Business Litigation | Intellectual Property

Copyright Litigation

Copyrights are valuable business assets. In the United States, copyright laws prevent unauthorized parties from copying, reproducing or using original works. For example, when an author writes a story or a photographer takes a picture, these creative works can be protected through copyright laws. Renner Law has a wealth of experience prosecuting and defending copyright infringement litigation and may be able to help you seek legal remedies, such as an award of the copyright infringer's profits and damages for past infringement. Moreover, a successful copyright infringement plaintiff may recover enhanced damages if the copyright infringement was committed willfully. In appropriate cases, Renner Law can also help negotiate a licensing agreement with the infringing company as a practical alternative to litigation.

Renner Law helps individuals and businesses protect their valuable works by providing thorough copyright registration and counseling services.

What is a Copyright?

Section 102(a) of Title 17 of the United States Code sets forth the prerequisites of copyright protection, stating that copyright protections subsist "in original works of authorship fixed in any tangible medium ... form which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."

For a work to be copyrightable, it must be "original." This requirement, however, is not particularly stringent. The United States Supreme Court has characterized the originality requirement as comprising two elements - that the work was independently created by the author (as opposed to copied from other works), and that it possess at least some minimal degree of creativity.

To be copyrightable, the work also must be "fixed." Fixation can be in any tangible medium, "now known or later developed." Additionally, fixation can be performed with the aid of a machine, such as a camera, video camera, digital recorder or other device. Fixation can be as simple as a musician writing lyrics on a napkin or as complicated as a software engineer writing code on a computer. This fixation requirement is a corollary to copyright law's idea/expression dichotomy, which is the concept that "ideas" cannot be copyrighted, only their specific expression.

Title 17 provides an illustrative list of types of protectable works, including:

  • literary works
  • musical works, including any accompanying words
  • dramatic works, including any accompanying music
  • pantomimes and choreographic works
  • pictorial, graphic, and sculptural works
  • motion pictures and other audiovisual works
  • architectural works

Certain materials are generally not eligible for copyright protection, including:

  • works not fixed in a tangible form
  • ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices
  • simple, short phrases and slogans and familiar symbols or designs
  • items formed entirely by common property lacking originality
What are the Rights of Copyright Owners?

Copyright ownership comes with certain exclusive rights. In particular, subject to certain limitations, a copyright owner has the exclusive right to do and to authorize the following actions:

  • to reproduce the work in copies or phonorecords
  • to prepare derivative works based upon the copyrighted work
  • to distribute copies or phonorecords of the copyrighted work by sale or other transfer of ownership, or by rental, lease, or lending
  • to perform the work publicly
  • to display the work publicly
  • to perform the work publicly by means of digital audio transmission
What are the Benefits of Copyright Registration?

The author of the work assumes ownership of the copyright, and copyright protection is afforded automatically at the time the work is created. As noted, a work is “created” when it is fixed in a copy for the first time. An author of a work may place notice of copyright on his work without obtaining a registration from the U.S. Copyright Office. The form of notice for copies consists of three elements: (1) the symbol ©, the word “copyright” or the abbreviation “copr.”; (2) the year of first publication; and (3) the name of the owner of the copyright in the work or an abbreviation by which the name can be recognized. An example would be “© 2016 [NAME OF OWNER].”

Although obtaining a copyright registration from the U.S. Copyright Office is not required to gain copyright protection, there are several benefits to doing so:

  • A registration creates a public record of the copyright
  • Registration is required prior to filing an infringement case in court
  • A copyright registered within five years of its publication constitutes prima facie evidence in court of the validity of the copyright and the facts stated in the registration
  • The owner of a copyright registered within three months after its publication, or before an infringement is claimed, may be awarded statutory damages and attorneys’ fees in court actions
  • A copyright registration may be recorded with the U.S. Customs Service, and therefore protected against the importation of infringing copies of the work.

To obtain a copyright registration, an application and the required government fee must be filed with the U.S. Copyright Office.

What is Copyright Infringement?

Copyright infringement occurs when one or more of the exclusive rights afforded copyright owners are violated. In order to prevail in a copyright infringement action, a plaintiff generally must establish that the accused work is: (1) derived from the copyrighted work and (2) is substantially similar to the copyright work.

