Copyright infringement and remedies

Infringing acts

What constitutes copyright infringement?

Copyright infringement occurs when a party violates any of the copyright owner’s exclusive rights described in question 7. Assuming ownership of a valid copyright and no applicable authorisation, infringement requires both of the following:

  • the alleged infringer, as a factual matter, copied from the copyright owner’s work in the alleged infringer’s activities of a type that implicates the copyright owner’s exclusive rights described in question 7 (eg, reproduction, public performance); and
  • the alleged infringer appropriated enough of the copyright owner’s original expression to give rise to liability.

Application of these requirements in any particular case can vary widely depending on the nature of the defendant’s activity. In a traditional case focused on a single work, where the defendant did not copy the plaintiff’s work literally or in its entirety, there may be a substantial factual question as to whether the defendant even knew of the plaintiff’s work, and even assuming the fact of copying, as to whether the defendant copied a sufficient amount of the plaintiff’s work to consider the works ‘substantially similar’. In a case involving the legality of an unlicensed online service, it is typically not disputed that the plaintiff’s works were used in their entirety; the questions typically are, instead, whether the service is of a type that implicates the copyright owner’s exclusive rights and whether the service provider is legally responsible for the activity.

Vicarious and contributory liability

Does secondary liability exist for indirect copyright infringement? What actions incur such liability?

Secondary liability for indirect copyright infringement has been established by case law, although it is not specifically prescribed by statute. Secondary liability can be found under several theories:

  • vicarious liability, when the defendant has the ability to supervise the infringing conduct, and benefits financially from the infringement;
  • contributory infringement, when the defendant has knowledge or reason to know of the infringement, and contributes to, authorises or induces the infringement; and
  • inducement as discussed in the Supreme Court’s Grokster decision, when the defendant acts with the object of promoting infringement, as shown by clear expression or other affirmative steps taken to foster infringement.
Available remedies

What remedies are available against a copyright infringer?

Remedies for copyright infringement can include:

  • payment to the copyright owner of any profits the infringer received and of any losses suffered by the copyright owner, or ‘statutory damages’ as an alternative to actual profits and losses;
  • a court order restraining the infringer from continuing the infringing activity;
  • confiscation and destruction of the infringing items; and
  • attorneys’ fees.
Limitation period

Is there a time limit for seeking remedies?

The statute of limitations for bringing a civil copyright infringement claim is three years (and five years for criminal actions). It is measured from the time the claim accrued. In most courts, a claim is considered to accrue at the time the plaintiff knew or had sufficient reason to know that the infringement occurred. However, some courts may view a claim as accruing at the time the infringement occurred. If, at the time of suit, the infringement has been ongoing for more than three years since the claim accrued, the copyright owner is able to pursue remedies for the infringements occurring within the past three years. However, where the essence of a copyright claim is a dispute concerning ownership of the copyright, courts have rejected the assertion of an ongoing wrong and have dismissed the claim if it was brought more than three years after it accrued.

Monetary damages

Are monetary damages available for copyright infringement?

Monetary damages are available for copyright infringement. A party found liable for copyright infringement may be found liable for either the copyright owner’s actual damages and any additional profits of the infringer, or statutory damages, as provided by the Copyright Act. However, statutory damages are only available if registration for the infringed work was obtained within certain time requirements.

Attorneys’ fees and costs

Can attorneys’ fees and costs be claimed in an action for copyright infringement?

Both costs and attorneys’ fees can be claimed in a copyright infringement action. They may be awarded to a prevailing party at the court’s discretion if the work was registered with the US Copyright Office within certain time requirements.

Criminal enforcement

Are there criminal copyright provisions? What are they?

The Copyright Act has criminal provisions. It is a criminal offence to wilfully infringe a copyright if the infringement was committed:

  • for either commercial advantage or private financial gain;
  • by the reproduction or distribution, including by electronic means, during a 180-day period, of one or more copies or phonographic records of one or more copyrighted works, which have a total retail value of more than US$1,000; or
  • 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.

The Copyright Act specifies various additional criminal offences:

  • placing a fraudulent copyright notice on any article, or publicly distributing or importing for public distribution any article bearing such fraudulent notice;
  • removing or altering any notice of copyright appearing on a copy of a copyrighted work with fraudulent intent;
  • knowingly making a false representation of a material fact in an application for copyright registration, or in any written statement filed in connection with the application; and
  • wilfully and for purposes of commercial advantage or private financial gain violating the provisions of the Act concerning circumvention of technological protection measures or those concerning protecting the integrity of copyright management information (see question 3).
Online infringement

Are there any specific liabilities, remedies or defences for online copyright infringement?

See question 3.

Prevention measures

How may copyright infringement be prevented?

Copyright owners in the US employ a mix of strategies to control copyright infringement, including:

  • discouraging infringement by applying to their works a statutory copyright notice and sometimes other warnings against infringement, and by registering their works with the Copyright Office;
  • employing technological protection measures to frustrate infringement;
  • recording their works with US Customs and Border Protection, as described in question 2, to try to keep infringing copies out of the US market;
  • policing the market to identify infringements, including sometimes by hiring specialised contractors to identify online infringements;
  • invoking statutory or informal notice and takedown procedures to remove infringing material from online services;
  • sending ‘cease-and-desist’ letters demanding that infringers stop infringing activity;
  • bringing civil actions to pursue the remedies described in question 39; and
  • in appropriate circumstances (see question 43), working with law enforcement authorities concerning possible criminal enforcement.

Trade associations and collecting societies representing copyright owners also take various measures on a collective basis to control infringement, including:

  • supporting programmes to educate and inform the public concerning copyright compliance and legitimate sources of copyrighted material;
  • operating telephone ‘tip lines’ and investigating infringements;
  • facilitating collective enforcement action; and
  • working with US government trade officials to resolve significant infringement issues abroad.