Home Copyright Laws Remedies for copyright infringement in the US

Remedies for copyright infringement in the US

July 4, 2024

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This article is written by Nishka Kamath. This article endeavors to discuss the remedies for copyright infringement in the US. Here, the authors have discussed the significance of copyright infringement, the history of copyright infringement, the acts that govern the issues of copyright infringement in the US, the exceptions to infringement, the leading cases of copyright infringement, and some major states’ cases on infringement. At the end, the FAQs related to copyright infringement are included.

Table of Contents

Introduction

With the rise of various forms of media and works of authorship, various issues associated with copyright have also cropped up. One of the major issues is copyright infringement. The Copyright related law is elaborated on and laid down in Chapters 1 through 8 and 10 through 12 of Title 17 of the United States Code. The law that provides the framework for contemporary and currently applicable copyright law is the Copyright Act of 1976, which was enacted on October 19, 1976, following several revisions and amendments to erstwhile laws. At the outset, this article shall briefly discuss what can be protected under US Copyright Law because remedies for copyright infringement cannot be studied in isolation of what is protectable under copyright. Thereafter, copyright infringement and its remedies in the USA have been analyzed.

Defining copyrights and inclusions in the US

§ 102 of the US Code elaborates on the inclusions in the subject matter of a copyright, stating that when an original work of an author is fixed by way of a tangible medium of expression, whether known contemporaneously or developed later, which can be communicated, perceived, or reproduced, by ways either direct or taking aid from a device or a machine. Works of authorship include the following-

Literary works;
Musical works (including any accompanying words);
Dramatic works (including any accompanying words);
Pantomimes and choreographic works;
Graphic, pictorial and sculptural works;
Motion pictures and audiovisual works;
Sound recordings;
Architectural works.

However, it is also stated in the Code that the protection of copyright does not extend to ideas, processes, procedures, systems, methods of operation, concepts, principles, or discoveries, regardless of the form of illustration.

Definition in the USA

According to the definition provided by the US Copyright Office, copyright can be defined as a category of intellectual property that shields the original works of an author from unauthorized usage. The copyright comes into existence as soon as the work is laid down in a tangible form. A copyright can be extended to either original works or fixed works.

Inclusions under US Copyright

As per the Architectural Works Copyright Protection Act (1990) enacted in the USA, the protection of copyright applies to an original work that is limited to a tangible mode of expression, regardless of whether the form is currently known or developed later, and can be perceived, reproduced, or communicated in any way, whether directly or by way of a machine or device’s aid. For the purposes of copyright inclusion, the below-mentioned works are included in the scope of authorship for copyright protection-

Literary work

With respect to the concept of copyright, the usage of the phraseology of ‘literary works’ is not limited to literature and ancillary work, as understood in general parlance, but is understood to encompass all works that are written in nature, regardless of whether they possess merit or not.

A commonly accepted definition thus states that literary works can be understood as any work, barring audiovisual works, which are expressed in the form of words, numbers, symbols, numerical symbols, etc., and published or processed in the form of either books, manuals, periodicals, film, tape, etc. Under US law, the author of the associated literary work is automatically vested with the ownership of the literary work and the copyright of the same.

It also states that no copyright protection can be extended to a myriad of aspects, such as ideas, procedures, systems, methods of operating, conceptual principles, or findings in the nature of a discovery, irrespective of the mode in which the discovery, explanation, illustration, or embodiment of the work came forth.

Musical work and associated words

A musical work can be simply defined as the song’s composition, which has been conceptualized and created by a composer or songwriter, as well as the lyrics that accompany it. Under US law, the owner of a musical work is vested with the right to duplicate, distribute, and dispense copies of the music, as well as publicly perform it, create derivative works, and disseminate it.

However, third parties can also be stakeholders in the rights associated with the musical work by getting hold of a statutory license and can enjoy various rights of ownership subject to legal requirements.

Dramatic and choreographic work

With respect to the concept of copyright, dramatic work is understood to encompass all works that are related to dramatic works, such as those associated with dance, mimes, choreographic work and pantomimes, graphical, sculpture, and picture based work, audio-visual work and motion based pictures, as well as recordings of sound related to, directly or indirectly, the dramatic work.

Under US law, the author of a dramatic work is accorded copyright protection, and only in very few circumstances can a dramatic work be copied or disseminated freely.

Works of architecture

Under US law, works of architecture that can be protected by way of copyright include plans of buildings, architectural plans, as well as drawings. Architectural work includes in-toto the form vis-à-vis arrangement as well as the composition of such works.

Prior to the year 1990, copyright protection extended solely to architectural designs and not constructed works, but currently, the protection is accorded as soon as the work is created. Further, a suit for copyright infringement can also be filed with respect to infringed works of architecture under US law.

Copyright protection in the US: a must know detail

What is copyright protection

In accordance with federal law, an individual will automatically get the copyright to his/her work if he/has ‘fixed’ the original work or content in a ‘tangible medium of expression’. The creator must have designed the work by self, and it must not be copied or adapted from somewhere else. Also, the work has to be created in a sufficiently permanent medium so that others can reproduce, view, or share it.

Copyright protection comes into play when an individual ‘fixes’ his/her work in a tangible form without the individual having to do anything. The moment the work gets copyright protection or is copyrighted, the inventor (or the owner or creator) will have the power to decide who can use the work and for what purposes it shall be used. Further, once the work is copyrighted, no one else can make use of it without the approval of the inventor.

Significance of copyright protection in the US

According to the United States Office of Patent and Trademark (USPTO), the purpose of U.S. copyright law is to safeguard the economic considerations that accompany a person’s work, as well as incentivize creativity and ultimately promote the welfare of the public. The framers of the US Constitution held a strong conviction that spreading knowledge was of paramount importance to the newly established United States and that formulating a national-level copyright system is an effective means to further that goal.

The aim, which underscores the significance of the US Copyright Law, was stated in the case of Twentieth Century Music Corp. v. Aiken (1975), wherein it was stated that the time-bound effect of copyright enactments ensues with a fair return for the creative labor of an author. Thus, the aim of copyright law is to enhance artistic creativity for the public good. Thus, it can be construed that the significance of copyright law has been highlighted time and again in the context of the US and is intertwined with the historical aspect of US law.

Evolution of copyright protection, copyright infringement and its remedies in the US

Historically, Article 1, Section 8, Clause 8 of the Constitution of the United States stated that the Congress shall be vested with the power to promote science as well as useful arts by securing the persons’ exclusive rights for their works. It is often referred to as the Intellectual Property Clause. Relying on the basis of the Intellectual Property Clause, the US has governed as well as protected copyrights in some form or another under various federal enactments since 1790.

The language stated has bestowed the Congress with a wide berth to further advance knowledge by granting authors some rights of an exclusive nature with regards to their work for a limited time period. Further, it was a firm conviction of the makers of the US Constitution that the owners of works must be protected. Even after the passage of 200 years, the underlying motive of the copyright laws of the US remains to protect the welfare of the public vis-à-vis securing a fair return for the creative efforts of an author. There were several events of note that led to the promulgation of the Copyright Act, 1790, and subsequent amendments.

