Federal Courts Citing Copyright Litigation Handbook: Thank You - Order The New Edition Today!

Dear Copyright Litigation Handbook Reader:


The first edition of Copyright Litigation Handbook was published in 2006 by West, now Thomson Reuters.  It is available in a handy desk version with the Copyright Act, the Federal Rules of Civil Procedure, and the Federal Rules of Evidence as appendices.  It is also available on Westlaw.  It was designed to bring together procedural and evidentiary opinions in copyright litigation to quickly orient busy practitioners.  It was also meant to provide guidance to Copyright Office procedures affecting copyright litigation and to collect relevant decisions to put at the practitioner's fingertips.


I update Copyright Litigation Handbook annually by reading all published appellate court opinions that discuss copyright.  My focus is on trying to guide practitioners from client intake through judgment with a focus on "how to" procedural questions. 


I receive questions about copyright litigation and about the content in Copyright Litigation Handbook from clients and attorneys around the country.  These questions help me sharpen and improve the content and focus on emerging issues for future editions, for which I am grateful.


I am also grateful to the federal practitioners and judges who have cited Copyright Litigation Handbook over the years on numerous substantive and procedural issues.  Below I have included citations from federal courts.  I am thankful to those lawyers and federal judges who have relied on this work.


Although Westlaw gives access to Copyright Litigation Handbook year-round, the 2019-2020 print edition will be out in October and is not printed again until the following year.   There have been many changes in copyright law and litigation in the past years,  I hope you will consider ordering a fresh copy by clicking on the link here to keep at your desk and that this proves to be a time-saver and reliable friend in navigating the tricky waters of copyrights.


Respectfully yours, Raymond J. Dowd


Author - Copyright Litigation Handbook
Partner -  Dunnington Bartholow & Miller LLP - New York City
Adjunct Professor - Fordham University School of Law



Distinction Between "Piracy" and "Similarity" Copyright Infringement Actions


The range of infringement remedies further informs Robbins' complaint here. “One type of action is a ‘piracy’ action in which the alleged infringing article is an exact replica of the original. Another ... involves an action based on an allegedly infringing article which is similar to, but not an exact replica of the copyrighted work. The courts apply a ‘substantial similarity’ test in these actions, which are more difficult to prove.” Copyright Litigation Handbook § 9:9 (Motions to dismiss for failure to state a claim ) (2010). Courts examine substantial similarity at the pleading level (typically on a Fed.R.Civ.P. 12(b)(6) motion to dismiss). See id. n. 17 & 18 (collecting cases).

Robbins v Artits--Usher, CV411-193, 2011 WL 5840257, at *2 [SD Ga Aug. 29, 2011]

License As An Affirmative Defense To Copyright Infringement
Defendant argues that the alleged failure to pay royalties was not a breach of the Video Distribution Agreement because the agreement does not specify a date and time for payment, and therefore Plaintiff did not properly terminate the agreement. In other words, Defendant contends the license to sell the “Musical Journeys” under the agreement remains in effect. However, the existence of a license is an affirmative defense. See Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949, 955 (11th Cir. 2009) (license is an affirmative defense to copyright infringement); Carson v. Dynegy, Inc., 344 F.3d 446, 451 (5th Cir. 2003) (“[T]he existence of a license authorizing the use of copyrighted material is an affirmative defense to an allegation of infringement ....”); Copyright Litigation Handbook § 13:10 (2d ed.) (“The existence of a license, exclusive or nonexclusive, creates an affirmative defense to a claim of copyright infringement. Thus, once a copyright owner has shown use of the copyrighted work, the burden of proving that the use was authorized falls squarely on the defendant.”).

