Digital Law Online: Remedies

Exercising any of the exclusive rights of the copyright owner – reproduction, adaptation, distribution, public display, or public performance – without the permission of the copyright owner, or not within one of the exceptions in Sections 107 through 121, infringes the copyright in the work. There are a variety of remedies provided in the Copyright Act. Under Section 502 the court can order that the infringing acts cease, and if there is sufficient evidence of copyright infringement, that order can be issued even before the trial. {FN79: 17 U.S.C. §502} Under Section 503 the court can also order the impoundment of infringing works and the things used to make them, and after the trial can order them destroyed. {FN80: 17 U.S.C. §503} And under Section 509 the court can order the seizure and destruction of infringing works after the trial. {FN81: 17 U.S.C. §509}

II.L.1. Time Limits For Filing Suit

Any infringement action must be brought within three years after the infringement occurs. {FN82: 17 U.S.C. §507(b)} But in many instances, the infringement is of a continuing nature, such as distributing copies or performing the work. For example, consider the making of a large number of infringing copies and distributing them until all the copies have been sold. If it is over three years since the copies were made, the copyright owner can’t sue for infringement of the reproduction right but can sue for infringement of the distribution right if any copies were sold within the previous three years.

However, if the copyright owner acts in such a way as to lead people to believe that he or she will not bring an infringement suit, such as ignoring open infringement for a long time, with no other reason preventing him from bringing suit, a legal principle called “laches” may prevent a later suit. The determination is very fact-intensive, based on the actions (or lack of action) of the copyright owner, the amount of delay, and the prejudice worked against the infringer by the delay.

II.L.2. Damages

The most common remedy for copyright infringement is awarding damages to the copyright owner. Section 504 indicates that owners can receive the actual damages suffered by them plus any profits that the infringer made as the result of the infringement that go beyond the actual damages to the copyright owner. {FN83: 17 U.S.C. §504} But since Congress recognized that in many instances it will be difficult to compute the actual damages, it provided an alternative called “statutory damages” that is available to copyright owners who have registered their copyright within three months of the publication of a work. Statutory damages allow the court to set the damages in a amount between $750 and $30,000 for each work that was infringed. If the infringement was found to be willful, then the statutory damages can go up to $150,000, while if the infringer shows that the infringement was innocent, they can be reduced to $200. A special provision applies to innocent infringers connected with educational institutions, libraries, or public broadcasters, allowing the remission of statutory damages.

II.L.3. Attorney Fees and Costs

Under Section 505, the prevailing party in a copyright infringement suit may ask the court to award him his attorney fees and other costs of the suit. {FN84: 17 U.S.C. §504} This is in contrast to the normal rule in American law, where each side is responsible for its own costs no matter who wins. For copyright owners to ask for attorney fees and costs, they must have registered their copyright within three months of the first publication of the work. This, along with statutory damages, provides a strong incentive for prompt registration, even though registration is not required until just before filing an infringement suit.

II.L.4. Criminal Infringement

While copyright infringement is normally a civil action, meaning that the copyright owner is suing the alleged infringer, it can also be a criminal act, meaning that the United States Government brings the alleged infringer into court. There is nothing that prevents an alleged infringer from being both prosecuted criminally and sued civilly for infringement, although criminal prosecution is often used in cases when the alleged infringer has few assets relative to the damages that have been caused, making civil suit an ineffective remedy for the infringement. And it is important to note that a higher burden of proof is required for criminal copyright infringement – beyond a reasonable doubt, the same as in any other criminal prosecution – than for civil copyright infringement. The copyright owner needs to prove infringement only by a preponderance of the evidence, essentially tipping the scale only slightly toward finding infringement in a civil action.

Section 506 makes a number of things criminal offenses, including fraudulent copyright notices, fraudulent removal of copyright notices, and making false statements in a copyright registration application. {FN85: 17 U.S.C. §506} But it primarily criminalizes copyright infringement when it is done “willfully” and either “for purposes of commercial advantage or private financial gain” or when the infringement exceeds a total retail value of $1,000 within any 180-day period. If the total retail value exceeds $2,500 and ten copies, the crime becomes a felony with the possibility of a $250,000 fine and five years in prison (ten years on a second offense), {FN86: 18 U.S.C. §2319} although the sentencing guidelines require that the retail value be substantially above $2,500 for any prison time, and in the millions to reach the maximum penalty.

Although the copyright statutes do not contain a definition for “willfully,” the term has been given meaning in a number of past court decisions on copyright and other law. At the passage of the latest amendment to the criminal provision, Senator Orrin Hatch, the Chairman of the Senate Committee on the Judiciary, discussed the importance of the willfulness requirement:

I place great store by the “willfulness” requirement in the bill. Although there is on-going debate about what precisely is the “willfulness” standard in the Copyright Act – as the House Report records – I submit that in the LaMacchia context “willful” ought to mean the intent to violate a known legal duty. The Supreme Court has given the term “willful” that construction in numerous cases in the past 25 years . . . As Chairman of the Judiciary Committee, that is the interpretation that I give to this term. Otherwise, I would have objected and not allowed this bill to pass by unanimous consent. Under this standard, then, an educator who in good faith believes that he or she is engaging in a fair use of copyrighted material could not be prosecuted under the bill. . . .

Finally, Mr. President, I would like to point out two areas that are susceptible to interpretation mischief.

First, the bill amends the term “financial gain” as used in the Copyright Act to include “receipt, or expectation of receipt, of anything of value, including receipt of other copyrighted works.” The intent of the change is to hold criminally liable those who do not receive or expect to receive money but who receive tangible value. It would be contrary to the intent of the provision, according to my understanding, if “anything of value” would be so broadly read as to include enhancement of reputation or value remote from the criminal act, such as a job promotion. {FN87: 143 Cong. Rec. S12689-S12690}

[In 2005, Congress added another form of criminal copyright infringement to Section 506, as part of criminalizing the videotaping of a motion picture playing in a theater and then distributing it on the Internet, which had become a significant problem. {FN88: “Artists' Rights and Theft Prevention Act of 2005, or the “ART Act,” part of “Family Entertainment and Copyright Act of 2005,” Pub. L. 109-9, 119 Stat. 220}

Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18, if the infringement was committed-- . . . (C) by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution. {FN89: 17 U.S.C. 506(a)(1)}

There is a problem with this provision. As I discuss in Chapter 3, Section I.B.1.a, the public distribution right covers only the distribution of material objects. And making something “available on a computer network accessible to members of the public,” without more, most certainly doesn’t distribute a material copy anywhere.

It is interesting that this approach was suggested by some of us in 1997 as an alternative to the “No Electronic Theft” Act {FN90: Pub. L. No. 105-147, 111 Stat. 2678, among other things adding subsection (a)(2) to 17 U.S.C. 506} in response to the LaMacchia decision. {FN91: United States v. LaMacchia, 871 F.Supp. 535, 33 USPQ2d 1978 (D. Mass. 1994)} The concern was that it would be difficult to show when the required dollar amount of copies had been made before charging the crime, and it made little sense to wait until enough copies had gone out to stop the infringement. But we also wanted to amend the distribution right to include making the work available to the public, as discussed in Chapter 3, Section I.B.1.f.]