Tag: damages

Damages, such as for infringement

The CCB’s First 2 Determinations

The Copyright Claims Board (CCB) has issued its first two determinations. Here is what they were about and what the CCB did with them.

The United States Copyright Claims Board (CCB), an administrative tribunal that has been established for the purposes of resolving small copyright claims, began accepting case filings on June 16, 2022. Eight months later, it has issued its first two determinations. Here is a summary of them.

Flores v. Mitrakos, 22-CCB-0035

This was a DMCA case.

Michael Flores filed the claim against Michael Mitrakos. He alleged that Mitrakos filed a knowingly false takedown notice. The parties negotiated a settlement. On February 3, 2023 they submitted a joint request for a final determination dismissing the proceeding. It included a request to include findings that the respondent submitted false information in a takedown notice, resulting in the wrongful removal of the claimant’s material. The parties also agreed the respondent would inform Google that he was rescinding the takedown notice. The CCB incorporated the parties’ agreement into its final determination.

No damages were sought and the CCB did not award any.

Issued on February 15, 2023, this was the CCB’s first Final Determination. You can read it here.

Oppenheimer v. Prutton, 22-CCB-0045

While Flores v. Mitrakos was the first Final Determination the CCB issued, Oppenheimer v. Prutton was its first Final Determination on the merits. It is also the first copyright infringement case the Board has resolved.

The case involved alleged infringement of a copyright in a photograph. The facts, as reported in the CCB’s Final Determination, are as follows:

David G. Oppenheimer owns the copyright in a photograph he took of a federal building in Oakland, California. He registered the copyright in the photograph on July 29, 2017. On June 4, 2018, he discovered it was being displayed on the business website of attorney Douglas A. Prutton. Prutton admitted reproducing and displaying it without permission. He stated that his adult daughter found it on the Internet and put it on his website, in an effort to help improve his website, and that he removed it in 2019 upon receiving a letter from Oppenheimer objecting to the use. Oppenheimer sought an award of statutory damages for the unauthorized use of the photograph.

Prutton asserted two defenses: fair use and unclean hands.

The asserted defenses

Fair use

A person asserting fair use as a defense must address and discuss four factors: (1) purpose and character of the use; (2) nature of the work; (3) amount and substantiality of the portion copied; and (4) effect on the market for the work. Prutton only addressed the fourth factor. The failure to address the first three factors, the CCB ruled, was fatal to this defense.

Unclean hands

Prutton alleged that Oppenheimer was a copyright troll, earning revenue mostly from copyright litigation rather than from sales or licensing of his works. The CCB ruled that this is not a sufficient basis for a finding of unclean hands.

Damages

The CCB refused to reduce damages to $200 on the basis of “innocent infringement.” The CCB ruled that Prutton should have known the photograph was protected by copyright, emphasizing the fact that he was an attorney.

Oppenheimer requested statutory damages of $30,000. The CCB is limited by statute to awarding no more than $15,000 per work. The Board therefore construed it instead as a request for the maximum amount the Board can award. The CCB declined to award maximum damages.

While the amount of statutory damages does not have to be tied to the amount of actual damage, an award of statutory damages “must bear a plausible relationship to . . . actual damages.” Stockfood Am., Inc. v. Sequoia Wholesale Florist, Inc., 2021 WL 4597080, at *6 (N.D. Cal. June 22, 2021). Oppenheimer did not submit evidence of actual loss.

In the absence of any evidence of actual damage or harm, statutory damages will normally be set at $750 per work infringed. One member of the Board voted to do just that in this case. The other two members, however, believed a small increase from the minimum was justified for various reasons, such as that it was a commercial use and it had lasted for more than a year. The Board ultimately awarded Oppenheimer $1,000 statutory damages.

You can read the CCB’s Final Determination here.

Contact Thomas B. James, attorney

Need help with a CCB claim or defense? Contact Thomas B. James, Minnesota attorney.

What to Know About the New Copyright Claims Board

What could the new Copyright Claims Board (“copyright small claims court”) mean for you? Attorney Thomas James explains.

