An Associate's Guide to the Practice of Copyright Law

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Author: Meaghan Hemmings Kent | Joshua J Kaufman

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An Associate’s Guide to the Practice of Copyright Law

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An Associate’s Guide to the Practice of Copyright Law Meaghan Hemmings Kent Joshua J. Kaufman

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1 Oxford University Press, Inc., publishes works that further Oxford University’s objective of excellence in research, scholarship, and education. Oxford New York Auckland Cape Town Dar es Salaam Hong Kong Karachi Kuala Lumpur Mexico City Nairobi New Delhi Shanghai Taipei Toronto

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With offices in Argentina Austria Brazil Chile Czech Republic France Greece Guatemala Hungary Italy Japan Poland Portugal Singapore South Korea Switzerland Thailand Turkey Ukraine Vietnam

Copyright © 2009 by Oxford University Press, Inc. Published by Oxford University Press, Inc. 198 Madison Avenue, New York, New York 10016 Oxford is a registered trademark of Oxford University Press Oxford University Press is a registered trademark of Oxford University Press, Inc. All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without the prior permission of Oxford University Press, Inc. _____________________________________________ Library of Congress Cataloging-in-Publication Data Kent, Meaghan Hemmings. An associate’s guide to the practice of copyright law / Meaghan Hemmings Kent, Joshua J. Kaufman. p. cm. Includes bibliographical references and index. ISBN 978-0-19-537347-9 (pbk.; includes cd : alk. paper) 1. Copyright—United States. I. Kaufman, Joshua J. II. Title. KF2994.K46 2009 346.7304'82—dc22 2009009905 _____________________________________________ 1 2 3 4 5 6 7 8 9 Printed in the United States of America on acid-free paper Note to Readers This publication is designed to provide accurate and authoritative information in regard to the subject matter covered. It is based upon sources believed to be accurate and reliable and is intended to be current as of the time it was written. It is sold with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional services. If legal advice or other expert assistance is required, the services of a competent professional person should be sought. Also, to confirm that the information has not been affected or changed by recent developments, traditional legal research techniques should be used, including checking primary sources where appropriate. (Based on the Declaration of Principles jointly adopted by a Committee of the American Bar Association and a Committee of Publishers and Associations.)

You may order this or any other Oxford University Press publication by visiting the Oxford University Press website at www.oup.com

Contents

ABOUT THE AUTHORS

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ACKNOWLEDGMENTS

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CHAPTER 1: Brief Introduction I. Copyright Basics A. A Copyright Is a Bundle of Exclusive Rights B. The Law of Copyright Exists in Statutory and Case Law C. Copyrights Protect Original Works of Authorship D. Only the “Expression” of an Original Work Is Copyrightable E. A “Derivative” or “Compilation” of Copyrightable Works Is Itself Copyrightable F. Copyright Protection Exists with Creation G. Registration Enhances Copyright Protection and Remedies H. Registration Is a Prerequisite to Copyright Litigation I. Copyrights Are Usually Owned by the Author J. Under the “Work for Hire” Doctrine, the Employer or Commissioner Owns the Copyright K. When the Author Cannot Be Located or Identified, the Work Is Called an “Orphan Work” L. Copyright Protection Lasts for Varying Amounts of Time M. “Publication” Is a Central Event for a Copyrighted Work CHAPTER 2: Copyright Registration and Notice I. Copyright Registrations: Explaining the Benefits to a Client A. The Cost of Registration Is Low B. The Benefits of Early Registration Are Significant C. Registration Is Required Before Litigation D. Registration Allows Recordation with U.S. Customs II. Copyright Registration: The Guidelines III. Copyright Registration: The Application A. The Forms Vary Depending on the Work B. The Deposit Material Requirements Vary Depending on the Type of Work C. The Fees Vary Depending on the Method of Registration IV. Copyright Registration: The Method

1 3 3 4 7 8 8 9 10 10 11 11 13 14 15

19 21 21 23 24 25 25 25 25 26 28 28

vi Contents V. Copyright Registration: Completing the Application A. The Work Being Registered 1. 1a: Work Being Registered 2. 1b: Title of the Work 3. 1c: Serial Issues 4. 1d: Previous or Alternative Titles 5. 1e: Year of Completion 6. 1f: Date of Publication 7. 1g: ISBN 8. 1h: Nation of Publication 9. 1i: Published as a Contribution in a Larger Work 10. 1j: More Regarding Serial Issues 11. 1k: Preregistered Works B. Author 1. 2a: Personal Name/2b: Organization Name 2. 2c: Doing Business As 3. 2d: Year of Birth/2e: Year of Death 4. 2f: Citizenship, Domicile 5. 2g: Author’s Contribution 6. 2h: What the Author Created C. Claimant 1. 3a: Personal Name/3b: Organization Name 2. 3c: Doing Business As 3. 3d: Address 4. 3e: Where Claimant Is Not an Author D. Limitation of Copyright Claim 1. 4a: Material Excluded from the Claim 2. 4b: Previous Registrations 3. 4c: New Materials Included in the Claim E. Rights and Permissions Contact F. Correspondence Contact G. Registration Certificate Contact H. Certification VI. Copyright Registration of Computer Programs VII. Expediting Registration VIII. Preregistration IX. After the Registration Certificate Issues X. Copyright Notice Should Be Included on All Works A. A Copyright Notice Includes Three Elements CHAPTER 3: Copyright Transfer: Licenses and Assignments I. Ownership of Copyrights II. Copyright Transfer A. Assignments B. Licenses

30 30 30 31 31 31 31 31 32 32 32 32 32 33 33 33 33 33 33 34 34 34 34 34 34 34 35 35 36 36 37 37 37 37 40 41 43 43 44

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Contents

III.

IV. V.

VI.

VII.

C. Ownership of the Work Is Not the Same as Ownership of the Copyright D. An Effective Transfer Requires Two Main Elements E. A Nonexclusive License Is Not Technically a “Transfer” A Transfer Can Be Recorded with the Copyright Office A. Effecting a Recordation B. Advantages of Recordation A Transfer May Be Terminated to Recapture the Renewal Period Drafting Agreements A. Work for Hire Agreement B. Assignment C. Exclusive License D. Nonexclusive License Licensing in Specific Fields A. Music Licensing 1. Obtaining the Rights 2. Rates B. Art Licensing C. Book Licensing 1. Obtaining Permission to Use a Book or Portions of a Book 2. Publication Agreements and Book Deals D. Licenses in Educational Settings E. Licensing in Religious Settings Use of a Person’s Image—The Right of Publicity

50 50 51 52 52 53 54 55 55 56 57 59 60 60 60 62 63 65 65 67 69 72 72

CHAPTER 4: Digital Millennium Copyright Act (DMCA)

Take-Down Notices

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I. Service Provider Protection through the Safe Harbor II. Drafting the Take-Down Notice A. Determine the Designated Agent B. Required Elements of the Take-Down Notice III. When to Use This Alternative IV. There Are Negative Implications for Those Who Abuse the Process V. How to React When a Client’s Materials Have Been Subject to a Take-Down Notice A. Drafting the Counter Notice VI. Preventing a DMCA Take-Down Notice VII. Ensuring Compliance with the DMCA if Your Client Is a Service Provider

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CHAPTER 5: Cease and Desist Letters I. The Pros and Cons of a Cease and Desist Letter A. The Cost of a Cease and Desist Letter Is Lower Than Litigation

79 79 80 81 81

85 86 86

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Contents

II. III. IV.

V. VI.

VII. VIII.

B. Cease and Desist Letters Can Garner a Speedier Result Than Litigation C. Cease and Desist Letters Lack Teeth D. Cease and Desist Letters Can Instigate Litigation that Your Client May Not Be Prepared For Weighing the Pros and Cons Consider Filing a Complaint Before Sending a Cease and Desist Letter Research to Conduct Before Sending a Cease and Desist Letter A. Verify that the Work Is Copyrightable B. Verify the Copyright Ownership C. Question Any Licensing History D. Consider the Accused Infringer’s Potential Defenses E. Evaluate Registration F. Make Sure There Is an Infringement G. Research the Extent of the Infringement H. Research the Recipient The Potential Outcomes and Repercussions Drafting the Letter A. Determining Who Should Receive the Letter B. Elements to Include in the Letter How to Respond to a Cease and Desist Letter Provide Your Client with a Litigation Hold Notice

CHAPTER 6: Copyright Litigation I. Steps to Take Prior to Filing a Claim for Copyright Infringement A. Register the Copyright B. Evaluate Whether There Is a Claim 1. Determine the Ownership of the Copyright 2. Ensure That the Copyright Is Valid 3. Determine Whether You Can Show Copying a. Access to the Copyrighted Work b. Substantial Similarity C. Consider Problems with Your Case and Any Defenses D. Evaluate the Strength of the Infringement Case 1. Consider the Strength of the Copyright a. Nonprotectable Elements of a Copyrighted Work b. The Merger Doctrine c. Thin Copyrights 2. Consider the Strength of the Infringement a. Comparing the Works for Substantial Similarity b. Evaluating the Extent of the Infringement E. Determine and Research the Defendant(s) F. Consider Where to File G. Impose a Litigation Hold

87 87 87 89 89 91 91 92 92 93 93 93 94 94 94 95 95 97 98 100

103 107 108 109 109 110 111 111 112 115 115 115 115 115 116 117 117 118 119 120 121

Contents ix II. Drafting, Filing, and Serving a Complaint A. Venue and Jurisdiction 1. Subject Matter Jurisdiction 2. Personal Jurisdiction 3. Venue B. Factual Background C. Causes of Action D. Filing the Complaint and Additional Materials 1. Civil Cover Sheet 2. Summons 3. Corporate Interest and Financial Interest Disclosure Statement 4. Copyright Form-AO121 E. Service F. Amending the Complaint III. Preliminary Injunctive Relief A. Temporary Restraining Orders B. Preliminary Injunctions IV. When Your Client Receives a Complaint A. Service B. Insurance Issues C. Litigation Hold D. Receiving an Amended Complaint V. Initial Dispositive Motions A. Motions That Must Be Filed Before Answering 1. Personal Jurisdiction 2. Improper Venue B. Motions That May Be Filed Before Answering C. Subject Matter Jurisdiction Can Be Raised Before Answering or Any Time Thereafter D. Timing of Motions and Answers VI. Answering, Defenses, Counterclaims A. Answering B. Affirmative Defenses 1. Statute of Limitations 2. Abandonment or Forfeiture of Copyright 3. The Work Is in the Public Domain 4. Independent Creation 5. Fair Use 6. License or Implied License 7. Merger Doctrine or Unprotectable Elements 8. Fraud on the Copyright Office 9. Unclean Hands 10. Copyright Misuse 11. Innocent Intent 12. Equitable Estoppel

122 122 122 123 124 125 125 128 128 129 129 129 130 131 131 131 132 133 133 134 136 136 137 137 137 138 138 139 139 140 140 142 143 144 144 145 146 147 148 149 150 150 150 151

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Contents C. Counterclaims and Crossclaims VII. Remedies A. Monetary Damages B. Costs and Attorneys’ Fees C. Injunctions D. Destruction of the Infringing Goods VIII. Discovery A. Rule 26 Disclosures B. Written Discovery 1. Plaintiff’s General Requests 2. Defendant’s General Requests 3. Interrogatories a. Creation of the Work b. Validity c. Ownership d. Infringement e. Damages f. Defenses g. General Discovery h. Counterclaims 4. Requests for Admission 5. Requests for Production of Documents and Things a. Creation of the Work and Validity b. Ownership c. Infringement d. Damages e. Defenses f. General Discovery g. Counterclaims C. Confidentiality Agreements/Protective Orders D. Responding to Written Discovery 1. Interrogatories 2. Requests for Admission 3. Requests for Production of Things and/or Documents E. Subpoenas 1. Issuing a Subpoena 2. Responding to a Subpoena F. Depositions 1. Who to Depose 2. When to Take the Depositions 3. Noticing the Deposition 4. Depositions of an Organization 5. Preparing to Take a Deposition a. Creation of the Work b. Validity

151 153 153 156 156 158 158 160 160 161 163 164 165 166 166 167 168 169 170 170 171 175 177 178 178 180 181 181 182 182 182 183 186 187 189 189 192 192 192 193 194 195 195 196 196

Contents xi

IX.

X. XI. XII. XIII. XIV. XV.

c. Ownership d. Infringement e. Damages f. Defenses and Counterclaims 6. Taking a Deposition 7. Defending a Deposition G. Discovery Disputes 1. Motions to Compel 2. Protective Orders Experts A. Types of Experts B. Locating an Expert C. Communications with an Expert D. Expert Reports E. Deposition of an Expert F. Motions to Exclude Experts Dispositive Motions Hearings Settlement and Mediation Pretrial Trial and Preparing for Trial Post-Trial A. Equitable Relief B. Relief from Judgment C. Collecting on a Judgment D. Recovering Fees and Costs

196 197 197 197 198 203 205 205 206 207 207 208 210 211 212 213 214 216 217 220 222 223 223 224 225 225

CHAPTER 7: United States Customs and the International

Trade Commission I. U.S. Customs Recordal A. Recordal B. Enforcement II. International Trade Commission

231 232 232 234 235

APPENDIX

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TABLE OF CASES

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INDEX

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About the Authors

Meaghan Hemmings Kent is an associate at Venable LLP. Her practice focuses on intellectual property litigation, including copyrights, trademarks, trade secrets, and patents. In the copyright realm, she has litigated cases involving photographs, architectural works, software, artwork, designs, technical drawings, television commercials, and music and choreography. She has particular experience with online disputes related to copyrights and trademarks, including federal litigation, DMCA notices, and domain name disputes. She has filed numerous copyright registrations and has negotiated and drafted various licenses and other transfer agreements. Ms. Kent regularly publishes articles regarding intellectual property protection and enforcement. She is also a registered patent attorney. Ms. Kent graduated from the University of California, Los Angeles and the University of California, Hastings College of the Law, cum laude. Joshua Kaufman is a partner at Venable LLP and Chair of its Copyright & Licensing Group. His practice comprises both transactional work and litigation and is international in scope. He successfully argued the landmark copyright case, CCNV v. Reid before the U.S. Supreme Court which defined the work for hire doctrine. He has numerous other reported trial and appellate level cases. He has published over 250 articles on intellectual property matters. He is a contributor to the annual “Licensing Royalty Rates” Treatise and is a coauthor of Licensing for Dummies. Mr. Kaufman is a regular speaker on copyright, counterfeiting, art law, licensing, and cyber matters. He was a founding board member of the DC Bar’s Sections on Sports, Art & Entertainment Law, and Computer Law. He is an adjunct professor at American University Law School where he has taught Entertainment Law and Art Law for the past 16 years. He is general counsel to the Art Copyright Coalition. Mr. Kaufman graduated from the University of Maryland and George Washington University National Law Center with honors.

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Acknowledgments

The authors thank Venable LLP for supporting this project. They also thank their editors at Oxford University Press, Matt Gallaway, Michelle Lipinski, and Sarah Bloxham. Meaghan thanks her parents, Diana and Jörgen, for their encouragement, and her husband, Chris, for his constant support and for the idea behind this practice-focused book for associates. Joshua thanks his heroes, Nan, Jay, and Aaron, for showing him the way.

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CHAP T ER

1 Brief Introduction

I. Copyright Basics

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A. A Copyright Is a Bundle of Exclusive Rights

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B. The Law of Copyright Exists in Statutory and Case Law

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C. Copyrights Protect Original Works of Authorship

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D. Only the “Expression” of an Original Work Is Copyrightable

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E. A “Derivative” or “Compilation” of Copyrightable Works Is Itself Copyrightable

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F. Copyright Protection Exists with Creation G. Registration Enhances Copyright Protection and Remedies

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H. Registration Is a Prerequisite to Copyright Litigation

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I. Copyrights Are Usually Owned by the Author

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J. Under the “Work for Hire” Doctrine, the Employer or Commissioner Owns the Copyright

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K. When the Author Cannot Be Located or Identified, the Work Is Called an “Orphan Work”

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L. Copyright Protection Lasts for Varying Amounts of Time

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M. “Publication” Is a Central Event for a Copyrighted Work

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Chapter 1 Brief Introduction

This book is a practical guide for lawyers new to the area of copyright law. It covers copyright acquisition, licensing, Digital Millennium Copyright Act notices, federal litigation, and alternatives to litigation. Although law school provides legal education, it is up to an attorney to learn how to actually practice law. This book will speed along the often overwhelming process of learning to practice, help you avoid typical pitfalls, teach you some tricks of the practice, point out valuable resources, help you see the big picture, guide conversations with clients, and provide a jumping-off point from which you can become a better, more efficient, more resourceful, and more sought-after attorney. Remember that this book is your first step in practicing copyright law. It is certainly not the only step. There are multivolume treatises and thousands of cases that cover the intricacies of copyright law. This book could not hope to cover all of that material, although it will try to raise most of the issues and point you in the right direction to obtain additional information when you need it. Each chapter of this book focuses on a different area of copyright law, from copyright acquisition to litigation and alternatives to litigation. While you are certainly welcome to do so, it is not necessary to read this book sequentially. Instead, you can read the sections of this book as you need them. For instance, when you are faced with a DMCA notice, turn to the DMCA chapter; when you are faced with a question on registering a copyright that is also a trade secret, turn to the chapter on copyright registration; when you are faced with searching for an expert, turn to the litigation chapter and section on experts. In this way, you will find the practical tips to save you time and resources in accomplishing the task at hand. The book is designed so that the chapters, and even sections within those chapters, stand alone. For that reason, you may notice that there is some repetition of important points in multiple chapters to ensure that a reader who reads only a certain chapter, or who reads the chapters out of order, will still have the necessary information. Along with explanations, advice, and tips, throughout the chapters you will find brief examples and samples as well as references to secondary sources, including government sources, online sources, library resources, and treatises. In addition, at the end of the book there is an Appendix with fulllength samples referenced within the book, including sample copyright forms, cease and desist letters, licenses, and complaints. What follows in this introductory chapter is a brief overview of copyrights with a brief description of the elements for copyrights, an explanation of what copyrights protect, and the distinction between registered and unregistered copyrights.

Copyright Basics

I. Copyright Basics A. A Copyright Is a Bundle of Exclusive Rights Once someone acquires a “copyright” in a work, he or she acquires the right to prevent others from using that work. Often referred to as a “bundle of rights,” copyright comprises the exclusive rights: • • • • •

To reproduce the work To make derivative works of the work To distribute copies of the work to the public (sale, rental, lease, lending) To perform the work publicly To display the work publicly

17 U.S.C. § 106 (exclusive rights in copyrighted works). According to this bundle of rights, only the copyright owner may reproduce or copy the work (a book, CD, or DVD); create a derivative (a movie from a book or a poster from a print), distribute copies of the work (CDs, posters of a painting, software in a company); perform the work publicly (dance choreography perform a copyrighted song); and display the work publicly (broadcast a sporting event, play a copyrighted song while a customer is on hold, post a photograph on a website). Doing any of these things without the copyright owner’s permission breaches the copyright owner’s right and infringes the copyright. Practice Tip Infringement does not occur when the expression is sufficiently different. The test used and discussed in more detail in the litigation chapter (Chapter 6) is whether the infringing work is “substantially similar.” You and your clients will hear such tall tales as “As long as the work is only 25 percent similar, then it does not infringe,” or “As long as I only copied 10 percent of the lines from the song, it does not infringe.” These are old wives’ tales and are simply false.

Of course, a copyright owner may allow, through a license, assignment, or other transfer, for others to use the copyrighted work in certain ways. (See Chapter 3 on licensing and assignments). For instance, songwriters and musicians license the right to play their songs on the radio, in gyms, or in elevators; photographers license or assign the rights to display their photographs in magazines; authors license or assign their rights to distributors to

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sell their books; architects license or assign the rights to create derivative works (such as a house or a modified plan) of their architectural plans.

B. The Law of Copyright Exists in Statutory and Case Law The statute covering copyright is United States Code Title 17: 17 U.S.C. §§ 101–1332. It includes the following sections: • • • • • • • • • •

Providing definitions (§ 101) Listing the exclusive rights (§ 106) Describing ownership and transfer (§§ 201–05) Providing for the duration of copyright (§§ 302–05) Instructing registration (§§ 407–12) Describing infringement (§ 501) and offering remedies (§§ 502–53) Limiting importation (§ 603) Directing the Copyright Office (§§ 701–10) Coordinating royalties (§§ 801–05) Providing specifics for different technologies: Semiconductor chips (§§ 901–14) Digital recordings (§§ 1001–10) Sound and music (§ 1101) • Providing for protection system circumvention remedies (§ 1203) • Explaining the protection of original designs (§§ 1301–32) ■ ■ ■

Practice Tip Section 101 of the Copyright Act is vital. Many concepts of copyright law are included in that definition section and nowhere else in the statute. The definition of publication and the elements of a work for hire are in Section 101 but are not explained anywhere else in the statute. If you are unsure of a concept or the meaning of a term, Section 101 should be the first place you check. For example, Section 101 provides the definition for an “architectural work” as “the design of a building as embodied in any tangible medium of expression, including in a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.”

In addition to the Copyright Act, the Code of Federal Regulations contains rules and regulations related to copyrights. The Code of Federal Regulations (CFR) codifies the rules published by the executive departments and agencies of the federal government. It is divided into fifty titles, and Title 37 pertains to copyrights, patents, and trademarks.

Copyright Basics

Practice Tip Although not rule or law, another place to obtain quick, easy to understand explanations and definitions is the Copyright Office website. The website includes “circulars” that provide information regarding registration, licensing, and innumerable other issues. It is a fantastic resource that you should explore as soon as possible. The circulars are very informative and easy to read. Along with explaining concepts, the circulars provide citations to the Copyright Act and CFR.

The United States Constitution empowers Congress to legislate the copyright statute.1 Article I, Section 8, Clause 8 states, “To promote the Progress of Science and useful Arts, by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” Understanding that the goal of copyright is to promote progress in the arts helps to understand copyright law and argue your point. Practice Tip Although copyright law has an underlying goal of promotion of the useful arts, because it is statutory, a lot of the law is based on lobbying. For that reason, much of it can seem counterintuitive, and you may not always find patterns or logic; instead, it may be a simple matter of lobbying power. For instance, there is a separate section for architectural works due to lobbying. Another example is the types of works that are included in the nine “work for hire” categories. A further example is that photographers can submit “collections” of published photographs, while other authors can only register collections of unpublished works.

