S. Supreme Court.

Issue of the case

Whether Congress had the authority to remove State sovereign immunity in copyright infringement cases?

Judgment 

The Court held that the U.S. Constitution prohibits States from being sued for copyright infringement in federal court. The prohibition, known as State sovereign immunity, is based on the Constitutional Protection under the Eleventh Amendment, which immunizes States from being sued in federal court. The Court in a 9-0 opinion, held that the Congress lacked authority to abrogate the States’ sovereign immunity from copyright infringement suits under the Copyright Clarification Act of 1990. 

Substantive issues in copyright infringement actions 

Substantive issue means a matter that is integral to the determination of whether the victim of copyright infringement is eligible for getting the claims that he is demanding before the court. Under the head substantive issues in copyright infringement, the issues of substantive similarity, contributory infringement, innocent infringement and criminal infringement falls. The court, while deciding on the issue of copyright infringement, has to make its stand clear on the above said issues before granting any relief to the victim of copyright infringement. 

Substantial similarity

A substantial similarity is a level of similarity that shows improper appropriation of the plaintiff’s work. It is one of the requirements for a prima facie infringement claim. If similarity exists only with regard to the unprotectable elements of the work or if the similarity in the defendant’s work to the protectable elements in the plaintiff’s work is minimal, then there will be no substantial similarity.

Test for substantial similarity 

While determining whether a copyright infringement has been committed by someone or not, the Courts use the substantial similarity test. However, in deciding whether a work is substantially similar or not, there is no clear-cut or precise formula. Though there is no exact formula, there are standards that the Court can use to reach a decision. The Ninth Court has divided the tests for substantial similarity analysis into “intrinsic” and “extrinsic” tests in Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp. (1977).

Intrinsic test 

This test is viewed by the Ninth Circuit as holistic and subjective. Under this test, the protectable aspects of the plaintiff’s work are compared with the defendant’s work, and then it is determined whether both works are substantially similar in total concept and overall feel. This test looks at the ordinary person’s subjective impressions as to the similarities between the works. 

Total Concept and Overall Feel Test 

It is a test of substantial similarity, wherein the Court compares the plaintiff’s and defendant’s work for similarities in their non-literal elements, such as the coordination and arrangement of expression and the original selection. This test intends to prevent the Courts from mechanically dissecting the work and comparing only the separately copyrightable elements.

Extrinsic test

This test focuses only on the protectable elements of the plaintiff’s expression while assessing the similarities between two works. Under this test, the filtration of the unprotectable aspects of the plaintiff’s works is done and the matter that remains after filtration is compared to the corresponding elements of the defendant’s work in order to assess the similarities in the objective details of the works. 

Inverse Ratio rule

The inverse ratio rule is a part of the extrinsic test. The inverse ratio rule says that the bar for showing similarity between the works is correspondingly lower when it can be shown that the defendant had access to plaintiff’s work. Additionally, when the showing of similarity between the works is very strong, the bar for showing that the defendant had access to the plaintiff’s work is correspondingly lower. A plaintiff has to stand up in both the intrinsic and extrinsic tests in order to succeed in his claim of getting his copyright infringed and get actual and statutory damages from the infringer.

However, it is pertinent to note here that not all Circuit Courts follow this rule. The Ninth Circuit for instance, does follow the inverse ratio rule, while the Second Circuit has rejected it.  

Dismissal of complaint of copyright infringement 

The defendant may move to dismiss the plaintiff’s motion of copyright infringement for failure to state a claim upon which relief can be granted under Rule 12(b)(6) of the Federal Rules of Civil Procedure where the defendant’s and plaintiff’s works are referenced in a copyright infringement claim. The district court will then compare the two works, filter out the unprotectable similarities if there are any, then review whatever similarities remain in the light of literary dimensions and overall concept and feel and dismiss on the basis of that, as a matter of law, if the two works are not substantially similar. Only a Court can decide every aspect of substantial similarity, including the subjective question of whether there is a shared total concept and feel. The dismissal of complaints of copyright infringement for lack of substantial similarity has become so common nowadays that the Second Circuit Court now frequently affirms the dismissal of complaints by summary order rather than full appellate opinions.

The opportunity for the defendants to obtain dismissal of the copyright claims has, however, been substantially restricted by the Ninth Circuit precedent. The dismissal of the copyright complaint is affirmed only when the Ninth Circuit Court concludes that the complaint does not satisfy the extrinsic test for substantial similarity. The pre-discovery dismissal and the summary judgment are indeed held improper by the Court’s precedents in the USA for lack of substantial similarity where the similarities remain after filtration. The subjective intrinsic test is, however, exclusively the province of the jury and is uniquely suited for determination by the trier of facts. The Ninth Court has time and again held in its judgment that it is a reversible error for a district court to decide the intrinsic test on a Rule 12(b) motion. 

Innocent infringement

If an infringer can show that he was not aware and had no reason to believe that the activity constituted an infringement, the Court may find that there is an innocent infringement. An innocent infringement occurs when someone engages in an infringing activity not knowing that his or her conduct amounts to infringement. An innocent infringement occurs most commonly when one knowingly copies from another’s work, reasonably believing that the copying does not amount to infringement.  

Misconceptions about innocent infringement

There are several misconceptions in the people regarding innocent infringement, popular among those is that “an innocent infringement is no infringement” and the defendant has not to pay if the infringement is innocently committed by him without any knowledge that what he is doing is actually infringing someone’s copyright. However, this is not the case. The following points will make these misconceptions of people clear to a great extent. 

