Legal Remedies for Infringement Intro This is a summary of the legal remedies for infringement. We generally try to resolve infringement cases ourselves, but sometimes a writer's best bet is to sue. In most grievances, the expense of filing in federal court is such that a writer won't do it until the grievance and other remedies have failed. But knowing the legal issues makes it easier to advise the writer and manage the grievance successfully. Copyright Basics A work is copyrighted as soon as it's put in tangible form. Neither registration nor the copyright notice are required. However, there are fringe benefits to doing both. If there's a copyright notice on the work, an infringer can't say s/he didn't know the work was copyrighted. This affects the amount of damages that may be awarded in a lawsuit, since ignorance is an excuse in copyright law (Sect. 401 d). Registration Is Necessary for Legal Action in Federal Court A writer can only sue for infringement in federal court. In order to do so, s/he has to register the work (Sect. 411), and s/he has to sue within three years of the infringement (Sect. 507). There are significant limits on the remedies a court can grant if the writer registers after the infringement occurs instead of before (Sect. 412). Remedies for Infringement If a work is infringed, a number of legal remedies are available: = Court injunctions to stop the infringer from continuing to copy (Sect. 502) = Impounding and destroying the illegal copies (Sect. 503) = Damages and profits (Sect. 504) = Court costs and attorney fees (Sect. 505) = Criminal penalties if the infringement was for commercial advantage or private gain (Sect. 506; rarely if ever used) All of these remedies are available if the work was registered promptly. Otherwise, the writer can collect only actual damaages and profits, not statutory damages or attorney fees. Damages When you sue someone who has harmed you, you sue for actual damages, that is, the damage that you actually suffered. In the case of copyright infringement, actual damages is the money the writer would have made if the infringer had licensed the work as s/he should have. Profits are the profits the infringer made by not licensing. In many civil cases, you can sue for additional damages, such as for emotional distress. In copyright infringement, a writer can ask the court for statutory damages. These are payments in lieu of the actual damages and profits. They are intended to punish an infringer beyond the actual damage done the writer. The amount that can be awarded is limited by federal statute, thus the term "statutory" damages. In general, a court may award $500 to $20,000, but if the infringement was done on purpose, the court may award as much as $100,000. Likewise, if the infringer had no reason to believe that s/he was infringing ("innocent infringement"), the award may be as little as $200. Attorney Fees and Court Costs In addition to statutory damages, writers can also request that their attorney fees and court costs be paid by the infringer. Being eligible for statutory damages is great but being eligible for attorney fees and costs is better. If a writer is eligible, attorneys whom s/he interviews will know that they'll be paid if they win, so they'll be more willing to take the case. They might even do it on contingency. Moreover, telling an infringer's attorney that the writer is eligible for attorney fees and costs can make the attorney blanche and reach a satisfactory settlement quickly. It's even been argued that the mass online infringements writers are currently suffering wouldn't happen if more freelancers were eligible for fees and costs. But they're not. How come? Gotcha! If a writer doesn't register the work at the right time, s/he's not eligible for statutory damages and attorney fees! = An unpublished work must be registered before it is infringed (Sect. 412). = A published work must be registered before the infringement or within three months of the first publication (Sect. 412). Obviously, the smart money is on the writer who registers every work as soon as it's finished. _______________________ Notes Q: It can takes months for the Copyright Office to process a copyright registration. Does the writer have to wait til s/he has the registration certificate in hand before s/he can file the lawsuit? A: It is not at all unusual for a copyright owner to register only after detecting an ongoing infringement and deciding to sue. Copyright law requires that the writer have the certificate in hand before filing the lawsuit, but most (not all) courts have ruled that just filing for registration is enough to start the lawsuit. Of course, if the registration is eventually denied, the lawsuit can be dismissed. When a registration application is first received by the Copyright Office, it is stamped with the data and time. This timestamp establishes the official copyright date. The Copyright Office also has a special procedure for expediting applications; there's an additional fee. In requesting expedited service, the writer has to state the reason for requiring expedition, and one of the choices is commencing litigation. Q: Didn't the eligibility requirements for statutory damages change in 1989? A: Yes, but only for non-US citizens. It changed in 1989 in order to comply with the Berne Convention, a global agreement on copyright. Citizens of other countries no longer have to register with the US Copyright Office in order to sue here, but they still need to register ahead of time in order to qualify for statutory damages, attorney fees and costs. Q: Can writers sue in Small Claims Court? A: Only in exceptional circumstances. Infringement and other copyright-related lawsuits cannot be filed in Small Claims Court. Thus, in a case where the writer has a routine journalism contract ("Magazine agrees to pay $750 for first serial rights"), the writer can't sue in Small Claims. The magazine's only offense is infringement and the writer has to sue in federal court. A Writer can sue in Small Claims, however, if s/he can sue for breach of contract. To do this, her contract must have language that enables her to argue the breach. For example, "Magazine agrees to pay $750 for first serial rights. Magazine will not publish the article in other media without the express permission of the author." In this case, if the magazine publishes in another medium without the writer's permission, it breaches the agreement and the writer can sue for that breach. Note that this doesn't always work. Some Small Claims judges don't accept jurisdiction of any case involving copyright, even if their are good grounds for breach. A San Francisco writer had a great case against Ziff-Davis for breach, but when half a dozen NY lawyers showed up in Small Claims Court, the judge caved. _______________________ Copyright (c) 1995 National Writers Union-UAW