Copyright Act, 1790

Before the promulgation of the Copyright Act, 1790, states in America had to pass their own state level copyright acts, and several states had done the same in lieu of the same. The Constitution accorded the Congress with authority to promulgate legislation related to copyright.

The Copyright Act, 1790, was the foremost attempt by Congress to promote the concept of intellectual property rights. It had the following salient features–

Accords protection for charts, books, as well as maps for a period of 14 years with the term of renewal for an additional term of the same number of years, i.e., 14 years.
The scope of rights vested with the authors was limited in nature, limited to merely printing, publishing, vending, and re-printing.
As far as the procedure formalities go, under Copyright Act 1790, the author was required to dispatch a copy of the completed work to the Secretary of State, as well as complete the registration of the work at the district court near their residence.
Furthermore, authors were mandated to publish one copy of the registration granted in a newspaper for a period of four weeks.

However, while the promulgation was futuristic in nature, it suffered from various lacunae and shortcomings, which were remedied in the enactment of the 1900s in the US context by way of increasing the scope of coverage for copyright, as well as the protections granted to the author. Many revisions were made subsequent to the enactment of the Copyright Act of 1790, which have been elaborated below.

Revisions of Copyright Act

Copyright Act, 1831

A major attempt at reformation and overhaul of the Copyright Act of 1791 came into effect on February 3, 1831, by way of the Copyright Act of 1831, enacted by President Andrew Jackson-

The Copyright Act of 1831 extended the term of copyright to a period of 28 years while adding up to a renewable term of 14 years, thereby increasing the total term of the copyright by 14 years in total as compared to the previous enactment of 1791.
Another major change from the previous act was that renewal rights were accorded to the widows as well as children of deceased authors, thus expanding the scope of protection granted with regard to copyrightable material.

With respect to copyright infringement, the act imposed a period of two years as a limitation period in order to file a suit for copyright infringement. The remedy for copyright infringement and all other violations under the Act was stated to be forfeiture. This Act became effective from February 1831.

Copyright Act, 1865

President Abraham Lincoln promulgated the Copyright Act of 1865, on March 3, 1865, wherein a huge chunk of copyrightable works was added to the list of existing material that could be subjected to copyright claims, which was in place under the Act of 1791 and as a result, it led to-

The development as well as the inception of earlier photographers.
This Bill distinguished itself from its predecessors by granting copyright protection to photographic negatives as well as photographic works.

The rationale behind this enactment of the Act of 1865 was that it was imperative to protect photography as well as other copyrightable materials. This act was the first to accord protection to photographs against instances of copyright infringement. However, this act was short-lived and was further amended by the Copyright Act of 1909.

Copyright Act, 1909

After the span of several decades, the next amended version of the Copyright Act was put forward by way of Copyright Act of 1909, which was brought into effect by President Theodore Roosevelt, on 4th March, 1909, in USA, wherein he also addressed-

The an urgent need for several revisions to the erstwhile copyright statutes because it was becoming burdensome for authors as well as creators to seek enforcement of the rights with respect to copyrightable materials.
It was also noted that there was a need to speed up the remedial mechanism with respect to copyrights, and the Copyright Act needed to move in line with contemporary developments and advancements in technology.
In order to accord protection to new and emerging dimensions of works and creations of authors that were not accorded protection under the previous or erstwhile Copyright Act, the Copyright Act of 1909 was enacted. After this enactment, the currently valid legislation of Copyright Act, 1976, was promulgated, which continues to be followed to this date.
The Act was the first to elaborate upon innocent infringement of copyright by stating the same under Section 20 of the erstwhile act, stating that in cases wherein the copyright owner did not give public notice of his ownership of copyright, and it was thereby infringement, albeit innocently, there is a preclusion of right of proceeding against such a person.

International conventions

Paris Convention (1883)

The Paris Agreement (1883) was the first step toward international consensus for the protection of intellectual property from infringement by way of an agreement in order to protect trademarks, patents, industrial designs, utility models, trade names, geographical indications, service marks, and the like from infringement, as well as ensuring repression of means of unfair competition. This was done in order to ensure that creators get protection with respect to intellectual property they create and also to create a parity between protection granted between different countries.

Berne Convention (1886)

The Berne Convention (1886), adopted globally in the year 1886, accords protection to works as well as the rights of the authors. It expands the scope of protection to creators such as musicians, painters, and poets with regards to literary and artistic works in order to take control over how they created works, is used in disseminated by others, and by which party in what terms. The copyright vested in the authors and its protection from infringement were the primary stipulations that governed the convention, along with defining who could seek protection from infringement.

It finds its genesis in three basic principles and comprises a series of revisions that determine the minimum protection to be accorded, as well as provide for the enactment of special provisions, which are specially made for developing countries and can be used by the developing countries to create a framework for domestic legislation.

Trade Related Aspects of Intellectual Property (TRIPS) Agreement

The World Trade Organization (WTO) Agreement, with respect to Intellectual Property Rights, entitled ‘Trade Related Aspects of Intellectual Property Rights’ (TRIPS), is the most widespread and comprehensive agreement of a multilateral nature in the field of Intellectual Property Rights, which plays a vital role in helping to facilitate trade and supply chain logistics between different countries.

However, in the field of IP, its relevance stems from the fact that it resolves trade disputes over intellectual property, as well as helps to synchronize the system of intellectual property with respect to innovation, the transfer of technology, as well as public welfare. It legally recognizes the Intellectual Property Rights of various stakeholders and also advocates the need for a balanced as well as comprehensive system for the governance of Intellectual Property Rights. Further, TRIPS, under Article 51, accords specific recognition to copyright from the lens of infringement by way of piracy, etc. by stating that custom authorities of countries that are signatories can legally abate the free and unrestricted movement of goods that are suspected of being pirated or have a counterfeit trademark.

Legal framework for copyright law in the US

United States Constitution

Article 1 Section, 8, Clause 8 of the Constitution of the United States elaborates that the Congress shall be vested with the power to promote science as well as useful arts by securing for the persons exclusive rights for their works. It is often referred to as the Intellectual Property Clause. It has been divided into 6 sub-parts–

Sub-clause 1 provides a brief overview of Congress’s power over Intellectual Property.
Sub-clause 2 provides for a historical background of Intellectual Property Law that elaborates upon the English origins as well as the framing and ratification of Intellectual Property Law.
Sub-clause 3 provides for the domain of copyrights, especially with respect to the authorship, writing, or originality, as well as the time period for copyright, as well as the relationship of copyright with the first amendment.
Sub-clause 4 elaborates upon patents, especially upon the utility aspect, as well as an inventorship of patent, the eligible subject matter for a patent, and the constitutional constraints over grant of patents.
Sub-clause 5 deals with Federal Power over Trademarks.
Sub-clause 6 elaborates on State Regulation over Intellectual Property.

Copyright Act, 1976

In the current scenario, the United States government governs its copyright law through the Copyright Act of 1976, with effect from January 1, 1978. The Copyright Act of 1976 implemented various imperative as well as fundamental changes in a myriad of aspects of copyright law-

Background: The Act of 1976 was a result of various hearings as well as revisions from 1964 to 1976, and it also garnered substantial interest from the public as well as target groups, such as publishers and authors, as well as stakeholders, educators, producers, and the general public at large.