NAXOS Rights US INC. v. Wyatt, 2016 WL 5724064 (M.D. FL 2016)

It is well established that the existence of a license is an affirmative defense to a copyright infringement claim. See Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1235 (11th Cir. 2010) (“an implied license is an affirmative defense to a claim of copyright infringement”); Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949, 955 (11th Cir. 2009) (existence of license asserted as an affirmative defense to copyright infringement claim); Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 751 (11th Cir. 1997) (in response to a copyright infringement claim, defendant argued it had a nonexclusive license to use the material). See also, Copyright Litigation Handbook § 13:10. Defenses commonly arising in copyright litigation—License (2d ed.).

Anand Vihar LLC v Evans Group Inc., 8:16-CV-841-T-27TBM, 2016 WL 9526560, at *2 [MD Fla July 6, 2016]

Substantial Similarity of Literary Works

Expert testimony is far less critical in a case like this than it is in a case where specialized knowledge is required to dissect the objective components of the copyrighted work. See, e.g., Brown Bag Software, 960 F.2d at 1473–74 (relying on expert testimony to identify the objective points of comparison among different computer software programs); Swirsky v. Carey, 376 F.3d 841, 847–48 (9th Cir.2004) (relying on expert testimony comparing the objective elements—pitch, melodies, baselines, tempo, chords, structure, and harmonic rhythm—of musical works); Chiate v. Morris, Case No. 90–55428, 1992 WL 197591, *5 (9th Cir., Aug. 17, 1992) (finding that expert testimony by a musicologist is crucial to proving objective similarity of songs); see also Dowd , Copyright Litigation Handbook § 15:27 (2d ed.2009) (noting that expert testimony is often helpful in cases involving computer programs and functional objects, but will “seldom be necessary” to determine substantial similarity between literary works).

Gable v Natl. Broadcasting Co., 727 F Supp 2d 815, 837 [CD Cal 2010], affd sub nom. Gable v Natl. Broadcasting Co., Inc., 438 Fed Appx 587 [9th Cir 2011]

Further, this case does not involve a highly technical area of expertise. Unlike a patent case comparing two technical devices, or a copyright case involving computer software or music, this case involves the comparison of a film script to a television series. The works are targeted at a general audience and deal with subject matter readily understandable by any ordinary person, including the Court. Thus, expert testimony is far less critical in a case like this than it is in a case where specialized knowledge is required to dissect the objective components of the copyrighted works. See, e.g., Brown Bag Software, 960 F.2d at 1473–74 (relying on expert testimony to identify the objective points of comparison among different computer software programs); Swirsky v. Carey, 376 F.3d 841, 847–48 (9th Cir.2004) (relying on expert testimony comparing the objective elements—pitch, melodies, baselines, tempo, chords, structure, and harmonic rhythm—of musical works); Chiate v. Morris, Case No. 90–55428, 1992 WL 197591, *5 (9th Cir., Aug. 17, 1992) (finding that expert testimony by a musicologist is crucial to proving objective similarity of songs); see also Dowd, Copyright Litigation Handbook § 15:27 (2d ed.2009) (noting that expert testimony is often helpful in cases involving computer programs and functional objects, but will “seldom be necessary” to determine substantial similarity between literary works).

Bernal v. Paradigm Talent and Literary Agency, 788 F.Supp.2d 1043 (C.D.CA 2010)

Voluntary Dismissal Under Rule 41(a)
Section 505 of the Copyright Act of 1976 allows the Court to “award a reasonable attorney's fee to the prevailing party.” 17 U.S.C. § 505 (emphasis added). “The Supreme Court has defined a ‘prevailing party’ as one who has ‘prevailed on the merits of at least some claims.’ ” Torres–Negron v. J & N Records, LLC, 504 F.3d 151, 164–65 (1st Cir. 2007) (dismissal for lack of subject matter jurisdiction was not on the merits and Defendant was not entitled to recover as prevailing party under Section 505) (citing Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598, 603–05, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001) ). Thus, when “an order of voluntary dismissal is entered by a plaintiff under Rule 41(a) of the Rules of Civil Procedure ‘without prejudice’ there is no award of attorney's fees under the Copyright Act.” Raymond J. Dowd, Copyright Litigation Handbook § 18:2 (2d ed. 2017).

