USDC S.D. New York, July 3, 2009

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  • Court dismisses putative class action plaintiffs’ claims under the Copyright Act for (1) statutory damages on foreign works that have not been registered with the U.S. Copyright Office (except for certain live broadcasts) and (2) punitive damages.

Plaintiffs are putative class action plaintiffs in a copyright infringement suit brought against YouTube and Google. Defendants moved for judgment on the pleadings dismissing plaintiffs’ claims for statutory damages on foreign works that have not been registered with the U.S. Copyright Office and punitive damages.

Regarding unregistered foreign works, the court held that Section 412 of the Copyright Act clearly prohibits “recovery of statutory damages for each and every work unless the work was registered (a) before the infringement commenced or (b) within three months after its first publication.” According to the court, there is no exception in Section 412 excusing foreign works from the registration requirement.

The court acknowledged that Section 411(a) of the Act, which requires preregistration or registration before any copyright infringement suit may be brought, is limited to U.S. works, and thus allows suits to be brought upon foreign works without registration of them. But the court pointed out that Section 411(a) does not impair the operation of Section 412, which forbids the recovery of statutory damages in any infringement action (except certain actions concerning live broadcasts).

The court rejected plaintiffs’ argument that the Berne Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights require the U.S. to provide statutory damages for unregistered foreign works.

The court then turned to the issue of unregistered foreign works containing live broadcasts. Section 411(c) provides, in part:

In the case of a work consisting of sounds, images, or both, the first fixation of which is made simultaneously with its transmission, the copyright owner may, either before or after such fixation takes place, institute an action for infringement under section 501, fully subject to the remedies [of, among other things, statutory damages], if, in accordance with requirements that the Register of Copyrights shall prescribe by regulation, the copyright owner serves notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring an intention to secure copyright in the work.

The legislative history for the Copyright Act indicates that Section 411(c) is intended to deal with the special situation presented by works that are being transmitted live at the same time they are being fixed in tangible form for the first time, such as live broadcasts of sporting events, concerts, theatrical presentations and news and public affairs programs. According to the court, all foreign works that meet the requirements of Section 411(c) are exempted from the general rule of Section 412, which bars statutory damages for works not timely registered. Although plaintiffs’ complaint did not contain evidence of such notice, the court deemed the complaint amended to include a declaration by plaintiffs’ counsel in which he described notices that were sent to defendants that complied with Section 411(c) relating to live broadcasts, and the court denied defendants’ motion regarding statutory damages as to these works.

Finally, regarding punitive damages, the court unequivocally stated that “there is no circumstance in which punitive damages are available under the Copyright Act of 1976.”