Furthermore, the exclusive rights of copyright, trademarks, trade secrets, and patents each protect different concepts. Trademarks protect consumers: a trademark is awarded where consumers associate the mark (sound, logo, color, smell) with a source of a product or service and they last as long as consumers so associate them. Patents encourage disclosure of new and original ideas: they require that the inventor disclose the invention in enough detail that one of ordinary skill in the art can understand the invention and can recreate that described in the patent. In exchange for disclosing the invention, the inventor is awarded an exclusive grant from the government

1. This is also true for patent statutes, but that is for discussion in a different book.

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(through the Patent and Trademark Office (PTO)) to prohibit others from actually practicing the invention for a limited amount of time. Copyrights, similar to patents, encourage creation of new works. In exchange for creating an original work, a copyright owner is awarded a grant from the government (through the Copyright Office) to a specific, exclusive bundle of rights for a specific amount of time after which the work is “public domain.” Trade secrets are not particularly encouraged because keeping something secret does not further the progress of the useful arts as much as disclosure of the idea or work, and thus there is a stiff requirement to qualify for a trade secret; most important, the trade secret must be kept secret, and the owner must take extensive precautions (keeping the secret under lock and key, requiring nondisclosure agreements before disclosure, etc.) to maintain that secret. Because there are different motivations for awarding each one of these rights, the term length of these grants also differ. Trade secrets last as long as they are secret; trademarks last as long as they are used; copyrights last for varying amounts of time depending on the creation date but generally the life of the author plus seventy years. And patents generally last for twenty years from the date of application, but that can vary based on whether there were delays by the Patent Office during prosecution. All copyright disputes must be litigated in federal court; that is, federal courts have exclusive subject matter jurisdiction over copyrights.2 28 U.S.C. § 1338(a)3; 17 U.S.C. § 3014; 28 U.S.C. § 13315. Thus, most case law that is relevant will be from federal district courts, circuit courts of appeals, or the Supreme Court of the United States. Practice Tip Even though copyright matters are questions of federal law and federal case law will be most relevant, there are state laws that will affect copyright. For instance, questions of contractual interpretation; statutes of frauds, wills, and other bequeaths; and the adequacy of a signature will all involve state law. Remember this when conducting research.

2. Federal courts also have exclusive subject matter jurisdiction over patent, and over trademarks if pursuant to a federal statute such as the Lanham Act. 3. “The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.” 4. This provides for preemption of state copyright claims. 5. “The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.”

Copyright Basics

C. Copyrights Protect Original Works of Authorship Something is copyrightable if it is: (1) (2) (3) (4)

A work of authorship Original Fixed in a tangible medium of expression Minimally creative

17 U.S.C. § 102(a). A “work of authorship” includes literary works, musical works, dramatic works, choreography, sculptures, pictures, graphics, motion pictures, sound recordings, architectural works, and anything that fall within these categories. Only an “original” work of authorship is protected by copyright law. However, “original” does not mean novelty or uniqueness but rather “independent creation” and “creativity.” “Original” is not defined in the definition section of the statute, but it essentially means that the work was created independently without reliance on another work and included at least a minimal amount of creativity. In simplest terms, the author created it rather than copied it. In practice, a low degree of originality is required; however, a minimal amount of creativity must be involved for a work to be copyrightable. For example, listing names alphabetically in a telephone book is not copyrightable (it is not creative to put names in alphabetical order; it is simply practical), but listing or organizing names in some other way that is not simply practical could be creative (i.e., if they were listed according to the number of vowels in the name) and may be copyrightable. Another example is creating a compilation of all of Shakespeare’s work and organizing them in chronological order, which is not creative. However, if a person found a connection between several of Shakespeare’s sonnets and compiled them into a text and organized them according to that connection in a creative way (not chronological or alphabetical), this may have requisite creativity to be copyrightable. Once the minimal threshold of creativity is passed, the amount of creativity in a work will determine the “strength” of a copyright. Copyrights with scant creativity are considered thin. For instance, some architectural plans or technical drawings are considered thin because much of the design is dictated by function and practical consideration such as lot size or local regulations. Whether a copyright is “thin” can affect the owner’s ability to prove infringement and copying. This is discussed at more length in the litigation chapter (Chapter 6). Finally, the original work of authorship must be fixed in a tangible medium of expression before it is protectable. “Fixed” is defined in the definition section of the Copyright Act (17 U.S.C. § 101). The definition provides that something is fixed when its embodiment “is sufficiently permanent or stable

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to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” In essence, the work must be fixed, for example, on paper, on canvas, in clay or plaster, on an audiotape, on a videotape, on a computer disk, on a compact disc (CD), or a digital video disc (DVD).

D. Only the “Expression” of an Original Work Is Copyrightable Copyrights protect only the expression of a particular idea, not the underlying facts, ideas, or concepts. 17 U.S.C. § 102(b). The statute specifies that copyright protection does not extend to facts, ideas, procedures, processes, methods, concepts, principles, or discoveries. The idea to write a song about a broken heart is not protectable under copyright, but the actual song that is created (if it is fixed and original) is protectable. The key to remember is that ideas are not copyrightable (they may instead be covered by patent or trade secret law if they meet the requirements for those protections). Thus, under copyright law, someone can “steal” another person’s idea, and it is not a copyright violation as long as the expression of the idea is sufficiently different. Practice Tip It happens regularly that a client is distraught because an “infringer” has ripped him off by stealing his idea or knocking off his product. This is the difference between a knockoff and a copyright infringement. Unfortunately, there is often very little that an attorney can do to stop a knockoff if the expression is sufficiently different from the copyrighted work. Only infringements that are substantially similar in expression to the copyrighted work can be enjoined. This is confusing and frustrating for a client. Your job is to empathize and explain the law.

E. A “Derivative” or “Compilation” of Copyrightable Works Is Itself Copyrightable “Derivative Works” and “Compilations” are also protected under the Copyright Act. 17 U.S.C. § 103. However, the rights in such works extend only to the new material contributed by the author of the derivative or compilation. In other words, if the author of the compilation or derivative is not the author of the underlying work, he does not have rights to that underlying work. In fact, the author of a derivative or compilation must receive permission from the owner of the copyright in the underlying work to use it to create

Copyright Basics

a derivative or compilation. Of course, if he is one and the same person, this is not an issue. Practice Tip The new material must itself be original and have a minimal amount of creativity. Otherwise, the derivative or compilation is not copyrightable. As discussed above, compiling all of an author’s works in chronological order is not original, it does not have the minimal amount of creativity, and it is not copyrightable.

F. Copyright Protection Exists with Creation As soon as a creative work is put into a tangible form, it is protected by copyright. In other words, to “obtain a copyright,” the creator need only put the work into a tangible means of expression (drawing, recording, etc.). Neither registering the copyright nor placing the © symbol on the work is required for obtaining a copyright.6 Practice Tip An effective way to explain this is to point to a doodle on a page and explain to the person that the doodle is copyrighted. It is original (presumably not copied); creative (it is not functional, useful, or practical); and fixed in a tangible medium of expression (drawn on paper). Neither copyright notice nor registration is required for the copyright to exist.

Including a copyright notice and/or registering the copyright do have their advantages. Placing the copyright notice (typically in the form “© [or “Copyright”] + year of publication + owner’s name”) puts the public on notice that the work is protected by copyright and prevents people, if they copy or use the work without permission, from claiming that they did not know the work was protected. In other words, an infringer cannot claim innocent infringement. A copyright notice is highly recommended (as discussed in more depth near the end of Chapter 2).

6. Prior to entry into the Berne Convention on March 1, 1989, notice was required for a published work to maintain its copyright. If there was no notice, the work was considered public domain.

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G. Registration Enhances Copyright Protection and Remedies Registration of the copyright also has its advantages. Registration within three months of publication of the work or before infringement begins makes attorneys’ fees and additional damages available pursuant to 17 U.S.C. § 412. These types of damages are called “statutory” damages and are discussed in more detail in the damages section of the litigation chapter (Chapter 6). Without registration prior to infringement, a copyright owner is limited to “actual” damages caused by the infringement and may not recover attorneys’ fees. 17 U.S.C. §§ 504, 505, 412. Actual damages are also discussed at length in the damages section of the litigation chapter (Chapter 6). Practice Tip From a practical perspective, without statutory damages, many copyright infringement lawsuits are not financially feasible because the actual damages (lost profits and unlawful gains) are often very low. These issues are discussed in more detail in the chapter regarding registration (Chapter 2), as well as in the chapters regarding cease and desist letters (Chapter 5) and litigation (Chapter 6).

Timely registration also creates a presumption that the copyright is valid. 17 U.S.C. § 410(c). Thus, the burden of proof is switched such that the defendant then has the burden to show that the copyright is not valid. This is only true if the registration occurred within five years of publication of the work. See the definition of “publication” in 17 U.S.C. § 101 and discussed below.

H. Registration Is a Prerequisite to Copyright Litigation Aside from the benefits of early registration, registration is required before litigation may be instigated. 17 U.S.C. § 411. The court does not have jurisdiction until the work is registered. Thus, if a work has not been registered but infringement has occurred such that the copyright owner wants to bring a lawsuit, there is a cause of action for infringement, but there is no jurisdiction until the copyright is registered. There is a split in the circuits as to whether the copyright actually be “registered” or the registration application simply be submitted. There are also splits within the circuits where some districts require registration and others only require application. See the chart in the Appendix for a jumping-off point of cases in the different circuits. Typical registration can take up to eight months; however, a registration can be expedited for an additional fee. See Chapter 2 for more detail if the jurisdiction in which your client wishes to file his lawsuit requires final registration rather than just application.

Copyright Basics

I. Copyrights Are Usually Owned by the Author Under copyright law, the creator of the work—whether a book, painting, sculpture, film, or song, is referred to as the “author.” Thus, as a general rule, the author is the party who actually creates the work—the person who translates an idea into a fixed, tangible expression entitled to copyright protection. 17 U.S.C. § 102. Copyright initially vests with the author. 17 U.S.C. § 201(a). An author may transfer his rights in a copyright to someone else through a license or assignment (see Chapter 3 for extensive discussion of assignments and licenses). However, there is an exception to the rule that the author owns the copyright, which is the “work for hire” doctrine.

J. Under the “Work for Hire” Doctrine, the Employer or Commissioner Owns the Copyright A work made for hire is defined in 17 U.S.C. § 101. There are two categories of authors that can create a work made for hire: employees or independent contractors commissioned to create a specific work. The landmark Supreme Court decision in CCNV v. Reid held that to determine whether a work is a “work made for hire” within the section 101 definition, a court should first apply general common law of agency principles to ascertain whether the work was prepared by an employee or an independent contractor, and depending upon the outcome, should then apply either § 101(1) [employees] or § 101(2) [independent contractors]. 490 U.S. 730, 743 (1989). Employees who create original works within the scope of their employment are not considered the authors and do not own the copyright in those works. 17 U.S.C. § 101. Rather, their employer is the author and the employer owns the copyright.7 17 U.S.C. §§ 101, 201(b). Practice Tip In a work for hire situation, the individual who creates the work does not exist under the copyright law in the sense that he is not the author at any point. The employer or commissioner is the author. In other words, it is not as though the creator is the author and owner, and then he is deemed to have automatically transferred the copyright. In reality, the creator has no rights during the process at all.

For instance, a software engineer who is employed in the accounting division of a corporation to develop accounting software does not own the

7. Note that if the employer is the United States government, copyright cannot be claimed at all. 17 U.S.C. § 105.

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copyright in the code he develops when he creates it as part of his job. The company is the author. In addition, even if the software engineer creates accounting code at his house, on his own time, he does not own the copyright in the code because that is what he is employed to do. However, if that same software engineer develops an online game (unrelated to his job duties) on his own time, he may own the copyright in that work. Further, if that software engineer writes the great American novel, even if he does so using company computers, resources and time, he owns the copyright in that work because it was not created as part of his job. Practice Tip Whether a work was created as part of an employee’s job duties is very highly litigated, is often a close call, is often counterintuitive, and is not always clear. There are scores of cases interpreting this issue, so be sure to do research to find cases in your jurisdiction and that are apposite to your facts.

A work that is commissioned from an independent contractor can also be a “work for hire.” 17 U.S.C. § 101(2). This area causes a lot of confusion for the company or people commissioning the work. A work commissioned from and created by an independent contractor is a “work for hire” if it (1) falls within one of the nine categories listed in the statute, and (2) a written agreement is executed between the parties. The nine categories listed in the statute are: (1) A work specially ordered or commissioned for use as a contribution to a collective work (2) A part of a motion picture or other audiovisual work (3) A translation (4) A supplementary work (5) A compilation (6) An instructional text (7) A test (8) Answer material for a test (9) An atlas Practice Tip Do not look for a pattern in which types of works are included and which are not; this was a product of lobbying efforts, not logic.

In addition, the written agreement between the parties must specify that the commission is a work for hire, and the agreement must be signed by

Copyright Basics

both parties. 17 U.S.C. § 101 “Work made for hire” Subsection (2). If no written agreement is entered, or the agreement does not meet the requirements, or the work is not one of the nine mentioned, then the copyright in the work is owned by the author and not the party that commissioned the work.

Practice Tip Clients are often taken by surprise when a work for hire agreement fails. We often hear, “What do you mean I don’t own it? I commissioned it, I paid for it, I helped design it.” Often these agreements fail because only one party signed the agreement. Even if executed correctly, a work for hire cannot exist unless it falls within one of the nine enumerated categories. For example, photographs, artwork, and software are not enumerated and thus cannot be a work for hire (unless they are part of a compilation or otherwise fall within the nine categories). To avoid such a surprise, even if you think the work falls within one of the categories be sure to include assignment language in the agreement as well. See Chapter 3 regarding licenses and assignments for more detail.

As the Supreme Court in CCNV v. Reid pointed out, classifying a work as “made for hire” determines not only the initial ownership of its copyright but also the copyright’s duration, § 302(c); the owners’ renewal rights, § 304(a); termination rights, § 203(a); and the right to import certain goods bearing the copyright, § 601(b)(1).

K. When the Author Cannot Be Located or Identified, the Work Is Called an “Orphan Work” An “Orphan Work” is a copyrighted work whose owner may be impossible to identify and locate. The problem that arises with orphan works is that if a potential licensee cannot find the owner, he cannot obtain the license and cannot use the work. Museums have problems with this issue where the author cannot be identified, and they cannot display the work in their museum. At the time of publication, legislation called the “Orphan Works Act” was pending. This legislation proposed, among other things, a solution to the orphan works problem whereby a potential licensee could use an orphan work if he had searched for the copyright owner using “diligent effort,” using reasonable steps and technology, including a search of the Copyright Office records. The legislation proposes that if the owner cannot be found after a diligent search, the user may use the work but must attach the orphan symbol to the work, and if the owner appears, the user must pay the owner “reasonable compensation” (reflecting objective market standards) or face liability. The legislation also proposes that the Copyright Office is to

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provide a “best practice” guide on its website and that a database of all registered pictorial, graphic, and sculptural works be set up and publicly available. To check the status of the bill, you can go to http://www.opencongress.org/ bill/110-s2913/show.

L. Copyright Protection Lasts for Varying Amounts of Time The current Copyright Act provides for the duration of copyright in various sections, namely 17 U.S.C. §§ 302–305. The United States is a signatory to the Berne Convention (as of March 1, 1989), which provides that the term length must be at least the life of the author plus fifty years but that countries may extend the term length. The Copyright Term Extension Act (CTEA) of 1998, also known as the Sonny Bono Copyright Term Extension Act, extended the term in the United States by an additional twenty years. This act is often referred to as the “Disney Act” or the “Mickey Mouse Protection Act” because it is believed that the Disney Corporation was a strong force behind getting the extension passed. Proponents of the act claimed that it was necessary to bring the United States in line with other countries, including many European countries that had already extended the copyright term. Prior to the CTEA, under the Copyright Act of 1976, a copyright would last for the life of the author plus 50 years, or 75 years for a work of corporate authorship. The CTEA extended these terms so that now a copyright lasts for the life of the author plus 70 years (17 U.S.C. § 302(a)), and an anonymous work or a work of corporate authorship (a work made for hire) lasts for 95 years from its first date of publication or 120 years from its date of creation, whichever endpoint is earlier. 17 U.S.C. § 302(c). Works created before January 1, 1978 have different term lengths because they were subject to certain extensions of terms. See 17 U.S.C. §§ 303, 304. Take a look at the quick reference guide, “Calculating Copyright Term Lengths,” at the end of this chapter. Practice Tip There are many websites that provide grids for determining copyright terms and books that do the same. Cornell has an excellent chart that can be found at http://www.copyright.cornell.edu/public_domain/ (organized by publication date). Another useful chart is found at http://www.librarylaw.com/ DigitizationTable.htm (organized by year, created by Mary Minow); The Copyright Office also has a circular, “Duration of Copyright,” with useful explanations and can be found at http://www.copyright.gov/circs/ circ15a.pdf.

Copyright Basics

Most countries are signatories to the Berne Convention, with the exception of several African and Asian nations. The World Intellectual Property Organization provides detailed information regarding the Berne Convention and other international treaties, including a list of the various countries that are signatories to the Berne Convention. See http://www.wipo.int/treaties/ en/ip/berne/index.html. Practice Tip The Copyright Office contains a fantastic circular listing the various international relationships that the United States has with various countries related to copyrights titled “International Copyright Relations of the United States” and can be found at http://www.copyright.gov/circs/circ38a.pdf. Wikipedia also has a great list of copyright terms in various countries although it comes with the requisite disclaimer that you should double check the sources cited on its site. See http://en.wikipedia.org/wiki/List_of_countries’_ copyright_length (or search: copyright term lengths wiki in the Google search engine).

M. “Publication” Is a Central Event for a Copyrighted Work Practice Tip Make sure you can explain “publication” to your clients because it is a central event for copyrighted works.

Throughout the copyright statute, the term “publication” is used as a significant occurrence. Pursuant to 17 U.S.C. § 101, “publication” is defined as the distribution of copies of a work to the public by sale, rental, lease, lending, or other transfer of ownership. Distributing even one single copy of a work can be publication. And offering to distribute copies for purposes of further distribution, public performance, or public display, constitutes publication under the statute. However, a public performance of a work or the display of a work does not constitute publication so long as no tangible copies of the work are also offered for transfer. For example, hanging a painting at an art gallery is not “publication”; but sending out invitations for the gallery opening with a picture of the painting is considered a “publication.” Selling an original of a work is not considered publication. Although not clear from the face of the statute, the legislative history points to transfer of original as not publication.

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Quick Reference Guide Calculating Copyright Term Lengths

If the work was created on or after 3/1/1989 (published and unpublished): • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate owned work: the shorter of 95 (from publication) or 120 (from creation) (17 U.S.C. § 302) If the work was created on or after 1/1/1978 but before 3/1/1989: • If unpublished, then • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 120 years from creation • If published on or after 3/1/1989: • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous or corporate owned work: 95 years from publication • If published on or after 1/1/1978 and before 3/1/1989 with copyright notice: • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous or corporate owned work: 95 years from publication • If published on or after 1/1/1978 and before 3/1/1989 without a copyright notice, but registered within 5 years of publication: • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 95 years from publication • If published on or after 1/1/1978 and before 3/1/1989 without a copyright notice and not registered within 5 years of publication: • Public domain (17 U.S.C. §§ 302, 405)

Quick Reference Guide 17

If the work was created before 1/1/1978: • Unpublished • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 120 years from creation • Published before 12/31/63 with a copyright notice and copyright was renewed: • 95 years after publication • Published before 12/31/63 with a copyright notice and copyright was not renewed: • Term expired • Published on or after 1/1/1964 and before 1/1/1978 with copyright notice: • 95 years after publication • Published before 1/1/1978 without a copyright notice: • Public domain • Published on or after 1/1/1978 and before 3/1/1989 with copyright notice: • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 95 years from publication • Shall not expire before 12/31/2047 • If published on or after 1/1/1978 and before 3/1/1989 without a copyright notice but registered within 5 years of publication: • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 95 years from publication • If published on or after 1/1/1978 and before 3/1/1989 without a copyright notice and not registered within 5 years of publication: • Public domain • If published on or after 3/1/1989 and before 12/31/2002 (with or without notice): • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 95 years from publication • Shall not expire before 12/31/2047

18 Chapter 1 Brief Introduction

• If published on or after 1/1/2003 (with or without notice): • Single author: Life + 70 years • Joint work: Life of author latest to die + 70 years • Pseudonymous, anonymous, or corporate-owned work: 95 years from publication (17 U.S.C. §§ 303, 304, 405)

CHAP T ER

2 Copyright Registration and Notice

I. Copyright Registrations: Explaining the Benefits to a Client

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A. The Cost of Registration Is Low

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B. The Benefits of Early Registration Are Significant

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C. Registration Is Required Before Litigation

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D. Registration Allows Recordation with U.S. Customs

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II. Copyright Registration: The Guidelines

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III. Copyright Registration: The Application

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A. The Forms Vary Depending on the Work

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B. The Deposit Material Requirements Vary Depending on the Type of Work

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C. The Fees Vary Depending on the Method of Registration

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IV. Copyright Registration: The Method

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V. Copyright Registration: Completing the Application

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A. The Work Being Registered

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1. 1a: Work Being Registered

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2. 1b: Title of the Work

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3. 1c: Serial Issues

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4. 1d: Previous or Alternative Titles

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5. 1e: Year of Completion

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6. 1f: Date of Publication

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7. 1g: ISBN

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8. 1h: Nation of Publication

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9. 1i: Published as a Contribution in a Larger Work

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10. 1j: More Regarding Serial Issues

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11. 1k: Preregistered Works

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B. Author

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1. 2a: Personal Name/2b: Organization Name

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2. 2c: Doing Business As

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20 Chapter 2 Copyright Registration and Notice 3. 2d: Year of Birth/2e: Year of Death

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4. 2f: Citizenship, Domicile

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5. 2g: Author’s Contribution

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6. 2h: What the Author Created

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C. Claimant

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1. 3a: Personal Name/3b: Organization Name

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2. 3c: Doing Business As

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3. 3d: Address

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4. 3e: Where Claimant Is Not an Author

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D. Limitation of Copyright Claim

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1. 4a: Material Excluded from the Claim

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2. 4b: Previous Registrations

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3. 4c: New Materials Included in the Claim

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E. Rights and Permissions Contact

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F. Correspondence Contact

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G. Registration Certificate Contact

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H. Certification

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VI. Copyright Registration of Computer Programs

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VII. Expediting Registration

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VIII. Preregistration

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IX. After the Registration Certificate Issues

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X. Copyright Notice Should Be Included on All Works

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A. A Copyright Notice Includes Three Elements

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Copyright Registrations: Explaining the Benefits to a Client

This chapter covers the practical aspects of registering a copyright, from where to find the appropriate forms to what deposit materials are required. It also explains in the last section why notice should be placed on every work even if the copyright is not registered. First, we start with explaining the benefits of registration to your client.

I. Copyright Registrations: Explaining the Benefits to a Client Registration is not required for copyright protection. So why do it? Practice Tip Couching the explanation to your client in terms of return on investment— ROI—is often effective. The cost of an early registration is low, and the potential benefits are significant. Copyright registrations are arguably the best deal in intellectual property.

While it is true that copyright exists as soon as a work is put into a tangible medium of expression, registration is required in order to enforce the copyright through litigation. Furthermore, registering the copyright before it is absolutely necessary has significant benefits.