The Copyright Claims Board is scheduled to begin accepting claims on June 16, 2022. What could this mean for you?

The Purpose of the Copyright Claims Board

Due in large part to the Internet, copyright infringement is rampant. In many cases, however, enforcing copyrights in federal court is prohibitively expensive.

To begin with, there is a $350 filing fee and an additional $52 administrative fee, for a total of $402, just to get a case underway. After that, there will be subpoenas, depositions, witness fees, transcript costs, etc. Moreover, because copyright litigation is complex, litigants usually find it necessary to hire an attorney.  Add these additional expenses to the $402 filing fee, and a copyright owner can be looking at paying thousands of dollars just for a chance at enforcing his or her rights.

Under these circumstances, many infringement victims reasonably conclude that enforcing their rights against an infringer does not make good financial sense. This has been a long-standing problem for copyright owners and licensors. 

Congress enacted the CASE Act of 2020 to address the problem by creating an administrative tribunal that will hear small infringement claims. The new tribunal will have a lower filing fee and is supposed to be simple enough for a person to use without needing a lawyer.

Do you need to worry?

The definitions of copyright and copyright infringement are broad enough that everybody has probably been guilty of it at one time or another. A fair number of people have probably infringed copyrights multiple times. It is possible, for example, for an email message to be protected by copyright, so forwarding it without permission could be infringement. Photographs, memes, music, videos, essays, etc. are all potentially protected by copyright. Copying and sharing them on social media without permission could be infringement.

In some cases, a defense like fair use or implied license might provide some protection. Many people, however, misunderstand these defenses. They often interpret them much more broadly than is warranted.

The main reason copyright owners have not been suing infringers is not that they believe the infringers may have a valid defense. It’s that the cost of litigation has been too high, relative to the amount of damage suffered. The CASE Act is designed to reduce those costs considerably. Consequently, Internet users and other everyday people would be well advised to be a lot more cautious about sharing other people’s content.

Statutory damages

 A lot of people have the misimpression that so long as they are not making a profit from infringing a copyright, they are safe from a lawsuit. This is not true. Neither profit nor intent to profit needs to be proven in order to win a copyright infringement case. A copyright owner does not have to prove actual damage. He or she can request, and be awarded, statutory damages instead. These are damages that are authorized by statute without need for proof that the infringement caused any actual harm.

The CASE Act authorizes the CCB to make an award of up to $15,000 statutory damages per work when a timely registered copyright has been infringed, and up to $7,500 per work when an unregistered one has been infringed. (The total that may be awarded in one proceeding is $30,000.)

Opting out

Because CCB proceedings are voluntary, you have the right to opt out if you are served a CCB claim. The copyright owner is then free to file the claim in federal court. The range of remedies is broader and the amount of damages that may be awarded is higher in federal court.

Deciding whether or not to opt out will require careful consideration of the strength of the claim(s) and defense(s), the likely costs that each side will incur, and the level of exposure to damages and attorney fee awards in each kind of proceeding.

Why everyone should learn about the CCB

If you are a copyright owner, there is a very good chance that people have been infringing it, especially if you have displayed or published it online. The new CCB might make it feasible for you to do something about it even if you do not have the financial resources to file an infringement lawsuit in court.

If, like nearly everybody, you have shared a photograph, drawing, meme, music, recording, story, article, commentary, or email message that someone else created, without their permission, there is a chance that somebody may file a CCB claim against you.

If you are an attorney, you should know about all available avenues of recourse for copyright owners whose works have been infringed so that you can advise and represent your clients competently. Because more everyday people are likely to sue and be sued for copyright infringement than ever before, even attorneys whose primary area of practice is not intellectual property law should familiarize themselves with this new agency and the claim process.

Stay tuned for updates on the progress of the new Copyright Claims Board. 

Need help with a copyright matter? Get in touch.

Copyright Claims Board Begins Soon

The US Copyright Office has announced that the Copyright Claims Board will begin taking claims on June 16, 2022.