Ambit: Under the salient provisions of the Act of 1976, copyright protection is accorded to all original works of authorship, and it also takes into consideration various new and emergent kinds of media.

Language: The language of the enactment is expansive in nature in order to avoid friction as well as constant amendments due to emerging technologies and the development of new technologies and means of expression, such as still photography, recordings, motion, pictures, and other forms of media.

Fair Use: What distinguishes the Act of 1976 from its predecessors is that for the very first time the concept of fair use was introduced, and it also reduced the number of formalities for seeking a suit of copyright infringement.

Digital Millennium Copyright Act, 1998

The Digital Millennium Copyright Act (1998) was promulgated in law by erstwhile President Bill Clinton on October 28th, 1998. It implemented two-fold treaties of World Intellectual Property Organization (WIPO), namely the-

WIPO Copyright Treaty,
WIPO Performances and Phonograms Treaty.

The Digital Millennium Copyright Act is divided into five titles:

Title I, entitled “WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998,” implements the treaties promulgated by WIPO.
Title II, entitled “Online Copyright Infringement Liability Limitation Act,” puts in place limitations on the liability of online service providers for copyright infringement when engaging in certain types of activities.
Title III, entitled, “Computer Maintenance Competition Assurance Act,” creates an exemption for making a copy of a computer program by activating a computer for purposes of maintenance or repair.
Title IV elaborates on some miscellaneous provisions, relating to the functions of the Copyright Office, the exceptions laid down in the Act with respect to libraries and for making recordings of ephemeral nature, webcasting of sound recordings on the Internet, as well as the applicability of collective bargaining agreement obligations in the case of transfers of rights in motion pictures.
Title V, entitled, “Vessel Hull Design Protection Act,” creates a new form of protection of intellectual property regarding the design of vessel hulls.

Copyright infringement in the US

Anyone who violates the rights exclusively associated with a copyright owner, as given under Section 106-122, or Section 106(a), or who is found to import either copies or phono-records, into the United States, is stated to infringe the rights granted to a copyright owner. The owner, whether legal or beneficial, of a copyright owner is entitled to exclusive action for copyright infringement against the alleged offender.

The term ‘anyone’ in this Section includes the following entities:

Any state,
Any instrumentality of a state, and
Any officer or employee of a state or instrumentality of a state acting in his or her official capacity.

Subjects of copyright violation

Section 106 to Section 122 of the US Code elaborate upon the entitlements of the owner of a copyright. An infringer is understood to be anyone who contravenes any of the rights exclusively given to the author under the US Code. The exclusive rights of a person who owns copyright include the following-

Right of reproduction of work in copies/phone records.
Right of preparation of derivative works on the basis of the copyrighted piece.
Right of distribution of copies/phone records of the copyrighted work, to concerned stakeholders or the public at large.
Right of performance of literary, musical, dramatic, as well as dance, mimes, choreographic work and pantomimes, audio-visual work and motion based picture, publicly, or public display of such works.
Right of Performance of Sound Recordings by means of digital transmission of audio.

Applicability to parties

Infringement of copyright occurs when any party violates the rights of a copyright owner’s ownership with regards to the copyrighted material. While there are two parties to most copyright cases in the US, the owner and the infringer, secondary liability can also be invoked in cases of copyright infringement by way of adducing vicarious liability or contributory infringement in several cases. In the context of the US, secondary liability for cases of copyright infringement has been established by way of case laws, although it has not been laid down in a statute.

Types of infringement in the US

Civil infringement

In the US, Civil Copyright Infringement suits have a limitation period of three years for bringing an action for copyright infringement against the alleged wrongdoer.

Criminal infringement

In the US, Criminal Copyright Infringement suits have a limitation period of five years for bringing an action for copyright infringement against the alleged wrongdoer.

Innocent infringement

The innocent infringer defense is based on Section 504(c)(2) of the Copyright Act, 1976, which states that in cases where the infringer sustains the burden of proof and the court determines that such infringer was not aware and had no reason to believe that the acts constituted an infringement of copyright, the court may reduce the award of statutory damages to less than $200.

Primary and secondary infringement

Primary and secondary infringements come in two ways. A primary infringement entails a defendant-committed direct infringement. When one individual or organization aids another in violating copyright, this is known as secondary infringement. Contributory and vicarious infringement are two types of secondary infringing, neither of which is expressly forbidden under the Copyright Act but has been held to be forbidden by case law.

Tertiary infringement

A person who engages in secondary infringement (tertiary vicarious liability) or a secondary act of infringement (tertiary contributory liability), but not with the direct infringer, is said to be a tertiary vicarious infringer.

Institution of action for copyright infringement in the US

Under Section 508 of the US Code, within a period of 1 month of filing an action under the US Code, a written notice must be sent by court clerks to the Registrar of Copyright, stating the name and address of the parties as well as the other particulars material to the case.

Within a period of 1 month of filing any judgment or order, the court clerk shall duly notify the registrar of the same, sending along a copy of the order or judgment.

The registrar is further mandated to make such a judgment a part of the public record thereafter.

Prerequisites for institution of action

The preconditions for instituting an action for copyright infringement and availing oneself of remedies such as statutory damages, attorney fees, etc., have been stated in Section 411-412 of the US Code. Section 412 provides for the time-based stipulations within which an action can be instituted-

The work must have an effective registration date not later than 3 months after the first publication of the work violating its copyright.
The work must have an effective registration date not later than 1 month after the owner of copyright learns about the infringement.

Then, subject to the above procedural formalities, coupled with the violation of the copyright of an owner, an action for copyright infringement, as well as an action for an award of damages, an attorney fee, etc., can be made.

Preconditions under Section 411 of US Code

The preconditions for instituting an action for copyright infringement by way of violation of the author’s rights have been simply stated in Section 411 of the US Code. Section 411 of the Code states the following-

No civil action with respect to copyright infringement in any work of the United States shall be instituted until preregistration and registration of the copyright claim have been duly made in line with the US Code.
In case the registration of a copyright claim is bending due to reasons of deposit, application fee, etc., the registrar shall intervene in the matter, not affecting the jurisdiction of the competent court.

Remedies for copyright infringement in the US

Congress (or the Government) acknowledges copyright infringement as a major issue that has a severe effect on the US economy. This is why the fines and penalties cited in the Copyright Act are some of the most severe ones in US law. These remedies and penalties are developed with a view to giving substantial deterrence to the individual who infringed someone else’s copyright and others, too, so that they do not infringe copyright in the future. Also, the infringer pays a price (in the form of a penalty, fine, or compensation) for his past conduct, fully reimburses the copyright owners, and recoups any profits he (the infringer) earned from the copyright.

The remedies for copyright infringement, in the context of US, generally include-

Payment of any profits that accrued from the usage of the infringing article.
Order of the court that restrains the infringer from continuing the infringement.
Payment of attorneys’ fees.
Confiscation and destruction of infringing articles/items.

Let us take a look at all the remedies related to copyright infringement in the US in detail.

Civil and criminal remedies: an overview

An individual who infringes on copyright may be subjected to both- civil and criminal remedies. So, if the owner of the copyrighted work is willing to get monetary compensation and profits, attorneys’ fees, and/or an injunction from the copyright holder in federal court, then the copyright infringer may be subjected to both civil and criminal remedies. Further, if the copyright owner wants to seek the aforementioned remedies, he/she can file a lawsuit in federal court against the accused infringer for civil copyright infringement. Now, let us take a look at the various civil and criminal remedies available for copyright infringement in federal courts for copyright owners.

