Infringement Claims and Infringement Claims and DefensesDefenses

Professor Todd BrunoProfessor Todd Bruno

Elements of InfringementElements of Infringement

Ownership of CopyrightOwnership of Copyright Copying or invading one of the Copying or invading one of the

exclusive rights of copyright ownersexclusive rights of copyright owners

How to prove ownership?How to prove ownership?

AuthorAuthor certificate of copyright registration is certificate of copyright registration is

prima facie evidence prima facie evidence transfertransfer

Copying:Copying:

substantial similarity between his substantial similarity between his work and that of defendant – some work and that of defendant – some map makers include fictitious map makers include fictitious entries. Lay observer or ordinary entries. Lay observer or ordinary observer test. Depends on observer test. Depends on audience. audience.

access to copyrighted work – can be access to copyrighted work – can be inferred if work is widely inferred if work is widely disseminated; if 2 works are clearly disseminated; if 2 works are clearly identical, it may be presumed.identical, it may be presumed.

Innocent Infringement is NOT a Innocent Infringement is NOT a defense defense

A gets book from B that C actually A gets book from B that C actually wrote; A copies it…this is wrote; A copies it…this is infringement even though he does infringement even though he does not know it or intended to infringenot know it or intended to infringe

May be subconscious (remember May be subconscious (remember George Harrison)George Harrison)

Most Common DefensesMost Common Defenses

1. Copyright invalidity can include : 1. Copyright invalidity can include : the work was not original,  lacked the work was not original,  lacked

copyrightable subject matter (common copyrightable subject matter (common facts or just “sweat of the brow”)facts or just “sweat of the brow”)

P is not the owner of the copyright. P is not the owner of the copyright. Contents of the work are in the public Contents of the work are in the public

domain. domain. Copyright was not properly registered and Copyright was not properly registered and

thus the court lacks jurisdiction to hear the thus the court lacks jurisdiction to hear the case so the claim is not proper case so the claim is not proper

Most Common DefensesMost Common Defenses

2. Independent creation is a 2. Independent creation is a complete defense to copyright complete defense to copyright infringement although it infringement although it is sometimes difficult for a D to is sometimes difficult for a D to prove independent creation.prove independent creation.

Most Common DefensesMost Common Defenses

3. Admission of copying but…..3. Admission of copying but…..  “ “De minimis” use is a defense that De minimis” use is a defense that

admits copying but claims that the admits copying but claims that the amount taken amount taken  is so small that it makes no difference.   is so small that it makes no difference.  It is often coupled with a fair use It is often coupled with a fair use defense.defense.

  Similar to de minimis is a defense that Similar to de minimis is a defense that what was copied was not protectable, what was copied was not protectable, such as  copying just the facts from a such as  copying just the facts from a work and not protected expression.work and not protected expression.

Most Common DefensesMost Common Defenses

4. Fair use - In determining whether the use made of 4. Fair use - In determining whether the use made of a work in any particular case is a fair use the a work in any particular case is a fair use the factors to be considered shall include-- factors to be considered shall include--

(1) the purpose and character of the use, including (1) the purpose and character of the use, including whether such use is of a commercial nature or is whether such use is of a commercial nature or is for nonprofit educational purposes; for nonprofit educational purposes;

(2) the nature of the copyrighted work (fact or (2) the nature of the copyrighted work (fact or fiction?); fiction?);

(3) the amount and substantiality of the portion used (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole in relation to the copyrighted work as a whole (“essence” of the work); and (“essence” of the work); and

(4) the effect of the use upon the potential market for (4) the effect of the use upon the potential market for or value of the copyrighted work (most important). or value of the copyrighted work (most important).

Other defensesOther defenses

The copyright may be expired, or the The copyright may be expired, or the holder may have forfeited his or her rights holder may have forfeited his or her rights in the workin the work

The statute of limitations may have run The statute of limitations may have run (three years for civil infringement and five (three years for civil infringement and five years for criminal infringement). years for criminal infringement).

The copyright owner may have granted The copyright owner may have granted permission to use the work or licensed its permission to use the work or licensed its useuse

Bad DefensesBad Defenses – Innocent Intent – Innocent Intent(might affect damages)(might affect damages)

      A.     Unconscious plagiarism, i.e., copying from P but A.     Unconscious plagiarism, i.e., copying from P but later forgetting the source, is innocent, but it is later forgetting the source, is innocent, but it is nonetheless infringement. nonetheless infringement. B.  Another example of innocent intent is where D B.  Another example of innocent intent is where D relies on the work of a third party and the third party relies on the work of a third party and the third party copied from P.  Again, D is not relieved of liability. copied from P.  Again, D is not relieved of liability. C.   D may consciously copy from P's work believing C.   D may consciously copy from P's work believing in good faith that this conduct does not constitute an in good faith that this conduct does not constitute an infringement of copyright.  Such innocence will not infringement of copyright.  Such innocence will not preclude a determination of liability. preclude a determination of liability. D. Remember that claims of innocent infringement D. Remember that claims of innocent infringement are cut off if the work contains a notice of copyright. are cut off if the work contains a notice of copyright.

RemediesRemedies

Reasonable temporary and final injunctions, Reasonable temporary and final injunctions, as appropriate, to prevent or restrain as appropriate, to prevent or restrain infringement of a copyright.infringement of a copyright.

While court actions are pending, the court While court actions are pending, the court may impound any copies of the copyrighted may impound any copies of the copyrighted work that have been claimed to have been work that have been claimed to have been made or used in the infringement. made or used in the infringement.

If infringement is proven, the court may If infringement is proven, the court may order destruction of any copies of the order destruction of any copies of the copyrighted work that have been claimed to copyrighted work that have been claimed to have been made or used in the have been made or used in the infringement. infringement.

RemediesRemedies

The copyright infringer is liable for The copyright infringer is liable for the copyright owner's actual damages and any additional  the copyright owner's actual damages and any additional 

profits of the infringer, or statutory damages. profits of the infringer, or statutory damages. Attorney's fees may be awarded by a court to whichever Attorney's fees may be awarded by a court to whichever

party  wins.party  wins.

Statutory damages and attorney's fees cannot be awarded if,  Statutory damages and attorney's fees cannot be awarded if,  at the time of the infringement, at the time of the infringement,

the work is unpublished the work is unpublished the work is published, but not yet registered with the the work is published, but not yet registered with the

copyright office. (The only exception to this is if the copyright office. (The only exception to this is if the infringement occurs right after the work is first published infringement occurs right after the work is first published and the work is subsequently registered with the copyright and the work is subsequently registered with the copyright office within three months of first being published.) office within three months of first being published.)

RemediesRemedies

Infringement in some circumstances Infringement in some circumstances where the infringer makes a profit where the infringer makes a profit may be a criminal offense.  The may be a criminal offense.  The copyright statute of limitations is 5 copyright statute of limitations is 5 years for criminal offenses and three years for criminal offenses and three years for civil claims.years for civil claims.