1. COPYRIGHT LAW 2003 Professor Fischer CLASS of April 16, 2003 A LITTLE MORE ON PREEMPTIONREMEDIES

2. Wrap-up: Preemption Express (s. 301) Or Implied

3. White v. Samsung (9 th Cir. 1993) (en banc) CB p. 637 Rights of publicity has become very broad What do you think of Judge Kozinski’s dissent?

4. NBA v. Motorola (2d Cir. 1997) Did the Second Circuit find the NY misappropriation claim to be preempted? Why or why not? To what extent does INS v. AP apply? Is the Motorola decision correct? Why or why not?

5. STATUTE OF LIMITATIONS What is the limitations period for civil and criminal copyright actions?

6. COPYRIGHT MISUSE Copyright misuse is a common law defense (deriving from patent misuse) that is growing in importance. It has been applied by the 4th, 5th, and 9th Circuits. Copyright misuse is the improper leverage of intellectual property rights into greater monopoly rights than Congress intended - so contrary to public policy

7. CIVIL STATUTE OF LIMITATIONS 3 years (section 507(b) Courts are divided on “continuing infringement”, ie.e whether repeated acts of infringement constitutes a single continuing wrong or whether damages must be limited to infringements in last 3 years. Note that criminal statute of limitations is 5 years. See 17 U.S.C. s. 507(a)

8. STATUTE OF LIMITATIONS Statute will be tolled if D fraudulently conceals infringement Even absent concealment, statute will be tolled during period when a reasonable person in plaintiff’s shoes would not have discovered infringement.

9. REMEDIES What remedies are available for civil copyright infringement?

10. REMEDIES Section 504 A. DAMAGES (either actual damages and profit OR statutory damages) s. 504 B. INJUNCTIVE RELIEF (s. 502) C. SEIZURE/IMPOUNDMENT (section 503) D. COSTS/ATTORNEYS FEES (s. 505) (PROPERTY TYPE OF REMEDIES)

11. INJUNCTIONS Remember: an equitable remedy, unlike damages What is required for a court to grant a preliminary injunction in a copyright case? A permanent injunction in a copyright case?

12. INJUNCTIONS – see s. 502 More routine than in many other civil cases Preliminary injunctive relief is generally awarded if P establishes p.f. case on validity and infringement (irreparable injury/damages not appropriate is presumed if a copyright is infringed). Permanent injunction generally awarded if copyright validity and infringement are found What happens if a defendant does not comply? Do you agree with the 8 th Circuit’s ruling in Olan Mills (CB p. 712)? Why or why not? Is the standard for injunctions in copyright cases appropriate in light of the First Amendment concerns that may be impacted? (See Lemley & Volokh article)?

13. REIMERDES (SDNY 2000) – CB p. 715 In Reimerdes, how did the defendants react to the order granting a preliminary injunction? Should that reaction justify a grant of permanent injunctive relief? What do you think of the “locking the barn door after the horse is gone” argument that was raised in the trial court?

14. Abend v. MCA (9 th Cir. 1988) – CB p. 718 Is this a case where injunctive relief is not appropriate? Can you think of any other cases that might qualify as a “special circumstance”? Note that Supreme Court, in Stewart v. Abend, did not disturb the 9 th Circuit’s opinion about remedies

15. OTHER NONMONETARY RELIEF Seizure, impounding and destruction of infringing articles (section 503) as well as articles that can be used to reproduce such infringing articles. Idea here – infringer should not be able to recover his or her investment in the production of infringing goods. Can only get this after a finding of infringement. It’s not clear whether an individual who was making pirated copies of works downloaded on the Internet could have his computer seized and destroyed.

16. ACTUAL DAMAGES/PROFITS (s. 504) Copyright owners can recover “actual damages and any additional profits that are attributable to the infringement” (with no double recovery) – see 504(b) Note that there are often disputes about how to calculate actual damages and profits. What are actual damages?

17. ACTUAL DAMAGES/PROFITS Actual damages are extent to which market value of copyrighted work has been injured or destroyed by an infringement including fair market value of licensing fee If too speculative, damages will not be awarded Punitive damages are not generally awarded in copyright actions

18. INFRINGER’S PROFITS What profits is a prevailing plaintiff permitted to recover in a copyright infringement action? What must P prove?

19. INFRINGER’S PROFITS Prevailing P can recover infringer’s profits if attributable to infringement Plaintiff is only required to prove D’s sales that are reasonably related to the infringement (gross revenues) Burden then shifts to D to prove elements of costs to be deducted from sales in arriving at profit as well as elements of profit attributable to other factors than the copyrighted work. Doubt about computing costs/profits should be resolved in P’s favor.

20. FRANK MUSIC: 9 th Cir. 1989 CB p. 721 -APPORTIONMENT Had defendant met its burden in proving element of costs to be deducted from sales in arriving at profit? Infringing conduct was only a portion of a product sold by the D – how should you apportion profits? Can a copyright proprietor recover “indirect profits”? According to the appeals court, was the district court correct in declining to award prejudgment interest?

21. HAMIL AMERICA (2d Cir. 1999) – CB p. 724 This case is about determining what are deductible expenses – are general overhead expenses deductible from gross revenue? Also states the rule against double recovery

22. STATUTORY DAMAGES – see s. 504(c) and Storm case What are statutory damages? Can you recover statutory damages as well as actual damages and profits? Are there any prerequisites for statutory damages? See s. 412 When must P elect statutory damages? What amount of statutory damages may a court award? What if infringement is willful?

23. STATUTORY DAMAGES See s. 504(c) Statutory damages can be between $750 and $30,000 per work “as the court considers just” For willful infringement, statutory damages can be increased to no more than $150,000. If infringement innocent, statutory damages can be reduced to $200 In Storm, did the court provide much guidance as to why it chose $10,000? What factors do you think are relevant?

24. DIGITAL THEFT DETERRENCE AND COPYRIGHT DAMAGES IMPROVEMENT ACT 1999 legislation raising statutory damages by 50%- another example of strengthened copyright law during 1990s.

25. WHAT IS A “WORK” FOR PURPOSES OF STATUTORY DAMAGES? This can be a difficult and important question. For purposes of statutory damages, all parts of compilation/derivative work are to be regarded as constituting a single work What about the different episodes of the TV programs at issue in Columbia Pictures? In Columbia Pictures, could separate statutory damages be awarded against these defendants even if some of the works infringed by both stations were the same?

26. COSTS AND ATTORNEY’S FEES – see s. 505 Recovery of attorney’s fees is discretionary with the district court – language is “may” You must register to obtain award of attorney’s fees for infringement of copyright before date of registration or 3 months after first publication – s. 412 S. 505 - award of attorneys to “prevailing party” – why would Congress provide for this when the normal rule is that each side bears its own costs?

27. Fantasy v. Fogerty (9 th Cir. 1996) D prevailed Supreme Court had rejected a more rigorous standard for attorney’s fees being awarded to prevailing defendants (only if lawsuit frivolous or brought in bad faith). Must be “evenhanded”. What rule for attorney’s fees makes sense? What should be the goal of a rule for attorney’s fees? Note rule is still not even-handed because P must register.