Civil remedies

Injunction

An injunction is quite a powerful remedy when it comes to seeking remedies for copyright claims. It is used to discourage or cease the defendant from infringing the copyrighted material any further. Basically, injunctions can be defined as orders administered by a court, thus instructing someone to do something or abstain from doing a particular act.

Under §502 (remedies for infringement : injunctions), any court that has the jurisdiction of a civil action may grant temporary or final injunctions at its discretion if it is necessary to restrict or restrain copyrighted material from being infringed further. Additionally, an injunction can be delivered to an individual anywhere in the US and the order will remain effective throughout the country and can be enforced by any US court that holds jurisdiction over that individual. If and when requested by any court seeking enforcement, the court clerk is obliged to promptly send a certified copy of all the papers in such a clerk’s office.

One must keep in mind that breaching an injunction results in contempt of court, and the infringer could be sentenced to imprisonment or may be directed to pay fines.

Thus, a federal court, vested with the powers under the US Code as well as exercising the relevant jurisdiction, can grant the following injunction based remedies to prevent or restrain future or ongoing civil copyright infringement-

Temporary/preliminary injunction

The federal court may issue a temporary injunction to stop the infringer from infringing the copyright further. Usually, such orders are made in the early stages of filing the lawsuit or petition, which imposes a restriction on parties from doing an act that is in dispute. Say, for instance, stopping the publication of infringing work.

Further, preliminary injunction relief is given in cases where the copyright owner can show that there is a high probability of winning the case. As opposed to trademark and patent cases, the copyright owner does not necessarily have to establish a permanent injury sustained. Furthermore, the federal court also has the authority to permit-

Seizure,
Impoundment, or
Destruction

of any infringing copies.

Final/permanent injunction

Usually, the federal courts grant permanent injunction where liability is established and there is a threat of continuing infringement. Such orders are given so that an individual or an entity/organisation completely stops doing a certain activity or takes specific action to do something. Further, it totally depends on the court’s decision whether it wants to give permanent injunction relief or not, even though it is oftentimes awarded to the prevailing copyright owner.

Impounding of infringing article

After an action for copyright infringement is initiated, the relevant court may, under its discretion, order seizing, seizing/impounding and further disposing off the copyrighted material, that has been infringed. Such material includes copies, or phonorecords, matrices, molds, tapes, etc., that were previously taken into the custody of the court.

Delivery up, destroying or seizing the infringed work

This is yet another important remedy one can use to ensure that infringing goods or commodities are not sold in the market anymore. Generally, when such goods are taken back, they are either donated or recycled.

Disposal of infringing article

After an action for copyright infringement is initiated, the relevant court may order the disposal of all the copyrighted material that has been infringed in order to prevent further spread and usage of the infringed material.

Standard damages or an account of profits

A party whose copyright is infringed can seek any of the two remedies (but not both). The amount of damages is ascertained by the court by determining what amount it would take for the copyright holder to be in the position they would have been in if the copyright infringement had not occurred. The amount is normally accessed in the form of a reasonable license fee. On the other hand, accounts of profits will be a restitutionary remedy, i.e., the defendant will compensate the claimant for the profits he/she has made as a result of that infringement.

Payment of damages and profits

At any time before the judge gives out his final say or judgment, a copyright owner, whose rights have been infringed, is legally entitled to be paid for an infringement. The payment has to be made by the copyright infringer.

Actual damages

An owner of the copyright may file a lawsuit to retrieve the actual amount of money he lost because of the infringement, along with any other additional profits the infringer made. This is known as actual damage. Actual damages intend to put the parties back in the financial position they were in had there been no infringement.

Statutory damages

As an alternative to actual damages, a jury is also allowed to set statutory damages for the infringed work. The jury can, at its discretion, and by keeping in mind the circumstances and the per-work range of awards as stipulated by the statutes. Further, if the infringement was not willful, the statutory damages thus awarded by the court have to be between $750 and $30000 for each infringed work. If the infringement was innocent and the infringer had no idea whatsoever about the infringement, then the cost could be reduced to as low as $200.

But an infringement cannot be considered to be innocent if the work contains a copyright notice, like most of the copyrighted works do. For willful infringement, the amount may go as high as $150,000 per infringed work. One must note that including a copyright notice on a work is often enough evidence to permit a jury to determine that the infringement was done willingly.

Where numerous cases are infringed upon by following a given course of conduct (for instance, regularly making copies of periodicals or downloading files from the internet), these actions may attract very large liability. So, copyright infringements that involve digital works or digital networks may result in some striking statutory damage awards. Say, for instance, in the case of Lowry’s Reports, Inc. v. Legg Mason, Inc., 271 F. Supp. 2d 737 (D. Md. 2003), the U.S. District Court for the District of Maryland opined that the practice of a financial institution sending mail and posts within its internal network was copyright infringement and that an award of $20 million must be awarded to the owner. In this case, the jury accessed about 200 statutory damage awards.

Additional damages

In some cases, there is a possibility that the copyright owner will file a claim for additional damages. For instance, in situations where the copyright infringement was fragrant, i.e., the defendant was aware that his/her actions would result in the copyright infringement, then in such cases, the copyright owner can obviously seek a claim for additional damages. The court can award additional payments (that tend to be multiples of the standard damage) based on the facts of the case.

Payment of costs and attorney fee

Based on the court’s discretion, one can recover full costs, either by or against any party, barring the state and any of its officers thereof. Further, the court may order the payment of attorney fees to the party that prevails in the case.

The federal courts, at their discretion, may order the copyright infringer for the recovery full court fees, including the attorney’s fees, in some situations. However, copyright owners who have not registered their work with the Copyright Office within the stipulated time shall not be awarded any such fees.

Declaratory relief

A declaration claiming that the material was copyrighted and the copyrights of the owner have been infringed will help claimants in every public dispute or in cases where there are multiple instances of infringement of the same copyrighted work.

Dissemination and publication of judgment

Apart from the declaratory relief (discussed above), this remedy also aids with any adverse publicity and the federal court has the right vested upon them to order the defendant, at his/her (defendant’s) own cost, to publicize the judgment (say, with a notice on the defendant’s website).

Costs

It is nearly impossible to recover 100% of the legal cost one has spent on the copyright claim, but about 70% of the total spending can be recovered if a court order for such a payment is made as a remedy.

Interest

The defendant may also, as a remedy, have to pay some amount of money as interest if the plaintiff claims the amount owed to put him/her back in the position he/she would initially be in if the infringement did not occur.

Other interim relief

Other interim reliefs may include the following:

Freezing injunctions,
Search and seizure orders, and
Disclosure orders.

One must make a note that all these are quite powerful remedies; however, they are not granted lightly, so evidence is essential to seeking such remedies or reliefs.