An innocent infringement is no infringement 

The people out there generally have a misconception that an innocent copyright infringement done against registered and protected work does not amount to an infringement and hence an infringer will not be liable for the infringement. However, the reality is that an infringer will remain an infringer, no matter whether he has committed the infringement intentionally or unintentionally. The defense of an innocent infringement will benefit the infringer only in the case of reducing some damages that he would have to pay to the author of the work had the infringement been committed intentionally. 

Only statutory damages are to be paid in innocent infringement 

Another misconception among people while taking the defense of innocent infringement is that the defendant infringer will just have to pay reduced statutory damages or that the infringer will get any benefit from the reduction of the actual damages that he would have to pay had the infringement been done intentionally, which is not the case. Section 504 of the U.S. Copyright Act does not provide for reducing an award of actual damages, even if the infringement was committed innocently. The defense of innocent infringement comes into play only while calculating statutory damages for the infringement. Thus, a plaintiff or an authorized author of a work while seeking to avoid the availability of the defense of innocent infringement to the infringer should seek an award of actual damages under 504(b) instead of statutory damages under Section 504(c).    

When is the defense of innocent infringement not available

The defense of innocent infringement will have no relevance in the following cases:

When work contains a copyright notice 

The defense of innocent infringement is unavailable as a matter of law where the copyrighted work contains a copyright notice. Sections 401(d), 402(d) and 404(a) of Title 17 of the U.S. Code provide that an innocent infringement defense is barred as a matter of law where the work infringed contains a copyright notice. The infringer cannot go unpunished even if the copy of the work that the infringer obtained did not have a copyright notice, as in the case of a downloaded or pirated copy. 

When plaintiff seeks actual damages

As explained earlier, there is also a misconception about this defense that it applies no matter what type of damages the plaintiff is seeking for infringement. The defense, however, is found in Section 504(c), which deals with the award of statutory damages. Section 504 does not provide for reducing an award of actual damages if the defendant proves that the infringement was committed innocently by him. Thus, it is pertinent for the plaintiff to take this fact into consideration that in order to avoid the availability of defense, he has to seek an award of actual damages under Section 504(b) instead of statutory damages under Section 504(c). 

Penalty for innocent infringement

Section 504(c)(2) of the USA Copyright Act provides for the penalty for innocent infringement. It provides that where the infringer sustains the burden of proving his innocence and the court finds that the infringer was not aware of his act of infringement or had no reason to believe that his or her acts constituted an infringement of copyright, the Court has the discretion to reduce the award of statutory damages to a sum of not less than $200. 

How to avoid innocent copyright infringement

There are a few things one should take care of in order to stay protected against innocent copyright infringement claims. These are as follows:

Learn applicable copyright laws

It is important that one understand the rights of copyright holders and familiarize oneself with the applicable copyright of his/her jurisdiction. The limitations of fair use and applicable exceptions must be understood in order to understand the use of copyrighted work.

Obtain proper permissions

One of the things that one should ensure is to get adequate permissions from the copyright owner if one plans to use any copyrighted material. Proper permission in writing must be taken and kept securely for any future reference and to avoid any future disputes.

Use creative common licensed content and the content in public domain 

The best way to avoid copyright infringements is to use the content that is offered in the public domain, as these materials have fewer or no usage restrictions and are often free.

Perform proper due diligence 

It is important to do thorough research if one is unaware of the copyright status of any work. One should check any watermarks, licenses, or copyright statements being used with the work, which might give the impression that they are someone else’s intellectual property.

Attribute properly

Whether one has taken permission or not for using a copyright, it is always beneficial to provide proper attributions or credits to the original author or owner of a copyright, as it will demonstrate a sense of respect and will protect against any infringement claims against the user of such work. 

Criminal infringement in the US

17 U.S. Code §506 gives a general definition of criminal infringement. It provides that if the infringement is committed for the purpose of private financial gain or commercial advantage; or by the distribution or reproduction of 1 or more copies or phonorecords of 1 or more copyrighted works, during any 180-day period, which have a total retail value of more than $1,000; or by the distribution of a work being prepared for commercial distribution, by making it available to the members of the public on a computer network, if such person should have known or have knowledge that the work was intended for commercial distribution; such infringement will come under the ambit of criminal infringement and the person committing any of the above three offenses will be liable to be punished for criminal infringement under Section 2319 of Title 18.

Elements of criminal infringement 

The following elements must exist in order to prove someone guilty of criminal infringement:

Existence of a valid copyright

For any infringement to occur, it is mandatory that a valid copyright exists, i.e., the work that is copied must be registered in someone’s name and protected under the US Copyright Act.

Infringement of copyright by the defendant 

A cause of action will not arise if a work that is protected under the Copyright Act is not infringed by the defendant. For an action for infringement to occur, it is mandatory that something must have been infringed. 

The infringement is willful 

For criminal infringement, it is mandatory that the infringement must be willful. If the infringement is not willful, it will amount to innocent infringement, and hence a reduction in statutory damages will follow.

The infringement is for commercial or private financial gain

The infringement must have been done for some commercial or private financial gain. If no private financial or commercial gain occurred as a result of the infringement, the infringer’s defense of fair use can be taken in this regard.  

Penalties for criminal infringement 

18 U.S. Code § 2319 deals with penalties for criminal infringement of a copyright. § 2319(b) provides that any person who commits infringement for the purpose of a private financial gain or commercial advantage shall be imprisoned for not more than 5 years if the offense consists of the distribution or reproduction of at least 10 phonorecords or 10 or more copies of 1 or more copyrighted works that have a total retail value of more than $2,500. § 2319(b) further provides that such person shall be imprisoned for not more than 10 years if the offense is a felony and is a second or subsequent offense under § 2319(a) and shall be imprisoned for not more than one year in any other case. Such imprisonment can be with or without a fine, or only a fine can be imposed in the amount set forth in Title 18.

