The Copyright Handbook

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The Copyright Handbook Page 53

by Stephen Fishman


  Who may be liable for such damages and

  or Just One?

  fees? Quite simply, everybody who participates

  in or contributes to copyright infringement.

  A factor complicating the three-year period

  This may include not only the author of

  has to do with situations in which repeated

  the infringing work, but its initial publisher

  acts of infringement occur over a long

  and other publishers who reprint it, the

  period of time—for example, where a book

  publisher’s printer, and even the bookstores

  containing infringing material is sold over

  that sell the work. Such persons or entities

  a period of years. Is each sale of the book a

  are liable regardless of whether they actual y

  separate infringing act, or are all the sales

  know that the work they published,

  together one infringing act? Courts disagree

  printed, or sell infringes on another person’s

  with each other on this question.

  copyright. Moreover, corporate officers and

  EXAMPLE: Acme Press begins to sell a

  employees—such as editors employed by

  book containing infringing material in

  publishing companies—actively involved in

  January 2010. Carl, the copyright owner,

  the infringe ment may be held personal y liable

  finds out about the infringement that

  along with their employers. Any person who

  same year but doesn’t do anything about

  is sued for copyright infringement is cal ed

  it. However, Acme continues to sell the

  the defendant.

  book through January 2018, when Carl

  final y decides to file suit. Most courts

  How Much Time You Have to

  would permit Carl to obtain damages

  Sue: Statute of Limitations

  only for the losses he incurred due to the

  sales that occurred within three years

  There are strict time limits on when copy-

  before he filed suit; however, some courts

  right infringement suits may be filed. If you

  would permit him to recover damages

  fail to file in time, the infringer may be able

  from January 2010. These courts would

  to have your suit dismissed, even though

  view all the sales of the infringing works

  you have a strong case. In cases where you

  as part of one “continuing wrong.” (See

  have not discovered the infringement fairly

  Taylor v. Meirick, 712 F.2d 1112 (7th Cir.

  promptly after it has occurred, statute of

  1983); Gaste v. Kaiserman, 669 F.Supp.

  limitations questions can be tricky. It’s

  583 (S.D. N.Y. 1987).)

  wise to see a knowledgeable copyright

  lawyer about the proper application of the

  limitations period to your particular case.

  302 | THE COPYRIGHT HANDBOOK

  The general rule is that an infringement

  • Actual damages and infringer’s

  suit must be filed within three years after the

  profits. The plaintiff is entitled to

  date the copyright owner should reasonably

  be compensated for the value of lost

  have discovered the infringing act occurred.

  sales (often difficult to prove) and for

  In some cases, it can reasonably take a

  other losses resulting directly from

  copyright owner a long time to discover that

  the infringement. The plaintiff is

  the infringement took place, especially where

  also entitled to collect the amount

  the infringer attempted to conceal the act

  of the defendant’s profits from the

  of infringement. Moreover, the three-year

  infringement over and above the

  period starts to run anew every time there is

  amount the plaintiff is awarded for his

  a fresh infringement upon a work. For this

  or her lost profits.

  reason, if more than three years have passed

  • Statutory damages. If the plaintiff’s

  since the infringing work was first published,

  work was timely registered and he or

  don’t jump to the conclusion that your suit is

  she so chooses, the plaintiff is entitled

  barred by the statute of limitations.

  to receive special statutory damages

  provided in the copyright law (statute)

  EXAMPLE: In 2013, several professors at

  instead of actual damages and other

  Esoterica College have Pinko’s Copyshop

  photocopy portions of Bil ’s biography for

  economic damages.

  inclusion in class materials for courses on

  • Attorneys’ fees. A copyright owner can

  Middle Eastern history. Bill doesn’t discover

  also get attorneys’ fees. Again, timely

  this until 2018. If a court views the five-year

  registration is required.

  delay as reasonable, Bill will be able to bring

  We’ll examine each remedy in turn.

  an infringement suit against Pinko’s.

  Again, this isn’t a complete description

  of the legal procedures involved but is

  designed to give you an overview of the

  What You Can Get If

  available remedies.

  You Win: Remedies for

  Copyright Infringement

  Injunctive Relief

  Once you’ve proven the elements of

  An injunction is a court order telling some-

  infringement, the next step is to establish

  one to stop doing something. In a copyright

  what remedies you’re entitled to. The

  infringement action, the order usually is

  potential remedies include:

  simply for the defendant to stop the infring-

  • Injunctive relief. This typically consists

  ing activity. This is commonly a quick,

  of a court order requiring the infringer effective remedy because, in many cases, it

  to stop publishing the infringing work is possible to get positive action from the

  and destroy all remaining copies.