Copyright Claims Board (CCB): a most know detail

https://lawsikho.com/course/certificate-course-in-patent-law-licensing-claims-and-litigation

While studying the remedies for copyright infringement in the US, it is crucial to know about the Copyright Claims Board (CCB). CCB is a voluntary alternative solution to a federal court to address and solve matters related to copyright. These matters are usually less severe. Further, criminal penalties cannot be levied by CCB, as they can allow sentences for a limited set of civil remedies when it comes to copyright infringement. The remedies are as follows:

Damages

The CCB has the authority to award monetary damages to the prevailing party, but the monetary damages thus awarded cannot go beyond $30,000 in one case. Before the CCB has its final say in a particular copyright infringement case, the copyright owner may choose between two damages, namely:

Actual damages and profits, and
Statutory damages.
Also, a party, at its own discretion, may choose not to pursue damages at all.

Actual damages

The CCB may award actual damages in the amount of the copyright owner’s losses plus any profits of the infringer attributable to the infringement (however, the total damages awarded in any one case may not exceed $30,000).

Statutory damages

CCB can award statutory damages between $200 and $15,000 per copyrighted material infringed. As opposed to the federal court’s provision of copyright being registered to seek compensation in cases of infringement, the CCB can award a limited sum of statutory damages to copyright owners even when the work was not ‘timely’ registered with the Copyright Office. The CCB can award up to $7,500 per copyrighted work infringed and a total of $15,000 for all works thus infringed that were not ‘timely registered’.

Injunctions

The CCB has no authority to issue an injunction, but in case the parties reach an agreement where one party agrees to cease a particular conduct, the CCB can include a requirement in its determination that the party abide by the agreement to cease the conduct. Such an agreement may also affect the sum of money to be awarded as compensation for the infringement because of the Copyright Alternative in Small-Claims Enforcement Act of 2020, commonly known as the Case Act. The reason being that the Act authorizes the CCB to determine whether the party who has infringed the copyright has agreed to cease or mitigate the infringing activity while ascertaining the amount of damages that the CCB will award. Even though incorporation of the parties’ agreement into the CCB determination is not an injunction relief, technically, it more or less serves the same function and has the same effect.

Court cases and attorney’s fees

Generally, at the CCB, each party to the copyright infringement case has to cover their own set of attorney fees and court costs. But, there are some exceptions to such a rule, especially when a claim is dismissed for failure to prosecute, meaning the party who initiated the case stops participating in the case or where the CCB has determined that a party has pursued a claim, counterclaim, or defense for a harassing or other improper purpose, or without a reasonable basis in law or fact. In cases where the CCB ascertains that the party engaged with mala fide intentions, the CCB has the authority to award reasonable costs and attorney fees to the affected party. However, the amount will not be more than $5000. But there are two expectations when it comes to this rule, namely:

If the party affected (i.e., the original copyright owner) is not represented by an attorney while the case is being proceeded with, then the party will be awarded for coswts only (and not attorney fees), and the amount will not exceed $2500.
In special situations where a party has shown pattern or practice of mala fide conduct, the CCB may, in the interests of justice, award costs and attorneys’ fees in excess of $5,000.

Other civil remedies

Other civil remedies may be granted, depending on the facts and circumstances of the case.

Criminal remedies

In case there is a willful copyright infringement by an individual and he/she does so either for commercial benefit or pirate economic gain, or in case the infringement involves the willing reproduction or distribution of multiple copies with a value of more than $1,000 during a 180-day period, the copyright infringer will be under the indictment of a federal grand jury and may be further tried for criminal copyright infringement. If the infringer is found guilty, he/she may be sentenced to an infringement of up to 5 years and may also be asked to pay a fine of $250,000.

Forfeiture of infringing article

In addition to any other legal remedies available by law, forfeiture, destruction, and restitution related to an article must be subject to Section 2323 of Chapter 18 of the US Code, to the extent provided therein.

Destruction of infringing article

Payment of fine

An infringer of copyright is legally liable to pay the author/copyright holder of the work actual or statutory damages, depending on the facts and circumstances of the case.

Payment of damages and profits, costs and attorney fees

The court may, in its discretion, permit the recovery of the entire costs by or against any party other than the United States or a representative thereof in any criminal action brought under this section. The court may also include a reasonable attorney’s fee in the costs unless this section expressly provides otherwise.

Other criminal infringement remedies

Other criminal infringement remedies may be granted, depending on the facts and circumstances of the case.

Scope and extent of relief under US Copyright Act, 1976

Under §507 of the US Code, no criminal prosecution may be maintained under the provisions of this section unless it is initiated within 5 years of the cause of action arising unless expressly specified otherwise in this title. Further, civil actions must be filed within three years of the date the claim accrued in order to be upheld under the terms of this title.

Exceptions to copyright infringement in the US

The US Copyright Law aims to serve both the general public interest as well as the interests of a private individual. The private individual’s interest lies in the fact that the rights of authorship to the benefits of the creative endeavors associated with him in the copyright domain rest with the author alone, while the public interest lies in the fact that dissemination as well as use of several works, authored by individuals, must be given to the public by way of furthering the general good. Therefore, there are certain limitations as well as exceptions to the copyright law to balance the rights of the owners of the copyright as well as the general good at large.

The public is allowed to benefit from the work of the copyright owner in the below-mentioned cases-

Fair use

In spite of the stipulations of Sections 106 and 106A of the U.S. Code, the fair use of a copyrighted work, including such use by reproduction in copies or phono-records or by any other means specified by that section, is not a violation of copyright when it is done for purposes like criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.

The following criteria must be taken into account when determining whether a particular use of a work is a fair use:

The purpose and nature of the use, including whether it is commercial in nature;
The nature of the copyrighted work;
The amount and substantiality of the portion used; and
The impact of the use on the potential market.

Library use

It is not a copyright violation for a library or archives, or any of its employees acting within the scope of their employment, to reproduce no more than one copy of a phonorecord or to distribute such a copy or phonorecord as long as the following conditions are met:

The reproduction or distribution is made without any intention of gaining a direct or indirect commercial advantage
The library’s or archives’ holdings are either
- Accessible to the general public or
- Available to all researchers, not only those affiliated with the institution.
The work is reproduced or distributed along with a copyright notice that is printed on the copy or phonorecord that is reproduced in accordance with the section.

Right of sale

Without the permission of the copyright owner, the owner of a specific copy or phonorecord that was produced lawfully under the title, or any person authorized by such owner, may sell or otherwise part with ownership of that copy or phonorecord.

Face to face teaching

A nonprofit educational institution that engages in face-to-face teaching activities during which teachers or students perform or present a work in a classroom or other learning space can use copyrighted resources in a classroom setting during the course of such teaching activities.

Online teaching

The TEACH Act of 2002 broadened the range of rights over copyrighted material to online educators who have to perform, show, and make copies of works that are essential to such performances and displays, bringing these rights closer to those we have in traditional classroom settings. Thus, it allows for copyrighted material to be used in an online setting.

Persons with disabilities

Accessible access of copyrighted material can also be made available for aiding persons with disability (PWD), the ‘eligible persons’, categorized under § 121 of the US Code, as persons who are blind, have an impairment visually or is unable to grasp a book normally due to a physical disability.

Leading cases on copyright infringement

Whitmill v. Warner Bros. Entertainment Inc.

In this case, S. Whitmill, the designer of a tribal tattoo that Mike Tyson famously has as well, sued Warner Bros., alleging copyright infringement, over the alleged usage of his tattoo without his prior consent. However, this case was settled out of court. Since this is one of the leading cases, let us discuss this case in detail.

