The following article appears in the journal JOM,
50 (5) (1998), p. 51.

JOM is a publication of The Minerals, Metals & Materials Society

Remedies for Copyright Infringement

David V. Radack

Copyrights protect the works of authors from copying by others. The U.S. Constitution sets forth that Congress shall pass laws to secure for authors exclusive rights to their writings for limited times. Under federal statute, there are several types of works that may be copyrighted, including literary works; musical works; dramatic works; pictorial, graphic, and sculptural works; motion pictures; sound recordings; architectural works; and computer software.

When one of those copyrighted works is copied by a third party without permission, the owner of the copyright (the plaintiff) may sue that third party (the defendant) for copyright infringement. The plaintiff can obtain injunctions to prohibit future copying and money damages to compensate and, in some cases punish, the defendant for copyright infringement.

Copyright law is strictly within the province of federal law. Thus, any lawsuit for copyright infringement must be brought in a U.S. district court, the trial-level court of the federal system. There are district courts in every state, with many states having several, such as New York, which has four. There are various rules, which are outside the scope of this article, that must be followed to determine in which district the lawsuit must be brought.

Assuming that the proper district court is chosen, the first prerequisite to a copyright infringement lawsuit is that the copyrighted work must be federally registered with the U.S. Copyright Office. Copyright registration is a fairly simple procedure that involves filing a copyright office form, paying a filing fee (currently $20), and providing the copyright office with one or more copies of the work to be copyrighted. The work need not have been published in order to obtain a registration.

In order to prove copyright infringement, the plaintiff must prove ownership of the copyright in the allegedly infringed work and copying of the work by the defendant. Assuming that the plaintiff is the proper owner, all that now needs to be proved is that the defendant copied the work. In a simple case, if the defendant admitted that they obtained a copy of the work and ran off copies of the work on a photocopier, this would be enough to find the defendant guilty of copyright infringement. This, however, is not the usual case, and there is rarely such solid proof of copying.

Because of this, courts have evolved a rule for finding copyright infringement when there is no proof of direct copying. Copying can be proven by showing both access to the work and substantial similarity of the allegedly infringing work to the copyrighted work. If the defendant can show there was no access to the work and, in fact, the work was created independently, there will be no copyright infringement even if the works appear to be an exact copy. Also, if the defendant knew about the work, but it is substantially different from the allegedly infringing work, there is no liability for copyright infringement.

Access to the work can be proved by showing that the defendant actually viewed and had knowledge of the copyrighted work or had a reasonable opportunity to view or have knowledge of the work. Again, it may be difficult to prove that the defendant actually saw the copyrighted work. Courts have found a "reasonable opportunity to view the work" where one employee of a corporation had possession of the work and another employee created the allegedly infringing work. Similarly, in a famous case, a song was found to be copied when it was a top ten hit; thus, the composer of the allegedly infringing song most likely heard the song on the radio.

Substantial similarity in the works is a highly fact-intensive inquiry and varies from case to case. Obviously, trivial similarities between the works will not be sufficient; on the other hand, two works need not be identical in order to find substantial similarity. The courts have developed several different tests to determine whether two works are substantially similar, with some of the tests applying to specific types of works, such as music, books, and motion pictures. In some of these tests, expert opinions are obtained. For example, in copyright infringement lawsuits involving musical works, testimony from a musicologist or a professional musician may be obtained to assist the court in determining whether two works are substantially similar.

Once copyright infringement liability is established, the plaintiff may be entitled to several different remedies. One remedy is injunctive relief, which restrains the defendant from future copying of the work. A preliminary injunction can be sought early in the case to restrain copying during the lawsuit. Most times, if the preliminary injunction is granted, the party seeking the injunction will have to post a bond or security for possible damages to the enjoined party if it is determined, after a full trial, that the preliminary injunction was granted in error. The preliminary injunction can turn into a permanent injunction once the lawsuit is terminated, and copyright infringement is found by the court.

Another remedy is money damages. Under federal copyright law, the prevailing plaintiff may recover both his or her actual damages and the defendant's profits to the extent those profits were not already taken into account in computing the actual damages. The primary measure of recovery of actual damages is based upon the extent to which the market value of the copyrighted work has been injured or destroyed by the infringement. For example, the plaintiff may prove that, but for the infringement, the plaintiff would have been able to sell X amount of the work at Y profit per unit, lending to actual damages of XY. Lacking this type of proof, the plaintiff may be able to show the defendant's profits from sales of the infringing work. Damage calculations are highly fact intensive and must be determined on a case-by-case basis.

Very often, proof of actual damages is very difficult. Acknowledging this reality, federal copyright law allows a prevailing plaintiff to elect to recover so-called statutory damages in lieu of actual damages. Currently, statutory damages range from $500 to $20,000 per act of infringement. If the court finds that the defendant acted willfully, the court may increase the damages to a maximum of $100,000 per act of infringement. Finally, the court can also order the defendent to pay the plaintiff's attorney's fees and court costs.

David V. Radack is a member of Eckert, Seamans Cherin & Mellott, LLC, in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1998 by The Minerals, Metals & Materials Society.

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