COPYRIGHT LAW 2003
Professor Fischer
CLASS of April 23 2003
THE LAST CLASS!!!
Wrap-up: Civil Remedies
• Injunctions (preliminary, permanent)
• Damages (actual damages, profits, statutory
damages)
• Impounding and destruction
• Costs and attorney’s fees
• Last time, we did not get to the issue of
calculation of actual damages and profits
ACTUAL DAMAGES/PROFITS
(s. 504)
• Copyright owners can recover “actual
damages and any additional profits that
are attributable to the infringement” (with
no double recovery) – see 504(b)
• Note that there are often disputes about
how to calculate actual damages and
profits.
• What are actual damages?
ACTUAL DAMAGES/PROFITS
• Actual damages are extent to which market value
of copyrighted work has been injured or
destroyed by an infringement including fair
market value of licensing fee
• If too speculative, damages will not be awarded
• Punitive damages are not generally awarded in
copyright actions
INFRINGER’S PROFITS
• What profits is a prevailing plaintiff
permitted to recover in a copyright
infringement action?
• What must P prove?
INFRINGER’S PROFITS
• Prevailing P can recover infringer’s profits if
attributable to infringement
• Plaintiff is only required to prove D’s sales that
are reasonably related to the infringement (gross
revenues)
• Burden then shifts to D to prove elements of costs
to be deducted from sales in arriving at profit as
well as elements of profit attributable to other
factors than the copyrighted work.
• Doubt about computing costs/profits should be
resolved in P’s favor.
FRANK MUSIC: 9th Cir. 1989
CB p. 721 -APPORTIONMENT
• Had defendant met its burden in proving element
of costs to be deducted from sales in arriving at
profit?
• Infringing conduct was only a portion of a product
sold by the D – how should you apportion profits?
• Can a copyright proprietor recover “indirect
profits”?
• According to the appeals court, was the district
court correct in declining to award prejudgment
interest?
HAMIL AMERICA (2d Cir.
1999) – CB p. 724
• This case is about determining what are
deductible expenses – are general overhead
expenses deductible from gross revenue?
• Also states the rule against double recovery
THE COPYRIGHT
INFRINGEMENT LAWSUIT
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A few issues –
Subject matter jurisdiction
Filing too early
Filing too late
Proper Plaintiff: Standing
Proper Defendant: State Immunity
Jury Trial
SUBJECT MATTER
JURISDICTION
• 28 U.S.C. § 1338
• If the parties to a copyright dispute are also
parties to a contract, does the federal court
have subject matter jurisdiction? See
Bassett v. Mashantucket Pequot Tribe, (2d
Cir. 2000) CB p. 679
• Is the correct test that set out in T.B. Harms
or Schoenberg?
FILING TOO EARLY
• Registration is a prerequisite for infringement
lawsuit– authority?
• It may take many months for the Copyright Office
to issue a certificate of registration. Can the
copyright owner bring an infringement action
before the Copyright Office issues a registration
certificate? Is the statutory language clear? See
Gerig v. Krause Publications, Inc. (D. Kan. 1999)
– CB p. 686
• What if the Copyright Office denies registration?
FILING TOO LATE
• See s. 507 – statute of limitations (civil,
criminal)
• When does a claim “accrue”? See Roley v.
New World Pictures (9th Cir. 1994) -NCB p.
559). Does the copyright act permit
infringement actions when a series of
infringeming acts constitutes a “continuing
wrong”?
PROPER PLAINTIFF:
STANDING
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What does s. 501(b) provide?
Who is a legal owner?
What is a beneficial owner?
See Eden Toys (2d Cir. 1983) - does Eden Toys
have standing to sue for infringement of
Paddington bear character?
• When is a declaratory judgment action permissible
in a copyright infringement dispute? See Bryan
Ashley Int’l v. Shelby Williams, (S.D. Fla. 1996) –
CB p. 695
PROPER PLAINTIFF:
STANDING
• When is a declaratory judgment action permissible
in a copyright infringement dispute? See Bryan
Ashley Int’l v. Shelby Williams, (S.D. Fla. 1996) –
CB p. 695 – 2 element test (similar to patent
cases)
• 1. Explicit threat or other action by copyright
owner (cease and desist letter)
• 2. Accused infringer or declaratory P must have
produced or prepared to produce an allegedly
infringing product
PROPER DEFENDANT
• Sovereign immunity
• Historically –2 ways around sovereign immunity :
abrogation by Congress and waiver of sovereign
immunity by states
• Congress has authorized suits against states in a
variety of contexts pursuant to its Article I powers
• However, starting with Seminole Tribe, Court has
declared many of these attempts at abrogation to
violate the Eleventhh Amendment
Chavez v. Arte Publico (5th Cir.
2000)
• Supreme Court has not addressed the
authorization for suits against states found
in s. 501(a) and 511, this Fifth Circuit
opinion uses the Court’s decisions in the
patent and trademark context to determine
that suits for money damages against the
state are not permissible.
JURY TRIAL
• Seventh Amendment – preserves right to jury trial
that existed at common law
• In a copyright infringement case, if there is only a
request for injunctive or other equitable relief,
there is no right to a jury trial
• Is there a right to jury trial where the remedy
sought is statutory damages? Feltner (1998)
• When would it be beneficial to have a jury trial in
a copyright infringement case?