Contents


What is Infringement?

Who Can Sue?

Where to Sue?

Proving Infringement

Ownership

Access

Substantial Similarity

Liability for Infringement

Contributory Infringement

Vicarious Infringement

Resolving Infringement Without Litigation

Additional Materials

COPYRIGHT

 

INFRINGEMENT


What is Copyright Infringement?

As discussed in Unit #6, copyright owners have certain exclusive rights which, subject to some limitations, cannot be exercised by anybody else without the copyright owner’s permission. It is these rights that give copyright owners the ability to control how their works are used (through licensing) and, in many circumstances, to profit from the use of their works by others. Generally, when someone other than the copyright owner exercises any of the these rights without permission, the copyright has been infringed or violated. According to section 501 of the Copyright Act: "Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 or of the author as provided in section 106(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be." Consequently, copyright infringement can occur when copyrighted works such as movies, music, books, paintings, and computer software are reproduced or distributed (including digital distribution over the Internet) without permission from the copyright owner. Infringement can also occur when certain copyrighted works (movies, plays, music, etc.) are publicly performed or when other types of works (paintings, sculpture, photographs, etc.) are publicly displayed without permission.

It is important to understand that not all copying from copyrighted works constitutes infringement. Some parts of copyrighted works can be copied legally without the copyright owner's permission. For instance, ideas contained in a copyrighted work can be copied since ideas are not protected by copyright. However, the line between permissible copying and copyright infringement is not always clear.

Infringement is the intellectual property equivalent of stealing physical property (although not exactly the same) and as we all know (hopefully at least), it is wrong to steal. Sometimes the term "piracy" is used to describe copyright infringement, usually in the context of mass distribution of copyrighted works for profit. However, copyright infringement does not require mass distribution (a single unauthorized use is an infringement) and does not require any profit by the infringer (giving away a copyrighted work without permission may be infringement).

Who Can Sue For Infringement?

A copyright infringement suit can be filed by any copyright owner of a work. If a work is owned by more than one party (as is very common in the music publishing industry for example), it is not required that all co-owners join in the suit. When an author has transferred copyright to a publisher, usually the publisher will be responsible for pursuing infringement claims.

Since copyright law is primarily civil law rather than criminal law, if a copyright owner believes their work is being infringed, it is up to them to decide whether and to what extent to enforce their rights. Criminal copyright infringement prosecutions (where the government takes legal action against an infringer) are fairly rare. Some organizations representing copyright owners enforce copyrights on a collective rather than individual basis. For example, in lawsuits filed by the Recording Industry Association of America (RIAA) against individual file sharers, the RIAA has sued on behalf of the various record companies it represents. Similarly, the Motion Picture Association of America (MPAA) sometimes files copyright infringement lawsuits on behalf of its members and the music performing rights organizations (ASCAP and BMI in the U.S.) file copyright infringement lawsuits on behalf of the songwriters and music publishers they represent. If it weren't for this type of collective enforcement, many copyright infringements would not be legally pursued since the cost of bringing suit as an individual copyright owner often outweigh the benefits.

Where Can You Sue?

Since copyright law in the United States is exclusively federal in nature, a copyright owner must file a copyright infringement lawsuit in federal rather than state court. According to the United States Code (28 U.S.C. §1338), federal courts have exclusive jurisdiction over any actions involving rights under federal copyright law. However, disputes over copyright ownership and payment of royalties are often brought in state court since these types of disputes often involve contractual rights rather than rights under copyright law. The question then becomes which federal court? The answer to that question depends on what court or courts have jurisdiction over the party being sued. For example, if you want to sue someone for copyright infringement who lives in Los Angeles, you could file the lawsuit in the federal district court located in Los Angeles. Depending on the nature of the allegedly infringing action, you might be able to file the lawsuit in other federal district courts as well. For instance, if you want to sue a business based in California for copyright infringement and the business sold allegedly infringing goods in Tennessee, both the California and Tennessee federal courts would probably have jurisdiction.