Feliciano Rivera v Pina Nieves, 292 F Supp 3d 560, 564 [DPR 2018]

Attaching Copyright Materials and Alleged Infringements To Complaint
At least one treatise has warned that “[w]here a federal judge perceives (correctly or not) that a plaintiff attempted to conceal a weak case by failing to attach sample copyrighted material and infringing material, the plaintiff may be severely prejudiced moving forward.” RAYMOND J. DOWD, Copyright Litigation Handbook § 9.9 (2d ed.2013).

Williams v Black Entertainment Tel., Inc., 2014 Copr L Dec P 30566 [EDNY Feb. 14, 2014]

The Court does find it telling, however, that Woolcott has not submitted photographs displaying both sides of The Woolcott Residence. At least one treatise has warned that “[w]here a federal judge perceives (correctly or not) that a plaintiff attempted to conceal a weak case by failing to attach sample copyrighted material and infringing material, the plaintiff may be severely prejudiced moving forward.” Raymond J. Dowd , Copyright Litigation Handbook § 9.9 (2d ed.2013).

Woolcott v Baratta, 13-CV-2964 JS GRB, 2014 WL 1814130, at *8 [EDNY May 7, 2014]

Certified Copy of Deposit Not Necessary To Show Copyright Validity
Defendants may not argue that a certified copy of the image submitted to the Copyright Office is required to show copyright validity, as this is not an accurate statement of the law. See Copyright Litigation Handbook § 4:3 (2d ed.) (“A copyright registration is sufficient evidence of a valid copyright, and a copyright holder need not place into evidence certified or deposit copies of ... the compositions at issue to prove that it holds a valid copyright”) (internal citations and quotation marks omitted).

Sweet People Apparel, Inc. v Saza Jeans, Inc., CV 14-1143 DMG (ASX), 2015 WL 12669884, at *3 [CD Cal June 25, 2015]

Supplementing Pleadings With Post-Commencement Copyright Registrations
The plaintiff in Pyatt, though, did not seek to amend the Complaint. In fact, subsequent treatises have cited Pyatt for the proposition that post-commencement registrations will not automatically be read into the complaint and that the plaintiff should seek amendment. See Raymond J. Dowd, Copyright Litigation Handbook § 7:1 (2d ed. 2012) (“[I]f a plaintiff registers copyrights after the filing of a complaint but does not supplement the complaint pursuant to Rule 15(d) of the Federal Rules of Civil Procedure, the court may dismiss the case.”)

Membler.com LLC v Barber, 2013 Copr L Dec P 30494 [EDNY Sept. 23, 2013]

Because Gattoni has alleged only that the registration for the allegedly infringed film is pending, and because no application has been made by Gattoni to amend the Complaint if and when the Photograph became registered, Gattoni has not properly pled the pre-requisite element of a copyright infringement claim, and the Complaint's cause of action for copyright infringement necessarily fails to state a claim. The Defendant's motion to dismiss the copyright infringement claim is granted without prejudice. See Membler.com LLC v. Barber, No. 12-CV-4941 JS GR, 2013 WL 5348546, at *5 (E.D.N.Y. Sept. 23, 2013) (explaining that Pyatt v. Raymond, 462 Fed.Appx. 22 (2d Cir. 2012) now stands for the proposition that post-commencement registrations will not automatically be read into the complaint and the plaintiff should seek amendment); Raymond J. Dowd , Copyright Litigation Handbook § 7:1 (2d ed. 2012) (“[I]f a plaintiff registers copyrights after the filing of a complaint but does not supplement the complaint pursuant to Rule 15(d) of the Federal Rules of Civil Procedure, the court may dismiss the case.”)