A. The Cost of Registration Is Low First, the cost of registration at the date of publication was $45 for form CO applications or paper applications and $35 for purely online applications. As of publication of this book, the Copyright Office had submitted to Congress a proposed new fee schedule where the fee for registration for purely online applications would remain $35, the fee for a form CO application would be $50, and the fee for a paper form would be $65. The Copyright Office is clearly encouraging online applications over paper applications and cites the decreased processing time for online applications. Practice Tip Be sure to check the current fees on the Copyright Office homepage (www.copyright.gov), by linking to the “Current Fees” page at http://www. copyright.gov/docs/fees.html.

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Chapter 2 Copyright Registration and Notice

Most attorneys will complete the paperwork for a simple application for a nominal fee (once instructed, paralegals or assistants can complete the basic paperwork) and can even be quoted on a flat-fee basis. For a more complex application (involving trade secrets, derivatives, compilations, collections, multiple authors, or contractual agreements), the fee may be higher and quoted on an hourly basis. In any event, copyright registrations are well worth the money. Practice Tip For prolific artists who create large numbers of works or for photographers who can create thousands of works in a short amount of time, the low fee can quickly add up if they are registering each work. Fortunately, there is the option to register multiple works as a collection. Collections only incur one registration fee and can cover as many works as the author wishes. For most works, they must be unpublished to be part of a collection. For photographers, however, even published photographs can be part of a collection (a result of lobbying efforts). The downside of a single collection registration is that only one instance of copyright infringement is deemed to have occurred even if multiple works within the collection are infringed, which affects statutory damages. This is discussed in more depth below in the section regarding statutory damages.

Many companies and sophisticated copyright owners eventually create a regular copyright registration program internally to systematically register their copyrights in regular intervals. You can encourage those clients to send you materials on a regular basis to register. Once they become practiced, clients often will want to take the registration in-house to save on the attorneys’ fees. This can work for simple applications but can be dangerous for more complex ones. If a client decides to take registration in-house, it is important that an attorney is involved in setting up a program and that the attorney continues to work closely with the individual who will be completing the applications. Practice Tip If there are changes in the copyright registration procedure, make sure to update the client to ensure that she follows the correct process. In addition, if there is turnover at the client’s office, be sure to retrain the new copyright person to ensure she also completes the process correctly. By doing this, you will both make a friend and keep a client.

Copyright Registrations: Explaining the Benefits to a Client

B. The Benefits of Early Registration Are Significant Registration makes additional damages and attorneys’ fees available to the copyright holder. If a work is registered before infringement occurs (or within three months of publication if the infringement happened to occur within that period), “statutory” damages and attorneys’ fees are available. 17 U.S.C. § 412. Statutory damages dictate a minimal amount of monetary damages. The statute provides, “. . . the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. . . .” 17 U.S.C. § 504(c)(1). Furthermore, where infringement is shown to be willful, the maximum is raised to $150,000 (however, innocent infringement can lower the minimum to $200—a good reason for copyright owners to include the copyright notice so they preclude that lower floor). 17 U.S.C. § 504(c)(2). If there is no registration before infringement, the copyright owner is only entitled to actual damages such as lost profits or profits gained by the infringer attributable to the infringement. Actual damages are often difficult to prove or simply nonexistent or small. Copyright owners that have prior registration regularly throw out the $150,000 per infringement number in cease and desist letters and in litigation. In short order, a case that had fairly low damages (because there were no sales of the infringing product, for example), can become financial feasible for the copyright owner and turn into a scary proposition for an infringer. As such, a registration prior to infringement is an excellent bargaining chip for a copyright owner who is looking to quickly stop infringement and may make enforcement viable. Practice Tip Because actual damages are often negligible, copyright litigation can be cost prohibitive if there was no registration before infringement. Registration is therefore vital in ensuring the financial ability to enforce a copyright.

Furthermore, registration within five years of publication of the work creates a presumption that the copyright is valid. 17 U.S.C. § 410(c). This makes enforcement much easier because the infringer will have the burden to show that the copyright is invalid. It will make initial cease and desist letters stronger because the registration can be included, the burden shifts to the recipient, and there is no necessity of delay (for registration time) before litigation might ensue.

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Practice Tip Collective works are a great way to save on registration fees. However, as mentioned above, a collective work is one single registration, so even if multiple works within the collection are copied, the copyright owner is only entitled to one instance of copyright infringement. One option is to register collections of works and once an author determines which of those works are popular (because there are always some that are more popular than others), she can file separate registrations for those particular works. That way, if Dog Painting 1, Dog Painting 25, and Dog Painting 256 turn out to be the popular works in the Dog Painting Collection and all three of those works are infringed by an infringer, the copyright owner will be entitled to three instances of statutory damages (one for each work), rather than only one instance (one for the collection).

C. Registration Is Required Before Litigation Registration is required before a case may be brought. 17 U.S.C. § 411. Some jurisdictions require that the copyright be “registered,” while others only require that the registration application be submitted. A Quick Reference Guide at the end of Chapter 6 with cases listed for each circuit should give you a start on that research, but be sure to Shephardize these cases because while they were current when the manuscript was submitted, case law is constantly changing. Either way, application or registration causes delay. In a jurisdiction that requires registration, this is particularly true because an application can take up to eight months to be registered. To expedite this, which is usually desired in litigation, an expedited application may be filed. These applications, however, cost approximately twenty times the amount of a regular application. Currently, the cost of special handling is an additional $685 per application, making $730 the total filing fee for the application.1 Note that if your client has several works that have been infringed upon, filing all of them using the expedited method can become expensive very quickly, which is another reason to register works regularly so that they are registered before infringement.

1. You can check the current costs for applications at the Copyright Office website, www.copyright. gov by clicking on the link “Current Fees.” http://www.copyright.gov/docs/fees.html.

Copyright Registration: The Application 25

D. Registration Allows Recordation with U.S. Customs Registration also allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies. Once a registration is recorded, U.S. Customs can deny entry of, seize, and eventually destroy, goods that infringe upon the copyright. This is discussed in more detail in Chapter 7 regarding United States Customs and the International Trade Commission.

II. Copyright Registration: The Guidelines The Copyright Office website is an excellent resource. It includes “circulars and brochures” which offer easy to understand guidance on deposit requirements, fee schedules, notice requirements, special handling, special relief, renewal, and much more. The website includes fillable forms, step-by-step instructions for these forms, and explanations of which forms to use. Practice Tip The Copyright Office circulars should be the first place that you turn for answering basic questions regarding registration and copyrights in general. See http://www.copyright.gov/circs/

III. Copyright Registration: The Application There are three parts to an application for copyright registration: (1) The form (2) The deposit material(s) (3) The fee

A. The Forms Vary Depending on the Work The Copyright Office provides for online registration. This method is encouraged and is cheaper than the old paper filing, even where it is required that you deposit materials in hard copy (which is often the case). The CO (fillable) form on the Copyright Office website and the electronic Copyright Office (eCO) form are nearly identical. On both of these forms,

26


there are six boxes that correspond to the different types of work and are counterparts to the old forms (discussed below). The boxes are: (a) (b) (c) (d) (e) (f)

Literary work Visual arts work Sound recording Performing arts work Motion picture/audiovisual work Single serial issue

Literary works include written materials such as books, computer programs, compilations, instruction manuals, and speeches. Visual Arts works include sculptures, paintings, photographs, murals, bumper stickers, decals, cartoons, comic strips, architectural plans, technical plans, maps, globes, advertisements, games, greeting cards, and jewelry. Sound recordings include audio recordings such as music, songs, and audio books. Performing arts include ballets, operas, and musical compositions. Motion picture/audiovisual work includes videos, films, and television recordings. Single serial issue means works that are issued or intended to be issued in successive parts bearing numerical or chronological designations and intended to be continued indefinitely. These include periodicals, newspapers, magazines, bulletins, newsletters, and journals. In the summer of 2008, the Copyright Office switched over from paper forms to online registration. While it is still possible to register works using paper forms (although they are only available by telephoning the Copyright Office), the electronic method is encouraged for swifter results and cheaper fees. Nonetheless, you will likely see the old paper forms in form folders, from clients, or during litigation of older copyrights. The old paper applications had different forms for different types of copyrightable works. They include: (a) (b) (c) (d) (e)

Form TX (literary works) Form VA (visual arts works) Form PA (performing arts works, including motion pictures) Form SR (sound recordings) Form SE (single serial issues)

B. The Deposit Material Requirements Vary Depending on the Type of Work There are different requirements for deposit materials depending on the form of the copyrighted work. In general, the deposit requirements are: (1) Unpublished works: one complete copy (2) Works published on or after January 1, 1978: two complete copies of the best edition

Copyright Registration: The Application 27

(3) Works published before January 1, 1978: two complete copies of the works as first published (4) Works first published outside the United States: one complete copy of the work as first published There are many different requirements for the different types of works, and it is best to check the circular for the particular type of work to ensure you deposit the correct material. Practice Tip If you are unable to find the answer on the Copyright Office website as to the deposit materials required, you can call or write to the Office for advice. They tend to be very helpful.

Some examples of different deposit requirements are: • Computer programs: one copy of the first and last 25 pages of source code or the entire program if less than 50 pages. See http://www. copyright.gov/circs/ for the circular titled “Copyright Registration for Computer Programs.” Although if the program is also considered a trade secret, then the requirements are different. • Materials in CD-ROM format: one copy of the CD-ROM, the operating software, and any manuals. If registration of the computer program is sought, the deposit requirement for computer programs also applies. • Motion Pictures: a description of the nature and general content of the work, a complete copy of the work (best edition if first published in the United States—film is the preferred edition; first edition; or best edition if first published outside the United States). See http://www. copyright.gov/circs/ for the circular titled “Copyright Registration for Motion Pictures Including Video Recordings.” • Unpublished artwork: you may submit a photograph of the artwork. • Published artwork: you must submit a copy in the form in which it is published. For example, if there are posters of the work, a poster should be submitted. • Multimedia package: submit the entire work. For example, for a board game, submit a copy of it. Practice Tip For published artwork, if it is a limited edition or has a lot of value, rather than submitting the copy that will have to remain with the Copyright Office, you can seek special relief to submit a photograph instead. 37 CFR 202.20(d).

28 Chapter 2 Copyright Registration and Notice

Practice Tip Only send copies of a work to the Copyright Office and not the original because the Copyright Office may eventually be forced to throw out some of the deposit material they have; like everyone else, they cannot keep everything they receive.

C. The Fees Vary Depending on the Method of Registration The fees for copyright registrations are listed on the Copyright Office website. At the time of this book, they are $45 for a paper application and the fillable form, and $35 for an online application. To expedite the registration, an additional fee of $685 is required. In person, the fee can be paid by check or through a deposit account. Through the electronic Copyright Office, the fee can be paid by credit or debit card, electronic check, or deposit account. Through the mail or overnight delivery, only check or money orders are accepted. It is likely that your firm has a deposit account. If your firm does not have one, suggest that they set one up. You will need to talk to both the IT and accounting departments. Practice Tip Before filing applications using your firm’s deposit account, check with the person at your firm who administers the deposit account to determine the amount of money in the account, particularly if you are filing applications that require special handling and an associated fee. Alternatively, you can check with the Copyright Office to obtain the balance. Often, a firm will not realize that the deposit has been used up because those using the account do not notify the accounting department. Overdraft of the deposit account incurs a fee, and even worse, the Copyright Office may not process the application or even notify you that the application has been delayed.

IV. Copyright Registration: The Method As mentioned above, in 2008, the Copyright Office introduced new methods for registration. The current preferred method is through the electronic Copyright Office (eCO), which allows for registration online. The Copyright Office is promoting this method and lists as its advantages: • • • •

Reduced filing fee Faster processing time Online status tracking Increased options for payment of the fee

Copyright Registration: The Method 29

See http://www.copyright.gov/circs/ for the circular titled “Copyright Office Fees.” To use the eCO, you must first register as a user on the Copyright Office website. Once that is done, you will complete the required forms online and submit them directly to the Copyright Office electronically. Often, you will be able to upload and submit the deposit material online as well. However, some works will need to be sent in hard copy (for instance, a book, CD-ROM, video of a movie) and in such instances, the Copyright Office instructs you to print out a shipping slip that is to be included with the deposit that you can then mail, courier, or hand deliver to the office. The slip is linked to the deposit material with a bar code. Another option for registration is by using the fillable CO form that is available on the Copyright Office website. The Copyright Office encourages this method, stating that these forms are processed more quickly than hard copy forms. This form is downloaded as a PDF with fields to fill in. Once the form is complete, you print it and submit it to the Copyright Office by your preferred method, with the appropriate fee and deposit material. Finally, filing by the standard paper method is still permitted. The different forms (TX, VA, SE, SR, PA) must be requested from the Copyright Office by telephone—they are no longer available on the website. Again, you complete the form and submit it to the Copyright Office by your preferred method, with the appropriate fee and deposit material. Some applications must be submitted in paper form. These are listed in the “Copyright Basics” circular as • Form D-VH for registration of vessel hull designs; • Form RE for renewal of copyright claims; • Forms for group submissions/collections, including Form GR/PPh/ CON (published photographs); Form GR/CP (contributions to periodicals); Form SE/Group (serials); and Form G/DN (daily newspapers and newsletters). See http://www.copyright.gov/circs/ for the circular titled “Copyright Basics.” Those forms are still available on the Copyright Office website for download.

Practice Tip When sending something to the Copyright Office (because you are submitting the application in paper form, using one of the old forms or the CO form, because you are required to do so for certain forms, or because you are submitting hard copy deposit materials), use certified mail, courier, hand delivery, or overnight mail, so you have delivery confirmation. The Copyright Office does not independently provide confirmation.

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V. Copyright Registration: Completing the Application The fields in the application forms seem pretty self explanatory, but mistakes can easily be made. This section walks through each field on the forms. On the Copyright Office website, you can download the Form CO Instructions on the forms page at http://www.copyright.gov/forms/. The eCO application screens also include instructions as you walk through the application.

A. The Work Being Registered 1. 1a: Work Being Registered There are several boxes that can be checked. You can only choose one, so pick the most appropriate one for the work. Examples of types of works that fall into each category are listed above in section “Copyright Registration: The Application.” If there is more than one category that would apply, choose the one that is predominant. This will not limit what the registration covers so long as you properly describe the author’s contribution below in section 2h. Practice Tip For example, a children’s book may have pictures along with text. You can choose either literary work or visual arts work in this section (whichever is more applicable in your specific case). Then, in section 2h, include both descriptions (if they are owned by the same author) to ensure that the registration covers both. Similarly, a board game covers the text, the pieces, and the art on the board—all in one registration—so long as all these are listed in section 2h.

Practice Tip When there are different authors for different portions of the work, you may want to submit multiple applications. For example, a song can have two separate works with two different authors—the sound recording and the musical composition. A musical composition is the music and lyrics and is registered as a “Performing arts work.” A sound recording is the recording of the song being performed and is registered as a “Sound recording.” These are two separate copyrights, and separate registrations should be filed. Further, in the children’s book example, there may be different authors of the text and the pictures, in which case there should be different registrations.

Copyright Registration: Completing the Application

2. 1b: Title of the Work Provide the title exactly as it appears on the deposit. If it is untitled, you can state that, or you can provide a descriptive title. If it is a collection, you should provide the title of the collection, and then you can add a title for each individual component if you wish by clicking the button to add title spaces. Practice Tip For a collection, provide a fairly descriptive title. For instance, “Spring 2002 Collection” or “Puppy Drawings Collection.”

3. 1c: Serial Issues A “serial” is a work issued or intended to be issued in successive parts bearing numerical or chronological designations and intended to be continued indefinitely. Examples are newspapers, magazines, and journals. The information requested is self explanatory. 4. 1d: Previous or Alternative Titles If there is a different title for the work, you can provide it here. This is not the place to input individual titles for works in a collection; they should be provided in section 1b in the additional title spaces. 5. 1e: Year of Completion This is the date that the work was first fixed in a tangible medium of expression. If it was a work that was created over multiple years, give the year it was finalized. Similarly, if this is a new version of another work, provide the date of the new version, not the original. This date is different from and cannot be later than the date of publication. 6. 1f: Date of Publication Provide the month, year, and date of first publication. If it is unpublished, do not provide a future date; simply leave it blank. Practice Tip If your client does not know the exact date of first publication, ask for her best guess.

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Reminder Remember, “publication” is the distribution of a copy or copies of a work to the general public by sale, offer for sale, distribution of copies, rental, lease, lending, or other transfer of ownership. But public performance of a work or the display of a work on their own do not constitute publication. Also, sale of an original single work is not considered publication on its own.

7. 1g: ISBN If an International Standard Book Number (ISBN) has been assigned, then provide it here. Otherwise, leave it blank. 8. 1h: Nation of Publication State the country in which the work was first published. If the work is not published, leave this blank. If the work was first published simultaneously in the United States and another country, check United States. If the work was first published in a non–“treaty party” country and published in the United States within thirty days of first publication, check United States. A non–treaty party is a country that is not a party to any international copyright agreement. This will rarely occur as almost all countries of the world are currently treaty parties. Examples of non–treaty party countries are Afghanistan, Bhutan, Ethiopia, Iran, Iraq, Nepal, Palau, and Syria. See Circular 38a, “International Copyright Relations of the United States,” for more information on treaty parties. 9. 1i: Published as a Contribution in a Larger Work Enter a title in this field if the work was a contribution to a larger work, such as an editorial in a newspaper, a small program within another computer program, or a song on a CD. 10. 1j: More Regarding Serial Issues Enter information in these fields if the work was a contribution to a serial, such as an editorial in a newspaper or article in a magazine. 11. 1k: Preregistered Works Provide this information if the work was preregistered.


B. Author 1. 2a: Personal Name/2b: Organization Name Complete either field 2a or 2b. This is either the individual who created the work (2a) or the organization that was the author if the work was a “work for hire,” including if the author was an employee (2b) [work for hire is discussed above in the introduction and defined in 17 U.S.C. § 101]. If the author is anonymous or pseudonymous, at line 2a you must either give the author’s legal name or list “anonymous” in the first name field. Practice Tip Note that this can be a tricky selection, and you need to ask your client for details regarding their employment and any contracts or agreements that were entered when he was creating the work. Even if he does not think he created the work as part of his employment, he may well have, and you should review his employment agreement to understand the scope of his employment.

2. 2c: Doing Business As Complete this section if the author does business under a different name— for example, an individual with a business name or a corporation “doing business as.” 3. 2d: Year of Birth/2e: Year of Death If the author is an organization, leave these fields blank. If the author is an individual, the year of birth is not required but is useful as a means of distinguishing authors of the same name, and the year of death is required if the author is deceased. 4. 2f: Citizenship, Domicile This field is required. For an organization, provide the country in which the organization is incorporated. 5. 2g: Author’s Contribution This field is required only if the work was a work “made for hire,”2 or the author is not identified or is identified by a pseudonym. Only one box may be checked.

2. See the description and elements above in the Introduction; 17 U.S.C. § 101.

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If the author is anonymous or pseudonymous, at line 2a you must either give the author’s legal name or list “anonymous” in the first name field. 6. 2h: What the Author Created This field is required, and multiple boxes may be checked. In the “other” category, do not include terms such as idea, process, procedure, system, method of operation, concept, principle, discovery, title, or name, because none of these are copyrightable. For a single serial issue, the preferred description of the authorship is typically “collective work.”

C. Claimant The claimant is either the author or the agent or organization to whom the author has transferred all of the rights in the U.S. copyright. 1. 3a: Personal Name/3b: Organization Name Complete either field 3a or 3b. 2. 3c: Doing Business As Complete this section if the claimant does business under a different name. 3. 3d: Address Complete this section as instructed. 4. 3e: Where Claimant Is Not an Author If the claimant is the author of the work, skip this field. If the claimant is not the author, provide the transfer information by checking the appropriate box to indicate how ownership was acquired. “Written agreement” includes a transfer by assignment or contract. “Will or inheritance” applies only if the person from whom the copyright was transferred is deceased. If necessary, check “other” and give a brief statement indicating how copyright was transferred, i.e., bankruptcy, default, or obligation.

D. Limitation of Copyright Claim This section is only applicable if the work contains or is based on: (a) Previously registered material (b) Previously published material


(c) Material in the public domain (d) Material not owned by the claimant These materials must be excluded from the registration because such materials are not owned by the copyright claimant. This section applies if the work is a derivative work. If none of those situations applies, then skip this entire section. Practice Tip You should register every version of a work. The successive versions only cover the new material, so if the first version is registered and an infringer only copies the new material from the second version that was not registered, statutory damages and attorneys’ fees are not available for that infringement of the new material. Even if the author of the underlying material and the registered work is the same, the Copyright Office takes the position that the registration only covers the new material in the registered work. There is case law, however, that says that if the copyright owner of the underlying work and the registered work are the same, the registration covers both the underlying work and the new material in the registered work for purposes of jurisdiction and standing. Xoom, Inc. v. Imageline, Inc., 323 F.3d 279 (4th Cir. 2003); Christopher Phelps & Assoc. LLC v. Galloway, 492 F.3d 532 (4th Cir. 2007); Streetwise Maps v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998). There is also case law that a registration for an original work does not create jurisdiction for a claim for infringement of a derivative work. See Dalton-Ross Homes, Inc. v. Williams, 83 U.S.P.Q.2d 1953 (D. Ariz. 2007).

1. 4a: Material Excluded from the Claim Select the box that describes the material to be excluded. “Text” includes source code, lyrics, writings, and scripts. “Artwork” includes sculpture, drawings, technical drawings, and photographs. “Music” includes written music. “Sound recording/performance” includes musical performance, books on tape, and recorded music. “Motion picture/audiovisual” includes movies, videos, series of images. If the work is a first published version that is identical to a previously registered but unpublished version, “Other” should be used, and the statement, “First publication of work registered as unpublished” should also be inserted. “Other” should otherwise only be used if none of the other boxes suffice, or additional explanation is necessary. 2. 4b: Previous Registrations Provide the registration number and year if the work or an earlier version was previously registered.

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3. 4c: New Materials Included in the Claim Select the box that describes the new material. All elements of authorship described in “Author created” (2h) should be accounted for in “New material included.” As with 4a, “Other” should only be used if none of the other boxes suffice, or additional explanation is necessary. The Copyright Office explains that “Compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” See Form CO Instructions on the forms page at http://www. copyright.gov/forms/. If the claim is for the compilation only, state “compilation” in “New material included.” A registration for a compilation does not include registration of the compiled material unless you check additional boxes for those materials. Therefore, if the claim is for the compilation and any other material, state both “compilation” and the material that has been compiled—for example, “compilation and foreword.” See the Copyright Office circular titled “Registering a Derivative Work.” Practice Tip Remember that a compilation is only protectable if there is something creative about the way in which the materials are compiled. Just compiling itself is not copyrightable—this is sometimes referred to as the sweat of the brow argument (even if it took time and effort, it is not copyrightable unless it was creative). As discussed in the introduction, a compilation of all of Shakespeare’s work organized in chronological order is not creative. However, a compilation of sonnets with an original connection and compiled in a creative way (not chronological or alphabetical) may have requisite creativity to be copyrightable.