§ 2319(c) provides that any person who commits an offense of criminal infringement by distribution or reproduction of the copyrighted work under § 506(a)(1)(B) of Title 17 shall be imprisoned for not more than 1 year if the offense consists of the distribution or reproduction of at least 1 phonorecords or 1 or more copies of 1 or more copyrighted works that have a total retail value of more than $1,000. Such imprisonment will increase to not more than 3 years if the offense consists of the distribution or reproduction of at least 10 phonorecords or 10 or more copies of 1 or more copyrighted works that have a total retail value of $2,500 or more. § 2319(c) further provides that such person shall be imprisoned for not more than 6 years if the offense is a felony and is a second or subsequent offense under § 2319(a).

§ 2319(d) provides that any person who commits an offense of criminal infrigement by distribution of a work being prepared for commercial distribution by making the work available on a computer network accessible to members of the public under § 506(a)(1)(C) of Title 17 shall be imprisoned for not more than 3 years, or fine or both. In case, an offense under § 506(a)(1)(C) was committed for the purposes of private financial gain or commercial advantage, the punishment will be imprisonment for not more than 5 years or fine or both; or if the offense is a felony and is a second or subsequent offense under § 2319(a), the punishment will be imprisonment, which shall not be more than 6 years or fine or both; or if the offense is a felony and is a second or subsequent offense under paragraph (2) i.e. (criminal infringement committed for purposes of private financial gain or commercial advantage), the person shall be punished with imprisonment of not more than 10 years or fine or both.

Who can submit a Victim Impact Statement

18 U.S. Code § 2319(e)(1) provides that during preparation of the pre-sentence report pursuant to Rule 32(c) of the Federal Rules of Criminal Procedure, the probation officer shall receive a victim impact statement from the victims of the offense that identifies-

• the victim of the offense;
• the loss suffered by the victim;
• the extent, and scope of the injury, and
• the estimated economic impact of the offense on that victim.

18 U.S. Code § 2319(e)(2) permits the holders of the intellectual property rights in legitimate works and sellers and producers of legitimate works affected by the conduct involved in the offense to submit a victim impact statement in the criminal infringement of a copyright under US law. 18 U.S. Code § 2319(e)(2) also permits the legal representatives of such holders, sellers and producers to submit a victim impact statement on their behalf.

Vicarious liability for copyright infringement 

Vicarious liability in copyright infringement depends on the relationship between the direct infringer and the party accused as vicariously liable. To be found vicariously liable for a copyright infringement, it is necessary that the party have both the ability and the right to supervise or control the infringing action of the direct infringer and a direct financial benefit from the infringing activity. 

The vicarious copyright infringement is based on the respondent superior principle, i.e., that employers are legally responsible for the acts of an employee if such acts are within the nature and scope of the employment. If the act committed by a person is not within the scope of one’s employment, even though that act amounted to some financial benefit to the employer, the employer still can’t be made liable for the act of his employee.

Vicarious liability is concerned with penalizing those who reap the benefits of another’s illegal behavior, with or without the actual knowledge that the other is engaging in unlawful conduct. This functions to shift the liability from individuals to enterprises, thereby capturing situations in which one party benefits from the infringing actions of another, internalizing the costs of the entire operation.

Elements required to constitute vicarious liability 

The burden of proof lies on the plaintiff to prove that a person is vicariously liable for the infringement committed by another person. In order to prove a person vicariously liable, it is pertinent for the plaintiff to prove the following elements:

Financial gain from the infringing activity 

The defendant must have some financial benefit from the infringing activity of the direct infringer in order to make him liable for the infringement. The infringing activity committed, though, must be within the scope of one’s employment. 

Right and ability to supervise the direct infringer

The defendant must have the right and ability to supervise the direct infringer. The defendant must have control over the activities of the infringer. If the defendant has no right or ability to supervise the direct infringer and just has mere knowledge of the infringement, he will not be liable for the infringement committed by the person.

Failure to exercise the rights and ability to supervise

There must have been a failure to exercise the right and ability to supervise, which resulted in the infringement of the copyright. Knowledge of the infringement here is not necessary. It is not necessary that the defendant be aware that the person under his control is going to commit a copyright infringement. Only the committal of the copyright infringement is sufficient to make the defendant vicariously liable for the said copyright infringement. 

Contributory infringement

Under contributory infringement, a party is held liable for the infringement if it induced or substantially contributed to the copyright infringement by the other party. A contributory infringement occurs when one, with the knowledge of the infringing activity, causes, induces, or materially contributes to the infringing conduct of another.

Contributory liability focuses on the relationship between an infringer and a secondary party. Contributory infringement is premised on the concept that the courts must at times look behind the actual infringement or duplication and attach liability to the activities or products that make the infringement possible. 

The two-part test for contributory copyright liability first looks at the knowledge i.e. whether the party who has been accused of committing contributory infringement had the knowledge that its conduct will result in infringement of the copyright or not and then at the action i.e. whether the party even after having the knowledge that its conduct will result in infringement have committed such act in consonance with some other person. The action could consist of providing the means to encourage an infringer’s activity, engaging in conduct that furthers the infringement, or providing a means to infringe.   

Elements of contributory infringement 

There are some certain essential elements that the court will look into before adjudging someone to be liable for committing contributory infringement, which are as follows: 

Direct Infringement by a primary infringer

There must be a direct infringement by an infringer. It is not, however, mandatory that the infringement be done by the party who is made liable for the contributory infringement. If the party has caused or induced someone to cause copyright infringement, it will be sufficient to fulfill the necessity of this element in order to make that party liable for contributory infringement. The inducement alone will not make the party liable unless an act is committed in furtherance of that inducement. 

