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Enforcement

Jurisdiction

Which courts are empowered to hear copyright disputes?

Generally, US copyright laws are enforced by the courts through civil lawsuits initiated by the owner of the copyright of their exclusive licensee. The federal government may also initiate a criminal copyright enforcement action against counterfeiting at the request of the copyright owner. There are no specialised copyright courts in the United States. Federal courts have jurisdiction under the Copyright Act; however, if a claim also involves state law issues such as breach of contract, state courts may have jurisdiction over the case. The federal courts have more experience and expertise with copyright law than state courts. This is particularly true in the jurisdictions that cover locales where copyright disputes are frequently brought, such as the District Court for the Southern District of New York, the District Court for the Central District of California and the District Court for the Northern District of California.

Infringement

What acts constitute copyright infringement in your jurisdiction (including with regard to online and digital content)?

Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed or made into a derivative work without the permission of the copyright owner.

Is contributory infringement recognised in your jurisdiction (including liability for internet services providers and other online/digital actors)?

A person or organisation can be sued for inducing or contributing to copyright infringement through the doctrine of secondary liability. Secondary liability for copyright infringement is not statutorily defined in the Copyright Act, but is embodied in case law. Various actions can incur secondary liability, which is divided by courts into two categories:

  • vicarious liability, when the secondary party has the ability to supervise the infringing conduct and directly benefits financially from the infringement; and
  • contributory infringement, when the secondary party has knowledge or reason to know of the infringement and contributes to, authorises or induces the infringement.

Actions

What actions can be taken against copyright infringement (eg, civil, criminal or administrative), and what are the key features and requirements of each?

The owner of a copyright may initiate civil lawsuits in the US courts. The federal government may, at its discretion, also initiate a criminal copyright enforcement action against counterfeiting at the request of the copyright owner.

Under the Digital Millennium Copyright Act a content owner has the right to process a takedown notice against a website owner and/or online service provider (eg, an internet service provider) if the content owner’s property is found online without its permission. The content will generally be removed; however, the poster of the content will also be given an opportunity to have the content put back.

Who can file a copyright infringement action?

Any owner or exclusive licensee of a right reserved exclusively to the copyright owner under Section 106 of the Copyright Act can sue for copyright infringement. Because a work has many exclusive rights, it is possible that several people could have the right to sue for copyright infringement based on certain rights.

What is the statute of limitations for filing infringement actions?

The statute of limitations in the Copyright Act is three years after the claim accrued for civil actions, and five years after the claim accrued for criminal actions. However, courts have applied different standards to determine whether continued infringement actions fall under the statute of limitations and whether a cause accrues at the time of discovery or at the time of injury.

What is the usual timeframe for infringement actions?

The timeframe for an infringement action depends on the relief that the copyright owner is seeking. For example, preliminary injunctive relief may be obtained in a matter of weeks or months and actions for permanent injunctive relief or damages may take one or more years, depending on factors such as discovery issues, the court’s workload and whether the case goes to trial.

What are the typical costs incurred in infringement actions?

The cost can vary greatly, but generally a copyright proceeding can cost more than $500,000 through trial, depending on discovery costs.

How are attorneys’ fees handled? Can they be claimed in infringement actions?

Both costs and attorneys’ fees are available for copyright infringement. Reasonable attorneys’ fees may be awarded at the court’s discretion if the work was timely registered with the Copyright Office.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Preliminary relief is available through preliminary injunctions and temporary restraining orders (TROs). When deciding whether to issue a preliminary injunction, there are several tests that courts may use. All available tests take into account such factors as:

  • whether the plaintiff will succeed on the merits;
  • whether the plaintiff will suffer irreparable harm without an injunction;
  • whether the balance of hardships in issuing or not issuing the injunction is in favour of the plaintiff or defendant; and
  • whether the injunction would disserve the public interest.

Courts issue TROs only for the short periods during which they are deliberating the merits of a preliminary injunction. The factors are the same as for preliminary injunctions; however, because they are issued without the hearing and deliberation typical for a preliminary injunction, the burden is greater on the plaintiff to show an irreparable injury if the TRO is not issued.

Remedies

What remedies are available to owners of infringed copyrights?

Final remedies can include:

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

Customs enforcement

What customs enforcement measures are available to halt the import or export of pirated works?

If the copyright owner has registered the work with the Copyright Office, a registered copyright owner can record its works with US Customs and Border Protection (CBP). CBP will then stop pirated products at the border and prevent them from entering the United States (although CBP will not stop grey-market goods).

Defence

What defences are available to infringers?

The doctrines of fair use and fair dealing limit the rights of a copyright holder. Fair use is codified in Section 107 of the Copyright Act. Under the fair-use doctrine of the Copyright Act, it is permissible to use limited portions of a work (eg, quotations) for purposes such as commentary, criticism, news reporting and scholarly reports. Courts weigh four non-exclusive factors in determining whether a use is fair use:

  • the purpose and character of the use (ie, whether the use is ‘transformative’ in nature);
  • the nature of the copyrighted work;
  • the amount and substantiality of the portion taken; and
  • the effect of the use upon the potential market for the copyrighted work.

Courts may adapt the factors to particular situations on a case-by-case basis and judges have a great deal of discretion when making a fair-use determination. The outcome of any given question of fair use is therefore difficult to predict.

US copyright law gives copyright owners the exclusive right to distribute copies. However, under a principle known as the ‘first sale doctrine’, the owner of a lawfully made copy of a copyrighted work may sell or otherwise dispose of possession of that particular copy, without the permission or authority of the copyright owner (17 USC § 109).

Alleged infringers may also argue that the work in question is not eligible for protection because it lacked sufficient creativity for copyright protection or that it lacked copyright protection because, for example, it was uncopyrightable under the merger doctrine, in the public domain or was a scène à faire.

Appeal

What is the appeal procedure for infringement decisions?

A defeated party, in either the main proceedings or preliminary injunction proceedings, can appeal as a matter of right to the court of appeals for the circuit in which the district court resides, provided that the defeated party files a proper notice of appeal, described in Rule 3 of the Rules of Appellate Procedure. However, appellate courts may overturn a trial court’s finding of fact only when the finding was “clearly erroneous”. Findings of law are reviewed de novo. After the court of appeals hears a case and makes a ruling, either party may appeal to the Supreme Court by filing a petition for a writ of certiorari. These petitions are granted rarely (only in 1% to 2% of cases).

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