As to the first element, a copyright infringement plaintiff has the initial burden of showing that copying occurred. This burden can be met by showing either: (1) that the creator of the accused work had access to the copyrighted work and the accused work is substantially similar to the copyright work; or (2) that the works are so "strikingly similar" such that the accused infringer's access to the copyrighted work can be inferred because it is unbelievable that the accused infringer could not have copied the copyrighted work.

The second element requires a showing that the intended audiences for the two works will find the particular expressions of the two works "substantially similar." In Rhode Island and Massachusetts, whether substantial similarity exists between a copyrighted work and infringing material is determined by applying the "ordinary observer test." The test asks whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectable expression by taking material of substance and value.

What are the Remedies for Copyright Infringement?

Copyright owners may pursue a variety of remedies for copyright infringement and typically will pursue injunctions and damages. Under the U.S. Copyright Act, 17 U.S.C. § 502, copyright owners may request a preliminary injunction at the outset of the case as well as a permanent injunction upon a finding of infringement after trial. Under section 503 of the Copyright Act, courts may order the impounding, destruction, or other reasonable disposition of all copies made in violation of the copyright owner's exclusive rights.

Under section 504 of the Copyright Act, a plaintiff that proves copyright infringement is entitled to damages. If the work that was infringed was registered prior to the first instance of infringement, the plaintiff is entitled to recover the actual damages that occurred as a result of the infringement. Actual damages are typically measured in terms of the profits lost by the copyright owner as a result of the infringement. In some instances, the copyright owner may claim that the actual damages should be calculated in terms of a reasonable royalty rate for the work.

Copyright infringement plaintiffs may also seek damages in the form of the infringer's profits. While actual damages and infringing profits cannot both be collected in overlapping fashion, they may both be collected if they are mutually exclusive such that they are not duplicative. If the two sums are mutually exclusive they may be added together.

Rather than actual damages or infringer's profits, copyright owners may elect for statutory damages as a remedy for copyright infringement. Under section 504 of the Copyright Act, a copyright plaintiff can recover statutory damages in the range of $750 to $30,000 for each work infringed (not for each copy of the work). In the case of willful infringement, copyright plaintiffs may recover up to $150,000 for each infringed work. As a result, copyright owners may elect to seek statutory damages rather than actual damages when statutory damages may result in a large statutory damages award where proving actual damages may be difficult or burdensome. The case of Sony BMG Music Entertainment, et al. v. Tenenbaum, 721 F. Supp. 2d 85 (D. Mass. 2010) provides an example of effectiveness of statutory damages. There, the jury assessed statutory damages of $675,000 after finding the defendant illegally downloaded and shared songs in violation of the U.S. Copyright Act. The jury awarded damages at the rate of $22,500 per song for willful infringement (rather than the statutory maximum of $150,000 per song).

Finally, under section 505 of the Copyright Act, if the copyright owner registered the copyright, either before infringing activity began or within three months of first publication, a copyright owner may recover reasonable attorneys' fees in appropriate circumstances.

Renner Law understands the need to prevent others from improperly copying your work and we pursue those who would attempt to infringe your copyrights. Typically, as with instances of trademark infringement, Renner Law seeks preliminary and permanent injunctions for copyright infringement clients in the form of a court order prohibiting future acts of copyright infringement. Renner Law will also seek, if appropriate, the impounding, destruction or other disposition of all copies made in violation of our clients' copyright rights. In addition, Renner Law seeks monetary damages in the form of actual damages sustained by copyright infringement clients, collection of infringers' profits, or statutory damages, as appropriate. Additionally, when appropriate, Renner Law seeks the recovery of reasonable attorneys' fees.

While copyright litigation is often settled promptly prior to trial, Renner Law prepares each case as though it will go to trial. Doing so, Renner Law is always thoroughly prepared in the event the case doesn't settle quickly.

Renner Law serves copyright infringement clients throughout Rhode Island and Massachusetts from its Providence, Rhode Island offices. Call (401) 404-5251 or contact Renner Law online today.