1. COPYRIGHT LAW 2003 Professor Fischer CLASS of April 23 2003 THE LAST CLASS!!!

2. Wrap-up: Civil Remedies Injunctions (preliminary, permanent) Damages (actual damages, profits, statutory damages) Impounding and destruction Costs and attorney’s fees Last time, we did not get to the issue of calculation of actual damages and profits

3. 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?

4. 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

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

6. 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.

7. 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?

8. 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

9. THE COPYRIGHT INFRINGEMENT LAWSUIT A few issues – Subject matter jurisdiction Filing too early Filing too late Proper Plaintiff: Standing Proper Defendant: State Immunity Jury Trial

10. SUBJECT MATTER JURISDICTION 28 U.S.C. § 1338 If the parties to a copyright dispute are also parties to a contract, does the federal court have subject matter jurisdiction? See Bassett v. Mashantucket Pequot Tribe, (2d Cir. 2000) CB p. 679 Is the correct test that set out in T.B. Harms or Schoenberg?

11. FILING TOO EARLY Registration is a prerequisite for infringement lawsuit– authority? It may take many months for the Copyright Office to issue a certificate of registration. Can the copyright owner bring an infringement action before the Copyright Office issues a registration certificate? Is the statutory language clear? See Gerig v. Krause Publications, Inc. (D. Kan. 1999) – CB p. 686 What if the Copyright Office denies registration?

12. FILING TOO LATE See s. 507 – statute of limitations (civil, criminal) When does a claim “accrue”? See Roley v. New World Pictures (9 th Cir. 1994) -NCB p. 559). Does the copyright act permit infringement actions when a series of infringeming acts constitutes a “continuing wrong”?

13. PROPER PLAINTIFF: STANDING What does s. 501(b) provide? Who is a legal owner? What is a beneficial owner? See Eden Toys (2d Cir. 1983) - does Eden Toys have standing to sue for infringement of Paddington bear character? When is a declaratory judgment action permissible in a copyright infringement dispute? See Bryan Ashley Int’l v. Shelby Williams, (S.D. Fla. 1996) – CB p. 695

14. PROPER PLAINTIFF: STANDING When is a declaratory judgment action permissible in a copyright infringement dispute? See Bryan Ashley Int’l v. Shelby Williams, (S.D. Fla. 1996) – CB p. 695 – 2 element test (similar to patent cases) 1. Explicit threat or other action by copyright owner (cease and desist letter) 2. Accused infringer or declaratory P must have produced or prepared to produce an allegedly infringing product

15. PROPER DEFENDANT Sovereign immunity Historically –2 ways around sovereign immunity : abrogation by Congress and waiver of sovereign immunity by states Congress has authorized suits against states in a variety of contexts pursuant to its Article I powers However, starting with Seminole Tribe, Court has declared many of these attempts at abrogation to violate the Eleventhh Amendment

16. Chavez v. Arte Publico (5 th Cir. 2000) Supreme Court has not addressed the authorization for suits against states found in s. 501(a) and 511, this Fifth Circuit opinion uses the Court’s decisions in the patent and trademark context to determine that suits for money damages against the state are not permissible.

17. JURY TRIAL Seventh Amendment – preserves right to jury trial that existed at common law In a copyright infringement case, if there is only a request for injunctive or other equitable relief, there is no right to a jury trial Is there a right to jury trial where the remedy sought is statutory damages? Feltner (1998) When would it be beneficial to have a jury trial in a copyright infringement case?