Must a plaintiff have a copyright registration prior to filing suit?

Yes (except for claims brought under the Visual Artists Rights Act, 17 U.S.C. 106A). Section 411(a) provides that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made. . . ." A registration had been considered a jurisdictional prerequisite to filing suit, but the U.S. Supreme Court recently held (in March 2010) that the requirement is not jurisdictional in nature but is, rather, more akin to a "claims-processing rule."


Is an actual copyright registration required, or does the mere filing of a copyright application satisfy ? 411(a)?

Most circuit courts that have considered the issue have held that 411(a) means what it says on its face: that a "preregistration or registration" is a prerequisite to filing suit. One notable departure is the Fifth Circuit (covering Texas, Louisiana and Mississippi), which has held that 411(a) requires proof of only (i) payment of the copyright application fee, (ii) depositing with the Copyright Office the work for which registration is sought, and (iii) the Copyright Office's receipt of the copyright application.


What are the elements of a copyright infringement claim?

A copyright infringement action requires a plaintiff to prove (1) ownership of a valid copyright, and (2) actionable copying by the defendant of constituent elements of the work that are original. To establish ownership of a valid copyright a plaintiff must show that the material is "original," which in copyright parlance simply means (i) that the work was independently created by the author, and (ii) that it possesses at least some minimal degree of creativity. Second, the plaintiff must demonstrate compliance with the statutory formalities, e.g. timely obtaining a registration. To prove legally actionable copying, a plaintiff must prove (i) that the defendant did, in fact, actually copy from the plaintiff's work (often referred to as "factual copying"), and (ii) that the works, "when compared as a whole, are adequately similar to establish appropriation."


What sort of evidence is needed to prove that one work was actually copied from another one?

Factual copying can be proven by direct or circumstantial evidence. Proof of copying by direct evidence is rare. It might include a sound engineer witnessing a record producer modify an existing digital sound file, say, a song by the Rolling Stones, and then embed that modified track in a new song. Because there is almost never direct evidence of copying, a plaintiff typically must rely on circumstantial evidence. This requires a plaintiff to submit competent proof of (i) access to the allegedly infringed work, plus (ii) "probative similarities" between the two works. Proof of access plus probative similarity merely gives rise to a rebuttal inference of factual copying. Proof that the defendant's work was independently created without reference to the plaintiff's work can rebut the inference.


How does a person demonstrate "access" to a copyrighted work?

"Access" is a term of art that means "reasonable opportunity" to perceive the work prior to the point in time when the defendant's work was created. A finding of access cannot be based upon speculation and conjecture.


What does "probative similarity" mean?

"Probative similarity" means evidence of "similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant copied part of the plaintiff's work."


Is expert testimony admissible to prove the existence of probative similarities between two works?

Yes. Because the probative similarity involves a technical comparison, expert witness testimony is allowed. A key factor in analyzing the degree of similarity between two works is the "uniqueness of the sections which are asserted to be similar." For example, if the allegedly infringing work repeats an error that is found in the original work, such as a typographical error in a written work or an audible artifact that ordinarily would not be present in a sound recording, it is more likely that the works are related. Some courts allow consideration of the dissimilarities between the works in this analysis, but others do not.


Is it possible to prove factual copying if there is no evidence of access to the infringed work?

Yes. If there is no evidence of access, factual copying may still be demonstrated if there is a "striking similarity" between the works, which means that the two works are so obviously similar that the possibility of independent creation is precluded.


What is the test for proving one work is "substantially similar" to another?

Courts apply the "ordinary observer" test to determine whether an accused work is substantially similar to a plaintiff's work. This test requires a side-by-side comparison of the works. It requires the plaintiff to show that "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same."


Is expert witness testimony admissible to prove substantial similarity?

Generally speaking, no, because the test is that of an "ordinary observer," e.g., a lay person. This is especially true when the works at issue are popular works aimed at the general public, such as music, motion pictures, books, visual arts (paintings, sculptures, etc.), dances, and the like. Expert witness testimony has sometimes been admitted on the question of substantial similarity when highly technical or complex works, such as computer software code, are at issue.


What remedies are available to a copyright infringement plaintiff?

A plaintiff's remedies include: (i) injunctive relief (irreparable harm is usually presumed to exist when a prima facie case of infringement is established); (ii) seizure and impoundment of the infringing articles; (iii) actual damages plus lost profits or, in lieu thereof, statutory damages if registration was timely obtained. The plaintiff must elect its remedy before judgment is entered.


Is a defendant permitted deduct any of its expenses if the plaintiff elects lost profits as its measure of damages?

Yes. A defendant may deduct expenses that relate to the infringing work, such as recording, manufacturing, packaging, marketing, advertising and distribution costs; sales discounts; taxes; and certain overhead (but overhead may not be deducted if there is a finding of willful infringement).


How are statutory damages calculated?

Statutory damages are determined at the discretion of the fact finder ranging from a minimum of $750 to $30,000 per infringed work. The question is "how many works" have been infringed, not "how many times a work" has been infringed. If the plaintiff can prove the infringement was willful, the upper limit on statutory damages increases to $150,000 per infringed work. If a defendant can prove innocent infringement (neither knew nor had reason to know), damages may be reduced to as low as $200 per infringed work. Note that statutory damages are awarded per infringed work, not per infringement of a work. Thus, a finding of infringement of one song that has sold 500,000 copies would entitle the copyright owner to a single award ranging between $750 to $30,000, not 500,000 separate awards ranging between $750 - $30,000.


What defenses are available to a copyright infringement defendant?

There are numerous defenses available to a copyright defendant some of which, as you will see below, overlap one another to some extent. Some of them include: (i) independent creation, (ii) lack of originality/unprotectable expression (examples may include common musical scales, styles of expression (such as painting or vocal styles), ideas, titles, short phrases, and facts; (iii) common source, (iv) public domain, (v) scenes a fair (common scenes or themes, cliches, and metaphors), and (vi) fair use.


Can a person who did not directly participate in copying the plaintiff's work be held liable for infringement?

Yes. The act of unlawful copying is often referred to as "direct infringement." Those who are not direct infringers may be held jointly and severally liable with direct (and other indirect) infringers under various theories: contributory infringement, vicarious liability and inducement. Contributory liability for copyright infringement may be imposed upon any person who "with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another." Vicarious liability attaches to those who have a "right and ability to supervise the infringing conduct, and also [have] a direct financial interest in such activities." Vicarious liability is based upon the doctrine of respondent superior.


Can I recover my attorney's fees and court costs if I prevail?

The answer, for both plaintiffs and defendants, is "yes." The Copyright Act provides that the court has discretion to award attorney's fees and costs of court to the "prevailing party." The Supreme Court has emphasized prevailing plaintiffs and defendants should be treated alike. Though discretionary, awarding fees to the prevailing party is the rule rather than the exception. The factors a court should consider are (i) the frivolousness of the claim, (ii) motivation of the party asserting the claim, (iii) objective unreasonableness (both in the factual and in the legal components of the case), and (iv) the need in particular circumstances to advance considerations of compensation and deterrence.