Proving Infringement

In order to prove that someone infringed your copyright, you have to prove 3 things:

  1. Ownership
  2. Access
  3. Substantial Similarity

Ownership

First, you must prove that you actually own a valid copyright in the work you claim has been infringed. The best way to do this is to present a copyright registration certificate in court. If the registration was made within five years of the work’s first publication, the court will presume that the plaintiff owns a valid copyright and that all of the information contained in the registration application is true. 17 U.S.C. §410(c) The burden of proof then shifts to the defendant to prove otherwise which will normally be very hard to do.

If you haven't registered a work within five years of its initial publication, you may have to offer some other evidence of your ownership claim. At worst, you could testify under oath as to when and how you acquired ownership or when and how you created the work. If you acquired ownership of a copyright through an assignment of copyright, you would probably have to present the copyright assignment or other contract under which the copyright was transferred (since oral transfers of copyright are not allowed, its very important that you keep copies of all documents by which you acquire copyright ownership).

Access

You must prove that the alleged infringer had access to your work. Access means that the person you're accusing of infringement had a reasonable opportunity to see or hear your work. This is a logical requirement since someone cannot possibly copy from a work they did not have access to. Access can be proven by direct evidence or circumstantial evidence. Direct evidence of access can occur when an alleged infringer admits seeing or hearing your work. However, admitting access does not mean that someone admits infringement.

Since direct evidence of access is not commonly available, copyright owners often have to rely on circumstantial evidence of access (evidence tending to show that the alleged infringer had access). For example, a copyright owner might be able to offer evidence that his or her work was widely available to the public (such as a popular, well-known song, book or film). The more widely available a work is, the more likely access will be found.

Example: Circumstantial evidence of access might involve showing that a song has received a great amount of exposure to the public such as through nationwide radio airplay or that a book was very popular and widely available as indicated by it being on the New York Times Best Sellers list.

A copyright owner could also offer circumstantial evidence of access by showing that his or her work was available to the alleged infringer. For instance, if a screenplay writer could offer evidence that she had submitted her screenplay to a movie studio and a studio executive had read it, this might be sufficient circumstantial evidence of access. By the way, this is one of the main reasons why it is so hard to get studios to read screenplays (or record companies to listen to artists' demo recordings).

In Selle v. Gibb, 741 F.2d 896 (1984), composer Ronald Selle sued the Bee Gees alleging that his song Let It End was infringed by the Bee Gee's How Deep Is Your Love. Although the songs were at least somewhat similar, Selle could not prove access since his song was never publicly released. The Bee Gees were also able to offer evidence showing that they independently created How Deep is Your Love. Both songs can be heard and compared here.

 

Like most highly popular songs, How Deep is Your Love has been covered by a number of other artists over the years, including Korean hip-hop duo Jinusean. Would this version be considered a derivative work?

 

By refusing to read or listen to unsolicited material, movie studios and record companies can somewhat insulate themselves from liability for copyright infringement. Most studios and record companies have very strict policies against accepting unsolicited material (see an example of Universal Music Group's demo submission policy) and will usually return unsolicited submission unopened with a form letter stating that they do not accept unsolicited material.

Example: A songwriter sued Mariah Carey, claiming Carey’s hit song Hero was an infringement. The court held that there was insufficient evidence of access since the only evidence was the plaintiff''s testimony that she mailed a tape of her song to an executive at Sony Records (Carey's record company). Sony offered evidence that they did not receive or review the plaintiff's song and had a strict policy of refusing to review unsolicited recordings. The court noted that if access was found based on such evidence "authors, producers, writers, and their affiliated companies could, as here, be forced to defend against baseless accusations of misappropriating others’ work which they never saw, heard, or solicited." Dimmie v. Carey, 88 F. Supp.2d 142 (2000).
 

 

Substantial Similarity

If you can prove ownership and access, you must then prove that the alleged infringer's work is substantially similar to your work. Exactly how similar works have to be to be substantially similar is up to a judge or jury to determine and is a somewhat subjective decision. However, substantial similarity doesn't require that the works be identical. There are no absolute amounts of similarity that legally constitute substantial similarity, but the greater the similarities, the more likely that they will be considered substantial and therefore infringing. The key is that the similarities must be substantial enough that they aren't likely to be the result of coincidence as opposed to copying.

 

 

Which of these people are substantially similar and why?

Does the difference (a hat) make these individuals not substantially similar?