  CHAPTER 11 | COPYRIGHT INFRINGEMENT | 303

  court long before the actual trial is held to

  later. In fact, the parties often fashion

  decide who wins.

  a settlement based on the results of the

  Indeed, it is possible to get a temporary

  preliminary injunction hearing.

  restraining order (TRO) almost immediately

  EXAMPLE: In 1990, Nolo sued another

  without notifying the defendant or holding

  publisher for publishing and distributing a

  a formal court hearing. A TRO may last ten

  book infringing on Nolo’s title, Dog Law, by

  days at most. A hearing must then be held on

  Mary Randolph. Nolo and Randolph were

  whether the judge should issue a preliminary

  able to obtain a pre liminary injunction from

  injunction. A preliminary injunction operates

  a federal judge barring the publisher from

  between the time it is issued and the final

  distri buting any more copies of its book. A

  judgment in the case. This interim court order

  settlement was reached soon thereafter. The

  is available when it appears likely to a federal


  whole process took just three months from

  judge, on the basis of written documentation

  the date suit was filed.

  and a relatively brief hearing at which the

  lawyers for each side present their view of

  If a settlement is not reached and a

  the dispute, that (1) the plaintiff will most

  full-scale trial occurs, the same issues as

  likely win the suit when the trial is held, and those raised in the preliminary injunction (2) the plaintiff will suffer irreparable injury

  hearing will be litigated in more detail.

  if the preliminary injunction isn’t granted.

  If the plaintiff again prevails, the

  Ordinarily, irreparable injury is presumed

  preliminary injunction will be converted

  to exist where someone infringes upon a

  into a permanent one, either including the

  copyright owner’s exclusive rights. ( Apple

  same terms and orders or different ones,

  Computer, Inc. v. Franklin Computer Corp.,

  depending on what the plaintiff proves at

  714 F.2d 1240 (3d Cir. 1983).)

  trial. If the plaintiff loses, the preliminary

  If the judge grants the injunction, the

  injunction (if one was granted) will be

  plaintiff must post a bond in an amount

  dissolved and the defendant can go back

  determined by the judge. If the injunction

  to doing what it was doing before, plus be

  is later found to have been wrongfully

  compensated for the consequences of the

  granted, the defendant can collect from

  lawsuit out of the bond.

  the bond the damages and costs he or she

  incurred due to the injunction.

  Damages

  Once a preliminary injunction is granted, If you win a copyright infringement suit,

  it remains in effect pending a further

  you usual y have the right to col ect money

  determination of whether infringement

  (cal ed damages) from the infringer.

  occurred at the formal trial. In theory, a

  As mentioned, if your work was timely

  trial will probably be held one or two years

  registered with the Copyright Office, you

  304 | THE COPYRIGHT HANDBOOK

  will be entitled to choose between collecting infringer’s gross revenue from the infringing actual damages and special statutory damages. work. The defendant’s business records

  would usually be presented for this purpose.

  Actual damages and infringer’s profits

  The defendant must then prove what its

  Actual damages are the lost profits or

  actual net profit from the infringement

  other losses sustained as a result of the

  was—that is, the defendant must produce

  copyright infringement. In other words,

  records or witnesses to show the amount

  actual damages are the amount of money

  of expenses deductible from the infringing

  that the plaintiff would have made but

  work’s gross revenues (such as printing and

  for the infringement. This may include

  distribution costs) and the amount of profit,

  compensation for injury to the plaintiff’s

  if any, attributable to the noninfringing

  reputation due to the infringement and for

  material in the defendant’s work (often

  lost business opportunities (often difficult to difficult to prove).

  prove)—for example, a lost opportunity to

  sign a publishing contract to write a sequel

  Statutory damages

  to a novel because an infringing novel

  Statutory damages are set by the copyright

  hurt its sales. To obtain actual damages,

  law and require no proof of how much

  the plaintiff must prove in court that the

  the loss was in monetary terms. However,

  alleged losses actually occurred. Business

  as discussed in Chapter 3, “Copyright

  records and witnesses (often including the

  Registration,” statutory damages are available

  plaintiff him- or herself) must be presented only if the work was timely registered—that to substantiate the plaintiff’s actual losses.