Practice Tip Note that a collection of unpublished works is different from a compilation. A collection of unpublished works is discussed above under the section, “Copyright Registrations: Explaining the Benefits to a Client.”

E. Rights and Permissions Contact This will usually be the client’s information. However, you may include your information if the client has indicated that he wants you to handle rights and permissions.

Copyright Registration of Computer Programs 37

F. Correspondence Contact You should include your information in this section. If there is a mistake, you want the Copyright Office to be able to contact you so that you can manage the issue.

G. Registration Certificate Contact You should include your information in this section. When you receive the certificate, you then have the opportunity to write a nice letter to the client with the good news, and enclose the certificate. Be sure to keep a copy of the certificate for your files, and tell the client to keep the original in a safe place.

H. Certification Sign, type your name, date, and include the deposit account information if you have one. Practice Tip Remember that if you are submitting a paper form or deposit material in hard copy, send materials by overnight mail (with certificate of delivery) or courier, or if you are in D.C. (or have local counsel in D.C.), send it by messenger. By doing this, you will confirm delivery, and you will know the “effective” date of the registration immediately (the effective date is the date when the Copyright Office receives all of the effective elements in an acceptable form).

VI. Copyright Registration of Computer Programs Computer programs are a common copyright material, but the requirements for registration are somewhat different than other types of works, and the requirements are not completely intuitive. To start, there is no specific category on the forms for software—software is registered as a literary work (the TX Form if the paper form is being used). In addition, the deposit material required is unusual. Typically, an appropriate deposit for a computer program consists of the first and the last 25 pages of source code or the entire program if it is less than 50 pages. The page (or other material such as the insert on a disk) that contains the copyright notice should also be submitted. If filed through the eCO, the source code can be uploaded in PDF format and submitted online.

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If the deposit material does not list the title or version, insert the title and version so that the program can be identified (typically, we include a cover page with the source code that includes a title, a version indicator such as internal version number, the date of publication, and a copyright notice). Further, if a manual accompanies a computer program, one copy of it should also be deposited; however, it should be submitted in hard copy. Practice Tip Many clients will question the requirement for the “first and last pages” of code because many coding languages are not written or stored sequentially. In such instances, the client should try and reasonably estimate what fifty pages represent the “first and last” pages. If that is not possible, they should choose the fifty pages that best represent the substance of the code. Include a copyright notice on those pages.

If the computer program is stored in CD-ROM format, then the entire CD-ROM package (CD-ROM, operating software, and instructional manual) should be submitted in hard copy. The deposit should still include the first 25 and last 25 pages of source code for the program in order to obtain registration for the computer program itself. Practice Tip Clients sometimes use “scripted languages” for coding, and they will not have source code. The Copyright Office considers script the equivalent of source code, and the deposit material for script should be the same as if it were source code.

When the program contains trade secrets, to maintain the trade secret, the deposit material cannot reveal those trade secrets as the deposit is technically a publicly available document. To maintain the trade secret (which requires that it was kept “secret”), the proper actions must be taken to block that material from the deposit. Practice Tip Technically, the deposit material is a publicly available document. However, in order to view deposit material, a person must have a good reason (such as litigation). The public cannot just request the material without any reason. This information can help allay a client’s concerns over registering a work that contains trade secret material.

Copyright Registration of Computer Programs 39

There are several options for deposit of source code that contains trade secret material: (1) First and last 25 pages with portions containing source code blocked out (2) First 10 and last 10 pages of source code alone, with no blocked out portions (the blocked out portion must be proportionately less than the remaining material, and the visible portion must represent an appreciable amount of original code) (3) First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source code, with no blocked-out portions (4) For programs 50 pages or less in length, entire source code with trade secret portions blocked out In addition, the registration application must be accompanied by a cover letter stating that the material claimed contains trade secret material as well as the page containing the copyright notice (if any). Practice Tip In blocking out trade secrets, ask your client to identify the trade secret portion. Often in short programs, the entire program as a whole is a trade secret, and the client cannot identify specific trade secret portions. In that situation, redacting diagonal lines across the code works to protect the trade secret and complies with the deposit requirements.

Clients frequently revise software, and there are usually various versions or updates. Each version (as long as it contains new, copyrightable material) must be registered separately. Registration of the first version extends to the entire work, but registration of subsequent versions covers only the new or revised material added to that version. When registering those revised versions, submit as the deposit material the first and last 25 pages of the source code as long as the revisions occurred throughout the code. If the revisions were only in a specific part of the code, and there are no trade secrets, send fifty pages that are representative of the revised material. If revisions were only in a specific part of the code, and there is trade secret material, deposit twenty pages of source code containing the revisions with no blocked-out portions or any fifty pages of source code containing the revisions with the trade secret portions blocked out. Source code is preferred over object code. This requirement makes sense since object code cannot be read by the human eye. If a client refuses to or is unable to submit source code, he must state in writing that the object code submitted contains copyrightable material. The Copyright Office will accept the deposit but will only register the work under the “rule of doubt” because

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it is unable to properly evaluate the copyrightability of the work. The rule of doubt is an unclear concept3; it generally means that there is no presumption that the copyright is valid. However, the registration is still valuable for purposes of litigation. Practice Tip Software can take many months or years to develop, and clients sometimes include dates in the software that refer to development history or internal revision dates. If the program is the first published version but includes those internal revision dates, the Copyright Office suggests that you include a cover letter with the application explaining that the dates are simply internal revision dates, not version dates.

For more information regarding registering software, the circular titled “Copyright Registration for Computer Programs” offers guidance on the registration and deposit materials.

VII. Expediting Registration The need to expedite a registration will usually occur if you are in a jurisdiction where registration (rather than just application) is required before litigation may be instigated. In fact, a request to expedite—a request for “special handling”—requires a reason for the expediency, and one of the three permissible reasons is pending or prospective litigation. The other two permissible reasons are customs matters and contract or publishing deadlines that require expediency. A request to expedite can be done in person or by mail. If done in person, a special form will be completed. If done by mail, a cover letter must state the reason for the special handling (one of the three above) and a signed statement “certifying that the information contained in the request is correct to the best of the requestor’s knowledge.” In addition, as with all applications, the application must include the appropriate form, the deposit materials, and the fee. The special handling fee must also be included.

3. See the Copyright Office’s explanation at http://www.copyright.gov/reports/dbase.html at footnote 88.

Preregistration

If an application has already been filed, and you want to change it to special handling, the Copyright Office recommends submitting a new application and identical deposit material along with a statement “verifying that the application and deposit copies are identical to the original ones.” An expedited registration typically is promised within five business days, although the Copyright Office offers no guarantee. For more details on special handling, the circular titled “Special Handling” (currently number 10) is very useful.

VIII. Preregistration Preregistration is a service available for certain specified types of works that have had a history of prerelease infringement. The types of works the Copyright Office has specified as being possible to preregister are: • • • • • •

Motion pictures Sound recordings Musical compositions Literary works being prepared for publication in book form Computer programs (including video games) Advertising or marketing photographs

In addition, a work can only be preregistered if the following are all met at the time of preregistration: • The work is unpublished • The work is in the process of being prepared for commercial distribution, by being fixed in digital or physical format such as film or discs • The applicant reasonably expects commercial distribution of the work Preregistration is recommended if it is likely that the work will be infringed before it is released. The purpose is to allow an infringement action to be initiated before the work has been published and registered. See 17 U.S.C. § 411. In addition, preregistration allows for recovery of statutory damages and attorneys’ fees if there is infringement, and the appropriate registration is completed within the required time period (discussed below and in 17 U.S.C. § 408(f)). 17 U.S.C. § 412. Unlike registration, however, preregistration does not constitute prima facie evidence of the validity of the copyright or the facts in the application. Nor does it guarantee that the work, once completed, will be registered.

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Practice Tip Authors may submit works in progress or drafts for registration. However, a typical registration requires submission of deposit material. To maintain constant protection of drafts, they would have to submit a new application for each draft. Preregistration allows the author to protect the works in progress without submitting the draft as a deposit and without constantly submitting drafts. Preregistration is particularly valuable for someone like J.K. Rowling whose highly anticipated Harry Potter books were more likely to be intercepted in draft form (when being sent to her editor) and improperly prereleased (for example, on the Internet). Similarly, musicians and filmmakers often face such dilemmas where their working copy is sent to an editor for review, and there is a chance of interception and improper prerelease. Preregistration is meant for and is most useful for these types of situations.

Once the work has been completed, it should be registered; the preregistration is not a substitute for, nor a form of, registration. Rather, it is a notice of an intent to register a work once it is completed or published. Once the work has been completed and published, it must be registered as a published work within three months to maintain the benefits of preregistration. If the work has been infringed, it must be registered quickly. The statute requires that the copyright owner register the work within “one month after the copyright owner becomes aware of infringement.” See 17 U.S.C. §§ 408(f), 411; see also http://www.copyright.gov/prereg/. Furthermore, this must be “no later than three months after first publication.” See 17 U.S.C. §§ 408(f), 411. If an action for copyright infringement occurred before publication or within the first two months after it, and the copyright owner fails to register the work within one month of learning of the registration (which will also be within three months of publication), the court must dismiss the case. 17 U.S.C. § 408(f). To preregister a work, you will be required to submit an online application through the eCO, which includes a certification of a reasonable expectation that the work will be commercially distributed and that the information given in the application is correct, and a nonrefundable $100 filing fee (check the current fees on the Copyright Office website). You can also go to the forms page and click on the “PRE Form” which will direct you to the eCO. Practice Tip The eCO provides step-by-step instructions for completing the preregistration form. In addition, the Copyright Office provides information regarding the rules and regulations for preregistration through their home page (currently at http://www.copyright.gov/prereg/help.html) and circulars.

Copyright Notice Should Be Included on All Works 43

You should not submit any deposit materials with the preregistration application. Instead, you must give as full a description of the work as possible. The Copyright Office states that the “description should be as detailed and specific as possible, so that a court in a copyright infringement action can be satisfied that the allegedly infringed work is in fact the work described in the application. The description cannot exceed 2,000 characters (approximately 330 words).” See http://www.copyright.gov/prereg/help.html. The description need not contain confidential information, and remember that it will be made part of the online public record. As with other registrations, the effective date of the preregistration is the day the completed application and fee for an eligible work have been received in the Copyright Office. When the Copyright Office accepts the preregistration, it will send you an official notification e-mail containing the information from the application, the preregistration number, and the date. No certification will issue; however, you can obtain a certified copy of the official notification from the Certifications and Documents section of the Copyright Office.

IX. After the Registration Certificate Issues The effective date of the registration is the date the Copyright Office receives all the required elements in acceptable form, not the date the registration issues. After registration, additional actions may be taken that could not be taken before registration. As discussed above, litigation may be instigated only after registration. In addition, recordation of a transfer copyright ownership may only be effected after the copyright has been registered (see additional discussion of recordation of transfers in Chapter 3 regarding Copyright Transfer: Assignments and Licenses). Furthermore, remember to register derivative works and new versions of works. The registration only covers that which was deposited, so if new material is added and is later infringed, it will not be covered by the original registration, thus limiting recovery of statutory damages and attorneys’ fees.

X. Copyright Notice Should Be Included on All Works A copyright notice is not required for works published on or after March 1, 1989. A copyright notice was required for works published before March 1, 1989, and if one was not included, the work was considered public domain. For works that were published prior to March 1, 1989, include the copyright notice even now.

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Although not currently required, a copyright notice is nonetheless beneficial and you should encourage your clients to include one on all copyrighted works. By including a copyright notice, the owner of the copyright puts the public on notice that the work is protected by copyright, advises the public who to contact for a license, and decreases the chance for a claim that it is an “orphan work” (one where the copyright owner is unknown and cannot be found) or that the infringement was innocent. Such notice discourages copying and prevents an infringer from claiming innocent infringement. As mentioned, innocent infringement can lower the minimum statutory damages to $200. 17 U.S.C. § 504(c)(2). Registration is not required before including a copyright notice, and registration is not required to use the © symbol.

A. A Copyright Notice Includes Three Elements A copyright notice includes: (1) ©, “Copyright,” or “Copr.”; (2) The year of publication; (3) The owner’s name. The form of the copyright notice is typically © [ year of publication][owner’s name]. Rather than the © symbol, the word “Copyright” or the abbreviation “Copr.” may be used. To comply with international regulations (the Universal Copyright Convention) and receive copyright protection in member countries, the © symbol, rather than the English word, should be used. The exception to the date requirement is “when a pictorial, graphic, or sculptural work, with accompanying textual matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or useful articles.” See http://www.copyright.gov/circs/, the circular titled “Copyright Notice.” In these instances, the Copyright Office provides that the date may be omitted. “Phonorecords” of sound recordings—on discs, tapes, records, LPs—should include the (P) symbol (P in a circle) instead of the © symbol. An example is P 2002 Southern Records. For derivative works (for instance, a website that is updated where material is added and updated), a range of publication years is often appropriate although it is not required. The year of publication of the derivative or the compilation is sufficient. See http://www.copyright.gov/circs/, the circulars titled “Copyright Basics” and “Copyright Notice.” If a website first went live in 2002 and the client updates it regularly to include new information, the copyright notice might be “© 2002–2009 ABC Corp.” However, for a client that overhauls his website such that it would not qualify as a derivative work, the

Copyright Notice Should Be Included on All Works 45

year of the overhaul is the year that should be included in the notice: “© 2009 ABC Corp.” Alternatively, where there are two separate authors for a derivative work, the notice might be stated as follows: “© 1990 ABC Publishers; Introduction to Second Edition © 2008 Mary Smith.” Practice Tip A common question from clients is the year they should include. Pursuant to 17 U.S.C. § 101, “publication” is defined as the distribution of copies of a work to the public by sale, rental, lease, lending, or other transfer of ownership. For a software client, this will usually be the release date. For a website, this will usually be the date it went live. For an artist, this will be when he first offered reproductions of his painting/sculpture/photograph for sale, loan, lease, or other transfer. For the artist, displaying his work without the intention to transfer it or copies of it is not publication, and selling an original work is not a publication. For a speech, the giving of the speech is not publication because under the statute, a public performance is not publication. Sales or distribution of copies of the speech, however, would be publication.

For compilations, a single notice that is applicable to the entire compilation is sufficient to satisfy the notice requirement for the underlying contributions, regardless of the author’s name. 17 U.S.C. § 404(a). This was added in 1976 because prior to then, authors whose works were part of a compilation often lost their copyright without this allowance (notice was required to maintain copyright, and the notice that only stated the name of the owner of the compilation was incorrect and thus inadequate, in many instances, for the underlying contributors). If a writer wrote an article for a magazine or a column for a newspaper and licensed the right to publish and distribute to the magazine or newspaper, either one usually would only include one copyright notice for the magazine or newspaper (the compilation) with the magazine or newspaper name. The magazine or newspaper did not own the copyright in the article or column if it was just licensed, and such a notice was thus inaccurate and insufficient, and the copyright was lost to the public domain. This problem has been resolved by 17 U.S.C. § 404(a) (in 1976) as well as the current rule that notice is not required to preserve copyright (effective 1989). For unpublished works, the Copyright Office recommends a copyright notice such as “Unpublished work © 2007 John Doe.” See http://www.copyright. gov/circs/, the circular titled “Copyright Notice.” The date is the creation date rather than the publication date. The Copyright Office has issued regulations concerning the form and position of the copyright notice in the circular titled “Copyright Notice.”


It specifies where the notice should be placed for different forms of work. In general, the notice itself should be placed where someone can see it. “The notice shall be affixed to the copies in such manner and location as to give reasonable notice of the claim of copyright.” 17 U.S.C. § 401(c). For books, the notice may be placed in any of the following locations: title page, page immediately following the title page, either side of the front or back cover, or first or last page of the main body of the work.

CHAP T ER

3 Copyright Transfer Licenses and Assignments

I. Ownership of Copyrights

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II. Copyright Transfer

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A. Assignments

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B. Licenses

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C. Ownership of the Work Is Not the Same as Ownership of the Copyright

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D. An Effective Transfer Requires Two Main Elements

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E. A Nonexclusive License Is Not Technically a “Transfer”

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III. A Transfer Can Be Recorded with the Copyright Office

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A. Effecting a Recordation

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B. Advantages of Recordation

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IV. A Transfer May Be Terminated to Recapture the Renewal Period

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V. Drafting Agreements

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A. Work for Hire Agreement

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B. Assignment

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C. Exclusive License

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D. Nonexclusive License

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VI. Licensing in Specific Fields

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A. Music Licensing

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1. Obtaining the Rights

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2. Rates

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B. Art Licensing

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C. Book Licensing

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1. Obtaining Permission to Use a Book or Portions of a Book

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2. Publication Agreements and Book Deals

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D. Licenses in Educational Settings

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E. Licensing in Religious Settings

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VII. Use of a Person’s Image—The Right of Publicity 47

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Chapter 3 Copyright Transfer

I. Ownership of Copyrights The ownership of the copyright in a work initially vests in the author(s) of the work. If there are multiple authors, they are co-owners of the copyright. 17 U.S.C. § 201(a). However, if the work was created as a work made for hire, then the employer or the commissioner is the owner and owns all rights in the copyright, unless expressly agreed otherwise in a written agreement. 17 U.S.C. § 201(b). Practice Tip See the Introduction regarding details of work for hire: (1) the employee created the work within the scope of his employment; or (2) the work was commissioned, there was the appropriate written agreement, and it falls within a category of works that may be a work for hire 17 U.S.C. § 101. Remember that a work for hire under the commissioned portion of the statute can only exist if it falls into one of the specific categories of types of work as listed in the copyright statute. Even if you have the appropriate written agreement, it is worthless if the work does not fall within one of the enumerated categories. A work for hire under the employment portion of the statute exists when there is an employment relationship, and it does not have to fall within any specific type of work.

Collective works are owned by the author of the collective work; however, that author owns only the privilege of reproducing and distributing each contribution as part of the collective work, any revision of that collective work, and any later collective work in the same series. The author of each contribution to the collective work continues to own the copyright in that contribution unless there is a separate written agreement. 17 U.S.C. § 201(c). The author of the collective work must also ensure that she has the authority to use and create a collective work from each contribution to the collective work.

II. Copyright Transfer Pursuant to the Copyright Act, “the ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.” 17 U.S.C. § 201(d)(1). Practice Tip 17 U.S.C. §§ 201–205 relate to the transfer of ownership of copyright.

Copyright Transfer

The Copyright Act defines “transfer” in the definitions section. “A ‘transfer of copyright ownership’ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.” 17 U.S.C. § 101 (my emphasis). Assignments and exclusive licenses are thus considered transfers of copyright ownership.

A. Assignments An assignment is an actual transfer in ownership of the copyright or a specific portion of it. In an assignment, the owner transfers ownership to another person or entity. Typically, an assignment will be for the entire copyright, that is, the entire “bundle of rights” of the copyright. However, any one of the exclusive rights within the bundle of rights articulated in 17 U.S.C. § 106 may also be transferred and owned separately. 17 U.S.C. § 201(d)(2). The rights can even be broken into parts. Thus, an assignment can cover a specific right, like the right to create derivative works or the right to distribute, or it could also be the right to create a specific derivative work. In this situation, there would be multiple owners in the copyright, with each owning different particular rights.

B. Licenses An exclusive license, while still within the statutory definition of “transfer,” does not actually change the ownership of the copyright. An exclusive license provides exclusive rights in the copyright or any of the rights in the bundle. When there is a granting of the right to one of the exclusive rights, the owner of the copyright remains the same, but another entity gains the permission to all or some of the rights. In other words, ownership of the copyright is not actually transferred through a license; rather, the permission to one of the rights is transferred. Practice Tip An exclusive license can be thought of as a lease, while an assignment can be thought of as a sale.

Like an assignment, a license can be for all of the rights in the copyright or for only specific rights or portions of rights. For instance, the right to make a derivative work may be transferred in multiple pieces in the form of an exclusive license. One party may have the exclusive license to make a movie (derivative) out of a book (original copyrighted work), while a different party

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may have the exclusive right to make a musical performance (derivative) based on the same book (original copyrighted work).

C. Ownership of the Work Is Not the Same as Ownership of the Copyright The ownership of a copyright is separate and distinct from the ownership of the material object in which the copyrighted work is embodied. 17 U.S.C. § 202. If you buy a copy of a book, artwork, or a DVD, you own the copy, but you do not own the copyright. There was no transfer of the ownership of the copyright by selling a copy of the work. The purchaser may be able to sell or give away the copy, but the purchaser cannot reproduce the book, artwork, or DVD without the copyright owner’s consent. This is an important distinction that many people confuse, particularly consumers of art and music.

D. An Effective Transfer Requires Two Main Elements The Copyright Statute provides that to have an effective transfer of copyright (through assignment, mortgage, exclusive license, or other conveyance), the transfer must be: (1) In writing (2) Signed by the party transferring his copyrights 17 U.S.C. § 204(a). (“A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”) Practice Tip Many times, a work for hire provision will be included in an assignment of copyright. As a precaution, in case the work is not, for whatever reason, considered a work for hire, you should as a matter of course (if you represent the recipient of the rights) use the dual grant of both work for hire and assignment. Assignments need only be signed by the assigning party, but work for hire agreements must be signed by both parties. To ensure both provisions are enforceable, the agreement must be signed by both parties.

You can also have the document notarized, although it is not required. 17 U.S.C. § 204(b) provides that if it is notarized, then there is prima facie evidence that the transfer is properly executed.

Copyright Transfer

The document must also be clear and construed to transfer copyright ownership rather than another interest. Bieg v. Hovnanian Enters, Inc. 157 F. Supp. 2d 475, 482 (E.D.Pa. 2001); Advantage Inspection Intl., LLC v. Sumner, 2008 U.S. Dist. LEXIS 3337 (D.S.C. 2008). Transfer of copyright ownership can also be properly executed by the applicable law of intestate succession or by will. Through intestate succession, the copyright is transferred as personal property. Details on how to draft specific types of agreements and specific clauses to pay attention to are included below under the subsection “Drafting Agreements.”

E. A Nonexclusive License Is Not Technically a “Transfer” A nonexclusive license is excluded from the definition of “transfer” under the copyright statute. However, nonexclusive licenses do grant allowance of rights in a copyright. Practice Tip Notably, a nonexclusive license does not grant the licensee the right to enforce the copyright; a nonexclusive licensee lacks standing to assert a copyright infringement claim. See Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008); Coyne’s & Co., Inc. v. Enesco, LLC, 2007 U.S. Dist. LEXIS 76114 (D. Minn. 2007).