Gattoni v Tibi, LLC, 254 F Supp 3d 659, 663 [SDNY 2017]

Evidence of Joint Authorship of a Work Covered By Copyright
Additionally, defendant Adcom could not sustain its request for a conclusion of law to be included for joint authorship. This requires that, even if it was not barred, at least defendant had shown it had control over the work and there was an objective manifestation of intent to be co-author.⁷ Raymond J. Dowd, Copyright  Litigation Handbook § 2:14 and § 8:5 (2d ed. 2007).

Gener-Villar v Adcom Group, Inc., CV 03-1306 (FAB/CVR), 2008 WL 11500385, at *9 [DPR July 2, 2008]

First Sale Doctrine As A Defense To Copyright Infringement
Plaintiffs also move to dismiss the first and second counterclaim because the allegations of Defendants’ involvement with “legitimate textbooks” and “textbooks lawfully made and sold abroad” are not based on an actual controversy. (Doc. No. 27 at 8-9.) According to the parties, these allegations relate to the first sale doctrine, which the Supreme Court extended to copyrighted works lawfully manufactured outside the United States in Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013). The first sale doctrine is a defense to infringement. See Brilliance Audio, Inc. v. Haights Cross Commc’ns, Inc., 474 F.3d 365, 369 (6th Cir. 2007) (“It is true that trademark law contains a ‘first sale’ exception that provides a defense to claims of infringement.”); Raymond J. Dowd, Copyright Litigation Handbook § 13:31 (2d ed. 2017) (section titled “Defenses commonly arising in copyright litigation—First sale doctrine”)

Pearson Educ., Inc. v C&N Logistics, Inc., 3:18-CV-00438, 2018 WL 6528128, at *6 [MD Tenn Dec. 12, 2018]

Subpoena In DMCA Action Had To Be Served In Compliance With Rule 45 In District In Which Facebook Resided

Facebook is working under the § 512(c) safe-harbor functionality, making it applicable to the DMCA subpoena process, and the subpoena was served on Facebook in accordance with § 512(h)(4).⁷ Requestor objects that Facebook provides no authority for its construction of § 512(h) interpreted or rewritten or governed by Rule 45(c) other than Usov v. Lazar, No. 13 Civ. 818 (RWS), 2014 WL 4354691, at *14–15 (S.D.N.Y. Sept. 2, 1014)(quashing a subpoena served on Credit Suisse AG because it violated Rule 45(c)’s 100–mile limit).^{8  The Copyright Litigation Handbook § 14:10 “Protective orders and motions to compel (2d ed.), relies on In re Subpoena to Univ. of N. Ca. at Chapel Hill, 367 F. Supp. 2d 945, for the same interpretation that Facebook asserts here. On the other hand, the Court observes that it is Requestor who presents no authority for his refusal to apply Rule 45(c) to § 512(h).
In re: DMCA Section 512(h) Subpoena to Facebook, Inc., CV 4:15-MC-0654, 2015 WL 12805630, at *4 [SD Tex Nov. 18, 2015]}

Fifth Circuit: Discussing Complete Preemption In The Copyright Context
In an unpublished opinion, the Third Circuit concluded that in the context of the state-law claim at issue there was no copyright preemption. Bd. of Chosen Freeholders of Cnty. of Burlington v. Tombs, 215 Fed.Appx. 80, 82 (3d Cir.2006). One commentator notes, citing Tombs, that the Third Circuit has “rejected complete preemption in the copyright context.” Copyright Litigation Handbook § 10:1 (2d ed.). It is correct that Tombs rejected the application of preemption to a specific cause of action. Tombs did not reject, however, complete preemption generally under the Copyright Act.

