Pattishall IP Blog

February 24, 2010

Court Limits Copyright Statutory Damages to Number of Registrations Owned

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:17 pm

by Ian J. Block, Esq.

The availability of statutory damages in copyright cases provides plaintiffs with significant leverage in litigation.  Statutory damages under the Copyright Act can rise as high as $150,000 per infringed work if the infringement is willful.  Assigning damages based on the number of infringed works is different from setting damages based on each act of infringement.  Thus, when a defendant makes multiple infringing copies of a single work the plaintiff is entitled to one statutory award for the infringement, although the plaintiff may choose to receive actual damages instead.  Questions arise, however, regarding what constitutes a “work” when calculating statutory damages, both because significant differences in potential damages can hinge on the answer and because the Copyright Act does not define “work.” (more…)

February 11, 2010

Owners of copyright in a foreign work must obtain U.S. copyright registration in order to seek statutory damages/attorneys’ fees in U.S. courts

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:22 pm

by Thad Chaloemtiarana, Trademark Attorney

Article Five of the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) provides that “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality”.  In the Berne Convention Implementation Act of 1988 (the “Implementation Act”), Congress brought United States copyright law into conformity with the standards of the Berne Convention.  Among other things, the Implementation Act released foreign (but not U.S.) claimants from the obligation to register their foreign copyrights as a prerequisite to enforcing them in United States courts.  The Implementation Act, however, did not amend Section 412 of the Copyright Act of 1976 which conditions an award of statutory damages or attorneys’ fees on registration of the copyright in the United States.

Does Section 412 of the Copyright Act conflict with Article Five of the Berne Convention, such that it should be pre-empted by the Supremacy Clause of Article VI of the United States Constitution?  In Elsevier B.V. v. UnitedHealth Group Inc., 93 U.S.P.Q.2D 1408 (S.D.N.Y. 2010), the U.S. District Court for the Southern District of New York, following the well-established precedent that the Berne Convention was not self-executing, answered, “No”. (more…)

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