Knowledge of the infringing activity 

Unlike vicarious liability, knowledge of the infringing activity must be present in the contributory infringement. Even if the party induces someone to commit the copyright infringement or materially contributes to the copyright infringement, the knowledge of the party is essential in order to make it liable for contributory infringement. If the party has no knowledge that what it is doing amounts to copyright infringement, no doubt, the infringement so committed will fall under the ambit of innocent copyright infringement.  

Material contribution

The contribution of a party must be material in order to make it liable for contributory infringement. Even if a party has induced someone to commit copyright infringement, the inducement will make the party liable for contributory infringement if the copyright infringement is done based on that inducement and the inducement so done has a material role in making the infringer commit the copyright infringement.  

Remedies for copyright infringement in the US

Title 17 of the U.S. Code comprises certain remedies that the victim of copyright infringement may resort to against copyright infringement. The remedies may vary from injunctions to the disposition and impounding of infringing articles, damages and profits and the attorney fees that the victim can get in response to the infringement of his/her copyright. Each one of the remedies mentioned above are discussed here as follows:

Injunctions

§502 of Title 17 of the U.S. Code provides for the remedy of an injunction for copyright infringement in the USA. § 502(a) provides for the grant of final and temporary injunctions by any court that has jurisdiction over a civil action arising under Title 17 so as to restrain or prevent the infringement of copyright in the USA. The grant of temporary or final injunctions as per § 502(a) shall be on such terms as the Court may find reasonable. 

§ 502(b) further provides that the temporary or permanent injunctions granted by the Court under § 502(a) shall be operative throughout the United States and may be served anywhere in the United States on the person so enjoined. The injunction shall be enforceable by any Court of the United States having jurisdiction over that person, either by the proceedings in contempt or otherwise. § 502(b) further provides that the clerk of the court granting the injunction shall promptly transmit a certified copy of all the papers in the case on file to any other court in which the enforcement of the injunction is sought. Such transmission shall be made only at the request of such other courts.

Types of injunctions

As per § 502, the following two kinds of injunctions can be granted as a remedy for copyright infringement by the courts in the USA:

Temporary injunction

A temporary injunction is a court order that is issued so as to prevent a person from doing something on an immediate basis, usually while a legal action or lawsuit is ongoing. It is a temporary measure that is generally taken in emergencies so as to prevent imminent damage or harm to a person or entity until a final decision is reached.

A temporary injunction is granted prior to a trial, i.e., before all the evidence has been presented in the case, and thus it is less frequently granted than a permanent injunction. However, to ensure fairness while granting a temporary injunction, the courts in the USA sometimes use a mechanism, i.e., they require the party requesting a temporary injunction to sign a bond. If it is decided by the Court in its final order or at any stage of the trial that the temporary injunction should not have been granted, the bond entered into by the requesting party will cover all the damages that have been borne by the defendant due to the grant of the preliminary injunction. 

It is, however, pertinent to note here that the bond requested to be entered by the plaintiff can sometimes be so large that the plaintiff will no longer be willing to seek the temporary injunction. 

Elements to be taken into consideration

The following elements are generally taken into consideration by the courts in the USA while deciding whether to grant a preliminary injunction for copyright infringement or not:

Irreparable injury to the plaintiff

To determine whether to grant a temporary injunction to the plaintiff or not, the plaintiff has to prove that an irreparable injury will be caused to him if a temporary injunction is not granted in his favor causing the defendant to cease the acts causing infringement of his copyright. In order to seek a temporary injunction, the copyright owner must act quickly, as a significant delay will be viewed as belying the argument that the harm is irreparable. 

Rule 65(b)(1) of the Federal Rules of Civil Procedure provides that the temporary restraining order may be issued without notice to the adverse party’s attorney or the adverse party itself if the specific facts in the verified complaint or the affidavit clearly show that an irreparable and immediate loss, injury, or damage will result to the plaintiff before the opposite party can be heard in motion and the plaintiff’s attorney certifies in writing any efforts made to give notice to the opposite party and the reasons as to why the notice is not required to be given to the opposite party. 

Likelihood of success

From the facts provided by the plaintiff, the court must be of the view that there is a likelihood of success of the plaintiff based on merits. If the plaintiff’s case is proved to be weak enough for copyright infringement, having no forte, he will have to suffer great hardships in order to make the Court believe that his case has some point and his copyright has been infringed.

Potential injury to plaintiff outweighs potential damage to the defendant

A temporary injunction will be granted to the plaintiff only if the court believes that the harm to the plaintiff by infringement of his copyright outweighs the harm to the defendant that will be caused to him in making him to cease the act in question infringing the copyright, as obviously the court will never want to intervene and forcefully stop a party from doing something unless and until the court is reasonably certain that it is making the right decision. 

Effect of temporary injunction

The issuance of the preliminary injunction stops the infringing activity. A temporary injunction is generally applied with a permanent injunction in order to cease the infringing activity as soon as it can be ceased. By temporary injunction it does not mean that the dispute has been adjudged fully, but it leaves the dispute to be fought at a later stage of the infringement.

Rules for preliminary injunction 

Notice to the adverse party 

Rule 65 of the Federal Rules of Civil Procedure provides that the Court may issue a preliminary injunction only on notice to the opposite party. Moreover, the Court may advance the trial on the merits of the case and consolidate it with the hearing even before or after the beginning of the hearing on motion for a preliminary injunction. The evidence that is received on the motion and that would be admissible at trial will become part of the trial record and need not be repeated at the trial. 

When order is issued without notice

Rule 65(b)(2) provides that the temporary restraining order issued without notice (in accordance with Rule 65(b)(1))  to the adverse party must describe the following detail- 

• the injury and should state why the injury is irreparable; 
• state the date and hour of the issuance of the order; and 
• state the reasons as to why the order was issued without notice to the opposite party.