Identical v. Substantial: Where to Draw the Line: If you were to copy a song, note for note and word for word, its extremely likely that this would constitute substantial similarity. However, if you copied just a few notes and a few words, it may or may not be substantial similarity. If those few notes and words were very recognizable, a court might consider this to be substantial similarity since courts consider the similarities from both a quantitative and qualitative perspective.

A copyright owner must prove that the similarities are so substantial that they could only have occurred due to copying rather than coincidence. Some reasons for similarities between works other than copying include the following:

  • Using of factual or commonly known information
  • Using common themes and plots
  • Using stock characters and stereotypes
  • Common Sources: Different authors might both use parts of previously created works
  • Coincidence
Example: In one of the most famous copyright infringement cases, Bright Tunes Music Corp. v. Harrisongs, former Beatle George Harrison was sued for copyright infringement in connection with his hit song My Sweet Lord. Bright Tunes Music Corp. was a music publisher that owned the copyright to the song He's So Fine which was composed by Ronald Mack in 1962 and recorded by the The Chiffons. Harrison admitted hearing He's So Fine although he did not admit that he copied it.
The judge believed that Harrison hadn't intended to copy and probably didn't realize he was copying He's So Fine. However, based on the admitted access and similarities between the songs, the judge ruled that Harrison subconsciously infringed, stating that "[h]is subconscious knew it already had worked in a song his conscious did not remember." You can watch videos of both songs and you can also hear the songs and see a comparison of the lyrics here.

He's So Fine sung by The Chiffons

 

George Harrison's My Sweet Lord

The video interview below with George Harrison includes a brief performance of a song he called This Song, which vaguely makes reference to his copyright infringement lawsuit. It was written about a week after Harrison's testimony in the lawsuit and seems to reflect some bitterness with lyrics including the following:

This song has nothing tricky about it
This song ain't black or white and as far as I know
Don't infringe on anyone's copyright, so . . .

This tune has nothing Bright about it
This tune ain't bad or good and come ever what may
My expert tells me it's okay

As this song came to me
Quite unknowingly . . .

Analyzing similarities between works is done on a case-by-case basis and often involves a detailed analysis of the works. For instance, in an infringement claim involving literary works, a court will usually compare the wording, themes, plots, characters, settings, moods, and writing styles of the works.

Cases involving infringement of music can be especially difficult due to the relatively limited vocabulary for creating music. Western music consists of the 12 notes of the musical scale. Although these notes can be arranged in many ways, musical composition conventions tend to dictate certain patterns and songs can consequently have elements in common, often due to coincidence rather than copying. For infringement claims involving music, courts will usually analyze the works' melody, lyrics, chord progressions, compositional style, and rhythm.

Example: In the Mariah Carey case mentioned above (Dimmie v. Carey), 9 of 11 notes of D's chorus in the chorus of Mariah Carey's song were identical to 9 notes in the plaintiff's song. However, although this might be considered substantial similarity, the court believed that there wasn't sufficient evidence indicated that Carey had copied the 9 notes from the plaintiff's song since it was a musical progression common to pop and R&B music..
 
Example: Movie Studio, 20th Century-Fox, sued Universal Studios claiming that their TV series Battlestar Galactica was a copyright infringement of the movie Star Wars.

The court's analysis of the similarities between the two works included the following:

  • The central conflict of each story is a war between the galaxy’s democratic and totalitarian forces.
  • In Star Wars the young hero’s father had been a leader of the democratic forces, and the present leader of the democratic forces is a father figure to the young hero. In Battlestar, the young hero’s father is a leader of the democratic forces.
  • An entire planet, central to the existence of the democratic forces, is destroyed in both stories.
  • The heroine in both stories is imprisoned by the totalitarian forces.
  • A friendly robot, who aids the democratic forces, is severely injured (Star Wars) or destroyed (Battlestar).
  • There is a scene in a cantina (Star Wars) or casino (Battlestar), in which musical entertainment is offered by bizarre, nonhuman creatures.

Despite these similarities, the court ruled that there was no infringement since the similarities consisted mostly of common themes and stock characters.

