U.S. Copyright Enforcement Benjamin Hardman Attorney / Advisor Office of Intellectual Property...

U.S. Copyright Enforcement

Benjamin Hardman

Attorney / Advisor

Office of Intellectual Property Policy & Enforcement, USPTO

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Civil Infringement §501

• Violation of any of the exclusive rights in §106 – §122 or importation in violation of §602;

• The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of §411, to institute an action for any infringement.

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Civil Remedies – Injunctions §502

• Any court having jurisdiction of a civil action arising under this title may grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.

• Any such injunction may be served anywhere in the United States on the person enjoined;

• it shall be operative throughout the United States and shall be enforceable, by proceedings in contempt or otherwise, by any United States court having jurisdiction of that person.

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Civil Remedies – Impounding and Disposition of Infringing Articles §503

• At any time while an action under this title is pending, the court may order the impounding of all copies or phonorecords claimed to have been made or used in violation of the copyright owner's exclusive rights, and

• of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.

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Civil Remedies – Impounding and Disposition of Infringing Articles §503

• As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner's exclusive rights, and

• of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.

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Civil Remedies – Actual Damages and Profits §504

• The copyright owner is entitled to recover the actual damages suffered as a result of the infringement, and

• any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.

• Direct vs. Indirect Profits

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Civil Remedies – Actual Damages and Profits §504

• In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and

• the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

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Civil Remedies – Statutory Damages §504

• The copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, in a sum of not less than $750 or more than $30,000 as the court considers just.

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• In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000.

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• In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.

• “Innocent Infringement” not available where a proper notice of copyright was affixed (§401).

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Civil Remedies – Costs and Attorney’s Fees §505

• In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof.

• Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.

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Criminal Infringement and Penalties §506 (Title 17) & §2319 (Title 18)

• Any person who willfully infringes a copyright for purposes of commercial advantage or private financial gain:– (1) shall be imprisoned not more than 5 years,

or fined, or both, if the offense consists of the reproduction or distribution, including by electronic means, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, which have a total retail value of more than $2,500;

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– (2) shall be imprisoned not more than 10 years, or fined, or both, if the offense is a second or subsequent offense under paragraph (1); and

– (3) shall be imprisoned not more than 1 year, or fined, or both, in any other case.

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• Any person who willfully infringes a copyright by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000:

– (1) shall be imprisoned not more than 3 years, or fined, or both, if the offense consists of the reproduction or distribution of 10 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of $2,500 or more;

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– (2) shall be imprisoned not more than 6 years, or fined, or both, if the offense is a second or subsequent offense under paragraph (1); and

– (3) shall be imprisoned not more than 1 year, or fined, or both.

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• Any person who willfully infringes a copyright by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution:– (1) shall be imprisoned not more than 3 years,

fined, or both;

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– (2) shall be imprisoned not more than 5 years, fined, or both, if the offense was committed for purposes of commercial advantage or private financial gain;

– (3) shall be imprisoned not more than 6 years, fined, or both, if the offense is a second or subsequent offense; and

– (4) shall be imprisoned not more than 10 years, fined, or both, if the offense is a second or subsequent offense under paragraph (2).

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Criminal Infringement §506

• Forfeiture and Destruction – When any person is convicted of any violation of subsection (a), the court in its judgment of conviction shall, in addition to the penalty therein prescribed, order the forfeiture and destruction or other disposition of all infringing copies or phonorecords and all implements, devices, or equipment used in the manufacture of such infringing copies or phonorecords.

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• Fraudulent Copyright Notice – Any person who, with fraudulent intent, places on any article a notice of copyright or words of the same purport that such person knows to be false, or who, with fraudulent intent, publicly distributes or imports for public distribution any article bearing such notice or words that such person knows to be false, shall be fined not more than $2,500.

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• Fraudulent Removal of Copyright Notice – Any person who, with fraudulent intent, removes or alters any notice of copyright appearing on a copy of a copyrighted work shall be fined not more than $2,500.

• False Representation – Any person who knowingly makes a false representation of a material fact in the application for copyright registration, or in any written statement filed in connection with the application, shall be fined not more than $2,500.

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Limitations on Actions §507

• Criminal Proceedings – Except as expressly provided otherwise in this title, no criminal proceeding shall be maintained under the provisions of this title unless it is commenced within 5 years after the cause of action arose.

• Civil Actions – No civil action shall be maintained under the provisions of this title unless it is commenced within 3 years after the claim accrued.

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Seizure and Forfeiture §509

• All copies or phonorecords manufactured, reproduced, distributed, sold, or otherwise used, intended for use, or possessed with intent to use in violation of §506 (a), and

• all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced, and

• all electronic, mechanical, or other devices for manufacturing, reproducing, or assembling such copies or phonorecords may be seized and forfeited to the United States.

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Unauthorized Fixation and Trafficking in Live Musical Performances §2319A

• Whoever, without the consent of the performer or performers involved, knowingly and for purposes of commercial advantage or private financial gain:

– (1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation;

– (2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance; or

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– (3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in the United States;

• shall be imprisoned for not more than 5 years or fined, or both, or

• if the offense is a second or subsequent offense, shall be imprisoned for not more than 10 years or fined, or both.

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• Forfeiture and Destruction – When a person is convicted of a violation of subsection (a), – the court shall order the forfeiture and destruction

of any copies or phonorecords created in violation thereof,

– as well as any plates, molds, matrices, masters, tapes, and film negatives by means of which such copies or phonorecords may be made.

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– The court may also, in its discretion, order the forfeiture and destruction of any other equipment by means of which such copies or phonorecords may be reproduced, taking into account the nature, scope, and proportionality of the use of the equipment in the offense.

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• Seizure and Forfeiture – If copies or phonorecords of sounds or sounds and images of a live musical performance are fixed outside of the United States without the consent of the performer or performers involved, such copies or phonorecords are subject to seizure and forfeiture in the United States in the same manner as property imported in violation of the customs laws.

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Unauthorized Recording of Motion Pictures §2319B

• Any person who:– without the authorization of the copyright owner, – knowingly uses or attempts to use an audiovisual

recording device– to transmit or make a copy of a motion picture or

other audiovisual work protected under title 17, or any part thereof,

– from a performance of such work in a motion picture exhibition facility, shall:

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– (1) be imprisoned for not more than 3 years, fined, or both; or

– (2) if the offense is a second or subsequent offense, be imprisoned for no more than 6 years, fined, or both.

• The possession by a person of an audiovisual recording device in a motion picture exhibition facility may be considered as evidence in any proceeding to determine whether that person committed an offense under this subsection, but shall not, by itself, be sufficient to support a conviction of that person for such offense.

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• Forfeiture and Destruction – The court in its judgment of conviction shall, in addition to any penalty provided, – order the forfeiture and destruction or other

disposition of all unauthorized copies of motion pictures or other audiovisual works protected under title 17, or parts thereof, and

– any audiovisual recording devices or other equipment used in connection with the offense.

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THANK YOU

Benjamin Hardman

Attorney / Advisor

Office of Intellectual Property Policy & Enforcement

USPTO

U.S. Copyright Enforcement Benjamin Hardman Attorney / Advisor Office of Intellectual Property...

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