A nonexclusive license transfers nonexclusive rights to a party, but because it is nonexclusive, these particular rights may also be transferred to another party. In other words, the copyright owner may nonexclusively license a particular right (or several rights) to various third parties. A copyright owner that owns the copyright in a song may license to many different entities (i.e., restaurants, gyms, bars, or radio stations) the right to publicly perform, display, or play that song. A nonexclusive license is not the same as the transfer of ownership of pieces of rights. In the exclusive license situation, an example given above is that the copyright owner could give one exclusive license to make a movie and a different exclusive license to make a musical from the same underlying book (the right to make a derivative work could be split up). On the other hand, in the nonexclusive license situation, multiple parties may be nonexclusively licensed the right to make a movie from the book, and multiple parties may be nonexclusively licensed the right to make a musical from the book. Exclusive licenses can appear to be nonexclusive when the licensor slices them up. An artist can grant an exclusive license to sell reproductions to one person in New York and to another in New Jersey and yet another in Connecticut.

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52 Chapter 3 Copyright Transfer

Unlike a “transfer,” a nonexclusive license does not require a written agreement or signature. A nonexclusive license can be made orally and can even be implied—termed an “implied license”—through the conduct of the parties. Nelson-Salabes, Inc. v. Morningside Development, LLC, 284 F.3d 505 (4th Cir. 2002); I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). Practice Tip Although a nonexclusive license can be made orally, it is preferable to have that permission in writing so that you later have evidence of what was and what was not licensed.

Implied licenses are often used as a defense in copyright infringement cases in which the defendant argues that the conduct of the plaintiff implied that defendant was permitted to copy the work because he had a nonexclusive license. This defense is discussed in more detail in the litigation chapter (Chapter 6) in the section regarding defenses.

III. A Transfer Can Be Recorded with the Copyright Office Although not required for a valid transfer, a transfer can be recorded with the Copyright Office and provides some advantages. Even nonexclusive licenses may be recorded with the Copyright Office.

A. Effecting a Recordation In short, a recordation requires: (1) The original signed document or copy with a certification (2) The required fee The document filed for recordation must bear the actual signature of the person who executed it or a copy with a sworn or official certification that it is a true copy of the original signed document. 17 U.S.C. § 205(a). The certification must be either a “sworn certification” or an “official certification.” The certification must state that the attached reproduction is “a true copy of the original signed document.” The Copyright Office provides a Document Cover Sheet that includes the appropriate language and can be used as the certification, and it is recommended that you use it. In addition, the fee provided for

A Transfer Can Be Recorded with the Copyright Office

in 17 U.S.C. § 708 must be submitted. Once all of the required materials are submitted, the Register of Copyrights will record the documents and return it with a certificate of recordation. 17 U.S.C. § 708. Practice Tip See Circular 12 on the Copyright Office website that explains recordation and provides the appropriate Document Cover Sheet and detailed instructions.

B. Advantages of Recordation Recordation of a document provides constructive notice of the facts and terms of the agreement, if: (1) The document, or material attached to it, specifically identifies the work to which it pertains so that, after the document is indexed by the Register of Copyrights, it would be revealed by a reasonable search under the title or registration number of the work; (2) Registration has been made for the work. 17 U.S.C. § 205(c). In other words, if the work is registered and the agreement includes the registration number or the title of the work (preferably both), constructive notice is presumed. Practice Tip If a copyright is being used as collateral, as in a security interest, and you represent the lender, you should always have the work registered and recorded. You should make the costs for registration and recordation part of the deal to be charged to the copyright owner.

Another advantage of recordation is that if there is a conflict between two transfers, the one recorded first will prevail so long as it meets the following requirements: (1) It is recorded pursuant to 17 U.S.C. § 205(c) (registration and the transfer describes the registration sufficiently to provide constructive notice); and (2) Timing: (a) It is recorded within one month after execution in the United States; or

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(b) Within two months after its execution outside the United States; or (c) At any time before recordation in such manner of the later transfer; and (3) If it was the later transfer: (a) It was taken in good faith; (b) For valuable consideration or binding promise to pay royalties; and (c) Without knowledge of the prior transfer. 17 U.S.C. § 205(d). Recordation of the transfer counts, again, as constructive notice, and this constructive notice allows even a later transferee to prevail so long as she acted in good faith. Recordation should thus be a priority for a transferee if the underlying copyrighted work is registered. If it is not registered, then the presumption of constructive notice does not exist and the court will simply weigh the evidence before it. Finally, if there is no recordation, it can hurt a transferee. If there is a conflict between a transfer and a nonexclusive licensee, a nonexclusive license (recorded or not) prevails over a conflicting transfer of copyright ownership if: (1) The license is evidenced by a written instrument signed by the owner of the rights licensed or such owner’s duly authorized agent; and (a) The license was taken before execution of the transfer; or (b) The license was taken in good faith before recordation of the transfer and without notice of it. 17 U.S.C. § 205(e). This means that if a transfer is not recorded, a nonexclusive licensee that was unaware of the transfer and took the license in good faith prevails.

IV. A Transfer May Be Terminated to Recapture the Renewal Period Other than works made for hire (because they are not a transfer) and transfers made by will, the transfer or the exclusive or nonexclusive license of a copyright may be terminated under certain circumstances. There are two provisions in the Copyright Act that provide for the termination of the transfer as it relates to the renewal period. 17 U.S.C. § 304(c) applies to transfers that occurred before January 1, 1978. 17 U.S.C. § 203(a) applies to transfers that occurred on or after January 1, 1978.

Drafting Agreements

Section 304(c) allows an author and/or his family (if the author is deceased) to terminate a transfer made before January 1, 1978, if they are in their second renewal term as of January 1, 1978 so that they can receive the 39 years of the extended renewal term. To effect the termination, the party terminating the license must follow the precise procedures laid out in the statute within the statutory time period. Section 203 applies to transfers made on or after January 1, 1978. It allows an author and/or his family (if the author is deceased) to terminate a grant between the thirty-fifth and the fortieth years after the transfer if the author and/or his family follows the precise procedures laid out in the statute within the statutory time period. The right to terminate cannot be assigned in advance. However the renewal period itself may be assigned in advance. This is not a particularly common procedure but will likely become a hot topic beginning in 2013 (35 years after January 1, 1978), particularly in the work for hire area because work for hire agreements are not transfers (they determine original ownership; they do not transfer ownership) and are thus not covered by the termination rights. For more detailed information, see the statutory language. See also Nimmer on Copyright, § 11.01 et seq.; Siegel v. Warner Bros. Entertainment, Inc., 542 F. Supp. 2d 1098 (C.D. Cal. 2008).

V. Drafting Agreements A. Work for Hire Agreement A work for hire agreement is entered with independent contractors. A work for hire agreement: • Must be in writing • Must be signed by both parties This is often a surprise to clients who came up with an idea and then commissioned someone to create it for them, supervised the creation, and paid that person but never entered a written agreement. “What do you mean I don’t own the copyright?” is a common reaction in these situations. Also, a common mistake in work for hire situations is failing to have an agreement with the various subcontractors or with all of the contractors. Each level of the subcontract must have the appropriate agreement. Alert your clients to this necessity because they need to ask their contractors if the people working for them are employees or independent contractors— if an independent contractor, the necessary paperwork must be in place,

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and there can be several layers of work for hire agreements that must be executed. Remember that a commissioned work for hire agreement can only exist if it falls within one of the statutory categories (17 U.S.C. § 101). Because the categories are fairly limited (i.e., they do not generally include computer programs, paintings, or photographs), an assignment should also be executed or combined with the work for hire agreement in order to ensure that ownership is transferred. A sample of a combination work for hire/assignment agreement is included in the Appendix.

B. Assignment An assignment is a transfer of ownership of the copyright or one of the particular rights within the bundle of rights. The owner of the copyright changes through an assignment. An assignment MUST both: • Be in writing • Be signed by the party assigning his rights (“assignor”) An assignment SHOULD also include: • Description: Include a proper description of the copyright to be assigned. Include the title and registration number so that when the work is recorded, the document itself satisfies the requirement of 17 U.S.C. § 205(c) and allows for constructive notice and the benefits provided in 17 U.S.C. § 205(d). Alternatively, it should include the registration certificate and the deposit material attached as an exhibit. If it has not been registered, include a detailed description of the work, and if possible, include a copy as an attachment. • Right to transfer: Use language that the assignor has the right to assign all rights that are being assigned. • Warranty: Include a warranty that the work being assigned does not infringe the rights of another person, and that it was the creation of the author and was not copied from another. • Price: Include the price, or at the very least, a statement that the assignor has received “valuable consideration.” • Accrued causes of action: courts have held that for an assignee to have the right to bring a claim for already accrued causes of action, they must be specifically assigned. See Marquis Models, Inc. v. Green Valley Ranch Gaming, LLC, 2007 U.S. Dist. LEXIS 73663 (D. Nev. 2007). ■

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Drafting Agreements

Practice Tip Look for sample agreements. The Appendix of this book contains some standard language, but you should also look for examples of agreements that more specifically apply to your situation on your firm’s document management system and by asking around with other attorneys at your firm. When you find good samples, keep them in a folder (paper or electronic) for future use.

C. Exclusive License There are simple licenses, and there are long complicated licenses. Samples of both are included in the Appendix. No matter what, for an exclusive license to be valid, it MUST both: • Be in writing • Be signed by the party licensing his rights (“licensor”) Aside from that, it SHOULD include: • Description: Include a proper description of the copyright to be exclusively licensed. Include the title and registration number so that when the work is recorded, the document itself satisfies the requirement of 17 U.S.C. § 205(c) and allows for constructive notice and the benefits provided in 17 U.S.C. § 205(d). Alternatively, it should include the registration certificate and the deposit material attached as an exhibit. If it has not been registered, include a detailed description of the work, and if possible include a copy as an attachment. • Detailed description of the legal grant of rights including which rights are licensed and if they are limited in any way such as by geography or time. • Price and form of the license: There are various ways in which the licensor can be compensated, including a flat rate, a dollar amount per sale, or a percentage of revenue in the form of a royalty. This should be laid out in detail, and all terms should be defined, including “revenue”— whether that is gross or net revenue and what can be subtracted from gross to make net. The goods on which revenue is considered should also be defined—for example, wholesale goods or goods sold to the licensor or even goods sold at a discount may not be included within ■

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•

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•

the royalty base; determine this beforehand. There may even be a different royalty rate depending on the type of sale—wholesale or regular direct to customer. Furthermore, the agreement should state when the revenue accrues—at shipment or at payment. In that same vein, what if the customer does not pay? The agreement should state whether the licensee is still required to pay the royalty. At the very least, the agreement should indicate that the licensor has received “valuable consideration.” Warranty: A warranty clause or language that the licensor warrants that the work is his work, was not copied from another, does not infringe on another’s right (to his knowledge is a possible limitation), and that the licensor has the right to license the particular right should be used. Time Limitation: If a time limitation is included, an automatic or contingent renewal clause may also be included. Copyright in new work: If the license is to create a derivative work, collection, or compilation, the license should include a clause as to who will own the copyright in the new work and who will have the permission and obligation to register the copyright in the new work. Indemnification: The licensee might request an indemnification clause that accompanies the warranty clause that if sued, he may request that the licensor defends and pays for the defense (the licensor may in turn request that he directs the defense if he is providing it).

Other than those items, there are various other details that can be included in a license, such as: • Media: The license may limit the media in which the licensee may copy or produce the copyrighted work. Be careful of this because media changes as technology changes. The licensee may want to make such a clause broad by including language such as “or any known and unknown media available” or “including any future media available.” The licensor, on the other hand, may want specific descriptions of media, and a requirement that the licensee obtain permission for media not specified in the license. • Geography: The license may also provide a geographical limitation. One distributor may have the exclusive right to distribute in California, while another may be given the exclusive right to distribute in Nevada. • Author identification: The copyright owner or author may wish to include a clause regarding identification and use of his name or image. He may wish to always be identified by name or may also wish to have the option of not being identified. • Termination: The license might also include a termination clause. The licensor may wish to include a termination clause allowing termination

Drafting Agreements

if the licensee is no longer using the license or is no longer meeting the minimum royalty amount. Similarly, the licensee may wish to be able to get out of the agreement as well under certain conditions. • Other: You may or may not wish to also include the standard clauses of other contracts, such as choice of law clauses, severability, confidentiality, arbitration clauses, audit clauses and attorneys’ fees clauses. Practice Tip Licensing fees vary by the licensee and licensor, but there are some standard rates for many types of works, and there are secondary sources that have compiled many of these rates. In particular, Licensing Royalty Rates, Aspen Publishers, Battersby & Grimes; and Pricing and Ethical Guidelines, published by the Graphic Artists Guild, are both useful texts.

D. Nonexclusive License A nonexclusive license is not technically a “transfer” under the Copyright Statute and thus does not have to be in writing or signed. Of course, it is preferable to have it in writing in order to solidify the terms of the license and for it to be signed. All of the terms discussed above with regard to a license, including price (consideration), warranty, indemnification, media limitations, geographical limitations, time limitations, derivative work copyright ownership, copyright owner identification, termination, etc. may be included. In particular, it should be signed by the party licensing the rights (although not required, this will get you past any statute of frauds that may happen to apply if there are other terms within the agreement) and should include a proper description of the copyright to be licensed as discussed above with exclusive licenses and assignments. Practice Tip Although a non-exclusive license is not required to be in writing under the Copyright Statute, there are other rules of law that may require it be in writing and signed. For instance, the statute of frauds under the Uniform Commercial Code (UCC) requires that all contracts that are for goods of more than $500 or cannot be completed within a year be in writing. UCC § 2-201. Other states have their own statutes of frauds, and you may wish to become familiar with those applicable in your particular state.

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VI. Licensing in Specific Fields A. Music Licensing Music itself is made up of various different copyrights. There are several copyrights in any particular song: there is a copyright in the lyrics; there is a copyright in the music; and there is a copyright in the recording of a particular performance. These copyrights may all be owned by one entity, or they may be owned by separate entities (the lyricist, the composer, and the label). When licensing a song, you must determine which of these copyrights you need to license and from whom you need to license them. Music licenses take various different forms. There are mechanical licenses, which are licenses to use your version of copyrighted musical compositions on your CDs, records, and tapes. A mechanical license must be obtained in order to lawfully make and distribute records, CDs, and tapes. Mechanical licenses are generally compulsory licenses, meaning that the copyright owner is required to provide the license, and you do not need to obtain permission before but must just pay the required fee after. They are also called statutory licenses because they are automatically granted by operation of law. There are synchronization licenses, or synch licenses, to use a particular recording in an audiovisual format such as a movie or television show or commercial. There are licenses to make a derivative work out of a particular song, such as in a cover of a song or using certain lyrics or a certain beat in a new song. There are licenses to play music in public venues, including playing live music and recorded music, and there are licenses to play music on satellite radio or on the Internet. Like mechanical licenses, licenses for digital performance rights in sound recordings are statutory licenses. 1. Obtaining the Rights For general performance rights of music (on the radio, in a venue, on a website), you typically go through one of the performing rights organizations. There are several organizations called performing rights organizations or performing rights societies that have artist members from which you can license the entire catalog or only certain songs. According to the Copyright statute, “a ‘performing rights society’ is an association or corporation that licenses the public performance of nondramatic musical works on behalf of the copyright owner, such as the American Society of Composers, Authors and Publishers, Broadcast Music, Inc., and SESAC, Inc.” 17 U.S.C. § 114 (d)(3)(E)(ii). Note that if you are looking for Internet rights or satellite television or satellite radio rights to play a particular recording (not just a new recording of the music), then you will also need to go through SoundExchange to get the appropriate digital performance right in the particular sound recording (different from the underlying copyright in the music). This is discussed below as digital performing rights in sound recordings.

Licensing in Specific Fields

Practice Tip SESAC, BMI, and ASCAP all have very useful educational information on their respective websites that explain the different types of licenses and different rates.

The largest performing rights organizations in the United States are Broadcast Music Incorporated (BMI) (www.bmi.com); SESAC (www.sesac. com); and American Society of Composers, Authors and Publishers (ASCAP) (www.ascap.com). Each performing rights organization (PRO) has different artists as members, which means that clients often will need licenses from more than one performing rights organization to ensure that they are covered for all music that they wish to play. Each performing rights organization has a searchable reparatory or catalog on its respective website: BMI (http://www. bmi.com/); ASCAP (http://www.ascap.com/ace/search.cfm?mode=search); and SESAC (http://www.sesac.com/repertory/sRepertorySQL.asp) so you can determine if a particular artist is a member of a particular PRO. Practice Tip The fact that they must license the right to play music in a restaurant, hotel lobby, or gym comes as a shock to many clients. The songwriter has a right to control where and when his music is performed, and the right to play (live or recorded) his music must be acquired by a license. It is your obligation to advise your client of this requirement because they will certainly have to shell out more than they would for a license if they are caught without a license. And people are caught all the time.

Practice Tip Clients often ask, “Well what about playing the radio or a television in my store/restaurant/bar? Do I need a license for that, too?” This is covered in 17 U.S.C. § 110(5) and generally provides that it is permitted if, in addition to specific limitations applicable to the two categories of establishments, no direct charge is made to see or hear the performances, if the performances are not further transmitted beyond the establishment where they are received, and if the original transmission is licensed by the copyright owners. The two categories of establishments are (1) food service and drinking establishments and (2) other establishments. There are specific limitations for each of these establishments, including size limitation of the establishment, size limitation on televisions, and limitation on the number of televisions and loudspeakers.

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For digital performance rights for sound recordings, you will go through another performing rights organization called SoundExchange. It provides licenses to perform specific sound recordings on digital cable and satellite television music and Internet and satellite radio. The royalties collected by SoundExchange are called digital performance royalties, and they are for the recording artists or the sound recording copyright owners (usually a record label). These are distinct from the performance rights in the music acquired through BMI, ASCAP, or SESAC. Practice Tip If your client is looking to play music on the Internet or through digital cable, satellite television, or radio, then she will need both the performing rights for the music (BMI, ASCAP, or SESAC) as well as the digital performance rights for the sound recording (SoundExchange). This is different than traditional venues such as restaurants, bars, hotels, radio and television stations, and gyms, where only the performing rights for the music (BMI, ASCAP, or SESAC) are required. As with much of copyright law, this distinction goes back to lobbying efforts.

Mechanical licenses are typically obtained from The Harry Fox Agency, which covers the recording or mechanical rights for most music publishers. The website is located at www.harryfox.com. Synchronization licenses are obtained from the music publisher. You can find out who the publisher is through the ASCAP, BMI, or SESAC websites by searching their databases. If you search the song or the artist, the databases will return the identity of the publisher and usually the contact information as well. 2. Rates Typically, there is no standard rate for a synch license, and the publisher will charge you what your client can afford, meaning that a big budget movie may be charged a different rate than an independent film. For mechanical licenses, there are statutory rates. As of 2009, the rate was 9.10¢ for songs 5 minutes or less or 1.75¢ per minute or fraction thereof over 5 minutes. The statutory mechanical license rates can be found on the Copyright Office website at http://www.copyright.gov/carp/m200a.html, by clicking the “Licensing” header and then selecting the document titled “Mechanical Copyright Royalty Rates,” or on the Copyright Royalty Board website located at http://www.loc.gov/crb/. Performance licenses for music, that is, licenses to play music in bars and restaurants, in hotel lobbies, in gyms, in elevators, over the telephone when


patrons are put on hold, on college campuses, at amusement parks, in offices, and any other public venues, typically do have standard rates depending on the type of business and the usage. For example, a small coffee shop will have a different rate than a large casino or amusement park. Your client has the option of negotiating a particular license for specific songs and play time and geographic scope. Alternatively, he may instead choose to use a blanket license, which gives him the right to play any music within the repertoire or catalog of the particular organization as much as he wants. These blanket licenses usually have a flat yearly rate. Digital performance rights for sound recording, licenses to play particular sound recordings over the Internet or satellite radio, etc., are set by the Copyright Royalty Board, http://www.loc.gov/crb/.

B. Art Licensing Both artists and purchasers of art are sometimes under the impression that when the physical artwork is sold, the copyright is sold with it. This is not true. As mentioned above, the ownership of a copyright is separate and distinct from the ownership of the material object in which the copyrighted work is embodied. 17 U.S.C. § 202. To transfer the copyright ownership, a separate assignment must be executed. This of course means that when someone purchases a piece of artwork, he does not receive the bundle of rights in the copyright; he does not have the right to copy, distribute, or make derivative works. These rights must be acquired through a separate transfer. There are generally two basic types of art licenses: first, a license to create prints of a work and second, a license to use an image for placement on commercial products. The provisions discussed above for assignments and licenses will apply to artwork just as any other copyright transfer. Other types of clauses that will be particular to art include: • Artist’s credit: In order for an artist to be guaranteed to receive credit as the artist of the artwork on the product or in an advertisement, it must be specifically included in the license agreement. It is not an inherent right. • Copyright: As discussed in the general license section, if the license is to create a derivative work, collection, or compilation, the license should include a clause as to who will own the copyright in the new work and who will have permission and an obligation to register the copyright in the new work. Typically, a copyright in the licensed product may be held by either the artist or the licensee. This is an area of negotiation. Even if the licensee holds the copyright in the licensed product (something most artists generally resist), the copyright in the underlying

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artwork remains with the artist. All the licensee is getting is the right to copyright that specific product, e.g., a jigsaw puzzle, in its own name. The copyright in the licensee would only go to the elements which they have added to the original art. In many cases, that is negligible. Promotional approvals: As discussed above, the copyright owner may wish to include a clause regarding identification and use of his name or image. In addition, the artist might grant the licensee the right to use a picture or portrait in conjunction with the advertising or promotional materials. In these cases, there is usually some form of approval by the artist prior to the release of the materials. The artist can also negotiate some approval of any advertisements which contain products bearing their images. Royalty rates: The royalty percentage paid is based on the nature of the product and can vary greatly based on the type of product on which it will be placed. License for use in a calendar generally garners a higher royalty than use on ceramic goods. In addition, the fame of the artist will obviously affect the royalty rate and to a greater extent will affect advances (prepayment of royalties) and guarantees (guaranteed minimum royalties). Quality approval: An important area for an artist is the approval of the quality of the licensed goods. Generally, the artist in a licensing agreement will have right of approval of the product. This usually works out that the artist approves final samples or proofs, and then there are representations in the contract that the final product will confirm to the approved sample. Then there are clauses put into the contract which provide for the appropriate remedies if the produced goods do not conform to the approved samples. Indemnification: In art licenses, indemnification clauses often run both ways and are important in ensuring that the artist will appropriately indemnify and hold harmless the licensee from any type of copyright or trademark violations for which the licensee is found liable as a result of breach by the artist. Conversely, the licensee should indemnify the artist for any claims made against them regarding the nature and exploitation of the licensed products produced by the licensee. Sell-off rights/Anti-dumping/Buy back option: An important area to be considered in art licenses is sell-off rights. Generally speaking, when a contract expires or is terminated as a result of lack of sales, a licensee is granted the right to sell off remaining inventory. However, if a contract is terminated by the artist for breach by the licensee, sell-off rights are normally not granted to the licensee. This, however, can be a dangerous area for an artist. The licensee, once the contract is over or about to be over, has less interest in the artist’s career or market, does not want to be stuck holding inventory it cannot sell, and there is a risk that the licensee will sell the product at a greatly reduced price—referred to


as “dumping.” Dumping is detrimental to an artist’s reputation, not only in the area of licensed goods, but also in the sale of his artworks or paintings or limited edition prints. Dumping can also destroy an artist’s market for future licensed goods and jeopardize any ability the artist has to acquire a new licensing agent. Therefore, anti-dumping and/or buy back clauses are important for the artist to include in a contract. Practice Tip Art law itself is a very broad area of law that covers not only copyright but also rights of publicity, tax law, international law, and wills and trusts. There are various texts that are targeted specifically to art law that will be useful for further information. In particular, see The Deskbook of Art Law, DuBoff & Caplan, Oceana (2 volumes).

