Copyright Infringement in California

What are the requirements for copyright protection?

Copyright is a form of intellectual property that applies to original works of authorship that are fixed in a tangible medium.  Under the U.S. Copyright Act, an original work is one that is independently created by an individual and involves at least some degree of originality.  A work is considered fixed in a tangible medium when, under the authority of the author, “it is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated.”  For example, a literary work is “fixed” when it is written down.  Music is “fixed” when its musical composition and lyrics are written down, or when the instrumental and vocal performances are recorded.  Typical copyrighted works include literary, musical and dramatic works, motion pictures and sound recordings.  Works that appear solely online are also included.

Are there benefits to copyright registration?

A work automatically receives copyright protection upon being fixed in a tangible form – no registration is required.  However, there are a variety of benefits to registering a copyright with the U.S. Copyright Office, including the ability to sue for infringement of the work and to obtain statutory damages and attorneys’ fees.  Copyright registration also serves as evidence of the validity of the copyright, which, as discussed below, is necessary in an infringement action.

What is the work for hire doctrine?

The owner of the copyright is typically the author or creator of the work.  However, an exception to this is the work-made-for-hire doctrine, which provides that the creator does not own the copyright to a work when certain requirements are met.  Importantly, California has strict categorizations for independent contractors and employees that must be taken into account when creating works-made-for-hire.

Under Section 101 of the Copyright Act, a work-made-for-hire is either:

• A work prepared by an employee within the scope of employment; or
• A work specially ordered or commissioned, provided however, that the work falls into one of nine categories of works listed in the statute and the parties expressly agree in a written instrument signed by them that the work is considered a work-made-for-hire.

Are certain works ineligible for copyright protection?

Copyrights only protect original expressions of ideas and information.  As a result, techniques, facts, concepts or ideas alone cannot be copyrighted.  Works that compile information that is commonly available and contain no originality are also not copyrightable.  However, ideas may be protected under contract law.  Lawsuits in this context often arise in the entertainment and technology industries but can be challenging to prove.  Additionally, titles, names, short phrases and slogans are not eligible for copyright protection but may be protected under trademark law. 

How can a party prove copyright infringement?

Copyright grants the owner an exclusive legal right to determine when and under what conditions an original work can be used by others.  The copyright owner has the following exclusive rights:

• the right to reproduce the work;
• the right to prepare derivative works;
• the right to distribute copies of the work to the public;
• the right to perform the copyrighted work publicly; and
• the right to display the copyrighted work publicly.

An individual who uses copyrighted material without permission, violating any of the above exclusive rights of the owner, may be liable for copyright infringement.  In order to prove infringement in court, the plaintiff must show that they are either the owner of a valid copyright in the work or that they have the legal authority to bring a lawsuit and that the defendant actually copied the copyrighted work.

A copyright registration is evidence of ownership.  Courts have held that registration before, or within five years of publication of a work, establishes a presumption of ownership, that then shifts the burden of proof of ownership to any party who is challenging said ownership.

Proof that the defendant copied the work typically involves showing that the defendant had access to the plaintiff’s work and that the defendant’s material is substantially similar to the copyrighted work.

Are there defenses against a copyright infringement claim?

There are several defenses available to a copyright infringement claim.  If a defendant succeeds in proving a defense, that defendant will not be liable for infringement.  

Fair use is the defense most commonly used.  The fair use doctrine allows a party to use copyrighted material for certain purposes deemed beneficial to the public interest, such as criticism, news reporting, teaching and research.  Courts weigh the following four factors in determining whether a use constitutes fair use:

• the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• the nature of the copyrighted work;
• the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use upon the potential market for or value of the copyrighted work.

Independent creation is another defense to infringement.  In many cases, there is an inference that the defendant infringed on the plaintiff’s work based on substantial similarities between the two works and a showing that the defendant had access to the plaintiff’s work.  However, a defendant can rebut this inference by showing that they independently created the work and did not copy it.  This requires evidence of the defendant’s creative process, such as prior drafts and notes.

The principle of scènes à faire may also be a defense.  This defense arises when certain elements of a work are customary to the genre of the work and, as with a general idea, are not protectable.  Some examples of this include a spy novel that might employ stereotypical character types, a Western film that includes a cowboy and an outlaw or other commonly used scenarios.

What remedies are available if I successfully prove copyright infringement?

Damages

A copyright owner is entitled to recover either their actual damages, including any profits the infringer made, or statutory damages.  Statutory damages are between $750 to $30,000 per infringed upon work, unless the copyright owner can show that infringement was committed willfully, where the damages are higher.  In instances of willful infringement, the owner can be awarded damages up to $150,000 per work.  Willful infringement may be shown with evidence that the infringer removed a copyright notice when publishing the copyrighted work or failed to remove or retract the content after being notified that it was infringing.  Further, successful copyright infringement plaintiffs in California also have the opportunity to be awarded more monetary damages than other states would grant.

Attorneys’ Fees

A copyright owner may also be awarded their reasonable attorney’s fees if they prevail in litigation.

Equitable remedies

A court can also issue an injunction against an infringer ordering him or her to cease infringing as well as seize infringing goods.

Conclusion 

The Internet has made copyright infringement more prevalent and easier to identify.  Owners should protect their interests by registering their works with the U.S. Copyright Office and diligently enforcing their rights.  Those who use copyrighted material must ensure they have proper permission to avoid liability.  Consult an experienced intellectual property attorney for assistance with copyright matters.

Romano Law can provide guidance on copyright infringement in New York, California and Florida.

Photo by Markus Winkler on Unsplash