Phoenix business law firm Jaburg Wilk Intellectual Property attorney and author of Protect Your Writing's Maria Crimi Speth presents on copyright litigation.

1. Litigating
Copyright Infringement
Presented By:
Maria Crimi Speth
Jaburg & Wilk, P.C.
© 2014 Jaburg & Wilk, P.C.

2. Legal Rights As Copyright Owner
 Exclusive right to:
– copy
– create derivative works
– distribute
– publicly display
Practice Tip: counsel clients on derivative works

3. Elements of Claim for Infringement
Owner of a valid copyright; and
Defendant copied original elements of the
copyrighted work.
Feist Publications, Inc. v. Rural Telephone
Service Co., Inc., 499 U.S. 340, 361, 111 S.Ct.
1282, 113 L.Ed.2d 358 (1991)

4. Ownership
Copyright in a work vests initially in the author or
authors of the work.
17 U.S.C. §§ 201.
Practice Tip: Investigate originality.

5. Author is the Creator - Except
 Assignment or transfer of the copyright in
writing
Works for Hire
Practice Tip: Assignment must be clear and
unequivocal

6. Works For Hire
 A work prepared by an employee in the scope
of employment
 A work specially commissioned in one of nine
specific categories when there is a written
agreement stating that it is a work for hire
17 U.S.C. §201
Practice Tip: Owners are often not employees

7. Transferring Copyrights
Work for hire
Written assignment of ownership
 Licenses
 Publishing rights
 Involuntary transfers are void
17 U.S.C. §201

8. Transferring Copyrights
Transfers should be recorded with the copyright
office.
Inconsistent transfers are governed by 17 U.S.C.
§205

9. Presumptions
Registration of the copyright entitles the
registrant to a “rebuttable presumption of
originality” for the Works.
Ets–Hokin v. Skyy Spirits, Inc., 225 F.3d 1068,
1075 (9th Cir.2000).

10. Copyrightable
There must be at least a minimal degree of
creativity.
Feist Publications, Inc. v. Rural Telephone
Service Co., Inc., 499 U.S. 340, 361, 111 S.Ct.
1282, 113 L.Ed.2d 358 (1991)

11. Merger Doctrine
Where the work can be expressed only in one
way, work’s idea and expression “merge.”

12. Copied Original
Elements of the Work
Elements – indicates any part
A showing that the defendant “unlawfully
appropriated protected portions of the
copyrighted work.
La Resolana Architects, PA v. Reno, Inc., 555
F.3d 1171, 1178 (10th Cir. 2009)

13. Proving Copying
Direct Evidence
– Admission
– Witness

14. Proving Copying
“A plaintiff can indirectly prove copying by
establishing that Defendants had access to the
copyrighted work and that there are probative
similarities between the copyrighted material and
the allegedly copied material.”
La Resolana Architects, PA v. Reno, Inc., 555
F.3d 1171, 1178 (10th Cir. 2009)

15. Proving Copying
“The question of whether Defendants infringed
on Plaintiff's copyright turns on whether
Defendants' product is substantially similar to the
protectable elements of Plaintiff's product.”
Country Kids 'N City Slicks, Inc. v. Sheen, 77
F.3d 1280, 1284 (10th Cir. 1996)

16. Degree of Access
A greater showing of access requires less of a
showing of substantial similarity.
Sid & Marty Krofft Television Prods., Inc. v.
McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.
1977).

17. Proving Access
A plaintiff may meet the initial burden of
establishing access “by showing that the
defendant had a reasonable opportunity to view
or [an] opportunity to copy the allegedly infringed
work.
La Resolana Architects, PA v. Reno, Inc., 555
F.3d 1171, 1178 (10th Cir. 2009)

18. Proving similarity –
in light of the merger doctrine
Where the protected work and the accused work
express the same idea, the similarity that
inevitably stems solely from the commonality of
the subject matter is not proof of unlawful
copying.
Country Kids 'N City Slicks, Inc. v. Sheen, 77
F.3d 1280, 1285 (10th Cir. 1996)

19. Comparing Works
Filter out the unprotectable elements of a work and focus
on protectable portions of the original work.
“Even if the similar material is quantitatively small, if it is
qualitatively important, the trier of fact may properly find
substantial similarity.”
Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280,
1287 (10th Cir. 1996)

20. Injunctive Relief
There is a presumption of irreparable injury at the
preliminary injunction stage once a copyright
infringement plaintiff has demonstrated a
likelihood of success on the merits.
Country Kids 'N City Slicks, Inc. v. Sheen, 77
F.3d 1280, 1288-89 (10th Cir. 1996)

21. Is the Presumption Gone?
eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006)
Injunction in a patent case may issue only in
accordance with “traditional equitable principles.”
Warned against reliance on presumptions or
categorical rules. Id. at 393, 126 S.Ct. 1837.

22. Is the Presumption Gone?
eBay has been applied to copyright cases:
Perfect 10, Inc. v. Google, Inc., 653 F.3d 976,
981 (9th Cir.2011)
Salinger v. Colting, 607 F.3d 68, 76–78 (2d
Cir.2010)
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d
1142, 1149 (Fed. Cir. 2011)

23. Indirect Liability
Both contributory and vicarious infringements
require someone to have directly infringed the
copyright.
La Resolana Architects, PA v. Reno, Inc., 555
F.3d 1171, 1181 (10th Cir. 2009)
Practice tip: When in doubt, allege all three

24. Vicarious Infringement
Vicarious infringement’s roots lie in the agency
principles of respondeat superior.
The right and ability to supervise the infringing
conduct
a direct financial interest in the infringing
activity.
Perfect 10, Inc. v. Visa Int'l Serv. Ass'n, 494 F.3d
788, 802 (9th Cir. 2007)

25. Contributory Infringement
A person is liable for copyright infringement by
another if the person knows or should have
known of the infringing activity and [induces]
[causes] [or] [materially contributes to] the
activity.]
Ninth Circuit Jury Instructions

26. Damages
 Actual damages
 Statutory damages
17 U.S.C. §504

27. Actual Damages
The copyright owner is entitled to recover the
actual damages suffered by him or her as a
result of the infringement, and any profits of the
infringer that are attributable to the infringement
and are not taken into account in computing the
actual damages.
17 U.S.C. §504

28. Actual Damages
In establishing the infringer’s profits, the
copyright owner is required to present proof only
of the infringer’s gross revenue, and the infringer
is required to prove his or her deductible
expenses and the elements of profit attributable
to factors other than the copyrighted work.
17 U.S.C. §504

29. Copyright Registration
www.copyright.gov
 Must be registered to file a lawsuit
 Presumption that you are the owner
 Statutory damages
 Attorney fees

30. Statutory Damages
$750 to $30,000 per work infringed
Up to $150,000 if copyright owner proves willful
Down to $200 if infringer proves he was not aware and no
reasons to believe his acts constituted infringement
17 U.S.C. §504
Practice Tip: Don’t combine works in registration

31. Fair Use Defense to Infringement
–Can not in any way interfere with author’s ability to
benefit from the work
–Small portions
–Educational Purposes
–Parody

32. On-line Issues
 DMCA
 Agent for service of notices

33. Litigating
Copyright Infringement
Presented By:
Maria Crimi Speth
Jaburg & Wilk, P.C.
© 2014 Jaburg & Wilk, P.C.