If you offer sufficient evidence of ownership, access and substantial similarity, the alleged infringer then has the opportunity to assert any applicable defenses. For instance, an alleged infringer might claim that his work was independently create rather than copied. Even if works are substantially similar, one cannot be a copyright infringement unless it was copied and many similarities are capable of occurring through sheer coincidence. An alleged infringer might also assert that even if he copied from your work that his use qualifies as fair use (see unit #8 for a discussion of the fair use defense).

Copyright infringement of music can often be difficult to determine since many similarities can be the result of coincidence rather than copying. Many famous musicians have been sued for copyright infringement.

Some other interesting examples of copyright infringement can be found at the Copyright Website which includes photos, sound and video clips. Another great website is the UCLA Copyright Infringement Project which lists many copyright infringement cases involving music including links to the court decisions and sheet music and sound clips.

Who is Liable For Infringement?

Various parties can be liable (responsible) for copyright infringement. Obviously, a person or company which actually commits an infringing act will always be liable for the infringement. Someone who actually commits an infringing act is known as a direct infringer. However, other parties that contribute to or benefit from the infringement may also be liable in some circumstances.

A. Contributory Infringement

Contributory copyright infringement occurs when a party has knowledge of infringing activity and induces, causes or materially contributes to the infringing conduct of another. In other words, if a business has control over its business operations and knows that infringing activity occurs when these operations take place, continued tolerance of the infringing activity contributes to the infringement, and the business may be liable for the infringement as well as the direct infringer.

Example: A bookstore (or record store) which sells copies of an infringing work may be contributorily liable for infringement even though someone else (e.g., the author) was the direct infringer.

In order to be liable as a contributory infringer, there are two requirements:

  1. You must have knowledge of the infringing activity.
  2. You must substantially participate in the infringing activity.

B. Vicarious Infringement

Vicarious copyright infringement occurs when a party has the right and ability to control an infringer’s activity and receives a direct financial benefit from the infringement. While contributory infringement requires knowledge of the infringing activity, vicarious liability can be imposed regardless of the alleged infringer's knowledge or intention ((although as a "innocent infringer," the damages you are liable for would likely be considerably less than the amount the direct infringer is liable for). Although it may seem strange to impose liability on someone who is not even aware of the infringement, vicarious liability is based in part on the third party’s ability to supervise infringing conduct. In essence, everyone who has commercially exploited an infringing work is potentially liable for the infringement.

Example: A movie studio which releases a movie containing an infringing work (e.g., a song in the movie soundtrack, part of the script, etc.) may be vicariously liable for the infringement even though the studio may not have had any actual knowledge that the movie contained infringing material.

The concepts of contributory and vicarious infringement are very important in the context of works distributed over the Internet. Since copyrighted works can be very easily infringed in the online environment and since there are often many direct infringers (for example, when copyrighted music is distributed by people using file sharing software), it is not practical for copyright owners to sue them all individually for infringement. Instead, copyright owners usually prefer to sue the Internet Service Provider which provides Internet access and other facilities which enable infringements to take place. However, if the Internet service provider is not contributorily or vicariously liable for the infringement (as one court has held in a situation involving file sharing), copyright owners may have no choice but to sue direct infringers as the Recording Industry Association of America has started doing.

Resolving Infringement Claims Without Litigation

Copyright infringement litigation can be very expensive & time consuming. At the same time, many infringement claims (i.e., small scale infringements) are worth very little and may not be worth resorting to litigation over. Additionally, if a copyright owner fails to register a copyrighted work within 3 months of the work's initial publication or before an infringement occurs, the copyright owner is limited as far as the legal remedies that may be pursued (i.e., no right to statutory damages or reimbursement of attorneys’ fees). Consequently, it is often worth trying to resolve an infringement claim without resorting to litigation.

Cease and Desist Letters

Before suing for copyright infringement, copyright owners (or their attorneys) will usually send a "cease and desist letter" to the allegedly infringing party demanding that they stop infringing. Sometimes, cease and desist letters also demand that the infringer pay some fee or royalty for their use of the work. If the claimed infringement involves distribution of a copyrighted work over the Internet, a copyright owner can send a special type of cease and desist letter to an Internet Service Provider (ISP) demanding that the infringing material be removed from the website it is hosted on.

Example: A sample cease and desist letter can be found here involving an alleged infringement by the owner of a website which posted various Star Trek copyrighted materials. An online database of cease and desist letters is available here (some deal with trademark rather than copyright infringement although the format is similar).

