Hi all. As many of you know, the Law Offices of Michael A. Blake, LLC is a small law practice with one patent and trademark attorney (me), and one part time secretary, Kathy. Because we are a small practice, it is safe for me to come to work and provide intellectual property services to my current clients, and new clients, even during this period of COVID 19. Feel free to call or email me to discuss your patent, trademark, or copyright legal issues.
The US Court of Appeals for the Fifth Circuit has ruled that statutory damages are not available unless the copyright was registered prior to the infringement. The court in Southern Credentialing Support v. Hammond Surgical Hospital LLC et al, case number 18-31160, January 9, 2020, held that even if a different type of infringement occurred after registration, that if the infringement started prior to registration, no statutory damages were available. The case can be read here.
The moral to this story is that if you want statutory damages, which can be up to $150,000 per infringement, you must register your copyright early, and at a minimum before the infringement begins.
Many clients and attorneys think filling out a copyright registration form and filing it is easy. However, if you make a mistake, it can lead to catastrophe!
In a recent case, Gold Value International Textile, Inc. d.b.a. Fiesta Fabric v. Sanctuary Clothing, LLC et al., No. 17-55818, 2019 WL 2347390 (9th Cir. Jun. 4, 2019), Fiesta alleged that defendant Sanctuary Clothing copied its fabric design, which was used to manufacture a blouse that was sold by defendant retail outlets. Sanctuary filed a counterclaim, seeking invalidation of Fiesta’s copyright. The district court and the 9th circuit both found that Fiesta’s copyright registration was invalid.
As background, a group of related works may be registered together for a single fee under some circumstances. However, published works may not be included with unpublished works. Fiesta had applied to register the copyright in the designs as part of a group of thirty-three fabric designs, certifying that none of them had been published. But, Fiesta had previously sold 190 yards of the fabric in issue as samples to “a limited group of existing and potential customers for the limited purpose of securing full production contracts.” Fiesta’s president testified that he knew of these sales but did not consider sampling to be a publication. This was the catastrophic mistake. The district court granted summary judgment in favor of defendants Sanctuary Clothing, LLC. The 9th circuit panel affirmed the district court’s conclusion that Fiesta’s copyright registration was invalid under 17 U.S.C. § 411(b) because Fiesta knowingly included inaccurate information in its copyright application that would have caused the Copyright Office to deny registration. Specifically, Fiesta knowingly included previously published designs in its application to register an unpublished collection. In addition, the Register of Copyrights indicated that it would not publish a single group of published and unpublished works. Because a valid registration is a precondition to bringing an action for infringement, the panel affirmed the district court’s grant of summary judgment in favor of defendants. The panel further held that defendants were prevailing parties, and the district court did not abuse its discretion in awarding attorney’s fees under 17 U.S.C. § 505 even though defendants prevailed on a technical defense.
Defendants were awarded attorney’s fees and costs, which the district court granted in the amount of $121,423.01 against Fiesta. The case can be found here.
The moral of the story is, make sure you understand everything you are filling out when registering a copyright, and hire an expert in copyright law.
In a copyright infringement lawsuit between Rimini Street, Inc. and Oracle USA, Inc., a jury awarded Oracle damages after finding that Rimini Street had infringed various Oracle copyrights. After judgment, the District Court also awarded Oracle fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting. In affirming the $12.8 million award, the Ninth Circuit acknowledged that it covered expenses not included within the six categories of costs that the general federal statute authorizing district courts to award costs, 28 U. S. C. §§1821 and 1920, provides may be awarded against a losing party. The six categories of litigation expenses that qualify as “costs” are: (1) fees of the clerk and marshal; (2) fees for the court reporters; (3) fees and disbursements for printing and witnesses; (4) fees for copies of materials used in the case; (5) docket fees; and (6) compensation of court-appointed experts and translators. See 28 U.S.C. §§ 1821, 1920. The court nonetheless held that the award was appropriate because the Copyright Act gives federal district courts discretion to award “full costs” to a party in copyright litigation, 17 U. S. C. §505.
The Supreme Court in Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019) reversed, holding that the term “full costs” in §505 of the Copyright Act means the costs specified in the general costs statute codified at §§1821 and 1920 and does not therefore include all litigation expenses such as expert witnesses, e-discovery, and jury consulting. The Rimini Street case can be found here.
My alma matter, Texas A&M, where I obtained my mechanical engineering degree is involved in a copyright lawsuit.
Recently, on March 15, 2019, Texas A&M University asked U.S. District Court Judge Andrew S. Hanen to find that the Texas A&M Athletic Department is not a separate entity and therefore is entitled to immunity in the Texas A&M “12th Man” copyright suit.
Michael J. Bynum, an author, sued Texas A&M after Texas A&M posted on its website a substantial portion of Mr. Bynum’s unpublished book, “12th Man: The Life and Legend of Texas A&M’s E. King Gill”. According to the complaint, Texas A&M, “nearly word-for-word,” copied a large section of Bynum’s work without permission and violated Bynum’s copyright in his unpublished work.
The “12th man” is a well-known phrase used by Texas Aggies, and originally refers to former football legend E. King Gill but now refers to the entire student body at Texas A&M. Texas A&M owns the trademark rights in the “12th man” and is known to enforce its rights, including filing many lawsuits.
The main issue I find interesting and distressing is the doctrine of sovereign immunity. The doctrine generally means a state cannot be sued without first giving its consent to be sued. So be careful if you ever want to assert your rights against a governmental body! Information on the lawsuit can be found here.
On March 4, 2019, the United States Supreme Court issued an opinion that basically changed the long-standing practice of a plaintiff needing only to apply for copyright registration prior to bringing a copyright infringement lawsuit. Justice Ginsburg, writing for a unanimous court, said the law requires a litigant to have an issued registration, or a rejected application, subject to certain limited exceptions. Prior to this ruling, many litigators only filed an application for copyright registration prior to filing a copyright infringement lawsuit. However, the Supreme Court clarified the law, and made it clear that a copyright owner must have an issued registration or a refusal to register from the Copyright Office.
There are some exceptions. Such as “preregistration” for works that are particularly vulnerable to predistribution infringement, such as movies or musical compositions. Once a work is “preregistered” the owner may bring suit.
The decision can be read here.