The temporary restraining order issued shall be valid only for a period of 14 days, and the party receiving the order may appear in court to get it dissolved or modified. 

The order issued will be binding

Rule 65(d)(2) further provides that the order so issued by the Court shall be binding only on the persons who receive actual notice of the order by personal service or otherwise. The persons who can be bound by the restraining order are the parties; the parties’ agents, officers, employees, servants, and attorneys; and any other person who is in active participation or concert with anyone described above. 

Permanent Injunction 

A permanent injunction is a court order wherein a person is required to cease doing or to take a specific action that is issued as a final judgment in a case. A permanent injunction is generally issued in cases where only monetary damages do not suffice. 

Elements of permanent injunction

In Weinberger v. Romera-Barcelo (1982), the U.S. Supreme Court laid down a four step test that must be passed by the plaintiff in order to obtain a permanent injunction.

Irreparable injury

In order to get the decision of the court in one’s favor, the first and foremost thing that a plaintiff is to prove is that he has suffered an irreparable injury because of the infringing act of the defendant. 

Remedies available at law are inadequate

The permanent injunction will be granted to the plaintiff only if the remedies that are given or available at law, such as monetary damages, are not sufficient to compensate for the harm caused.

Balance of hardships

A remedy in equity will be warranted, considering the balance of hardships between the defendant and the plaintiff. A permanent injunction will be granted to the plaintiff only when the court is of the view that the hardships suffered by the plaintiff will be far greater than the hardships that will be suffered by the defendant if the permanent injunction is not granted in favor of the plaintiff.

Permanent injunction will not harm public interest 

The permanent injunction will be granted only if the Court is of the opinion that the granting of the permanent injunction will not hurt the public interest.

Disposition and impounding of infringing articles 

As a remedy for the infringement of the copyright work, the court may order the impounding and disposition of the infringing articles. § 503 of Title 17 of the U.S. Code deals with the impounding and disposition of infringing articles. 

Impoundment of infringing articles

§ 503(1) of Title 17 of the U.S. Code deals with the impounding of the infringing articles and provides that the Court may order the impounding of all phonorecords or copies used or claimed to have been made in violation of the exclusive right of the copyright owner. § 503(1) further provides that the court may order the impouding of all molds, plates, matrices, tapes, masters, film negatives, or other articles by means of which such phonorecords or copies have been reproduced and impounding of records documenting the sale, manufacture, or receipt of things involved in any such violation. According to Section 503(1), records so seized shall be taken into the record and such impounding can be made at any time while an action under Title 17 is pending.

§ 503(2) further provides that for the impoundment of records under § 503(1)(C), an appropriate protective order shall be entered into by the Court with respect to the use and recovery of any information or records that have been impounded.  

Disposition of infringing articles

17 U.S. Code § 503(4) provides that the destruction or reasonable disposition of all the phonorecords or copies used in violation of the copyright owner’s exclusive rights or found to have been made in violation of the copyright owner’s exclusive rights may be ordered by the Court as a part of a final decree or judgment. It further provides that the Court may also order to destroy all molds, plates, masters, matrices, film negatives, tapes, or other articles by means of which such phonorecords or copies have been made as a part of its final decree or judgment.  

Damages and profits

17 U.S. Code § 504(a) provides that an infringer of the copyright is liable either for statutory damages or actual damages, along with any additional profits that the infringer may have made from the infringement. These are discussed below in detail:

Actual damages and profits

According to 17 U.S. Code § 504(b), a copyright owner is entitled to recover the actual damages that he may have suffered on account of the infringement of his copyright. The section further provides that the copyright owner is also entitled to any profits that the infringer might have made, which are not taken into account in computing the actual damages. In order to prove the infringer’s profits, however, the copyright owner has to provide proof of the infringer’s gross revenue and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work. 

Statutory damages

Statutory damages are those damages that are pre-established by the statute and are awarded in a successful claim so as to compensate for a loss or an injury to the aggrieved party. These are generally used where it is difficult to establish the degree of loss or harm caused to the plaintiff. 17 U.S. Code § 504(c) deals with the statutory damages in cases of infringement of a copyright. 

Amount for which statutory damages can be given

17 U.S. Code § 504(c)(1) provides that the copyright owner may elect for an award of statutory damages instead of actual damages and profits at any time before the final judgment is rendered. The statutory damages may be taken for all infringements involved in action with respect to any work for which only one infringer is liable or with respect to any work for which two or more infringers are liable severally or jointly, in a sum that shall not be less than $750 or more than $30,000, as the Court considers just. All the parts of a derivative work or a compilation constitute one work for the purposes of this subsection. 

Increase, decrease or remit of the amount

The Court may increase, decrease, or remit the amount of the statutory damages in the following circumstances:

Increase in amount

17 U.S. Code § 504(c)(2) provides that where the copyright owner sustains the burden of proving the infringement and the Court finds that the infringement was done wilfully, the Court, in its discretion, may increase the award of the statutory damages to the sum of not more than $150,000.

Decrease in amount

17 U.S. Code § 504(c)(2) provides that where the infringer has the burden of proving that he has not infringed the copyright and the Court finds that such infringer had no reason to believe that his acts have constituted the infringement of a copyright or was not aware of such infringement being done by him, the Court may, in its discretion, reduce the amount of statutory damages to a sum of not less than $200.

