How to file a copyright infringement at federal court with the purpose to take down a Kickstarter product designed by me?
7 attorney answers
Your copyright notice will be a requirement for filing a federal copyright infringement action and given that there is no written contract one may or could be inferred based upon the conduct of the parties (qasi-contract or implied in law contract). However, before a court will make a determination of infringement there is a legal process and procedure that a court must follow.
You will have to file in the appropriate federal court also. And you will need an attorney that has a legally qualified team to work on the case probably on an agreed basis i.e. contingent. There may be additional causes of action in addition to copyright infringement that are present.
Your best bet is to consult with an intellectual property attorney regarding the matter.
You need to slow down and consult with an IP attorney immediately. Preferably one that has copyright litigation experience and perhaps business litigation as well. To continue taking action to prevent the Kickstarter campaign may only subject yourself to needless liability. Find a litigator who will review your case for a free initial consultation. I am not sure about you finding a contingency lawyer for this case, especially if you must actually file a case in Federal Court for copyright infringement. Nonetheless, since you say they have already made the cash payments, you should have some sort of agreement that will specify exactly when and how royalties would be calculated and paid. It is not uncommon for royalties to be paid quarterly if revenue is small. Get help immediately! Good luck.
Disclaimer: The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.
You hire an attorney to do this for you, perhaps on a contingency basis.
Copyright ownership passes from the author to another party only upon written sale or "assignment". Since you do not have a written agreement, it is very likely that you still own the copyright exclusively. However, even if you only use rights, you do need guidance. There are several firms that will work on a contingency, and there or statutory damages available if you have a registered registered copyright which it sounds like you do.
By the way, I have changed your question category from "intellectual property" to "copyright infringement" so that it will be more obvious to copyright infringement lawyers to answer.
These are ideas, not legal advice. By answering this question, I am not becoming your attorney. No attorney client relationship is intended by my answer. I cannot provide any real help without more details and establishing an atty/client relationship. There is no relationship established by my blog.
You need to immediately retain litigation counsel---it would be disastrous for you to try to file claims in federal court without a lawyer.
But you have made some rather fundamental mistakes here that may make it impossible to pursue claims. First, 0 you cannot use copyright law to protect the design of a product. Copyright law protects original works of art, music, film, authorship, journalism, etc. It does not protect product designs. Product designs are protected by either patents or design patents, but you don't have any of these. Thus, your DMCA takedown notice was totally improper----you had no legal basis for filing a DMCA takedown notice because your copyright is obviously invalid.
Further, your only claim arises under state law for breach of contract, And indeed, it seems that you may have wrongfully obstructed this company from conducting business by filing a wrongful DMCA takedown notice. Your biggest mistake was operating without a written contract--since you had no written contract it will be very hard to prove your case in court.
Further, if this small company is using a Kickstarter campaign, it obviously has not made much money yet on the product. Why would you think it is appropriate to disrupt this Kickstarter campaign. You are gravely misinformed if you think this was a good idea.
Your next step is to retain experienced IP litigation counsel to represent you. But it costs hundreds of thousands of dollars to litigate cases like this, and none of us will take this case on a contingency. You need to retain counsel to negotiate a settlement of this case---and next time make sure that you retain counsel to draft written agreements that protect you.
I am not your lawyer and this is not intended to be legal advice on which you rely. My answer is merely intended to assist you in understanding some of the issues that you face so that you can make an intelligent choice when you hire legal counsel.
I don't understand the relevance of copyright law to this fact pattern.
Copyright does not attach to the "design" of functional objects -- such as, with few exceptions, a "product."
IF, however, the product is a plush toy or a costume then copyright might attach. And if the product has a creative design AFFIXED to the product then copyright may attach to that design. Or if what you're complaining about is that the company is using product design specifications that you, alone, drew then, alright, copyright would attach to those documents [and only those documents].
But, again, copyright does not attach to the design appearance of functional products. If you sent a DMCA take-down notice based on your alleged copyright in the design appearance of a functional product then YOU violated the law.
You need to speak with an intellectual property attorney immediately. I changed the category back to intellectual property because this matter is very, very likely not controlled by copyright law [except your potential liability for sending the DMCA notice].
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.
I agree with my fellow attorneys. It sounds like you may have several valid claims re: copyright infringement, breach of contract, etc. However, before moving forward, you should consult with an attorney to make sure the course you are taking is valid. If you charge forward unadvised, you may be finding yourself in a courtroom, but on the other side of the aisle.
STOP! Go no further until you have consulted IP counsel to conduct a proper case/matter review of this.
For all we know you may be entirely correct and have very real claims under copyright law. Or, you may be completely misunderstanding your rights and have now exposed yourself to legal action for tortious interference or any other legal claims this other party may make. You should never just start taking this kind of action without the benefit of legal counsel because the laws in this area get complicated even for experienced lawyers and by virtue of you taking down their campaign you expose yourself especially if you are wrong in your analysis of the facts.
I suggest that you consult with a lawyer in private and discuss your objectives 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-Lapin, LLC on the basis of this posting.