A brief introduction on the case

The case of S. Victor Whitmill v. Warner Bros. Entertainment Inc. is a landmark legal battle that sheds light on the issue of copyright infringement in the entertainment industry. This well-known case involves a major film studio and a tattoo design. This case raised a lot of questions about the boundaries related to intellectual property rights and the rights of artists (or the copyright owner).

Facts of the case

In this case, Warner Bros. released a film named ‘The Hangover Part II’ in 2011 (which was one of the most awaited sequels to the highest grossing comedy of all time- The Hangover) featured a tattoo design similar to the face of Mike Tyson, the boxing champ, designed and inked by a tattoo artist named S. Victor Whitmill. The tattoo design by Whitmill was quite similar to the one painted on one of the main characters, Ed Helms, in the movie. Agitated by this, Whitmill decided to take legal action and filed a lawsuit claiming copyright infringement and asking for recovery of damages. This lawsuit sparked a debate regarding the scope of copyright protection in cases of tattoo designs and the rights of artists concerning their work. Whitmill asked for a preliminary injunction as a reemdy.

Another important factor to know about infringement and the case in hand

While studying this case, it is pertinent to take into consideration the legal aspects of copyright infringement. Once the work is copyrighted, the owner gets exclusive rights over the original work, including the following rights:

The right to reproduce the work,
The right to distribute the work,
The right to creative derivative works.

But one must make a note that tattoos come with a unique challenge when it comes to copyright protection. As opposed to traditional forms of artwork (painting, art pieces, etc.), tattoos are inscribed onto a human body, making it quite difficult to establish ownership rights and control.

Issues of the case

One of the major issues in this case was whether tattoos qualified to come under copyrightable work or not. The Court reached the inference that tatoos can be protected under the provisions of the Copyright Act, considering the amount of originality and creativity involved in each of these art pieces. But the Court also shed light on the limitations of copyright protection when it comes to tattoos and stated that the rights of a human canvas (like one does for a normal canvas in the case of artwork or painting) must also be taken into consideration.

Verdict of Judge Perry

Further, while ascertaining if the Court should grant a preliminary injunction to Whitmill, the judge had to consider the odds of the claim succeeding at trial while also evaluating the difficulties the defendant would face had the injunction been granted. The Judge, Catherine D. Perry, did not allow the motion for injunction relief, the reason being that the impact, harm, or damage the injunction would have on Warner Bros. and third parties was way too high. When Whitmill filed a lawsuit for halting the film’s release, Warner Bros. had already invested about $80 million in the promotion of the movie and had released prints of it to over 3700 movie theaters. These theaters had been prompting the release and had sold tickets well in advance all across the US. If such a release was halted, the theaters would end up losing a huge sum of money, and Warner Bros. would also incur severe monetary losses as thousands of theaters all across the country would have started filing suits involving damage claims.

Despite the Judge’s decision not to pass the motion for a preliminary injunction, Warner Bros.’ liability was not totally off the hook. Also, Whitmill sought a permanent injunction for ‘reckless copyright infringement’ which, if the judge had granted it, would stop further distribution of the film, including the DVDs. After hearing the contentions, Judge Perrry allowed this claim to go forward for trial, as the production house was much more likely to be liable for infringement as they did not obtain prior permission from the creator of the tattoo.

Contentions of the parties

But even after this, the outcome of the case may not be as crystal clear as the opinion of the judge would have us believe. The question of how far the rights of the copyright owner extend, especially when it comes to somebody’s body, is not quite clear. Until the case was filed, there were hardly any copyright suits that involved tattoos, all of which were settled outside the court. Thus, there are no deep-dyed cases or precedents as such to ascertain the outcome of this case. Any kind of artwork, be it in any form, let alone a tattoo, can be protected under copyright law.

Further, Whitmall argued that he has ownership rights to Tyson’s tattoo as follows:

Firstly, he had entered into an agreement with Tyson about making the tattoo, and this agreement clearly indicated that all the artwork, sketches, and drawings related to my tattoo and any photographs of the tattoos belonged to Paradox-Studio Dermagraphics, i.e., Whitmill’s business.
Secondly, he furnished a copy of his copyright registration tattoo to the court. The copy was effective from April 19, 2011.

On the other hand, Warner Bros. contended that even if Whitmal had the copyright to the tattoo, the company had the legal right to reproduce it, considering the fair use doctrine. This was yet another crucial aspect of this case. So, the fair use doctrine serves as an exception to using copyrighted artwork (i.e., the exclusive rights granted to the creator) without obtaining prior consent from the owner or creator. This doctrine is used in a lot of copyright infringement cases, including when a copyrighted work is recreated or in order to parody it. In this case, Warner Bros. contended that the tattoo on the actor’s face in the movie was used to parody Tyson, as he made his personal appearance in the movie. Further, for a fair use doctrine to be applicable, the case has to satisfy the following four tests:

Firstly, the purpose and character of the use, including whether such use was commercial in nature or if it was used for non-profit educational purposes.
Secondly, the nature of the copyrighted work.
Thirdly, the amount and substantial of the portion used in relation to the copyrighted work as a whole.
And lastly, the effect of the use on the potential market for, or value of, the copyrighted work.

Further, Warner Bros. said that the usage would fall under the fair use policy as it was transformative and added creative value to the movie. However, the Judge regarded such an argument as ‘silly’ and stated that there was no parody as such and that the use of “the entire tattoo in its original form, not in parody form”, thus being an instance of blatant copyright infringement.

The final outcome

Additionally, as the Judge only decided on whether the film should be released as planned or halted, her court opinion was obiter dicta, per se, and was not the final word on the case. Rather, her decision served as a go signal for Whitmill’s claim against Warner Bros. to proceed with the trial. But, before this case went on trial, an amicable settlement took place between both parties. However, the terms of the settlement never saw the light of day; thus, the terms were kept confidential. Even though the case did not result in a definitive legal ruling, it shed light on the complexities of copyright law and the challenges associated with tattoo copyright infringement. Also, this case acts as a reminder of the significance of respecting the rights vested with an artist and the need to set clear guidelines for using copyrighted material. It sheds light on the need for proper licensing agreements and permissions one must obtain while incorporating tattoo designs into other works of art, like films and advertisements.

Moreover, this case acts as a catalyst for further discussion on the legal status of tattoos and intellectual property. This case also raises important questions about the ownership and control of tattoos, especially in instances where they are used for commercial purposes without obtaining the prior consent of the tattoo artist. These discussions are much more likely to shape future legal precedents and judgments in the case of copyright, thus providing better and enhanced protection for tattoo artists and their creations.

Conclusion

To conclude, this case highlighted the issue of copyright infringement in regard to tattoo designs. It further exposed the complexities of copyright law and highlighted the need for greater clarity and protection for tattoo artists. This case study serves as a vital lesson in respecting intellectual property rights and the rights of artists in the ever-evolving entertainment industry.

Gray v. Hudson, No. 20-55401 (9th Cir. 2022)

In this case, famous singer Katy Perry’s work, Dark Horse, was the subject of an alleged infringement of the copyright of the song, Da. T.R.U.T.H., by Marcus Gray and others. The Court stated that in such cases, the subjective aspect pertaining to similarity cannot be left to the jury. Let us read about the case in brief.