GlobeRanger Corp. v Software AG, 691 F3d 702, 706 [5th Cir 2012]

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 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2018-2019) by Raymond J. Dowd
 

Is A "Prevailing Party" Really Entitled To Attorneys Fees Under the Copyright Act? SCOTUS To Decide

$2 Million In Pro Bono Legal Fees At Issue In Copyright First Sale Doctrine Case

On January 15, 2016, the U.S. Supreme Court granted a petition for certiorari based on the following preamble and question presented:


Section 505 of the Copyright Act provides that a “court may … award a reasonable attorney’s fee to the prevailing party” in a copyright case. 17 U.S.C. § 505. The Ninth and Eleventh Circuits award attorneys’ fees when the prevailing party’s successful claim or defense advanced the purposes of the Copyright Act. The Fifth and Seventh Circuits employ a presumption in favor of attorneys’ fees for a prevailing party that the losing party must overcome. Other courts of appeals primarily employ the several “nonexclusive factors” this Court identified in dicta in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994). And the Second Circuit, as it did in this case, places “substantial weight” on whether the losing party’s claim or defense was “objectively unreasonable.” Matthew Bender & Co. v. W. Publ’g Co., 240 F.3d 116, 122 (2d Cir. 2001).


The question presented is: What is the appropriate standard for awarding attorneys’ fees to a prevailing party under § 505 of the Copyright Act?


The case that gave rise to this question Kirtsaeng v. John Wiley & Sons, Inc.   The Kirtsaeng case is an extraordinarily important case involving the "first sale doctrine" under the Copyright Act.  The first sale doctrine is basically that once a copyright owner sells a work that contains the copyrighted material, the copyright owner cannot restrict further sales.  This is why you can freely buy and sell used books or DVDs without asking the copyright owner's permission.


Kirtsaeng lawfully purchased textbooks in his native Thailand that had been published in Thailand by a licensee of John Wiley & Sons.  He imported them into the United States.  John Wiley & Sons argued that the first sale doctrine did not apply to works manufactured abroad.  Kirtsaeng lost at the district court and in the Second Circuit.  The U.S. Supreme Court reversed, finding that the first sale doctrine applied to copyrighted works first sold outside the United States.


More Kirtsaeng detail on Wikipedia here.


Copyright Litigation Blog's April 17, 2011 post (supporting Judge Murtha's dissenting view) that the first sale doctrine applied to Kirtsaeng here.


Here is the case page at SCOTUS Blog for the March 19, 2013 SCOTUS Kirtsaeng decision.  SCOTUS Blog has links to the oral arguments, a great resource for advocates.


Here is the case page for the January 15, 2016 grant of certiorari.  This case is of tremendous import for anyone practicing in the field of copyright law and is likely to have an important and lasting impact on whether or not copyright owners and users, [whether plaintiffs or defendants] will obtain attorneys fees for advancing meritorious claims or defenses.


In this case, the Orrick law firm took on the case pro bono and later sought over $2 million for representing Kirtsaeng.   As the petition points out, due to Orrick's representation, Kirtsaeng was victorious against all odds (having lost at the district court and again at the Second Circuit).  The petition clearly shows how the circuit courts of appeals view awards of attorneys fees in a dramatically different light.  The petition argues that the Second Circuit's view of awards of attorneys fees, where the "objective unreasonableness" of the non-prevailing party's claims or defenses is considered the paramount factor, is markedly different and changes the result.  In the Ninth Circuit there is a presumption that the prevailing party should obtain fees and the other circuits are somewhere in between.  The petition further argues that forum shopping is encouraged.


As I recently discussed here, the U.S. Department of Commerce has advocated changes in the Copyright Act related to awards of statutory damages under the Copyright Act.   As I recently discussed here, cases involving copyright claims have dramatically increased in the last year, with very significant numbers of cases filed outside the Second Circuit.   The Second Circuit had 1,198 filings, the Ninth Circuit had 2,678, the Fifth Circuit 2,534 and the Third Circuit 2,107.


