Copyright Infringement Pre-litigation Checklist
When a client comes to you with a possible copyright infringement, what do you as the attorney need to consider before taking on the client or filing suit? This article will discuss registration, publication, demand or cease and desist letters, and other pre-litigation considerations that should be in your mind.
Ensure the client has standing to sue. In most cases, only the creator has exclusive standing to sue, unless he has transferred ownership, or the work was created under a “work-for-hire” agreement. Co-authors of joint works each have standing to sue independently. Transferees of the copyright have standing (as of the time of the transfer only, unless there was an assignment of previous causes of action). However, nonexclusive licensees do not have standing.
Investigate all information regarding the work-at-issue.
- Determine that the work is eligible for copyright protection. This is the first element of a copyright infringement claim. This means an original work of authorship, fixed in a tangible medium of expression, within the time-period of protection.
- Determine whether the work has been “published.” This will be important, in conjunction with the registration date, in evaluating statutory damages and attorneys’ fees.
- Determine whether the work has been registered with the Copyright Office. While this is not required to have a valid copyright, the work must be registered, or an application for registration be pending, prior to filing suit. The 5th Circuit requires merely an application be pending. Registration is prima facie evidence of a valid copyright if made before the first publication of the work, or within five years thereafter.
- Determine when the alleged infringement occurred, and when the client first discovered the infringement. This information will help in the damage calculations.
- Determine whether there are co-authors. Co-authors of a joint work must account to one another, which includes sharing any damage awards.
- Determine if there are other licenses surrounding the work-at-issue. The signing of a Creative Commons license makes the work freely available to the public.
Consider the jurisdiction in which you are filing suit. Venue is proper in any district in which the defendant or its agent resides or may be found. Where to file your suit also will determine how your damages argument will be framed.
Establish an infringement. Plaintiff must prove: (1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original. Copying may be shown where the accused infringer had (a) access to the copyrighted work, and (b) there are substantial similarities between the copyrighted work and the accused work.
- Do the claims fall within the Statute of Limitations? A cause of action must be filed within three years after the claim accrued (or those acts that occurred within the three years prior to filing lawsuit if the acts are continuing). Nine of the Circuit Courts have held that claims accrue upon actual or constructive discovery of infringement by the author (“discovery rule”). The minority view allows the statute of limitations to begin when the infringement actually occurred (“injury rule”). The 5th Circuit has yet to definitively rule on which claim accrual standard applies.
Consider potential defenses.
- Evaluate the defense of fair use. Consider the purpose and character of the use; the nature of the copyrighted work; the amount and substantiality of the copying; and the effect of the use upon the potential market for, or value of, the copyrighted work.
- Does the defendant fall within the DMCA safe-harbor provision? Search the DMCA database for the defendant(s) claiming eligibility.
- Will the suit be filed within the limitations period for both the cause of action and statutory damages?
Consider all of the possible damages.
- Can you get statutory damages? The author must have registered the copyright before, or within three months after the first publication in order to receive statutory damages.
- Actual damages? Profits the client might have accrued but for the defendant’s infringement.
- Attorneys’ fees? As with statutory damages, the author must have registered the copyright before or within three months after the first publication to be eligible for attorneys’ fees.
- Was the infringement willful? Ignoring a cease and desist letter, or intentional removal of copyright management information are factors in determining willfulness.
Evaluate settlement options, and determine whether filing a lawsuit is necessary.
- Is there a viable defendant? Often, entities are the infringers. Doing a background check to ensure the company has no pending lawsuits, no current liens, or is not headed or in bankruptcy will ensure your client is properly compensated.
- Send a demand or a cease and desist letter. Attempting to settle avoids the expense of litigation and increases the chances of being awarded attorneys’ fees and willful infringement statutory damages should the infringement continue. However, the letter may trigger a declaratory judgment action that may deprive the copyright owner of the ability to select the forum, and ultimately lead to litigation.
This is by no means a complete analysis of all of the issues, however, keeping these few items in mind will help you determine whether to take on that client seeking copyright advice.