Copyright Infringement & Remedies (Title 17, Chapter 5)

So, you’ve got a valid copyright, you know what your rights are, and you think someone is using your work illegally. What do you do? Sue?

Lawsuits are expensive, and can get messy. The first thing you do is send a “cease and desist” letter. Your goal is to put an end to any ongoing infringement. Once that’s done, you can worry about damages. Here is what the body of such a letter might look like:

What are the “legal/and or equitable remedies” available? While other areas of law might provide other remedies in addition to those granted by Title 17, half a dozen sections of Chapter 5, including §502, cover the remedies granted by copyright law. But before those remedies are available, we must prove infringement.

Proof of Illegal Copying (Infringement)

As discussed above, §106 does include a category of infringement which does not involve copying a protected work (i.e., distribution), but the sheer number of infringement claims which do involve copying make it important to know how one can make out a case. After all, a derivative work involves some level of copying, and even the exclusive rights of performance and display are only violated when a “copy” is performed or displayed.

The mere existence of a copy is only the first element of an infringement claim. It must further be proven that the copy was improper under the statute. Copying material which is in the public domain, for example, does not constitute infringement, even if that same material was used in another author’s earlier work.

EXAMPLE: Leonardo DaVinci’s almost unknown “Butterfly Wing in Flight” was used as the basis for Roxy Sager’s 2001 piece “Butterflies Fly.” In 2004, Conrad Saekeur sees Roxy’s work and, with the DaVinci sketch in the background, produces his own version, titling it “Caterpillar No More.” Even if Conrad copied the DaVinci elements from Roxy’s work, his copy is not an infringement, as the copied portion is in the public domain. If, on the other hand, Conrad copies some of Roxy’s original work, the result would be otherwise.

There is no simple test to prove copying, but the two most often cited factors are:

Similarity: The degree to which one work resembles another is quite relevant to the question of copying. Note that courts are not in agreement as to how to determine the degree of similarity between two works. 

1. Specific elements may be considered or, instead, overall appearance, general color, patterns, etc., are considered in the context of what a “reasonable person” might conclude, as Judge Learned Hand determined in Peter Pan Fabrics Inc., v. Martin Weiner Corp, 274 F.2d 487 (2d Cir. 1960) (regarding a copyrighted design imprinted on cloth). See also Educational Testing Services v. Katzman, 793 F.2d 533 (3d Cir. 1986) (Ad hoc determination following Peter Pan concludes that a test prep company’s “facsimile exam” is substantially similar to test maker’s exam).
2. Or, as in Alexander v. Haley, 460 F.Supp 40 (S.D.N.Y. 1978), a court might first remove from consideration any portion of the work which is not unique or original, and then compare it to the potential infringing copy (the case involved the movie “Roots,” and on its way to finding insufficient similarity to conclude that there was copying, the court did not consider the scenes which were usual in portraying life in the slave states).

Access: If a party does not have access to the supposedly infringed work, it becomes highly improbable that the work was copied. Therefore, an original painting which never leaves the artist’s studio and is viewed by nobody outside the artist’s immediate family is almost certainly not capable of being copied by an artist across the world, even if the two paintings are very similar.

Once copying has been established, the improper nature of that copying must be proven. This means that the copied work is protected, and the copy is unauthorized. As noted above, public domain material used in an author’s work is not protected. Similarly, the author of a derivative work holds exclusive rights only to that work, and the underlying work may be copied without the permission of the derivative work’s author. Finally, it is important to note that copyright infringement is essentially a strict liability offense: unintentional infringement is not distinguished from intentional infringement.

EXAMPLE (1): Deborah writes the song “You’re So Haughty,” in 1992. In 1994, she grants a license to Animatronic Music Inc. permitting them to create a derivative work of the song to be used in their products. In 1996 she grants a license to Jedi Night Corp., permitting them to create a derivative work of the song. The Jedi Night version will, of course, closely resemble the Animatronic version, and even if Jedi Night copies portions of the prior derivative work, so long as the copied portions are simply part of the original song, Animatronics will have no cause of action for infringement.

EXAMPLE (2): In 1993, Rebecca sets out to write a song. “You’re So Haughty” has been playing on the radio almost non-stop, and Rebecca inadvertently uses the exact same melody in her song (no wonder she thought it sounded so good when she hit on it!) Once Deborah proves access and substantial similarity, and then goes on to prove copyright ownership of the copied material, she has made out her case of infringement. She need not prove any level of culpability on Rebecca’s part.

Remedies for Infringement

§502: Injunctions
The improper copying of protected work can cause damages to reputation as well as direct financial damages. If the cease and desist letter described above does not lead to an end of the infringing use, an injunction may be sought under §502, in which the infringing party is ordered by the court to do what was requested in the letter: cease and desist.

Because ongoing infringing use can cause continued damages, courts can also issue preliminary injunctions, ordering a defendant to cease a certain activity even before the case is heard. But even the issuance of a preliminary injunction requires a hearing, and while waiting for that hearing, a plaintiff can turn to yet another mechanism, the temporary restraining order (TRO) which would put a more immediate end to the defendant’s activity.

While not every defendant loses, and therefore some TROs and temporary injunctions are issued in cases where the defendant actually did have a right to engage in the temporarily suspended activity, the plaintiff’s interests here are significant. Injunctions and TROs are necessary in copyright cases because monetary damages will often be insufficient to make up for the harm done by some infringers.

§503: Impoundment
In addition to the powers a court has over defendants before the close of a case, a plaintiff can request that the court order the impoundment of any potentially infringing merchandise or other objects. If there is an ultimate finding of improper infringement, this material will be destroyed or otherwise disposed of.

§504 & §505: Money Damages and Attorney’s Fees
In addition to the equitable remedies available under Chapter 5, a plaintiff is entitled to collect actual damages due as a result of the infringement or, under §504(c), the plaintiff may instead elect damages set by the statute but within the judge’s discretion (currently between $750 and $30,000 per infringement, or up to $150,000 for each willful infringement). Note that §504(d) permits a plaintiff to collect a double license fee for a performance or display which the defendant unreasonably believed fell under the §110 exception (discussed above). Finally, §505 allows the judge to award attorney’s fees when appropriate.

Other Consequences of Infringement
The remainder of Chapter 5 goes on to discuss criminal offenses, seizure and forfeiture for criminal copyright offenses, certain limitations, and other relevant topics. In addition, §508 addresses certain important requirements for bringing an action of infringement under the code.