COPYRIGHT LAW 2003

Professor Fischer

CLASS of April 16, 2003 A LITTLE MORE ON

PREEMPTIONREMEDIES

Wrap-up: Preemption

• Express (s. 301)

• Or

• Implied

White v. Samsung (9th Cir. 1993) (en banc) CB p. 637

• Rights of publicity has become very broad

• What do you think of Judge Kozinski’s dissent?

NBA v. Motorola (2d Cir. 1997)

• Did the Second Circuit find the NY misappropriation claim to be preempted?

• Why or why not?

• To what extent does INS v. AP apply?

• Is the Motorola decision correct? Why or why not?

STATUTE OF LIMITATIONS

• What is the limitations period for civil and criminal copyright actions?

COPYRIGHT MISUSE

• Copyright misuse is a common law defense (deriving from patent misuse) that is growing in importance. It has been applied by the 4th, 5th, and 9th Circuits.

• Copyright misuse is the improper leverage of intellectual property rights into greater monopoly rights than Congress intended - so contrary to public policy

CIVIL STATUTE OF LIMITATIONS

• 3 years (section 507(b) • Courts are divided on “continuing

infringement”, ie.e whether repeated acts of infringement constitutes a single continuing wrong or whether damages must be limited to infringements in last 3 years.

• Note that criminal statute of limitations is 5 years. See 17 U.S.C. s. 507(a)

STATUTE OF LIMITATIONS

• Statute will be tolled if D fraudulently conceals infringement

• Even absent concealment, statute will be tolled during period when a reasonable person in plaintiff’s shoes would not have discovered infringement.

REMEDIES

• What remedies are available for civil copyright infringement?

REMEDIES

• Section 504

• A. DAMAGES (either actual damages and profit OR statutory damages) s. 504

• B. INJUNCTIVE RELIEF (s. 502)

• C. SEIZURE/IMPOUNDMENT (section 503)

• D. COSTS/ATTORNEYS FEES (s. 505)

• (PROPERTY TYPE OF REMEDIES)

INJUNCTIONS

• Remember: an equitable remedy, unlike damages

• What is required for a court to grant a preliminary injunction in a copyright case?

• A permanent injunction in a copyright case?

INJUNCTIONS – see s. 502• More routine than in many other civil cases• Preliminary injunctive relief is generally awarded if P establishes

p.f. case on validity and infringement (irreparable injury/damages not appropriate is presumed if a copyright is infringed).

• Permanent injunction generally awarded if copyright validity and infringement are found

• What happens if a defendant does not comply? Do you agree with the 8th Circuit’s ruling in Olan Mills (CB p. 712)? Why or why not?

• Is the standard for injunctions in copyright cases appropriate in light of the First Amendment concerns that may be impacted? (See Lemley & Volokh article)?

REIMERDES (SDNY 2000) – CB p. 715

• In Reimerdes, how did the defendants react to the order granting a preliminary injunction?

• Should that reaction justify a grant of permanent injunctive relief?

• What do you think of the “locking the barn door after the horse is gone” argument that was raised in the trial court?

Abend v. MCA (9th Cir. 1988) – CB p. 718

• Is this a case where injunctive relief is not appropriate?

• Can you think of any other cases that might qualify as a “special circumstance”?

• Note that Supreme Court, in Stewart v. Abend, did not disturb the 9th Circuit’s opinion about remedies

OTHER NONMONETARY RELIEF

• Seizure, impounding and destruction of infringing articles (section 503) as well as articles that can be used to reproduce such infringing articles.

• Idea here – infringer should not be able to recover his or her investment in the production of infringing goods.

• Can only get this after a finding of infringement.• It’s not clear whether an individual who was making

pirated copies of works downloaded on the Internet could have his computer seized and destroyed.

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

STATUTORY DAMAGES – see s. 504(c) and Storm case

• What are statutory damages?• Can you recover statutory damages as well as

actual damages and profits?• Are there any prerequisites for statutory

damages? See s. 412• When must P elect statutory damages?• What amount of statutory damages may a court

award? What if infringement is willful?

STATUTORY DAMAGES

• See s. 504(c)• Statutory damages can be between $750 and

$30,000 per work “as the court considers just”• For willful infringement, statutory damages can

be increased to no more than $150,000.• If infringement innocent, statutory damages can

be reduced to $200• In Storm, did the court provide much guidance

as to why it chose $10,000? What factors do you think are relevant?

DIGITAL THEFT DETERRENCE AND COPYRIGHT DAMAGES

IMPROVEMENT ACT

• 1999 legislation raising statutory damages by 50%- another example of strengthened copyright law during 1990s.

WHAT IS A “WORK” FOR PURPOSES OF STATUTORY

DAMAGES?• This can be a difficult and important question.• For purposes of statutory damages, all parts of

compilation/derivative work are to be regarded as constituting a single work

• What about the different episodes of the TV programs at issue in Columbia Pictures?

• In Columbia Pictures, could separate statutory damages be awarded against these defendants even if some of the works infringed by both stations were the same?

COSTS AND ATTORNEY’S FEES – see s. 505

• Recovery of attorney’s fees is discretionary with the district court – language is “may”

• You must register to obtain award of attorney’s fees for infringement of copyright before date of registration or 3 months after first publication – s. 412

• S. 505 - award of attorneys to “prevailing party” – why would Congress provide for this when the normal rule is that each side bears its own costs?

Fantasy v. Fogerty (9th Cir. 1996)

• D prevailed• Supreme Court had rejected a more rigorous

standard for attorney’s fees being awarded to prevailing defendants (only if lawsuit frivolous or brought in bad faith). Must be “evenhanded”.

• What rule for attorney’s fees makes sense?• What should be the goal of a rule for attorney’s

fees?• Note rule is still not even-handed because P must

register.