An overview of the case

This landmark case was a lawsuit filed against several individuals, namely:

Katy Perry (Katheryn Elizabeth Hudson),
Juicy J (Jordan Houston),
Dr. Luke (Lukasz Gottwald),
Max Martin (Karl Martin Sandberg),
Cirkut (Henry Russell Walter),
Capitol Records, inter alia.

Here, the plaintiffs, namely:

Flame (Marcus Gray),
Da’ T.R.U.T.H. (Emanuel Lambert), and
Chike Ojukwu

claimed that Perry’s song entitled “Dark Horse” was an infringement of their (plaintiffs’) exclusive rights in the song “Joyful Noise.”

Facts of the case

In this landmark case, several musicians, including Katy Perry and Juicy J., along with producers and record labels, were sued for copyright infringement for using an eighth-note obstinate in one of the famous songs- Dark Horse. The plaintiffs made an assertion that the usage of ostinato (a short, constant repetitive sound) in the song by Katy Perry was an infringement of their song “Joyful Noise.” The trial went on for about two weeks and the plaintiffs were sentenced to be awarded damages worth $2.8 million. Agitated by the judgment, the defendants moved for judgment as a matter of law or a new trial on multiple grounds, they are-

The ostinato could not be protected.
The ostinato was not totally similar to either the extrinsic or intrinsic tests.
Lack of access.

Finally, the case was filed in the Ninth Circuit for a final verdict.

Issue of the case

The main issue of the case was whether there was an infringement of ostinato copyright or not.

Judgment

The Ninth Circuit heard oral arguments on audio/video recording and about two months later, the Ninth Circuit gave an opinion and affirmed the judgment of the District Court.

The Panel reached the conclusion that the similarities between the ostinatos did not arise out the original combination of these elements. Thus, the jury’s decision to find the defendants liable for copyright infringement had no concrete evidence, as the plaintiffs were not successful in providing adequate evidence. Thus, the final verdict was that, even though both “Joyful Noise” and “Dark Horse,” were extrinsically similar works with respect to any musical features, they both were protectable under copyright law.

Conclusion

After reaching the inference that there were no similar elements between the two ostinatos or that the combination of those elements merited copyright protection, the Ninth Circuit passed a judgment that plaintiffs could not, as a matter of law, satisfy the extrinsic test to show substantial similarity between “Dark Horse” and “Joyful Noise,” and it affirmed the District Court’s order granting judgment as a matter of law in favor of defendants.

AandM Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001)

In yet another case, Napster platform provided streaming services for songs, etc., taking songs from major artists. It was sued for copyright infringement. The Court ruled that Napster was guilty of copyright infringement, posed danger to record label sales, and led to misappropriation of profits.

Vanilla Ice v. David Bowie

In this case, pertaining to the release in 1981 by Queen and David Bowie, the song “Under Pressure”, and in 1990, Vanilla Ice released his single “Ice Ice Baby,” wherein the beat of the song was the same as “Under Pressure”. Queen and David Bowie sued the singer for sampling the beat to the song without permission or a license. This lawsuit was settled privately between the parties without court action.

Landmark cases on remedies for copyright infringement in the US : a state-wise perspective

Nevada

In this case pertaining to Nevada, the U.S. Postal Service was held liable for copyright infringement of the Las Vegas Statue of Liberty, based on the work of Robert Davidson (a Nevada-based artist and sculptor). He received $3.5 million in damages after his work was infringed upon by the U.S. Postal Service.

California

The case of Zachary v. Western Publishing Co. (1961) is a case heard before the Court of Appeals of California, First Appellate District, wherein the inventor Rex Zachary filed a lawsuit to challenge a decision granting Western Publishing Company’s petition for a summary judgment and dismissing Zachary’s claim for general and punitive damages as well as injunctive relief for the violation of his common law copyright in the design and drawings for a kite. His action was based on the Californian Law of Copyrights, wherein the claim of Western Publishing Company was upheld.

Furthermore, the case pertaining to copyright infringement against James Joyce, filed against a professor at Stanford University, with Mrs. Shloss, the professor, stating that the estate, which was run by Joyce’s grandson and Lucia’s nephew, Stephen James Joyce, refused to give her permission to quote from any of the works it was in charge of and threatened to prosecute her for copyright infringement if she did. Later, Shloss put the unreleased content on a private website that was inaccessible to the general public, but he kept getting legal warnings from the estate. In this lawsuit, Shloss sought a remedy from the Court to allow her to quote Joyce and his daughter on the website from both – published and unpublished works. Nonetheless, the parties settled this case outside the court through mediation.

Florida

In this notable case of Dream Custom Homes, Inc. v. Modern Day Construction, Inc. (2011), an infringement claim (related to architectural flooring plans and elevations) was dismissed by the Middle District Court of Florida, claiming that there were no apparently similar elements the jury could find (meaning the plaintiff and the defendant’s elements were not substantially similar) that could be protected under copyright; hence there was no infringement as such.

Virginia

In this case related to copyright infringement in Virginia, a member of the online theft collective “IMAGiNE” was sentenced to serve a 23-month imprisonment in Virginia for criminal copyright conspiracy. Court records state that Ferrer and his accomplices wanted to illegitimately obtain and circulate digital copies of copyrighted motion pictures playing in theaters. As his accomplices employed receivers and recording equipment to covertly record the audio soundtracks of copyrighted motion pictures playing in theaters, Ferrer actively participated in the IMAGiNE Group’s illegal attempts to film copyrighted motion films now exhibiting in theaters. The case was heard by the Eastern District of Virginia’s U.S. District Judge, Arenda L. Wright Allen.

Ohio

In yet another case, State v. Perry (1998), a case heard by the US Supreme Court of Ohio, an individual was declared guilty of unauthorized use under Section 106 of the Copyright Act, 1976. The reason is, that the person with authorization uploaded, downloaded, and posted computer software on a computer bulletin board.

Arizona

Budiyanto et al. v. My Vintage Venue et al. (2018), is a case heard before the US District Court of Arizona, wherein a suit for copyright infringement was filed against 33 defendants, because they had shared a flyer, meant for promotional purposes, on Facebook. The claim of the plaintiff was held to be frivolous, as they failed to produce proof of their ownership of the photograph in question.

Conclusion

Thus, it can be concluded that the U.S. has an established jurisprudence for governing copyright infringement cases. In the US, a person who infringes on the copyrighted work of a copyright owner can incur both civil as well as criminal liabilities. Regardless, by way of certain exceptions to copyright infringement, one can escape liability, even in the US jurisdiction. It is generally advisable for people to display prudence and not use any work that might be copyrighted without taking due permission.

Frequently Asked Questions (FAQs)

When does a copyright infringement occur?

A copyright infringement takes place when one party violates the exclusive rights of any of the copyright owners. There are two crucial things we require for a copyright infringement to occur, namely:

First, the person who is accused of infringing the copyright must have copied from the copyright owner’s original work in a manner that falls under the explicit rights given to the creator or the owner (like reproduction, public performance, etc.)
Second, the person accused must have used enough content from the copyrighted work to be held liable for copyright infringement.