C. Book Licensing 1. Obtaining Permission to Use a Book or Portions of a Book A book is copyrightable, and if covered by copyright (the term of the copyright has not expired or fallen into the public domain), your clients must obtain permission to make copies of the book, make copies of portions of it, create derivative works from the book, or display it. This includes distributing copies of portions of a book in a magazine, creating a play, musical, or movie from it; creating a comic book based on the book, or reading the book aloud. Practice Tip For assistance in determining whether the copyright term has expired or the work has fallen into the public domain, take a look at the Quick Resource Guide at the end of Chapter 1. You can also turn to online resources, including excellent charts found at http://www.copyright.cornell.edu/public_ domain/ (organized by publication date) and http://www.librarylaw.com/ DigitizationTable.htm (organized by current year).

The publisher will usually be the first person to contact regarding how to obtain permission to use the copyrighted work. A standard exclusive or nonexclusive license will usually be the way to proceed. Considerations when licensing a book will include those specified above in the exclusive license section, such as price, warranty, indemnification, ownership of copyright in derivative works, termination, media limitations, geographical limitations,

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time limitations, copyright owner identification, as well as these possible additional clauses: • Exclusivity of the license (i.e., will another party be permitted to make a derivative work; limitations on licenses the author may offer to other; limitations on similar projects) • Extent of the copyright owner’s control over the creation of the derivative work, collection, or compilation (i.e., the author’s control over a movie script; author’s control over where his work appears in the collection) • Terms regarding identification of the copyrighted work and the author in the new work • Transfer of other rights such as any trademark rights or rights of publicity There is the limited exception of fair use that frequently comes up as related to books in the educational setting. This will be discussed in more depth but generally, the use of work that would otherwise infringe the copyright may be a “fair use”—that is, a noninfringing use—if it is done for limited purposes such as “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. § 107. There are several factors used in deciding whether a use is actually “fair use.” These include determining the purpose of the use (commercial versus nonprofit educational), the nature of the copyrighted work, the amount copied, and how the use affects the potential market for or the value of the copyrighted work. 17 U.S.C. § 107. If a teacher photocopied in its entirety a textbook that would normally be sold to that school and distributed those copies, that would likely not be considered fair use—while it is an educational use, the entire textbook is being copied, and it greatly diminishes the value of the textbook. On the other hand, consider a teacher that makes a handful of copies of an article from a magazine or newspaper and distributes these to his class. This may be fair use because only a portion of the publication was copied, and it probably has very little effect on the value of the publication as long as it is not a regular occurrence. 17 U.S.C. § 110 relates to use of works in an educational setting and provides specific exceptions for limited use of copyrighted works in a classroom setting. Practice Tip Some clients may be under the mistaken perception that if a text is no longer in print, they can make copies of it. If a client is in a situation where she needs copies of a book that is no longer in print but you think may still be covered by copyright, you should contact the publisher, explain the situation, and


determine whether the works are available for on-demand publication. If your client only wants to make limited copies of a chapter or other limited potion of the work for an appropriate noncommercial purpose, you should run through the fair use analysis before you advise her as to whether this is an appropriate way to go.

2. Publication Agreements and Book Deals If you are in the situation of advising an author or publisher who is entering a book contract, there are several clauses within an agreement that you will come across. What follows is a basic list of clauses along with some tips for author and publisher clients. Practice Tip There are other secondary sources that provide much more detailed advice regarding book and publishing contracts that you should review. A valuable secondary source regarding publishing law is The Publishing Law Handbook, Perle & William, Prentice Hall Law & Business (2 volumes).

• Title: List the title of the text. • Rights Being Transferred This may be limited by the type of book, i.e., hardcover, paperback. The geographic territory may be limited, i.e., international versus national. • Copyright Registration: If the publisher acquires the copyright, they will normally also have the right and obligation to register the copyright. • Identification of Author: The author will normally want to always be identified on all copies of the work, any excerpts, and all promotional and marketing materials for the work. • Details of Manuscript: There will be a clause giving details of the manuscript, including the date that it is due, the form that it should take, the content, and the length. An acceptability clause may be included within this section. It will articulate that if the publisher determines that the manuscript is not acceptable (and may say that the publisher has the sole right to determine acceptability) that the publisher can have a different author complete the work at a deduction from royalties. The author should include an option to revise the manuscript pursuant to the publisher’s comments prior to the publisher hiring a different author. ■ ■

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Payment of permissions may also be included in this section. Publishers usually require that the author is responsible for obtaining permissions and paying for licenses, but the author can certainly negotiate this term as to payment. Advance: An advance is a prepayment of royalties while the author is working on the manuscript and may or may not be included. The advance will usually be recouped directly out of the royalties until it is recovered or returned, if the author does not complete the manuscript. An issue can arise when the author produces the manuscript, but the publisher considers it unsatisfactory. Royalties: Royalty clauses will include details such as to whom they are paid; when they are paid; percentage of the royalty; royalty base (which books are included—wholesale, discounted, etc.); whether the royalty base is gross or net revenue, and if it is net revenue, the author should seek to define exactly what costs will be subtracted from gross to determine net; statements, and to whom and when they are provided. Publication of Book: Typically, the publisher will reserve its rights to determine most of the details regarding publication, including date, style, production, price, marketing, title, and jacket cover. The author, however, may seek to have some editorial control. Warranties: As with other agreements discussed above, a book contract will usually require a warranty of noninfringement. Through this clause, the writer guarantees that his work does not infringe the rights of any third party. This is a standard clause that a writer cannot really avoid; however, he may be able to add language such as “to their knowledge” in order to protect the author from surprises. A publisher may or may not agree to this caveat. Liability/Indemnity: It is standard for a publisher to include a liability clause such that the writer agrees to cover the costs of defense should a third party instigate a lawsuit for infringement of intellectual property. This is a standard clause but might be revised somewhat. The publisher will usually ask for financial coverage but will want control of the defense. The writer may be able to negotiate control over the defense if he is footing the bill. Insurance is advisable. Revisions/Updates: Some books may require regular revisions or updates, and the publishing contract should include a clause describing what options exist for the publisher and the author. The author should seek a right of first refusal to update the text although the publisher, in turn, should seek the ability to hire another author to revise the book if the original author refuses or is unable to do so. The author may seek to have the ability to choose any such substitute. In addition, the author may seek to have the right to update and retain a new publisher if the original publisher does not want to publish a revised version. The publisher should seek to have the right of first refusal in this instance. The clause

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may also include details as to how the original author’s or original publisher’s name will be included on any updates for which there is a new author or publisher. Publicity and Promotion Clause: The publisher will have the duty to promote the book, and an author can seek to get as many details as possible within the agreement such as minimum budget and minimum print run, although it is unlikely that the author will get such details or guarantees. Similarly, the publisher will want to include in this clause that they have direction over the promotion of the book. Audits/Examination of Account: Such clauses typically will allow an author to challenge his account and conduct an audit at his expense (although it may be limited in number of times, such as once per year). The author should seek to include a provision that if there is a mistake by the publisher that exceeded a certain percent (5 percent is fairly standard) that the publisher must bear the costs of the audit that revealed the error. Similar Project/Conflicting Publications/Option Clause: The publisher may ask that the author obtain consent before engaging in a similar project and may seek the right of refusal in any similar works. The author must be diligent in limiting this clause. Termination/Out of Print Clause: Usually there will be a termination clause that allows the author to terminate the agreement (and seek a new publisher) if the books are no longer in print. Note that on-demand books are not really continued publication, and if you represent the author, you will want to specify this in the agreement. Author’s Copies: Authors can typically request a limited number of free copies. In addition, they can request that they purchase additional copies at a discount or the lowest offered wholesale price. The author may also seek a provision that if he, or an institution with which he is affiliated, are purchasing in bulk there is an additional discount. The publisher should, in turn, make clear that such copies cannot be resold and that such copies are not included in the royalty base. The publisher may also wish to limit the definition of affiliated institution to exclude professional associations. Other standard clauses that may be included are arbitration, choice of law, notice, successors, severability, confidentiality, or an entire agreement.

D. Licenses in Educational Settings Educators often rely on “fair use” as an excuse for copying. While it is true that there is a fair use defense for copyright infringement and that in certain circumstances, an otherwise infringing use is noninfringing, the doctrine of “fair use” is not a get out of jail free card. For clients in the education field,

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it is imperative that they understand that copying and distribution cannot all be reconciled by claiming fair use. If that were the case, there would be no market for textbooks and other educational materials. For instance, a small language class might complain that the cost of CDs that include the oral portion of the study materials are too expensive to expect every student to buy. The instructors, with the belief that it is an educational use, decide to make copies of the CD and hand those copies out to the students. This is copyright infringement; it is not fair use. This is clear when you consider the fair use factors (articulated below): the work was produced for purchase by these types of students, they are copying the entire work, and they are adversely affecting the market for the work. The doctrine of fair use is a statutory provision found at section 107 of the Copyright Statute. It provides that a “fair use” is one that is “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright” and that the following factors must be considered in determining whether the use made of a work in any particular case is a fair use: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107. Fair use is determined on a case-by-case basis by weighing those factors and applying them to the facts in the situation at hand. There are no specific lists of items that are definitely fair use, but when considering the addition of section 107 to the Copyright Statute, the House listed several examples of “fair use” (H.R. Rep. No. 94-1476): • Quotation of excerpts in a review or criticism for purposes of illustration or comment • Quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations • Use in a parody of some of the content of the work parodied • Summary of an address or article, with brief quotations, in a news report • Reproduction by a library of a portion of a work to replace part of a damaged copy • Reproduction by a teacher or student of a small part of a work to illustrate a lesson


• Reproduction of a work in legislative or judicial proceedings or reports • Incidental and fortuitous reproduction in a newsreel or broadcast, of a work located in the scene of an event being reported These give a general sense of fair use, although they are fairly vague. Most important, the list above is not law, and you cannot guarantee a client a sure “fair use” claim based on the above. Remember, the factors listed in section 107 are the standard. For a client in an educational setting, if they are planning to use small portions of a copyrighted work in a limited way and you determine likely fall within fair use, they must still include copyright information in the copy that they duplicate and distribute. That is, if they copy a short poem to distribute to some students, they must include the copyright notice. Practice Tip The Copyright Office has a circular regarding “Reproduction of Copyrighted Works by Educators and Librarians.” It cites to 17 U.S.C. § 107 regarding fair use, provides discussion of fair use and includes portions of both the House and Senate reports, as well as sections of the Congressional debates to help interpret fair use as it applies to teachers and librarians. It can be found at http://www.copyright.gov/circs/circ21.pdf.

Where your client plans to use large portions of a text or plans to use even small portions repeatedly (from term to term or in multiple classes), he should acquire permission to use the work. In addition, if use of a work is dictated by administrators or other authorities in the educational institution, appropriate licensing rights must be acquired. If the principal of a school or department head at a university dictates that other professors use a particular copyrighted work, then the appropriate licenses must be obtained. Many copyright owners will give free or low-cost licenses to educators, and even if they do not, it is your obligation to advise your client to obtain permission and any cost that he spends in a license will certainly be less than he would spend in a litigation. There is a statutory section that provides specific exceptions for limited use of copyrighted works in a classroom setting. 17 U.S.C. § 110. This is often referred to as the “Teach Act” or the “Teacher’s Act.” 17 U.S.C. § 110(1) provides that the following is not an infringing use of a copyrighted work: “performance or display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction, unless, in the case of a motion picture or other audiovisual work, the performance, or the display of individual images, is given by means of a copy that was not lawfully made

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under this title, and that the person responsible for the performance knew or had reason to believe was not lawfully made.” Thus, a movie or music that itself was lawfully acquired can be played for a class so long as it is in a nonprofit educational situation and so long as it is face-to-face. In a non–face-toface setting, or if the projection is for commercial purposes, or is outside the classroom situation, or otherwise does not meet the requirements of the subsection, then a license is required. There are detailed provisions as to what is and is not allowed for educators. In addition to the Copyright Office circular, there are several texts focused exclusively on copyright in the educational setting including Distance Learning and Copyright: A Guide to Legal Issues, Steven Armatas, ABA Section of Intellectual Property Law.

E. Licensing in Religious Settings There is a little-known exception in the Copyright Act in 17 U.S.C. § 101(3) that states that the following is not an infringement of copyright: “performance of a nondramatic literary or musical work or of a dramatic-musical work of a religious nature, or display of a work, in the course of services at a place of worship or other religious assembly.” If the use of a copyrighted work falls under the terms of this exception, no license is required.

VII. Use of a Person’s Image— The Right of Publicity While not technically covered by copyright, it is important to be familiar with the right of publicity for clients that are trying to clear rights through licensing and for clients who are using another person’s image or likeness in their work. The right of publicity essentially means that a person has the right to control the commercial use of his or her name or likeness. In other words, a person has the sole right to financially benefit from the commercial use of his or her likeness, which may include her image, name, voice, or personal trait that reminds the public of her (i.e., a race car driver’s car). The right of publicity is not covered by federal statute and varies from state to state. Some states have statutes, like California (Cal. Civ. Code 3344, et seq.) and New York (N.Y. Civ. Rights Law subsections 50–51), while others simply rely on case law. Some states have the right of publicity for celebrities only, while other cover normal people as well. Some states cover the rights of the deceased, called postmortem rights, (i.e., California), but others do not (i.e., New York). What this means is that to use someone’s image for a commercial purpose, your clients must first obtain permission. There are exceptions to this requirement, such as for a noncommercial purpose including the news, commentary,

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or parody. Nearly every state recognizes that use in connection with news, public affairs, sports broadcasts, and political commentary are protected speech that trumps the right of publicity. However, when that use becomes commercial (which is subjective and determined on a case-by-case basis), the exemption may no longer apply. Easy examples of commercial use are advertising, sports memorabilia, and products bearing a photo image sold because of that image. In addition, there is some case law that has carved out exceptions by finding that the artwork can be covered as First Amendment speech. Note, however, that this exception is not a hard-line rule because it requires a subjective balancing of an artist’s right of expression against a person’s right of publicity. A New York case decided in 1993 involved a sculptor and a supermodel named Cheryl Tiegs. The sculptor had been commissioned to cast an elephant for a wildlife preservation project, and the supermodel allowed her body to be cast to test that the method of casting was safe. The question at issue was whether the sculptor could then have used the full body cast of the supermodel to create a sculpture without her permission. The New York court found that the First Amendment freedoms outweighed the right of publicity and that an artist may make a work of art that includes a recognizable likeness of a person without his or her consent and sell a limited number of copies of that work of art without violating the person’s right of publicity in New York. An Ohio case, decided in 2000, involved Tiger Woods suing an artist for using his image in prints of a montage depicting himself playing at the Masters in different poses and along with images of other great golfers. There, the artist argued that his prints were art and were not commercial, while Tiger Woods argued that the prints were sports merchandise and were commercial. The Ohio court held that the original work and the limited edition prints were protected by the First Amendment because they were a montage that conveyed a message and were not merely posters created from a photograph. In a California case decided in 2001, the estate for the Three Stooges sued an artist who had created a charcoal drawing of all of them and sold the image as lithographs and on t-shirts. The California court held against the artist stating that the image was so lifelike that it was not “transformative” enough to enjoy the protection of the First Amendment. In other words, under California law, transformative images are immunized by the First Amendment, but images that were too lifelike were not. The California court went on to explain that if a person’s image is just raw material for original artwork and the artistic expression is the dominant attribute of the artwork, then the artist’s First Amendment rights will trump the person’s right of publicity. The California court used Andy Warhol portraits as an example of a work where the artist’s rights would supersede the person’s right of publicity. This test, unfortunately, does not provide any definite guidance because it requires a court to make an aesthetic judgment on a case-by-case basis, and different courts can reach different results. In one 2003 California case applying this test, the court

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found that the musicians John and Edgar Winter (the Autumn Brothers) were recognizable in a comic book but that it was transformative because they were depicted as half human and half worm and was therefore protected. However, a 2003 Missouri court found that the use of the name of the hockey player Tony Twist in a comic book was not transformative and was just a ploy to sell more comic books. Many states (including California) also include an exemption in their right of publicity statutes for single and original works of art work. See Cal. Civ. Code 3344.1(a)(2). However, once copies of that single work are made as prints, even limited edition prints, on t-shirts, on posters, etc., then this exemption falters, and the balancing of rights discussed above is required. For example, in the Three Stooges case, the California court noted that the original charcoal did not infringe on the rights of publicity, but the lithographs and t-shirts did. The above review does not begin to cover the details of this ambiguous and complicated area of the law. Now that you are aware of it, however, you can spot the potential issue and do the necessary digging if it pertains to your client. There are several secondary sources that are very informative, including McCarthy’s two volume The Rights of Publicity and Privacy (Thomson and West). Most important, if your client creates a work that he or another party plan to use in a commercial way (like in an advertisement, on products, or mass publication of your artwork), be sure that he obtains permission to use the likeness of anyone who appears in the work. If the work is created for another party, the other party may agree to defend and indemnify your client if a dispute does arise. And if your client is clearing rights for a particular work, be sure to look into this potential stumbling block.

CHAP T ER

4 Digital Millennium Copyright Act (DMCA) Take-Down Notices

I. Service Provider Protection through the Safe Harbor

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II. Drafting the Take-Down Notice

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A. Determine the Designated Agent

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B. Required Elements of the Take-Down Notice

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III. When to Use This Alternative

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IV. There Are Negative Implications for Those Who Abuse the Process

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V. How to React When a Client’s Materials Have Been Subject to a Take-Down Notice

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A. Drafting the Counter Notice

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VI. Preventing a DMCA Take-Down Notice

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VII. Ensuring Compliance with the DMCA if Your Client Is a Service Provider

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Chapter 4 Digital Millennium Copyright Act (DMCA) Take-Down Notices

The Digital Millennium Copyright Act (DMCA) was enacted in 1998 and is found at 17 U.S.C. § 512. The DMCA provides a structure by which copyright owners can request providers of Internet services to remove material that is infringing their copyright by sending a “DMCA Take-Down Notice.” The title of the section regarding take-down notices is “Limitations on liability relating to material online.” Subsection (c) provides for the take-down notice procedures, steps, and safe harbor. The DMCA is meant to protect innocent service providers from infringement allegations related to information residing on their systems or networks at the direction of users. It provides a safe harbor for those providers that receive a take-down notice and act accordingly. A “service provider” (SP) is defined by the DMCA as “an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.” 17 U.S.C. § 512(k)(1)(A). This includes a provider of online services or network access or the operator of facilities therefore. 17 U.S.C. § 512(k)(1)(B). Examples of service providers include web hosting companies, online service providers, search engines, and other user-content sites such as YouTube, Wikipedia, eBay, and Facebook. The DMCA provides that if the recipient of the take-down notice removes the allegedly infringing material, it is shielded from copyright infringement liability.

I. Service Provider Protection through the Safe Harbor In order to be protected by the safe harbor, the service provider must: (1) Not have actual knowledge of the allegedly infringing material or activity that uses the material; (2) Not be aware of facts or circumstances from which the infringing activity is apparent; (3) Act expeditiously to remove or disable access to, the material upon receiving knowledge or awareness of the allegedly infringing material or activities; (4) Not receive financial benefit directly attributable to the infringing activity if it is in a position to control the activity; and (5) Post on its website, in a location accessible to the public, the contact information for its designated agent and provide that same information to the Copyright Office, including the name, address, phone number, and electronic mail address of the agent, and “other contact information which the Register of Copyrights may deem appropriate.”

Drafting the Take-Down Notice

17 U.S.C. § 512(c). Ensuring compliance by a service provider is discussed in more detail below in section VII.

II. Drafting the Take-Down Notice The copyright owner or his agent must give notice to the SP’s designated agent for handling DMCA take-down notices. This will typically take the form of a letter although there are some SPs that include automated electronic forms on their websites.

A. Determine the Designated Agent Pursuant to the DMCA, the SP is required to post its designated agent on its website. The SP must put the agent information in a place on its website that is accessible to the public, and they must also provide the information to the Copyright Office. 17 U.S.C. § 512(c)(2). Practice Tip Typically, when looking for this information on the SP’s website, it will be located within the Terms of Service or Terms of Use. If you scroll down to the bottom of the home page, there will usually be a link that will lead you to the terms of service/use. Some terms of service will then have a link to the DMCA policy (see, e.g., Google.com), but some will just have the designated agent listed within the policy. Some SPs refer to their Designated Agent as the “Copyright Agent.” Alternatively, you can go to the Copyright Office website and click the link for “Online Service Providers” and then browse through the alphabetical list of designated agents, listed by service provider. You can also run a Whois search (i.e., through NetworkSolutions.com or GoDaddy.com) to find the contact information for the domain name, although this may not technically be the “registered agent,” and the information may sometimes be blocked.

B. Required Elements of the Take-Down Notice The notice must be in the form of a written communication to the designated agent and must include each of the following: (1) Identification of the copyrighted work (2) Identification of the allegedly infringing material

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(3) Adequate information for the SP to locate the allegedly infringing material (4) Contact information for the complaining party (address, telephone, e-mail) (5) A statement that “the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law” (6) A statement that “the information in the notification is accurate and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed” (7) Signature of a person authorized to act on behalf of the copyright owner 17 U.S.C. § 512(c)(3).

III. When to Use This Alternative The DMCA is very effective because of the typical speed of the reaction. There is no investigation of the merits of the copyright claim, meaning that electronic infringements may be stopped quickly and in a more cost effective manner than seeking an injunction in federal court. However, there has been significant backlash against companies that have used the DMCA take-down notice provision excessively. A website found at www.chillingeffect.org posts all of the DMCA notices received by Google and other web hosts. It was created in part by Google, along with other organizations, after Google received criticism for taking down a site located at xenu.net. The xenu.net site was the number one search result in a Google search for “scientology,” but after receiving a take-down notice from the Church of Scientology, it was removed from Google’s search results. Negative publicity has resulted for companies that frequently appear on this list on chillingeffects.org. Practice Tip Warn your client of the potential for negative publicity if he overuses this process. An interesting article regarding this chilling effect is Efficient Process or “ChillingEffects”? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, Jennifer Urban and Laura Quilter, 22 Santa Clara Computer & High Tech. L.J. 621 (2006).

