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?
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
• 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.
Top Related