 

As announced in What to Know About the New CCB, a new copyright “small claims court” is coming soon. The U.S. Copyright Office has announced that the new Copyright Claims Board (CCB) will begin accepting claim filings on June 16, 2022.

Dubbed the “copyright small claims court,” the new administrative tribunal is a voluntary process for claims totaling up to $30,000. Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to file or attend a hearing.

A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead. The statute of limitations period is tolled while a CCB claim is pending.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses a deadline, or otherwise fails to comply with board rules.

Although registration is required before a final determination can be issued, it is not necessary to wait until an application has been either granted or denied before filing a claim. It is enough if an application to register the copyright has been filed.

Limitation on remedies

Total damages awarded cannot exceed $30,000. A claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other. A respondent may file a counterclaim, provided it is related to the original claim.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, review is available through:

  • Request for CCB reconsideration
  • Request for review by the Register of Copyrights

Judicial review is available only under limited circumstances.

Enforcement

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Registration, forms and handbook

The CCB promises to have forms, handbook and the ability to begin registering users publicly available by June 16.

Update: The CCB is open for business. 

Need help with a copyright matter? Contact attorney Thomas James.

Copyright Claims Board (CCB) Update

The CASE Act of 2020 establishes a Copyright Claims Board (CCB). Attorney Tom James explains what the CCB is and what it will do.

by Tom James, Minnesota attorney

In December 2020, Congress passed the Copyright Alternative in Small-Claims Enforcement Act of 2020. More commonly known as the CASE Act, it directs the Copyright Office to establish a Copyright Claims Board (CCB). The CCB is a three-member board within the Copyright Office. It is empowered to hear and decide copyright infringement claims amounting to $30,000 or less. Although the CCB was expected to be up and running sooner, there have been some delays. 

CCB staffing

The Copyright Office has nearly completed all of the steps needed to be undertaken in order to implement the CASE Act. Copyright claims officers have been selected. Attorney-advisors, a program specialist, and a paralegal have been selected.

Rulemaking

The Office published a Final Rule on August 18, 2021, with a Clarification published April 22, 2022.

A final rule for small claims procedures for library and archive opt-outs and class actions was published on March 9, 2022.

A final rule on initiation of proceedings and related procedures was published on March 25, 2022.

A final rule on law student representatives and business entity representation was published on April 8, 2022.

The comment period has closed for a final rule on active proceedings on evidence.

The CCB is expected to be up and running in June, 2022.

What the CCB will look like

The new CCB is a voluntary process for claims totaling up to $30,000. Claimants may elect to file claims in federal court instead if they prefer.

Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to the District of Columbia in order to file or defend against a claim.

Proceedings will be presided over by three judges appointed by the Librarian of Congress.

The statute of limitations (normally three years) applies to claims filed with the CCB in the same way it applies to court proceedings.

Again, the proceeding is voluntary. A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses deadline, or otherwise fails to comply with board rules.

Registration

One major advantage of the new CCB is that an infringement claim may be filed even if the Copyright Office has not issued a registration certificate yet. In order to file a claim, however, you must have submitted an application to register the work, either prior to filing the infringement claim or simultaneously with filing the CCB claim.

If your registration application is refused, the CCB will dismiss your claim without prejudice. This means you may still file the claim in federal court.

This is different from the rule that applies when filing a claim initially in federal court. A claim of infringement of a U.S. work normally may not be filed in federal court until after the U.S. Copyright Office has either issued a registration certificate or officially refused to issue a registration.

Available remedies

Total damages awarded cannot exceed $30,000. As in a court filing, the claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, you have several options:

  • Request CCB reconsideration
  • Seek review by the Register of Copyrights
  • Request a federal district court to reverse or correct the CCB determination (only possible in certain circumstances.)

Enforcement of CCB decisions

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Update: The first two CCB determinations have been issued. 

Need help with a copyright matter? Contact attorney Thomas James.

Copyright as Killjoy: Can You Be Sued For Sharing a Joke?