Remittance of award

17 U.S. Code § 504(c)(2)  provides that the award of statutory damages will be remitted in any case where the infringer believed or had reasonable grounds for believing that his use of the copyrighted work amounts to fair use only. The award will be remitted for the above reason only if:

1. The infringement occurs by reproducing the work in copies or phonorecords by a person (infringer) who is acting within the scope of his employment and is an agent or employee of a library, non-profit educational institution or achieves; or  
2. The infringement occurs by reproducing a transmission programme embodying the performance of a published nondramatic literary work or by performing a published nondramatic literary work by a public broadcasting entity or a person who, as a regular part of the nonprofit activities, deals with such work.

Additional damages in certain cases 

17 U.S. Code § 504(c)(2)  provides that if the defendant proprietor of an establishment claims that its activities are exempt under Section 110(5) and the Court finds that the activities are not covered under the said section or the defendant proprietor has no reasonable grounds for believing that its use of the copyright work comes under exemption, the Court has discretion to grant plaintiff, in addition to the damages under Section 504, an additional award of two times the amount of the license fee that the proprietor of the establishment concerned should have paid to the plaintiff for such use of the work during the preceding period of up to three years. 

Attorney’s fees and costs

Attorney’s fees and costs are also provided under a specific provision of US law in the form of remedy to the plaintiff for copyright infringement. 17 U.S. Code § 505 provides that the Court may, in its discretion, in any civil action under Title 17, allow the recovery of full cost against or by any party other than the United States or any officer thereof. § 505 further provides that the Court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.

Copyright infringement and the defense of fair use

It is one of the most effective defenses against copyright infringement charges because it permits a person to recreate or use a copyrighted work without compensating the copyright holder. 17 U.S. Code § 107 provides that phonorecords or reproduction in copies of any copyrighted work for purposes such as comment, criticism, news reporting, scholarship, teaching, or research will not amount to an infringement of a copyright. 

Factors to be considered 

17 U.S. Code § 107 provides that in determining whether the use of a work in any particular case amounts to fair use or not, the following factors shall be taken into consideration:

Character and purpose of use 

The first and foremost thing to be seen is the purpose and character of the use. If the purpose or nature of the use is comment, criticism, teaching, news reporting, research, or scholarship, it will amount to fair use. While determining the character and purpose of the use with regard to the infringement of the copyright, it is also pertinent to see whether such use is for nonprofit educational purposes or for a commercial purpose. If the use of any work is for commercial purposes, it is most likely that it will not fall within the ambit of fair use.

It is also pertinent to note here that not all scientific or educational uses, even those for non profit purposes, will qualify for fair use. For example, if a teacher makes copies of a whole novel for students in her class, it would not be considered fair use. 

Nature of the copyrighted work

The nature of the work copied will determine whether it will amount to an infringement of copyright or not. A court will ordinarily consider whether the work copied is entertaining or informative in nature. The Court will generally put the work copied from a factual work, such as a biography, under the ambit of fair work rather than something that is copied from a fictional work, such as a horror movie or a romance novel.

Amount of the copyrighted work

How much of the original work did the infringer use and how important that work was to the original work are the main considerations that the Court sees while deciding whether the work copied amounts to copyright infringement or fair use. 

Effect of use upon the potential market of the copyrighted work 

The fourth and final factor in a fair use determination is the effect of the use on the value or potential market of the copyrighted work. If the alleged infringing work hurts the market for the original work, this factor will cut against the defense of fair use, as was held in Harper & Row Publishers, Inc. v. Nation Enterprises (1985).

Important case laws

Sony Corp. of America v. Universal City Studios, Inc (1984)

Facts of the case

Universal and Disney owned copyrights on many television programs in the late 1970s. In  this case, Sony Corporation of America manufactured and sold the “Betamax,” which was a home videotape recorder (VTR) in 1976, which engaged Betamax buyers to engage in “time-shift viewing” by recording television programs and viewing them later. Universal City Studios sued Sony Corp. of America for copyright infringement, seeking monetary damages and an injunction against the manufacturing and marketing of the VTRs. Universal City Studios alleged that as consumers used Betamax manufactured by Sony to record Universal’s copyrighted works, Sony is liable for the copyright infringement allegedly committed by those consumers in violation of the Copyright Act. 

The District Court, denying all the claims, held that the non-commercial home use recording of material broadcast over the public airwaves was a fair use of copyrighted works and did not constitute copyright infringement and Sony could not be held liable as a contributory infringer even if the home use of VTR is considered an infringing use. The Court of Appeal, however, reversed the order and held Sony liable for contributory Infringement. After that, an appeal was forwarded to the US Supreme Court by Sony Corp. of America.

Issue of the case

• Whether home recording of copyrighted television programs constitutes a “fair use” of the copyrighted material?
• Whether Sony’s sale of “Betamax” VTRs enabling VCR owners to copy the copyrighted television programs constitutes contributory infringement  under Copyright Act?

Judgment 

The U.S. Supreme Court, by a 5-4 majority, held that the Sony Corporation of America did not infringe on the studio’s copyright by marketing and manufacturing the Betamax video tape recorder. The Court held that the home recording of copyrighted television programs is a fair use of the copyrighted material and thus, it does not violate the provisions of Copyright Act. The court also held that Sony was not liable for “contributory infringement” of the studio’s copyright for supplying viewers with the means to record copyrighted television programs. The court while holding time shifitng to be fair use held that respondents have no right to prevent other copyright holders from authorizing it for their programs. 

Harper & Row Publishers, Inc. v. Nation Enterprises (1985)

Facts of the case 

In this case, the plaintiff, i.e., Harper & Row Publishers, Inc., obtained the rights to publish President Ford’s Memoirs, “A Time to Heal.” The preview rights for this work were contracted by Time Magazine immediately before publication for $25,000 ($12,500 to be paid in advance and the rest after publication). Before the article gets published by Time Magazine, the publisher of Nation Magazine, i.e., Nation Enterprises, gets a copy of the Ford manuscript. The Nation Magazine then published an article that quoted the manuscript about Nixon Pardon (the former President who has been pardoned by President Ford). As a result of this publication, Time Magazine then chose not to publish the article as planned earlier and canceled its contract with Harper & Row Publishers, Inc., refusing to pay the remaining $12,500. After the cancellation of the contract, the plaintiffs then sued the defendants for copyright infringement. 