  is, before the infringement began or within

  As stated above, the plaintiff is also

  three months of publication. Statutory

  entitled to recover the amount of the

  damages are awarded at the discretion of the

  defendant’s profits from the infringement

  judge or jury and don’t depend on having

  to the extent they exceed the plaintiff’s

  to prove a loss in any specific amount due

  recovery for lost profits.

  to the infringement. Statutory damages fall

  within the following range:

  EXAMPLE: The plaintiff is awarded $10,000

  • Absent a finding that the infringer

  for lost sales due to the defendant’s infringe-

  ment. The defendant earned $15,000 in

  acted either willfully or innocently,

  profits from the infringement. The plaintiff is

  between $750 and $30,000 for all the

  entitled to $5,000 of the defendant’s profits.

  infringements by a single infringer of

  a single work, no matter how many

  To establish the defendant’s profits,

  infringing acts there were. If multiple

  the plaintiff is required only to prove the

  separate and independent works were

  CHAPTER 11 | COPYRIGHT INFRINGEMENT | 305

  infringed, statutory damages may be

  Destroying the Infringing Works

  awarded for each work.

  • If the court finds that the infringer

  Another civil remedy for copyright infringe-

  acted willfully—that is, knew he or

  ment consists of an impound and destroy

  she had no legal right to the material,

  order from the court. This tells the sheriff

  but took it anyway—it may increase

  or marshal to go to the infringer’s place

  the amount of statutory damages up to of business (or wherever the infringing

  $150,000.

  material is located) and impound any

  • But if the court finds that the infringer infringing works. This can happen at any

  acted innocently—that is, used the

  time after the suit has been filed. If the

  copyrighted material sincerely believing plaintiff wins, the court may order the

  he or she had the right to do so—the

  sheriff to destroy the infringing material.

  judge has discretion to award as little as

  $200. However, if the work to which

  Attorneys’ Fees and Costs

  the infringer had access contained a

  If your suit is successful and you timely

  valid copyright notice, the infringer

  registered your copyright, the court may also

  may not claim to have acted innocently. order the defendant to pay your attorneys’

  As discussed in Chapter 2, “Copyright

  fees and other costs of going to court, such

  Notice,” this is why it is always a good

  as filing fees. However, this is not required.

  idea to include a valid copyright notice

  It’s up to the judge to decide whether to

  on your work (even though a notice is

  make such an award and how much i
t should

  not legal y required for works published be (the amount must be reasonable). The

  after March 1, 1989).

  criteria some courts use to decide whether

  Because the actual damages (the owner’s to award attorneys’ fees include whether the

  lost profits and other provable losses)

  defendant acted in bad faith or unreasonably

  caused by an infringement are often small,

  or was otherwise blameworthy. Many courts

  statutory damages may far exceed actual

  will be especially likely to award fees to a

  damages where the infringer acted willfully. plaintiff whose actions helped to advance

  A plaintiff who is eligible for both actual

  the copyright law or defend or establish

  and statutory damages may choose which

  important legal principles.

  kind to receive at any time, up to and

  The cost of bringing an infringement suit

  during the trial. Your decision will depend

  can be very high, easily tens of thousands of

  on the facts of your particular case and

  dol ars. If for no other reason than to have

  should, of course, be made in conjunction

  the opportunity of recovering your attorneys’

  with your attorney.

  fees should you have to bring an infringement

  306 | THE COPYRIGHT HANDBOOK

  suit, you should always timely register your

  On the other hand, if you receive a letter

  work with the Copyright Office.

  from an author or author’s attorney alleging

  If the plaintiff loses the suit, the court has a substantial claim—for example, that a

  discretion to award the defendant all or part

  book you’re publishing to great success is

  of his or her attorneys’ fees. In the past, many an unauthorized derivative work and its sale courts would award such fees to a defendant should be halted immediately—it’s probably

  only if they found that the plaintiff’s suit was time to find a copyright lawyer. If, even frivolous or brought in bad faith. But these

  worse, you are served with a complaint (a

  courts would not require this in making fees document initiating a lawsuit), you must

  awards to plaintiffs. In 1994, the Supreme

  act quickly, because you may have as little

  Court held that this approach was incorrect as 20 days to file an answer (response) in

  and that attorneys’ fees must be awarded to the appropriate court. If you don’t respond

  plaintiffs and defendants in an evenhanded in time, a judgment can be entered against

  manner. In other words, the same criteria

  you. Finding a lawyer is discussed in

  must be applied to both plaintiffs and

 

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