Copyright Infringement Settlements

After sending a cease and desist letter, it is sometimes possible to reach a settlement in connection with an infringement claim without filing a copyright infringement lawsuit since some infringers, when caught, will want to resolve the situation as quickly and inexpensively as possible. On the other hand, some infringers will not cooperate no matter what and if you are serious about enforcing your copyright, you will have to file suit against them. Often filing a suit shows that you're serious and some infringers are likely to consider settling at that point rather than spend a considerable amount of money to defend an infringement lawsuit. In addition to costing you money, a copyright infringement lawsuit can take up a substantial amount of your time and can sometimes result in negative publicity.

If an infringer agrees to settle an infringement claim, the parties should sign a clearly drafted settlement agreement. It is advisable to have an experienced attorney draft a settlement agreement to make sure it is clear and legally enforceable. Often settlement agreements make the infringing conduct legal by issuing a license for the infringer's use in return for a fee and/or royalty. Such a fee or royalty may be at a higher than normal rate to compensate the copyright owner for the inconvenience the infringer caused, to deter future infringing conduct and to cover any attorney’s fees you’ve incurred in pursuing the infringement claim. A settlement agreement granting a license will also often obligate the infringer to credit the author and copyright owner of the work. Sometimes the copyright owner will not want the infringer to continue using the copyrighted work and in such a situation, the settlement agreement should clearly state this.

Sometimes someone accused of copyright infringement might chose to settle the claim even if they believe they did not infringe solely due to the costs involved in defending against an infringement claim. For example, I represented a famous recording artist who was sued by someone claiming one of the artist's hit songs was an infringement. Although the artist adamantly insisted that he had never heard this person's song and hadn't copied it, he ultimately and reluctantly decided to settle the claim paying a relatively small settlement fee. At the time he agreed to settle, the matter had already lasted over a year, the artist had incurred a fair amount of legal fees and litigation costs, and faced the prospect of spending a lot more to defend the lawsuit. In addition to paying his own legal fees, the artist was also obligated to reimburse his record company and music publishing company which were also named as defendants in the lawsuit for their legal fees. Even if he successfully defended the claim and was awarded reimbursement of his costs, there was little likelihood that he'd recover much since the person suing him didn't have much money or assets. Sometimes, settling an infringement claim is purely a business decision. However, large entertainment companies and major artists, if they can't settle very cheaply, will often defend infringement claims vigorously since they don't want people to think they're an easy mark and open the door to more infringement claims.

In 1983, pop-rocker Huey Lewis had a huge hit with his album Sports which contained several hit singles including I Want a New Drug (watch Huey's video).

Who Ya Gonna Call? Huey Lewis apparently called his lawyer and in 1995, sued Ray Parker, Jr. over, claiming that his theme song for the movie Ghostbusters infringed I Want a New Drug. There are certainly some similarities between the songs, but whether this was the result of copying or coincidence was never determined since the parties reached a confidential settlement.

Although Parker ain't afraid of no ghost, he might have been afraid of a copyright infringement lawsuit. They can cost too much, make you sick, hurt your head, keep you up all night, make your mouth too dry and make you nervous, wondering what to do. They won't make you feel too good so sometimes settling can be better than fighting.

How To Avoid Infringement Claims

There is no way to guarantee you’ll never be sued for copyright infringement, but you can take steps to protect yourself and make it easier to defend infringement claims brought against you. The following are some practical tips:

  • Obtain permission to use copyrighted material unless you’re very sure your use clearly constitutes fair use (which is often difficult to be sure of)
  • Authors should keep written or recorded records of their creations
  • Date and keep notes and drafts of works you create (this helps establish independent creation)
  • File copyright registrations as soon as possible after creation and before publication if possible (this can help prove ownership of your work)
  • Do not accept unsolicited material from authors (this is especially important for publishers, record companies, movie studios, TV producers, and famous recording artists and writers since the more famous you are the bigger the target you are for copyright infringement claims).
  • Return unsolicited materials unopened along with a letter stating that you have not reviewed the material (companies should have strict written policies on this and follow them religiously).

Additional (Optional) Material


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