The District Court awarded damages for infringement, while the Second Circuit Court reversed the award, holding Nation Enterprises’ use to be a fair use under 17 U.S.C. 107. As a result, the matter was appealed to the United States Supreme Court.

Issue of the case

Whether the publication of parts of a work soon to be published qualifies as fair use?

Judgment 

The United States Supreme Court, while granting Certiorari (acceptance of the case for review), held that the publication of parts of a work soon to be published does not qualify as fair use. The fair use doctrine was made with the idea that one using a copyrighted work does not have to get a copyright holder’s permission to use the copyrighted work only in a case where a reasonable copyright holder would in fact have otherwise granted the permission. A fair use will not be one of economic competition with the copyright holder and should not decrease the market value of the copyrighted work, which is exactly not the case here. Hence, the award of the Second Circuit Court was reversed.

Fonovisa, Inc. v. Cherry Auction, Inc (1996)

Facts of the case

In this case, the defendant hosted a swap meet in Fresno, California, wherein the individual vendors sold various merchandise to the customers for which they were charged a daily rental fee. Cherry Auction had also collected additional fees from customers for parking, admission, and food. When a local sheriff raided the auction, he uncovered more than 38,000 counterfeit recordings that the vendors had at Cherry Aucton’s swap meet. In 1993, the plaintiff determined that the counterfeit versions of Fonovisa’s copyrighted recordings were being sold at Cherry Auction’s swap meet, at which it filed suit against Cherry Auction for copyright infringement. 

The United States District Court for the Eastern District of California granted Cherry Auction’s motion to dismiss for failure to state a claim upon which relief can be granted, and Fonovisa appealed the dismissal of its claims for contributory and vicarious copyright infringement. 

Issue of the case

Whether Cherry Auction is liable for vicarious liability, contributory copyright, and contributory trademark infringement? 

Judgment 

In appeal, the Ninth Circuit reversed the district court’s dismissal of Fonovisa’s complaint and remanded the case for further proceedings on the vicarious liability, contributory copyright, and contributory trademark infringement claims. The Court held that the plaintiff stated a claim of vicarious liability for copyright infringement against the operators of a flea market where pirated CDs were bought and sold by alleging that the defendants benefited financially from fixed daily rental fees paid by each infringing vendor. The Ninth Circuit held that the flea market owner was both vicariously and contributorily liable for copyright infringement as the flea market reaps substantial financial benefits from concession fees, parking fees, and concession stand sales fees from customers to the flea market who knew that counterfeit records were being sold, thereby increasing the flea market’s revenues.

Google LLC v. Oracle America, Inc. (2021)

Facts of the case

In this case, Oracle America Inc. owns the copyright to the Java SE computer platform. The Java SE Platform allows developers to use the Java language to write programmes that can run on any laptop, computer, or desktop. When Google created Android, it wrote millions of lines of new code. But as Google wanted programmers who were familiar with Java to be able to write programmes for Android easily, it copied roughly 11,500 lines of declaring code and the underlying organizational system from the Java SE Platform. 

At trial, the jury found that Google had infringed on Oracle’s copyright. The district court, however, found that the declaring code was not copyrightable as a matter of law and entered judgment for Google. On appeal, the Federal Court reversed the judgment holding Java API packages to be entitled to copyright protection, and the case was remanded for a jury trial on fair use. At the second trial, the jury found Google’s use of codes to be a fair use, and the Court denied Oracle’s post judgment motions. On a second appeal, the Federal Circuit again reversed the decision, concluding that it is not fair to take a copyright work verbatim and use it for the same function and purpose as the original on a competing platform.

Issue of the case

Whether copying portions of organizational structure and declaring code from a computer software platform for use in a new software platform amounts to copyright infringement?

Judgment

The Court held that Google’s reimplementation of the Java API in Android was a transformative use as it added something new and important, i.e., it furthered the development of computer programs by allowing programmers to use their existing Java skills on a new mobile platform. The Court compared the number of lines copied to the total number of lines used in the Java SE platform and found that only 0.4 percent of the entire Java SE platform was copied by Google, and it was not more than that was necessary so as to achieve Google’s objective. The Court further held that the public would be harmed if the Oracle had too much power to control the development of new applications and new uses. Hence, the Court reversed the appellate judgment and held in favor of Google. 

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith ET AL. (2023)

Facts of the case 

This case relates to an orange silkscreen portrait of the musician Prince created by pop artist Andy Warhol titled “Orange Prince,” which was derived from a copyrighted photograph taken in 1981 by Lynn Goldsmith. In 1984, to commission a purple silk screen photo of the Prince for its November issue, Lynn Goldsmith gave the magazine Vanity Fair permission to use the photo for “one time” only. Lynn Goldsmith did not know that the Andy Warhol Foundation had created 15 other pieces based on the photo, including “Orange Prince.”

After the death of the Prince in 2016, Condé Naste, Vanity Fair’s parent company, purchased a license to publish Orange Prince from the Andy Warhol Foundation in a magazine commemorating the musician. Lynn Goldsmith received no credit or payment for Condé Naste’s use of Orange Prince, which prompted copyright litigation between Goldsmith and the Andy Warhol Foundation in the U.S. District Court of New York. 