Take my joke.
Please.
I could use the statutory damages.

Take my joke.

Please.

I could use the statutory damages

by Thomas James, Law Office of Tom James

 

You might have noticed that Spotify has removed a lot of comedy performances recently. You might be wondering what is going on. Did Jim Gaffigan offend someone? Are Kevin Hart and John Mulaney defecting to form an underground comedy railroad with Dave Chappelle? No, it isn’t either of those things. Yes, somebody probably was offended, but that is not the reason behind Spotify’s decision. It’s copyright.

The problem arises from the fact that when a company licenses the right to share recorded performances, it is really licensing the rights in at least two different works: the sound recording and the underlying composition. The performance and the thing performed. When a person writes a song, he or she owns a copyright in the composition. If someone makes an authorized recording of a performance of it, then that person owns a copyright in the sound recording. The songwriter owns the copyright in the music; the producer and performing artists own copyright in the sound recording.

In the music world, different agencies manage the licensing of these two kinds of copyrights. SoundExchange manages a lot of the licensing of sound recordings; agencies like ASCAP and BMI handle the licensing of musical compositions. Historically, performing rights organizations like ASCAP and BMI have focused on music. They have not collected royalties on behalf of spoken word creators. Recently, however, new organizations have sprung up to fill this need. One of them is Spoken Giants. The organization reportedly has acquired an impressive roster of clients – Jeff Foxworthy, Lewis Black, Patton Oswald, Tom Segura, the estate of Don Rickles. According to their website, the company represents tens of thousands of works.

Spotify has removed a lot of spoken word content because an impasse has been reached in negotiations over spoken word copyright licensing. The Copyright Royalties Board, pursuant to a consent decree, sets songwriter royalty rates for various kinds of uses of musical compositions, which agencies like ASCAP and BMI use when administering music licenses. Until recently, however, no one has gone to bat for writers of spoken word performances. There are no governmentally established royalty rates for them. They must be privately negotiated. Spotify has pulled many spoken word performances from its offerings because a negotiated agreement has not been reached yet.

Should your dad be shaking in his boots?

The U.S. Copyright Act allows for the recovery of statutory damages even if no actual damage can be proven to have resulted from an infringement. Liability for infringement can exist even if no one profited from it or intended to profit from it. This would seem to make everyone potentially liable for repeating a joke they heard someone else tell. Is it true? Can a person be sued for repeating a joke someone else made up?

Copyright protection for jokes

In theory, it is possible for a joke, or at least a particular telling of it, to be protected by copyright. There are some important limitations on liability, however.

Fixation

First, of course, there can be no infringement if there is no copyright. It must be established that the joke is, in fact, protected by copyright. A copyright in a work does not exist unless and until the work is fixed in a tangible medium. If you hear someone telling a joke that nobody has ever recorded or written down, and the telling of the joke was not recorded, either, then no copyright exists. No copyright, no infringement.

Originality and creativity

Copyrights cannot be acquired by copying someone else’s work. If, for example, Paula, without securing an assignment of the copyright or at least a performance license, repeats a joke she read in a book, and Henny hears and repeats it, Paula should not win if she sues Henny for infringement. The owner of the copyright in the book might have a claim, but Paula would not.

The independent creation doctrine is another obstacle to copyright protection for jokes. If two people independently create the same joke, and neither one copied the other – not even subconsciously – then they each own a copyright and neither one is guilty of infringing the other.

Public domain

If a joke is so old that the copyright has expired, then it is in the public domain. In that case, anyone can use it any way they want. Currently, the term of most (not all, but most) copyrights is 70 years plus the life of the author. In many cases, this would easily put your dad in the clear.

By the way, if you are looking for some good medieval humor, try Poggio Barcciolini’s Facetiae.

Expression vs. facts

Copyright only protects expression; it does not protect facts or information. Consequently, the facts stated in a joke, if any, are not protected by copyright. For example, consider the joke, “There is a scale that measures not only weight but also body fat, bone mass, and water percentage. Now you can choose four different reasons to be ashamed.” Most of that joke conveys factual information. That part is not protected by copyright. The only question is whether the punch line is.