How to React When a Client’s Materials Have Been Subject to a Take-Down Notice

IV. There Are Negative Implications for Those Who Abuse the Process There are negative repercussions against copyright owners that make misrepresentations in DMCA take-down notices or abuse the process. The statute provides that if a person “knowingly materially misrepresents” that that material or activity is infringing (in a take-down notice), or that material or activity was removed or disabled by mistake or misidentification (in a counter notice, discussed below), she “shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.” 17 U.S.C. § 512(f).

Practice Tip A 2008 case out of California held that the “good faith belief” standard for issuing DMCA take-down notices requires copyright holders to consider whether the use of a copyrighted work falls within fair use exceptions to the Copyright Act. Lenz v. Universal Music Corp., N.D. Cal., No. 07-3783, 8/20/08. This is worth researching if you believe there may be a claim of fair use (discussed in detail in Chapter 6 in the defenses section). Other courts have held that the “knowingly materially misrepresents” standard is met when the person failed to act with subjective good faith. Rossi v. Motion Picture Association of America, 391 F.3d 1000 (9th Cir. 2004).

V. How to React When a Client’s Materials Have Been Subject to a Take-Down Notice After receiving a notice that meets the statutory requirements, the host must “take down” the material “expeditiously” to prevent copyright infringement and stay within the safe harbor. No evaluation of whether the material is in fact infringing is required.

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Practice Tip If you represent a SP that receives a take-down notice, its first inclination may be to help its customer mediate the situation or to first determine if there is infringement. You must advise your client that to remain protected by the safe harbor, they cannot do this; the client must simply remove the materials identified in the take-down notice.

If a client has had their materials removed or disabled pursuant to a takedown notice, the first thing to do is check if the material is infringing. If the material is not infringing or the client has a good argument of fair use or license, there are options to pursue to have the material reinstated. The DMCA provides for an alleged infringer to submit a counter notice. The alleged infringer or its agent may send the ISP a counter notice stating that the request was improper and that the disabled web content should be put back on the Internet. 17 U.S.C. § 512(g). Such a counter notice starts a 14-day period within which the copyright owner who sent the original take-down notice must file suit over the alleged copyright infringement. During this 14-day period, the DMCA insulates the host from any liability for taking the material down. If no lawsuit is brought by the end of the 14-day period, the host must put the content back on the Internet.

A. Drafting the Counter Notice The counter notice must be in the form of a written communication to the designated agent and must include: (1) Identification of the material that has been removed or disabled (2) Identification of the location at which the material appeared before it was removed or disabled (3) Contact information for the subscriber (name, address, telephone) (4) “A statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person” (5) “A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled” and

Ensuring Compliance with the DMCA if Your Client Is a Service Provider

(6) Signature (physical or electronic) of a person authorized to act on behalf of the subscriber 17 U.S.C. § 512(g)(3). Since the counter notice process requires 14 days, most clients will be unsatisfied with this solution. An additional action that may be taken under the DMCA is that the owner of the website may bring a claim for damages caused by misrepresentations in the take-down notice under section 512(f). This provision was successfully litigated in Online Policy Group v. Diebold, Inc. 337 F. Supp. 2d 1195 (N.D. Cal. 2004) where Diebold was forced to pay slightly more than $5000 in damages for an improper take-down.

VI. Preventing a DMCA Take-Down Notice For many clients, the reaction time and process to a DMCA notice is inadequate, and they may want to attempt to avoid any DMCA take-down notices entirely. A 2007 article titled DMCA Take-Down. . . . Or Copyright Law Breakdown? authored by Stephen Luther discusses, among other things, options for preventing take-down notices.1 Mr. Luther suggests that one option is to negotiate with the SP to avoid take-down before any notice is received but points out that this is difficult because it requires that the SP expose itself to a risk of copyright infringement liability. He also suggests that the client might offer to indemnify the SP if there is a claim of copyright infringement but again points out that such an offer does not give much value because standard hosting contracts often already include an indemnification clause. He further suggests that offering an escrow for potential damages may convince an SP. Alternatively, Mr. Luther points out that the most practical solution may be technological. For instance, a client that provides its own hosting services will be the recipient of the take-down notice and can decide how to respond.

VII. Ensuring Compliance with the DMCA if Your Client Is a Service Provider An SP is required to post on its website, in a location accessible to the public, the contact information for its designated agent. 17 U.S.C. § 512(c)(2).

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Luther, Stephen, DMCA Take-Down. . . . Or Copyright Law Breakdown? The Business Suit, Vol. 1, No. 7, June 28, 2007, pp. 1–2, available at www.DRI.org.

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It must also provide the information to the Copyright Office. 17 U.S.C. § 512(c)(2). This information must include the name, address, phone number, and electronic mail address of the agent and “other contact information which the Register of Copyrights may deem appropriate.” 17 U.S.C. § 512(c)(2). Practice Tip The list of registered agents is available on the Copyright Office website at the home page under “Search the Copyright Office” and the link for “Online Service Providers.” There, you can click the link for browse the directory of designated agents. Remember that if an SP does not list a designated agent, they are automatically excluded from the safe harbor and can be subject to liability for the infringement of their users.

To ensure compliance, many SPs include designated agent information in multiple places on their website. It will typically be included in “Terms of Use” (see, e.g., youtube.com) or “Terms of Service” (see, e.g., cnn.com). The Terms of service may, in turn, link to a separate DMCA policy (see, e.g., google.com). There may also be an additional link to “Infringements” that provide information regarding the DMCA policy (see, e.g., foodnetwork.com). When an SP receives a take-down notice, to comply with the DMCA and ensure that it is entitled to the safe harbor, it must remove the accused material “expeditiously.” 17 U.S.C. § 512(c). This means that most SPs will remove the material automatically without contacting the website owner or poster of the material. This is the smartest reaction since there are no negative repercussions for doing so, and there is no requirement that an SP notify the user prior to removing or disabling the allegedly infringing material. Only after the material is removed must the SP take “reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material.” 17 U.S.C. § 512(g)(2). Practice Tip If you represent the SP, tell your client that it should avoid any temptation to try and be helpful or act as the mediator. When an SP receives a take-down notice, it has several options. It can choose to ignore the notice, it can pull the material down, or it can contact the subscriber first. You should advice an SP client to pull the material down. Getting involved in the dispute can only hurt the SP and open it up to liability.

Ensuring Compliance with the DMCA if Your Client Is a Service Provider

If an SP receives a counter notice that meets the elements set forth in 17 U.S.C. § 512(g)(3) and listed above, it must: (1) Promptly provide the copyright owner (or agent) that submitted the original take-down notice with a copy of the counter notice (2) Inform the copyright owner (or agent) that submitted the original take-down notice that it will replace the removed material or cease disabling access to it in ten business days Unless the SP receives notice from the copyright owner (or agent) that submitted the original take-down notice that he has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network, the SP must: (3) Replace the removed or disabled material not less than 10, nor more than 14, business days following receipt of the counter notice.

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CHAP T ER

5 Cease and Desist Letters

I. The Pros and Cons of a Cease and Desist Letter

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A. The Cost of a Cease and Desist Letter Is Lower Than Litigation

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B. Cease and Desist Letters Can Garner a Speedier Result Than Litigation

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C. Cease and Desist Letters Lack Teeth

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D. Cease and Desist Letters Can Instigate Litigation that Your Client May Not Be Prepared For

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II. Weighing the Pros and Cons

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III. Consider Filing a Complaint Before Sending a Cease and Desist Letter

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IV. Research to Conduct Before Sending a Cease and Desist Letter

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A. Verify that the Work Is Copyrightable

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B. Verify the Copyright Ownership

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C. Question Any Licensing History

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D. Consider the Accused Infringer’s Potential Defenses

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E. Evaluate Registration

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F. Make Sure There Is an Infringement

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G. Research the Extent of the Infringement

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H. Research the Recipient

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V. The Potential Outcomes and Repercussions VI. Drafting the Letter

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A. Determining Who Should Receive the Letter

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B. Elements to Include in the Letter

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VII. How to Respond to a Cease and Desist Letter VIII. Provide Your Client with a Litigation Hold Notice

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Chapter 5 Cease and Desist Letters

A cease and desist letter is simply a letter written to a party who you and your client believe is infringing a right of your client. This is a common tool used throughout the legal profession and is often used in trademark, patent, and copyright infringements. Cease and desist letters can be written in a number of different ways: they can be harsh and demanding, they can be informational and open to discussion, they can demand all cessation, they can offer a license, they can offer to talk, they can include an already drafted complaint, they can include an already drafted and filed complaint, they can mention possible future legal action, or they can simply remain silent as to future legal action. How the letter is written comes down to your client’s goals, your perception of the recipient, and the potential legal repercussions from the different types of demands.

Practice Tip Send your client a draft of the letter for his comment before you send the letter to ensure that the tone is what he envisions, to ensure accuracy, and to allow the client an opportunity to add or elaborate on the facts.

Practice Tip Draft a letter using the phrase, “Our client believes you infringe . . .” rather than “We believe you infringe . . .” This makes sense because you are usually relying on the client for the relevant facts, and you do not have firsthand knowledge of those facts. Furthermore, you do not want to become a fact witness but instead want to keep your analysis protected by the work-product doctrine. Phrasing the allegations this way does not discredit your client because it is accepted form for cease and desist letters.

I. The Pros and Cons of a Cease and Desist Letter One of the first questions to ask is whether to write a cease and desist letter. Other options range from ignoring the infringement to filing a lawsuit.

A. The Cost of a Cease and Desist Letter Is Lower Than Litigation Cease and desist letters are beneficial in that they are a reasonably priced commencement of the adversarial process in comparison to full litigation.

The Pros and Cons of a Cease and Desist Letter

A large percentage of litigation is resolved through negotiation and ultimately settlement. Cease and desist letters start the adversarial process that can lead to negotiation and settlement without incurring the costs of litigation.

B. Cease and Desist Letters Can Garner a Speedier Result Than Litigation For the same reason that cease and desist letters start the adversarial process quickly, they can lead to quick resolution. If the recipient is willing to resolve the matter, cease and desist letters often elicit quick action and speedy resolution.

C. Cease and Desist Letters Lack Teeth On the flip side, cease and desist letters are not always successful; some recipients simply ignore the letter. A letter in itself is not a legal action and can only threaten further legal action. For this reason, a recipient may choose to ignore a letter and test your client’s compunction. If your client is not willing to engage in litigation (for lack of resources, lack of desire, or some other business or personal reason), then the recipient has called your client’s bluff. Practice Tip If a recipient does not respond to an initial letter, you might consider drafting a complaint and sending an unfiled (or filed but unserved) complaint along with a second letter. This demonstrates your client’s compunction but willingness to negotiate before actually pursuing litigation.

D. Cease and Desist Letters Can Instigate Litigation that Your Client May Not Be Prepared For A potential negative to a cease and desist letter is that it can instigate unwanted litigation. There is a cause of action called a declaratory judgment action that allows a party who would otherwise be a defendant to file a lawsuit asking the court to rule on an issue of controversy between two parties. The standard to file a declaratory judgment action is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 767, 549 U.S. 118 (Jan. 9, 2007); Surefoot LC v. Sure Foot Corp., 10th Cir., No. 06-4294, 7/8/08; Sandisk v. STMicroelectronics, 2007 U.S. App. LEXIS 7029 (Fed. Cir. 3/26/2007);

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Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., 497 F.3d 1271 (Aug. 3, 2007). Virtually every cease and desist letter or offer to license can invoke declaratory judgment jurisdiction.1 Any action that notifies a potential infringer of the potential plaintiff’s rights will likely be considered an “affirmative action.” The remaining factors simply fall into place after that initial action—there is a legal interest on the letter writer’s part (otherwise there would have been no need for the letter), and all the other side has to do is disagree and then the test is met: there is a controversy between parties having adverse legal interests sufficient for the other side to seek a declaratory judgment. Courts have held that meeting for license negotiations is sufficient for declaratory judgment jurisdiction, stating that a meeting where the parties had opposing positions was enough to establish that there was a “substantial controversy, between parties having adverse legal interest, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Sandisk v. STMicroelectronics, 2007 U.S. App. LEXIS 7029 (Fed. Cir. 3/26/2007). In fact, even a statement that your client has absolutely no intention of suing the recipient is not sufficient to avoid declaratory judgment. Sandisk v. STMicroelectronics, 2007 U.S. App. LEXIS 7029 (Fed. Cir. 3/26/2007). Practice Tip Discuss the declaratory judgment standard with your client before sending a cease and desist letter. You do not want to have to explain after the fact how you got her sued in a faraway state because of your letter. Note, however, that if there is no copyright registration, a question arises as to whether a potential defendant may initiate a declaratory action for noninfringement of a copyright. Registration is required for jurisdiction over a copyright dispute, and at least one court has found that there is no subject matter jurisdiction for a declaratory judgment action if there is no registration. See Stuart Weitzman LLC v. Microcomputer Resources Inc., 542 F.3d 859 (11th Cir. 2008).

The standard to file a declaratory judgment action used to be that the filing party had a “reasonable apprehension of suit.” You may hear people refer to that test even still, but it is no longer the correct test because in January, 2007,

1.

In a concurrence in MedImmune written by Judge Bryson, he wrote, “the rule adopted by the court in this case will effect a sweeping change in our law regarding declaratory judgment jurisdiction. . . . I see no practical stopping point short of allowing declaratory judgment actions in virtually any case in which the recipient of an invitation to take a patent license elects to dispute the need for a license and then to sue the patentee.”

Consider Filing a Complaint Before Sending a Cease and Desist Letter

the Supreme Court criticized this test. MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 767, 549 U.S. 118 (January 9, 2007). Under that old standard, in order to avoid a potential declaratory judgment suit, cease and desist letters could be written in a benevolent manner simply seeking to “talk” or “discuss” the potential issue between the parties but not actually threatening to sue the recipient. Under the new standard, such a strategy will not necessarily work.

II. Weighing the Pros and Cons Before writing a cease and desist letter on behalf of a client, you should discuss the pros and cons of the letter and the potential repercussions. Although the practical consideration remains that litigation is time consuming and expensive, and it is fair to assume that most recipients of cease and desist letters will still prefer negotiation to litigation, there are certainly situations where recipients will prefer litigation. Considering the recipient of the letter is the key to understanding and predicting his potential reaction. For instance, with the new declaratory judgment standard, it will be easier for multiple small potential defendants who have received notice of their arguably illegal action to join forces to fund a declaratory judgment litigation where otherwise they would be forced to negotiate for fear of the costs of litigation. Thus, large cease and desist letter writing campaigns may not be the best option for many clients. Instead, it may be better to target one infringer at a time, negotiate with that infringer and once the issue is resolved, move on to the next infringer. In another example, for the small company that is trying to avoid litigation, sending a letter to a large company might be simply asking for litigation. A large corporation may consider a declaratory judgment action a bargaining tactic against a small adversary that wants to avoid the expense of litigation. Thus, again, the client will need to consider the recipient: it may be to a client’s benefit to negotiate with a small adversary first before approaching larger infringers.

III. Consider Filing a Complaint Before Sending a Cease and Desist Letter One option that many attorneys are offering their clients in order to avoid declaratory judgment litigation in a distant jurisdiction is to draft and file a complaint in the client’s (or other appropriate) jurisdiction before sending the letter. The complaint does not have to be officially “served” because the

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Federal Rules of Civil Procedure allow 120 days for service (see Rule 4(m) of the Fed. R. Civ. P.). Instead, the complaint is included with the letter as a courtesy copy, and the letter states something along the lines of “If we cannot work this out, we will serve this complaint.” This is often referred to as “pocket filing.” Practice Tip Although the Federal Rules allow for 120 days for service, some jurisdictions will push the Plaintiff to serve much earlier than that. For instance, in the Eastern District of Virginia, the Clerk may call you to ask why service has not been effected, and the Court may issue a scheduling order even before service is effected, forcing you to either serve before the scheduling conference or explain to the Court at the scheduling conference why you have not served the Complaint (pocket filing is not a good reason).

If you are sending the cease and desist letter to a single small recipient, the likelihood that he will instigate litigation is low, and expending the costs to draft a complaint and file it may not be worthwhile. However, if you are drafting the letter on behalf of a large corporation and sending it to another large corporation that is known to be litigious, pocket filing may be a smart option. On the other hand, if you are filing in a “rocket docket” jurisdiction such as the Eastern District of Virginia where the clerks and judges expect quick service and quick movement and will push for that (despite the 120-day allowance), pocket filing may not be a smart choice if you are in actuality looking for settlement. In light of the risk of a declaratory judgment action, some clients may ultimately decide that the risk is not worth sending the letter at all. This new standard may test the client’s gumption early on in the adversarial process; if they are not ready for a real fight, perhaps it is not worth starting. In determining whether to “pocket file” and include the complaint with a cease and desist letter, a variety of factors should be considered, including: (1) Who is your client? (a) Are they a large company, individual, or small business? (b) What is their budget? • They may not want to spend the money to prepare a complaint before sending a letter. (c) How far do they really want to go? • Would they really want to pursue litigation if necessary? (2) Who is the recipient? (a) Are they litigious?

Research to Conduct Before Sending a Cease and Desist Letter 91

®

• You can run searches on Westlaw and Lexis (Total Litigator ) to attempt to determine this. (b) Are they local, national, or foreign? • Your client may want to protect the choice of forum by filing a complaint first. (c) Are they a large company, individual, or small business? (3) What is the forum? (a) In some jurisdictions, litigation must be pursued quickly because scheduling is strictly enforced, while in others, the docket moves much more slowly, allowing negotiation before litigation really has to be pursued. (b) Is there another reason you would want litigation in a particular forum, such as a more favorable outlook on particular legal issues? (4) What is the issue? (a) Can it likely be resolved easily without litigation or is it a highly contentious matter that may require heavy litigation? Of course, every individual matter will have its own unique considerations. Consider all angles of the matter in which you are involved, talk to your client, talk to the partner with whom you are working, do some research about the parties, and think practically about the parties and the issues to discover and evaluate these unique considerations for each case.

IV. Research to Conduct Before Sending a Cease and Desist Letter The last thing that you want to do is expose your client to problems by writing a cease and desist letter, so you should absolutely research the client’s rights before instigating an adversarial matter. The recipient’s attorney will do the research, and you do not want to be surprised, so you should know about any problems before they do. Take a look at the Quick Reference Guide “Checklist Before Sending A Cease And Desist Letter” at the end of this chapter.

A. Verify that the Work Is Copyrightable Something is copyrightable if it is: (1) A work of authorship (appropriate subject matter) (2) Original (not copied)

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(3) Fixed in a tangible medium of expression (4) Minimally creative 17 U.S.C. § 102(a). Remember that copyrights protect only the expression of a particular idea; not the underlying facts, ideas, or concepts. 17 U.S.C. § 102(b).

B. Verify the Copyright Ownership Make sure that the copyright ownership is clean and the necessary paperwork was completed accurately (i.e., any work for hire agreements, any employment agreements, any assignments or other transfers). You may even want to check the Copyright Office for any recordations if you or your client is concerned. You might also want to discuss recordation with your client if there were transfers that they have not yet recorded. (See Chapter 3 regarding licensing and the section regarding recordation.) A copyright can be forfeited as a matter of law if it was published prior to 1989 without a copyright notice. Although a copyright notice is not required for works published on or after March 1, 1989, a work that was published prior to 1989 must now still bear a copyright notice. There are slightly different rules depending on when the work was published, so you should first determine the date of first publication. If the work was published before January 1, 1978, notice was required and if there was no notice, the copyright has been forfeited and is public domain. If the work was published between January 1, 1978 and March 1, 1989, notice was required and lack of notice forfeited the work; however, there was an exception that provided for a fiveyear cure period wherein a copyright owner could reverse the public domain designation. See 17 U.S.C. § 405(a). If a work was published after 1989, recall that under the Berne Convention, notice is no longer required to maintain a copyright. If it is an older work, you will also want to check whether the term has expired or needs to be renewed. Take a look at the Quick Reference Guide “Calculating Copyright Term Lengths” at the end of Chapter 1.

C. Question Any Licensing History Discuss licensing history with your client. Ask him whether he previously licensed to this infringer. Ask him whether he licensed to another party that may have, in turn, licensed to this alleged infringer. Even if there was a previous license, it may have expired, or the infringer may have gone beyond the scope of the license. The main goal is to know all the facts before the other side’s counsel does.

Research to Conduct Before Sending a Cease and Desist Letter 93

D. Consider the Accused Infringer’s Potential Defenses Consider other possible defenses the alleged infringer may have, from the statute of limitations (how long has your client known about the infringement) to whether the infringer will claim fair use. Look at the various defenses listed in Chapter 6.

E. Evaluate Registration If there is a registration, make sure it was completed correctly. If there are errors, correct them. If no registration was filed, talk to your client about registering now and registering by special handling. This, of course, will depend in part on whether litigation is likely. But in any event, a registered copyright is a stronger bargaining chip even if it was not filed before infringement commenced, because it portrays a seriousness and earnestness to the infringement allegations. Practice Tip Remember that without registration before infringement first occurred, your client is only entitled to actual damages (lost profits and unlawful gains) and not statutory damages or attorneys’ fees. As a practical matter, without statutory damages and attorneys’ fees, many copyright infringement lawsuits are not financially feasible because the actual damages are so low (i.e., if there were only minimal or no sales by the defendant). If this is the case, the key is to convince the recipient of the cease and desist letter that your client is so morally outraged that she will pursue litigation even though it will cost her more than she can recover in damages. Otherwise, the response will likely be “Yeah, I infringed . . . so, sue me.”

F. Make Sure There Is an Infringement Aside from owning a valid copyright, a copyright infringement claim requires that there is infringement. Infringement can be shown through access and substantial similarity. You should determine how the accused infringer accessed your client’s materials. If your client publishes or makes their material available in stores or online, then access should not be to difficult to show. Otherwise, you should talk to your client about how the recipient would have gained access to their copyrighted material.

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Also, take a hard look at whether there is infringement of the expression. Your client may believe that a work infringes, but it is your job to distinguish between a knockoff (that copied the underlying idea or concept) and a copyright infringement (that copied the expression of that idea or concept).

G. Research the Extent of the Infringement You should also evaluate the extent of the infringement. Although not always possible, online research is often very helpful in this regard. You can review the recipient’s website and other ones as well to check whether he is selling products online. Your client is also an excellent source of information as she may have customer information or complaints, she may attend the same trade shows as the recipient, or she may just have other inside information.

H. Research the Recipient To the extent possible, you should evaluate the recipient’s litigiousness so you can evaluate the likelihood of a declaratory judgment action and the type of fight you and your client face. As indicated earlier, both Westlaw and Lexis can search by party. You should also consider who the possible infringers are: the entire stream of commerce is a potential defendant, including the manufacturer, importer, distributor, and retailer. It will then be up to you and the client to determine which of the parties, strategically, to send the letter to. Part of this may be legal strategy, while part may be a business decision (i.e., the client may not want to approach his own customers or retailers of its product). Practice Tip Free search engines such as AltLaw and Justia can be used to give an estimate of a recipient’s litigiousness.

