Received a demand letter from a law firm asking for over $20,000 for a copyrighted photo. They put in the letter that they would try to pursue statutory damages if it goes to court. However, the photographer registered the image several years after it was posted to the site. I've read on multiple forums and sites that you can only sue for statutory damages if you register before the infringement occurs. However, I haven't seen an specific piece of law that confirms this. In this situation, the photographer can only get actual damages, right? Or are there exceptions?
Statutory damages are only available if registered before infringement occurs or within three months of the copyright owner publishing the work. Save your documents. Get a browser add on that displays date and time if you use screen shots. https://www.law.cornell.edu/uscode/text/17/504 There's also a three year statute of limitations, but it can be applied somewhat unusually if there is a continuing infringement, so consider it a limitation period on damages. If you received a demand letter, you should absolutely retain a lawyer to respond. These general rules need to be evaluated based on your specific facts.
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You are correct. Statutory damages are only available for infringements commencing after the effective date of the registration, or within the 3 month grace period after first publication if registered. Threats of statutory damages are probably hyperbole. Negotiate a reasonable license fee and move on.
The foregoing is for informational purposes and does not constitute legal advice or an attorney-client relationship. All answers ©2018 Greg Victoroff, Inc.
The relevant statute is 17 U.S.C. §412: “In any action under this title ... no award of statutory damages or of attorney’s fees ... shall be made for ... any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”
As noted, you need to speak with your own New York-licensed intellectual property attorney. Discussing the dispute with the other side without first talking to your own attorney almost always makes things worse. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
See 17 U.S.C. 412:
Also, there may be many intellectual property attorneys licensed in NY and NJ that have initial free telephone consultations.
You should discuss this immediately with an intellectual property attorney who may be able to negotiate a settlement if appropriate.
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It is true that statutory damages can only be requested for works that were registered prior to the infringement occurring or within 3 months of them being first published.
Because they are asking for such a high amount, I suggest that you consult with a lawyer in private and discuss your best course of action in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.
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