Idea vs. expression

Since copyright only protects expression, it makes sense that an idea also does not get copyright protection.

The distinction between an idea and an expression might be the biggest obstacle to copyright protection of a joke there is. A situation with humorous implications is considered an unprotectable idea. This was established in the case of Nichols v. Universal Pictures Corp, 45 F.2d 119 (2d Cir. 1930). There, a writer sued a production company for creating a comedy show involving a Jewish man marrying an Irish-Catholic woman, with characters demonstrating stereotypical characteristics of members of those demographic groups. Although the writer had created a story based on the same premise, he lost the case. The court ruled that the ideas on which a story was based are not protected by copyright.

This can present a formidable problem for comedy writers. Even if they come up with a great idea for a joke or comedy routine, they will not be able to prevent other comedians from using it, so long as these other comedians come up with sufficiently different ways of telling it.

The idea-vs-expression dichotomy is made even more difficult to surmount by virtue of the merger doctrine. This is a legal principle that says that if there are limited ways to express an idea, the idea will merge with the expression of the idea and the expression will receive no copyright protection. The classic examples are a recipe or a set of rules for a game. A recipe is an idea. A set of rules for a game is also an idea. Therefore, to the extent a recipe merely states what is needed to know to make the concoction, it is not protected by copyright.

To the extent a rules list merely explains how the game is played, it is not protected by copyright. In these cases, the idea is said to have “merged” with the expression, so the expression does not receive copyright protection. The only expression in a recipe or a set of game rules that gets copyright protection is that which is not necessary to the preparation of the dish or the playing of the game. (This probably explains why so many recipe publishers include extraneous anecdotes and fluff in them.)

You can imagine how this could present a problem for a gag-writer. Jokes express ideas, hopefully amusing ones. For this reason, a bare-bones pun, or a one-liner like the ones that Henny Youngman and Rodney Dangerfield would tell, are less likely to be protected by copyright than are comedy routines that involve a lot of extraneous detail.

Fair use

The Fair Use Doctrine is a defense to copyright that may present an obstacle to the enforcement of a copyright in a joke sometimes. In general, the doctrine says that people may use copyrighted material in commentary, reporting, teaching, research, and sometimes other uses, if four broadly worded factors weigh in favor of allowing such use without liability for infringement:

  • The purpose and character of the use
  • The nature of the work
  • The amount and substantiality of the portion copied
  • The effect of the use on the market for the work.

Unfortunately, “fair use” is not a well-defined concept. Courts are not always in agreement about how to balance these factors. Appellate reversals of district judge opinions on the matter are not uncommon.

Epitaph

Just kidding.

Recognizing the rights of comedy writers does not have to mean the death of fun. For one thing, it is important to keep in mind what “infringement” means and what it does not mean. There are lots of uses a person can make of copyrighted material without putting himself or herself at risk of being sued for infringement. If you buy a copyrighted painting or print, you can display it in your home, so long as you do not open your home to the public and you do not charge a fee for your guests to view it. The same is true of a movie on DVD. You can play a DVD recording that you purchased as many times as you want to in your own home, so long as you do not invite the public in and so long as you do not charge a fee.

Similarly, there should be no problem with re-telling a joke to family and friends in private. Although even limited reproduction and distribution of a copyrighted work can result in infringement liability, an unauthorized performance or display only becomes infringement, in the United States, when it is a public one. Re-sharing a joke in a public forum could be a problem, if none of the obstacles to infringement enforcement that I have discussed in this article apply. Re-telling a joke to members of your family or a small circle of friends for no fee, on the other hand, is not likely to get you into hot water.

Not for copyright reasons, anyway.

Read about other non-AI-related legal issues. 

Minnesota attorney Thomas James is a lawyer at the Law Office of Tom James in Cokato, MN. He is the author of several law review articles and books, including E-Commerce Law and Website Law. In his spare time, he likes to look for spare time.