The Department of Commerce White Paper discussed important differences of opinions in how copyrights should be licensed, whether the fair use doctrine works or not, how to foster creativity in a world where digital appropriation is central to the creative process, and how to fairly punish infringers and reward copyright owners.  The issues roiling the copyright world will likely excite a great deal of passion around the Kirtsaeng case, even though it revolves around the usually unsexy topic of attorneys fees.  Starving artists can't afford attorneys and can rarely prove damages.  If the chance of recovering legal fees is low, these folks won't have representation.  On the other hand, assessing legal fees against non-prevailing parties seeking to assert speech-related rights may have an undue chilling effect and could effectively impose-criminal like penalties for forms of speech.  And copyright owners ought to have some degree of certainty that the reasonable exploitation of their works will be facilitated when they are in the right.   The current system does not seem to meet the needs of many important constituents.


My book Copyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) has separate chapters addressing damages and attorneys fees.   Copyright Litigation Handbook is designed to guide a legal practitioner from the client interview and investigation through to a final judgment.  Many practitioners underestimate the complexities and risks relating to attorneys fees. 


Orrick's petition for certiorari makes a pretty strong argument that John Wiley had been (incorrectly) shaking down grad students like Kirtsaeng for years and that Kirtsaeng's case has stopped that practice, furthering the purposes of the Copyright Act and clarifying important points of law.




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 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 

Creativity, Copyright Trolls and Proposed Changes To The Copyright Act's Statutory Damages Provisions



Department of Commerce Recommends Changes To the Copyright Act

The Department of Commerce's Internet Task Force on Copyright Policy, Creativity and Innovation in the Digital Economy has issued a White Paper on Remixes, First Sale Doctrine and Statutory Damages.   The Task Force pretty much concludes that everything is hunky dory with remixes and that the market and educational programs will sort things out.  Ditto on the first sale doctrine.


But with statutory damages, the Task Force has made some significant recommendations, seemingly troubled by the Tenenbaum and Rasset-Thomas outlandishly high jury awards, on the one hand, and copyright trolls on the other.  On yet another hand, the task force had concerns about stifling innovation where a new service or technology might be subjected to huge liabilities in an area where the question of infringement was unsettled.


The Task Force recommended three amendments to the Copyright Act to address

some of the concerns presented: 1.incorporating into the Copyright Act a list of factors for courts and juries to consider when determining the amount of a statutory damages award.
2. changes to the copyright notice provisions that would expand eligibility for the lower“innocent infringement” statutory damages awards.
3. in cases involving non-willful secondary liability for online services offering a large number of works, courts be given discretion to assess statutory damages other than on a strict per-work basis.



The Task Force proposes a new clause in subsection Section 504(c)526 as follows:
FACTORS TO CONSIDER -- In making any award under this subsection, a court shall
consider the following nonexclusive factors in determining the appropriate amount of the
award:
(1) The plaintiff’s revenues lost and the difficulty of proving damages.
(2) The defendant’s expenses saved, profits reaped, and other benefits from the
infringement.
(3) The need to deter future infringements.
(4) The defendant’s financial situation.
(5) The value or nature of the work infringed.
(6) The circumstances, duration, and scope of the infringement, including whether it
was commercial in nature.
(7) In cases involving infringement of multiple works, whether the total sum of
damages, taking into account the number of works infringed and number of
awards made, is commensurate with the overall harm caused by the infringement.
(8) The defendant’s state of mind, including whether the defendant was a willful or
innocent infringer.
(9) In the case of willful infringement, whether it is appropriate to punish the
defendant and if so, the amount of damages that would result in an appropriate
punishment.


My book Copyright Litigation Handbook 2015-16 Chapter 17 Damages and Profits reviews federal court procedures and case law related to statutory damages and proving damages and profits.   Chapter 18 Attorneys Fees and Costs may also be helpful.  The full table of contents here.


The White Paper is worth reading as a summary of current debates over copyright law as it relates to the internet.   The Electronic Frontier Foundation put out an analysis worth reading here with a nice-sounding title, but seemed to be disappointed with the recommendations on remixes and first sale.

2016 Dept Commerce White Paper on Copyright Remix Statutory Damages

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 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2014-2015) by Raymond J. Dowd