The District Court ruling in favor of the Andy Warhol Foundation on the defense of fair use at summary judgment was reversed by the Second Circuit Court in favor of Goldsmith, after which the case went to the U.S. Supreme Court on appeal.

Issue of the case

Whether the making of “Orange Prince” by Andy Warhol amount to fair use or copyright infringement?

Judgment 

The Court held that the “purpose and character” of the Andy Warhol Foundation’s commercial use of a Warhol Depiction of the artist Prince did not favor a fair use defense within the meaning of Section 107(1) of the Copyright Act. The Court explained that if the secondary work and an original work share a similar purpose and the secondary use is commercial, the factor is likely to weigh against fair use. In the present case at hand, though Orange Prince adds a new expression to Goldsmith’s photograph, Warhol’s piece and the original photograph share a similar purpose, i.e., to depict the Prince in magazine stories. As a new expression does not automatically amount to transformative use, the court by a 7-2 opinion, held that the making of “Orange Prince” amounts to copyright infringement.    

Conclusion

The instances of copyright infringement have augmented in the past few decades and with the coming of new technologies every day, the situation of copyright infringement is exacerbating. Though there have been many judgments by the SCOTUS, trying to dwindle the conglomeration of various different issues of copyright infringement, the issues have come intermittently before it in one way or another. With the ever increasing instances of copyright infringement, it has become necessary for the owners and also the innocent infringers to make themselves aware of the exclusive rights of the copyright owners and the damages that they will be accountable for in case of infringement of the rights under Section 106 of Title 17 US Code. 

The complexities of standing and the misconceptions about innocent infringement are a must know for those who believe themselves to be liable to sue or for those who take innocent infringement as a defense to copyright infringement. With copyright and its infringement spreading roots over every single strata of the things that exist in this world, it has also become pertinent for the US Congress to take steps to exhaust the efforts of infringing any rights that are given to the copyright owners. Though this seems to be long drawn, but with much persistence and attention towards the loopholes in the rules of copyright, this seems achievable, as the complexities of the concepts of copyright infringement will be much more clear, and the instances of copyright infringement can then be expected to decrease. 

Frequently Asked Questions (FAQs) on copyright infringement in the US

What is the difference between a temporary and permanent injunction?

A temporary injunction is a provisional measure that provides immediate relief to the plaintiff and lasts only until the court reaches a final decision on the matter. A permanent injunction, on the other hand, is a permanent and final order issued after the court has made a final determination on the case in hand. 

Can a temporary injunction be made permanent?

Yes, a temporary injunction can be made permanent in the final judgment if the court finds the violations of the exclusive rights of the plaintiff to have occurred. 

Is the decision of the US District Court for permanent injunction final?

No, the decision of the US District Court for the permanent injunction will not be final. The U.S. Supreme Court in eBay, Inc. v. MercExchange LLC (2006) clarified that though the decision to deny or grant a permanent injunctive relief is an act of equitable discretion of the U.S. District Court, nonetheless, it is reviewable on appeal for abuse of discretion.

What is the difference between vicarious infringement and contributory infringement?

The basic difference between vicarious and contributory copyright infringement is that contributory infringement is based on the defendant’s failure to stop its own actions, which facilitate third party infringement, while vicarious liability is based on the defendant’s failure to cause a third party to stop its directly infringing activities. 

How can one prevent himself from committing copyright infringement?

If a person wants to prevent himself from committing infringement of copyright, it can be done in three ways. 

• Firstly, before using any work, explicit permission from the copyright owner should be obtained or one should get the license for using the work and pay any fees so as to ensure that the work is being legally used by him. 
• Secondly, if the work to be used falls under the Fair Use Doctrine, it can be used without licensing, as the doctrine protects the ability of the people to use the copyright work for the purposes of parody, criticism, comment, and education as long as the use is transformative and limited. 
• Thirdly, if one is not able to use a licensed work, the work that is in the public domain is safest to use as it is free and is available to everyone with restrictions. 

What does presentence report mean?

A presentence report is a report that is submitted by a probation officer to the court before the court imposes any sentence. The presentence report identifies all policy statements and applicable guidelines of the Sentencing Commission, calculates the defendant’s criminal history category and offense level and states the kinds of sentences available and the resulting sentencing range. The presentence report also identifies the appropriate kind of sentence with the applicable sentencing range and any basis for departing from the applicable sentencing range. 

References

• https://copyright.uslegal.com/history-of-copyright/
• https://www.copyright.gov/title17/92chap1.pdf
• https://via.library.depaul.edu/cgi/viewcontent.cgi?article=1264&context=jatip
• https://www.justia.com/intellectual-property/copyright/infringement/
• https://www.lexology.com/library/detail.aspx?g=c8ba44bd-b65c-4248-9399-751027c5bc07
• https://www.bitlaw.com/copyright/duration.html
• https://www.mandourlaw.com/copyright-injunction/
• https://www.thebusinesslitigators.com/innocent-infringer-defense.html
• https://www.justice.gov/archives/jm/criminal-resource-manual-1852-copyright-infringement-penalties-17-usc-506a-and-18-usc-2319
• https://www.nolo.com/legal-encyclopedia/fair-use-the-four-factors.html
• https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf
• https://www.copyright.gov/fair-use/summaries/google-llc-oracle-am-inc-2021.pdf
• https://neustel.com/copyrights-information/copyright-infringement/
• https://digitalcommons.unl.edu/cgi/viewcontent.cgi?article=1201&context=scholcom
• https://chicagounbound.uchicago.edu/cgi/viewcontent.cgi?article=3266&context=uclrev
• https://www.dlapiper.com/en/insights/publications/intellectual-property-and-technology-news/2022/ipt-news-q4-2020/substantial-similarity-in-copyright 

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