How the above rules are applicable may vary depending on the circumstances and the nature of the defendant’s activity. For instance, in a traditional case that has its focus on a single work, where the accused did not necessarily copy the plaintiff’s (or the owner’s) work literally (say word-to-word) or completely, a question might arise as to whether or not the accused knew about the plaintiff’s original work. Further, even if they did copy some parts as they are, will the copied content be sufficient enough for both works to be regarded as ‘substantially similar’.

Additionally, in cases involving the legality of an unlicensed online service that does not have explicit authorization to use copyrighted works, it is crystal clear that the work of the plaintiff (or the copyright owner) was used entirely. Here, two main questions arise, as to:

Whether the online service falls directly under the copyright owner’s exclusive rights?
Whether the service provider can be held legally liable for the activity (or the infringement)?

In cases of indirect copyright infringement, does secondary liability exist? If yes, what actions lead to such a liability?

Several case laws have played a role in establishing secondary liability in matters related to indirect copyright infringement, although there is no explicit mention of this is any of the statutes. Nonetheless, secondary liability can be found under several theories, namely:

Vicarious liability

Vicarious liability occurs when the defendant has the ability to govern the infringing conduct and gets economic gains from the infringement.

Contributory infringement

Contributory infringement takes place when the defendant is aware of the infringement or has reason to know about the infringement and even then conducts, permits, or encourages it.

Inducement

As mentioned in the decision taken by the Supreme Court in the Grokster case, inducement occurs when the actions of the defendant intend to promote infringement, as clearly demonstrated by expressions or other affirmative steps taken in order to encourage copyright infringement.

What sort of remedies are available against a copyright infringer?

The following remedies could be used by a copyright owner if anyone infringes them:

Compensation

Compensation to the copyright owner for the profits thus obtained and for any losses the copyright owner suffered as a result of the infringement or ‘statutory damages’ as an alternative to actual profits and losses.

Court order

Obtaining a court order that prohibits copyright infringers from continuing the infringing activity.

Confiscation and destruction

One can confiscate and destroy the infringing items.

Attorney’s fees

The copyright owner can ask for compensation for the fees he/she paid while filing the infringement suit, thus getting monetary returns.

Is there any limitation to seeking remedies?

For filing a civil suit for copyright infringement, the statute of limitations is three years, whereas, when it comes to filing a lawsuit for criminal cases, the statute of limitations is five years. The time is measured when the claim is accrued. In most of the courts, a claim is regarded to arise when the plaintiff was aware or had reasons to believe that the infringement has/had occurred. However, some courts may see a claim as arising at the time the infringement initially took place.

If at the time of lawsuit, the infringement has persisted for more than three years since the claim arose, the copyright owner can claim remedies for the infringement that occurred within the last three years. Nonetheless, in matters wherein the main issue of the copyright claim revolves around issues related to copyright infringement, courts have dismissed the claim that was brought three years after the infringement occurred.

Can one seek monetary damages for a copyright infringement?

Any party held guilty of copyright infringement may be sentenced to compensate the actual owner for the losses incurred and any profits thus gained by the infringer. On the other hand, a total owner can also seek statutory damages as mentioned in the Copyright Act; however, such damages can only be sought if the infringed work is registered within specific time limitations.

Can one also claim the recovery of attorney’s fees and costs in cases of copyright infringement?

Both the fees and costs can be retrieved from the infringer in cases of claiming compensation for a copyright infringement lawsuit. The copyright owner (or the prevailing party) may be awarded such compensation if the court agrees and if it is registered with the US Copyright within a specific time period.

Are there any provisions related to criminal copyright under the Copyright Act? If yes, what are they?

Yes, indeed the Copyright Act has provisions related to criminal copyright. It is a criminal wrong to willfully infringe a copyright in care the copyright infringement was committed-

For commercial advantage or for economic gain; or
By reproduction or distribution, including electronic means, within a period of 180 days, of one or several copies or phonographic records of one or more copyrighted works, having a total retail value of more than US $1,000; or
By distributing works that were prepared for commercial distribution, by making it accessible to the public on a computer network, if the person was aware or should have been aware that the work was intended for commercial distribution.

Further, the Copyright Act has explicit mention of several criminal offenses, namely:

Furnishing a fraudulent copyright notice on any article, or sharing or importing any article bearing such a fraudulent notice in public domain;
Removing or making modifications in any notice of copyright appearing on a copy of a copyrighted work with fraudulent intent;
Deliberately making a false and frivolous statement statement of a material fact in an application for copyright registration or in any written statement that is filed in court related to the application; and
Deliberately and for commercial advantage or personal economic gain, it violates provisions of the Act relating to technological protection measures or those relating to the protection of the integrity of copyright management information.

Is there any specific liability, remedy or defense in cases of online copyright enforcement?

Well, there is no straight-jacket answer to this question, as the liability, remedy or even defenses for that matter would be more or less similar to those of a normal copyright infringement lawsuit.

Can one prevent their copyrighted work from being infringed? If yes, what are the methods to prevent copyright infringement?

Yes, one can definitely prevent their copyrighted work from getting infringed. In the US, copyright owners, in order to protect their copyrighted work, use a mix of strategies, some of which are as follows:

Registering the work with the Copyright office.
Discourage infringement by applying a copyright notice and other warnings against infringement.
Employing technological measures to discourage infringement.
Recording the work with US Customs and Border Protection to prevent the infringed copies from entering the US market.
Keeping an eye on the market to look for infringements, including, at times, appointing contractors to watch out for online infringements.
Invoking statutory or informal notice and takedown procedures to remove infringing material from online services.
Sending ‘cease-and-desist’ letters asking the infringer to put an end to or cease the infringing activity.
A civil action suit as remedies.
Jining hands with the law enforcement authorities is possible for criminal enforcement in some situations.

Further, trade associations and collecting societies that represent copyright owners also take various steps unanimously to control infringement. Some of the measures are as follows:

Encouraging programs that have the goal of educating and informing the public about copyright compliance and legitimate sources of copyrighted material.
Operating telephone ‘tip lines’ and investigating infringements.
Assisting in collective enforcement action.
Joining hands with US Government trade officials to address and resolve serious infringement issues abroad.

Should one consult a lawyer about copyright issues?

Well, the remedies and resolutions for copyright issues are quite difficult and tricky. To help one with the issues, a copyright attorney can be of help and he/she may help choose the best remedy for the infringement. Additionally, the attorney one chooses can participate in ongoing research to make sure that the copyrighted content is not used without obtaining the consent of the owner (you, the client). Furthermore, the attorney will guide his/her client through the complex and stringent procedural requirements for litigation and bring out the core issues of the case.

What are the points one must prove in a copyright infringement lawsuit?

When a copyright infringement lawsuit is brought into court, the plaintiff has to prove that the original work was copyrighted by the defendant or that the defendant violated the copyrighted owner’s rights. Oftentimes, the plaintiff provides proof that the infringer had access to the original work and that both works are similar; thus, the proof of copying is accomplished through circumstantial evidence. Courts ascertain the substantial similarity between the two works by looking at the formats, appearances, sounds, words and sequence. Even though owners do not have to put a notice on their work or register it with the Copyright Office, taking such measures in a timely fashion makes it easier to establish a copyright infringement case later.

References

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