V. The Potential Outcomes and Repercussions As discussed, the recipient has several options. Among other things, he might: (1) Respond and wish to negotiate to resolve the issue (2) Ignore the letter (3) File a declaratory judgment action

Drafting the Letter 95

Usually, a recipient will at least respond to a letter, and he will usually disagree with your assertions but agree to discuss the issues in order to resolve the matter. If you do not hear from the recipient, you can try again with a more forceful letter or potentially with a draft complaint or a filed but unserved complaint, to demonstrate the seriousness of the matter. You might try other methods of contacting the person if you are concerned that the original letter did not reach him, such as through e-mail or certified mail. Practice Tip Remember that pursuant to ethics rules, once the recipient of a letter hires a lawyer and that lawyer contacts you, you must direct future correspondence to that lawyer and not to the infringer directly. If the recipient responds that he is turning the matter over to an attorney and that he will get back to you but then do not hear anything, you can consider contacting the recipient to ask for the attorney’s contact information.

VI. Drafting the Letter Every cease and desist letter is different and the tone of every letter is different. Some letters may be threatening and stern and may even include an already filed complaint. Such a letter lets the recipient know that your client is taking the matter very seriously and is ready for litigation. Other letters may be soft, conversational, and open to negotiation or license. Such a letter lets the recipient know that although your client is ready to enforce their rights, they are also willing to reach an amicable resolution and are not anxious for litigation. Within that range, there are an infinite number of letters, messages, and tones. The tone of the letter is ultimately one that should be determined through discussion with your client and an evaluation of their goals. The following section does not discuss the infinite possibilities for tone and structure but does provide suggestions and elements that should be included. The Appendix also includes an example of a cease and desist letter.

A. Determining Who Should Receive the Letter For a large corporation that has corporate counsel, that is a good person to send the letter to. You may also want to copy the CEO. Typically, you can find that contact information on the company’s website. If it is a publicly traded company, you can look at the latest SEC filing such as a 10Q or a 10K to find

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such information (you can search by company name at http://www.sec.gov/ edgar/searchedgar/companysearch.html). You should also search the company’s website to determine if there is a specific contact to which you should send the letter. Practice Tip Often, the agent listed as the DMCA notice recipient works as a recipient for a cease and desist letter (see Chapter 4 regarding DMCA take-down notices). A DMCA notice requires swift action and as such a cease and desist letter sent to that same attention will usually receive the same swift reaction.

For a smaller or privately held company that does not have corporate counsel, public filings, or a DMCA agent, the principals are appropriate recipients. This information can usually be found on the Department of Corporations for the state in which the recipient is incorporated or registered as a corporation. If the principals are not listed, a registered agent or corporate designee may be listed, and you may want to direct the letter to them and ask them to send to the appropriate decision maker. Most small companies maintain websites and will also list their contact information and possibly a name for the owner or responsible person. Websites will also typically provide an e-mail address such as [email protected] to which you can send the correspondence. Such e-mail accounts are presumably checked fairly regularly if they are intended for customers. For an individual, your client will usually be able to provide you with at least the name, location, or d/b/a of the alleged infringer. You can run online search engine searches, including 411 searches, as well as Lexis and Westlaw searches to find the individual. If the person is operating as a sole proprietorship or d/b/a, he will often have a website in that name, which will, in turn, often include contact information. Even if contact information is not included on the infringer’s website, you can sometimes find their contact information through the Whois report that is required to be kept up to date for all domain names. You can find the contact information for the registrant (owner) of the domain name (name that directs users to the website) by searching through registrar (companies that sell the domain names) websites such as godaddy.com or networksolutions. com. At these sites, you can then search for the domain name’s Whois information by entering the domain name (i.e., cnn.com, google.com, peta.org) in the “Find a domain name” or “Start your domain search” fields. The search result will indicate that the domain name is taken, and then you click the link for more information. The Whois report will then provide the owner information as well as an administrative contact.

Drafting the Letter 97

Practice Tip In any event, it is usually best to copy more than one person on a cease and desist letter, if possible, to increase the chance of a response.

B. Elements to Include in the Letter While there are infinite different issues you might choose to include in a letter, the following is a list of some items that the authors typically include in their letters. • The name of your client and a brief description of who they are and what they do • An identification of the copyrighted work, including a name and brief description • A copy of the registration (or application for registration) if there is one • A statement that your client owns the copyright in the work • A statement that the recipient is infringing the copyright and is violating federal law • A description of the infringement of which you are aware • A statement of their potential exposure due to this infringement (this is where the $150,000 number should be included if the work was registered before the infringement occurred) • A suggestion for possible resolution or a demand • A request for additional information, such as sales information, so that you can determine the extent of the infringement and an appropriate demand or resolution • A statement that you and your client are willing to pursue future legal action • A deadline for a response (so that you can follow up and can expect a response within a certain time frame; remember to docket this date) • Your contact information • Some attorneys like to include a statement at the top of the letter stating that it is protected by Fed. R. Evid. 408 as a settlement letter • Some attorneys like to include a statement near the end that the letter and any statements within it do not waive any of your client’s rights The Appendix also includes a sample of a cease and desist letter.

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Practice Tip A client may want to send a copy of the letter to third parties such as customers or even the media. This is not a good idea, and you should advise him not to distribute copies of the letter. Distributing a cease and desist letter can open your client up to defamation or interference with business allegations.

VII. How to Respond to a Cease and Desist Letter As soon as you receive a letter, review the alleged facts and the registration that was enclosed. If there was no registration enclosed, this will be the first thing to request when you respond. You may even want to call opposing counsel before responding and ask for a copy of the registration. It will give you a sense of the other side’s goals. If they have not filed a registration, they cannot immediately pursue litigation and gives the impression (although it may not be correct) that they are not looking to litigate the issue. You should also request a copy of the allegedly infringed work if it was not included. Again, you may want to call opposing counsel and request this even before responding. Practice Tip You may want to request a certified copy of the deposit material from the Copyright Office. If the deposit material does not include what was copied, for example, if it was for a different version than what was infringed, then statutory damages and attorneys’ fees are not available. This could be your smoking gun.

Talk to your client and get his story. The following list is a sample of the type of information you will want to acquire (there will be other information depending on the individual case). • The copyrighted work Have they seen it before? Do they have a copy? Where did they obtain the copy? • The allegedly infringing work. Who created it? When did they create the work? ■ ■ ■

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How to Respond to a Cease and Desist Letter 99

How was the work created? How did they acquire ownership? Did they acquire it with any guarantees (such as through a buyout)? Is it an infringement or is it a knockoff of the underlying idea? • Potential defenses. Did they have a reason to believe they could copy/distribute/etc.? Did they independently create the allegedly infringing work? Did they have a license from anyone else to use the work? Did they create the work by using a different work? • Potential exposure. What is the extent of the infringement? Distribution, revenue, profits, and advertising. ■ ■

■

■ ■ ■ ■

■

◆

You will also want to consider other possible defenses. For instance, forfeiture (for lack of notice on a work published prior to 1989), abandonment (if they expressly abandoned the copyright to enter a competition), whether the copyright has expired (the age of the copyright), whether the statute of limitations has run (has the copyright owner known about the alleged infringement for three years?). These are discussed in more detail above in the section regarding writing a cease and desist letter and also in the defenses section of the litigation chapter. Obtaining the information listed above will assist with determining how best to respond to the letter. In a big picture sense, your client has three options when they receive the cease and desist letter. They can: • Respond to the letter • Ignore the letter and test the copyright owner’s resolve • File a declaratory judgment action Just as there are infinite ways to write a cease and desist letter, there are infinite ways to respond. You can agree to engage in negotiation, you can disagree with the cease and desist but agree to comply with their request to avoid litigation, you can disagree and refuse to comply with any requests, you can request more information, or you can reply in kind (accusing infringement or some other claim if you have a legitimate cause of action against the copyright owner). How you respond and the tone of the response depends on the individual case and client. The Appendix includes a sample of a response to a cease and desist letter. Ignoring a letter is typically not the best way to proceed. Responding that your client has evaluated the letter and the issues and disagrees and refuses to comply has the same effect of testing resolve while at the same time opens up dialog for resolution and demonstrates that your client has taken the situation seriously, has evaluated it, and still believes they are correct.

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Filing a declaratory judgment action is not common after an initial cease and desist letter, but as discussed above, is probably possible. If your client is in a situation where they truly believe the issue cannot be resolved without litigation, it may be a good option to start litigation to just get it moving. By doing this, your client will also choose the forum. However, if negotiation and resolution are possible, initiating litigation will only inhibit that negotiation and may cost your client more in the long term. As always, this decision will depend on your client, their goals, the opposing party, and the issues involved.

VIII. Provide Your Client with a Litigation Hold Notice There is a requirement that a party not destroy evidence once it reasonably anticipates litigation. Arguably, a party reasonably anticipates litigation when it sends or receives a cease and desist letter. As such, the duty to preserve evidence arguably arises when such a letter is sent or received. You, in turn, have an obligation to notify your client of this duty, and you should preferably do it in writing in the form of a litigation hold notice. Such notices are discussed in more detail in the litigation chapter, specifically in section 6.I.G, and a sample is provided in the Appendix.


Quick Reference Guide Checklist Before Sending a Cease and Desist Letter

1. Is the copyright valid? 17 U.S.C. § 102. a. Original b. Creative c. Copyrightable subject matter 2. Who owns the copyright? a. Who created the work? i. Was it a work for hire? ii. Was there an assignment? 3. Has the copyright fallen into the public domain? a. Copyright term b. Forfeiture c. Abandonment 4. Is there infringement? a. Was there copying of the expression? i. Access ii. Substantial similarity 5. What is the extent of the infringement? a. How many copies? b. Willful? 6. What potential damages are there? a. Statutory (registration before the infringement) b. Actual (plaintiff’s losses and defendant’s improper gains) 7. Are attorneys’ fees available? a. Was there registration before infringement? 8. What potential defenses are there? a. Licenses, statute of limitations, fair use, independent creation, merger doctrine, estoppel 9. Should you register the copyright? 10. Who is the recipient? a. Litigious? b. Deep pockets? c. Where are they located? 11. Are there other potential recipients in the chain of infringement? 12. Talk to your client about the possibility that a declaratory judgment could be filed. 13. Consider whether you want to “pocket file” before sending the letter.


CHAP T ER

6 Copyright Litigation

I. Steps to Take Prior to Filing a Claim for Copyright Infringement A. Register the Copyright

107 108

B. Evaluate Whether There Is a Claim 1. Determine the Ownership of the Copyright

109 109

2. Ensure That the Copyright Is Valid

110

3. Determine Whether You Can Show Copying

111

a. Access to the Copyrighted Work

111

b. Substantial Similarity

112

C. Consider Problems with Your Case and Any Defenses

115

D. Evaluate the Strength of the Infringement Case

115

1. Consider the Strength of the Copyright

115

a. Nonprotectable Elements of a Copyrighted Work

115

b. The Merger Doctrine

115

c. Thin Copyrights

116

2. Consider the Strength of the Infringement a. Comparing the Works for Substantial Similarity b. Evaluating the Extent of the Infringement

117 117 118

E. Determine and Research the Defendant(s)

119

F. Consider Where to File

120

G. Impose a Litigation Hold

121

II. Drafting, Filing, and Serving a Complaint A. Venue and Jurisdiction

122 122

1. Subject Matter Jurisdiction

122

2. Personal Jurisdiction

123

3. Venue

124

B. Factual Background

125

C. Causes of Action

125

D. Filing the Complaint and Additional Materials

128

1. Civil Cover Sheet

128

103

104 Chapter 6 Copyright Litigation 2. Summons

129

3. Corporate Interest and Financial Interest Disclosure Statement

129

4. Copyright Form-AO121

129

E. Service

130

F. Amending the Complaint

131

III. Preliminary Injunctive Relief

131

A. Temporary Restraining Orders

131

B. Preliminary Injunctions

132

IV. When Your Client Receives a Complaint

133

A. Service

133

B. Insurance Issues

134

C. Litigation Hold

136

D. Receiving an Amended Complaint

136

V. Initial Dispositive Motions A. Motions That Must Be Filed Before Answering 1. Personal Jurisdiction 2. Improper Venue

137 137 137 138

B. Motions That May Be Filed Before Answering

138

C. Subject Matter Jurisdiction Can Be Raised Before Answering or Any Time Thereafter

139

D. Timing of Motions and Answers

139

VI. Answering, Defenses, Counterclaims

140

A. Answering

140

B. Affirmative Defenses

142

1. Statute of Limitations

143

2. Abandonment or Forfeiture of Copyright

144

3. The Work Is in the Public Domain

144

4. Independent Creation

145

5. Fair Use

146

6. License or Implied License

147

7. Merger Doctrine or Unprotectable Elements

148

8. Fraud on the Copyright Office

149

9. Unclean Hands

150

10. Copyright Misuse

150

11. Innocent Intent

150

12. Equitable Estoppel

151

C. Counterclaims and Crossclaims

151

Chapter 6 Copyright Litigation 105 VII. Remedies

153

A. Monetary Damages

153

B. Costs and Attorneys’ Fees

156

C. Injunctions

156

D. Destruction of the Infringing Goods

158

VIII. Discovery

158

A. Rule 26 Disclosures

160

B. Written Discovery

160

1. Plaintiff ’s General Requests

161

2. Defendant’s General Requests

163

3. Interrogatories

164

a. Creation of the Work

165

b. Validity

166

c. Ownership

166

d. Infringement

167

e. Damages

168

f.

169

Defenses

g. General Discovery h. Counterclaims

170 170

4. Requests for Admission

171

5. Requests for Production of Documents and Things

175

a. Creation of the Work and Validity

177

b. Ownership

178

c. Infringement

178

d. Damages

180

e. Defenses

181

f.

181

General Discovery

g. Counterclaims

182

C. Confidentiality Agreements/Protective Orders

182

D. Responding to Written Discovery

182

1. Interrogatories

183

2. Requests for Admission

186

3. Requests for Production of Things and/or Documents

187

E. Subpoenas

189

1. Issuing a Subpoena

189

2. Responding to a Subpoena

192

F. Depositions 1. Who to Depose

192 192

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Chapter 6 Copyright Litigation 2. When to Take the Depositions

193

3. Noticing the Deposition

194

4. Depositions of an Organization

195

5. Preparing to Take a Deposition

195

a. Creation of the Work

196

b. Validity

196

c. Ownership

196

d. Infringement

197

e. Damages

197

f.

197

Defenses and Counterclaims

6. Taking a Deposition

198

7. Defending a Deposition

203

G. Discovery Disputes

205

1. Motions to Compel

205

2. Protective Orders

206

IX. Experts

207

A. Types of Experts

207

B. Locating an Expert

208

C. Communications with an Expert

210

D. Expert Reports

211

E. Deposition of an Expert

212

F. Motions to Exclude Experts

213

X. Dispositive Motions

214

XI. Hearings

216

XII. Settlement and Mediation

217

XIII. Pretrial

220

XIV. Trial and Preparing for Trial

222

XV. Post-Trial

223

A. Equitable Relief

223

B. Relief from Judgment

224

C. Collecting on a Judgment

225

D. Recovering Fees and Costs

225

Steps to Take Prior to Filing a Claim for Copyright Infringement 107

This chapter deals with copyright litigation and the tasks you will likely be assigned. As with all of the chapters, it is not a substitute for research or preparation but will give you thorough practice advice and will point you in the direction to obtain the additional information you need. The focus of this chapter is on a plaintiff filing a suit for copyright infringement; however, a potential infringer can also initiate litigation for declaratory judgment of noninfringement. The current standard to file a declaratory judgment action is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 767, 549 U.S. 118 (2007).1 If your client receives a threat of litigation, for example, through a cease and desist letter, you may decide to file a declaratory judgment action. There will be references to declaratory judgment action standards throughout this chapter. This book generally uses the terms plaintiff and defendant for copyright owner and accused infringer, respectively. Of course, in a declaratory judgment action, the terms plaintiff and defendant would be switched, so keep this in mind when reading this chapter.

I. Steps to Take Prior to Filing a Claim for Copyright Infringement Just as with a cease and desist letter or any other adversarial pursuit, there is research and analysis that you want to do before initiating litigation. The last thing that you want to do if you are plaintiff’s counsel is to expose your client to unexpected problems by initiating litigation; so the first thing to do is to research and verify your client’s rights. The defendant’s attorney will do the research, and you do not want to be surprised; so you should try to know about any problems before they do. Take a look at the Quick Reference Guide “Checklist Before Filing A Complaint” at the end of this chapter. Practice Tip Make sure your client is aware of the cost of litigation. While you do not want to scare the client away, you need to make sure he does not start something he cannot finish. The partner will typically be the one having that conversation with the client, but you should be aware of this delicate balance and ask to listen in to such conversations early in your career so you can learn how it is done.

1.

The evolution of the declaratory judgment standard is discussed above in 5.I.D.

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Chapter 6 Copyright Litigation

A. Register the Copyright Registration is required before a case may be filed for copyright infringement. 17 U.S.C. § 411. Without registration, the federal courts do not have proper subject matter jurisdiction to hear a copyright infringement case. As discussed in the chapter regarding registration (Chapter 2), there are differences among the courts as to whether a plaintiff needs only to have applied for registration of copyright before bringing suit or if a registration certificate is required. The split is an unsettled question of law; there are even conflicts among district courts in the same circuit. The key is to know where the litigation will take place and to research the law of the relevant jurisdiction to determine what is required. Once you determine what is required in your district, you will know whether you must seek expedited registration from the U.S. Copyright Office if the registration certificate is required to bring suit. (See Chapter 2 regarding special handling registrations.) Take a look at the Quick Reference Guide “Determining Whether Registration of Application Is Adequate for Subject Matter Jurisdiction” at the end of this chapter. Practice Tip Note, however, that cases have found that registration is not required for jurisdiction to considered other legal issues related to the copyright, such as joint authorship. See Sebastian Music Group, Inc. v. Ayala-Rodriguez, 2008 U.S. Dist. LEXIS 28517 (D.P.R. 2008).

If there is already a registration, make sure it was completed correctly, and if there are errors, correct them before filing the complaint or consider filing a new registration. Practice Tip 17 U.S.C. § 411 states that registration is required before initiating suit for the infringement of any “United States work.” Thus, an owner of a non-U.S. work may file suit without registration. Nimmer on Copyright, § 7.16[B][1][a][ii], describes the details of the definition of a “United States work” and the implications of such a work.

For a declaratory judgment action, a question arises as to whether registration is required before a potential defendant may initiate a declaratory action for noninfringement of a copyright. Registration is required for jurisdiction over a copyright dispute, but would such a requirement really be fair in the declaratory judgment context? If it were so, then a potential defendant for


copyright infringement of a work that was not registered would never be able to file a suit for noninfringement and would have to live with the uncertainty. At least one court has found that there is no subject matter jurisdiction for a declaratory judgment action if there is no registration: Stuart Weitzman LLC v. Microcomputer Resources Inc., 542 F.3d 859 (11th Cir. 2008). Be sure to check on the state of the law in your jurisdiction before initiating a declaratory judgment suit if the copyright owner has not registered the copyright.

B. Evaluate Whether There Is a Claim Copyright infringement requires proof of two elements: (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Broken down into subparts, the plaintiff in a copyright infringement action must show: (1) That the plaintiff owns the copyright (2) That the copyright is valid (3) That the defendant infringed a. The defendant had access to the copyrighted work b. The infringing work is substantially similar to the copyrighted work Before initiating litigation, you have an obligation to consider these elements and have a good faith basis to pursue the claim. You should feel confident that you can prove each one. The elements are discussed below in more detail. If you are filing for declaratory judgment of noninfringement, you should feel confident that you can refute at least one of these elements or that you can prove an affirmative defense (discussed below in 6.VI.B). Practice Tip Pursuant to Rule 11 of the Federal Rules of Civil Procedure, every attorney has an obligation to have a good faith basis for any allegations that she makes in a pleading. Specifically, Rule 11(b)(2) requires that “the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law.”

1. Determine the Ownership of the Copyright The plaintiff has the burden to demonstrate ownership of the copyright. This is where any employment agreements, work for hire agreements, licenses,

110


assignments, sale of asset or business agreements, subcontractor agreements, etc. will come into play. Before filing, you should ensure that the copyright ownership is clean and the necessary paperwork was completed accurately. If it was not, then try to fix it and get the necessary assignments in order. You will also want to explore joint authorship and whether there is a possibility that there were multiple authors. Chapter 6 of Nimmer on Copyright goes into more detail on joint ownership of a copyright. Essentially, a copyright can be owned by multiple authors where the authors created parts of the whole and had the intention to merge those parts into the whole. Each joint author owns an undivided interest in the entire work (even if their contributions were not equal), and they can each grant nonexclusive rights to the work. If there is another author and owner, check that he did not provide the potential defendant with a license. If there were any transfers, it is a good idea to check the Copyright Office for any recordations. In addition, you will want to discuss recordation with your client if there were transfers that they have not yet recorded. (See Chapter 3 regarding licensing and the section regarding recordation). You should also discuss licensing history with your client and specifically whether he previously licensed the copyright to this infringer or any related entity. Ask him whether he licensed to another party that could have, in turn, licensed to this alleged infringer. Even if there was a previous license, it may have expired, or the infringer may have gone beyond the scope of the license. The main goal is to know all the facts before you start and not to learn of them at a later date from the other side’s counsel. Further consider whether there has been any forfeiture or abandonment (discussed in depth in the defenses section below) and whether the copyright term has expired or was renewed (see the Quick Reference Guide on Calculating Copyright Term Lengths at the end of Chapter 1). If any of these situations have occurred, your client does not own a copyright because it has fallen into the public domain. 2. Ensure That the Copyright Is Valid Recall that for a work to be copyrightable, it must be a work of authorship (the appropriate subject matter), it must be original, it must be minimally creative, and it must be fixed. 17 U.S.C. § 102(a). Importantly, remember that copyrights protect only the expression of a particular idea; not the underlying facts, ideas, or concepts. 17 U.S.C. § 102(b). The plaintiff has the burden to demonstrate that the work is original (it was not copied) and that is has the requisite creativity to be protectable. 17 U.S.C. § 102(a). This is typically not a very high burden. In addition, this burden shifts when a certificate of registration was issued within five years of first publication because that is prima facie evidence of the validity of the


copyright. 17 U.S.C. § 410(c). Furthermore, many courts have held that a copyright registration itself, regardless of filing time frame, is prima facie evidence of validity. Practice Tip Take some time to seriously think about whether your client’s work is copyrightable. Consider the defendant’s potential arguments, including merger doctrine and non copyrightable elements, and be sure that you have reasonable counterarguments. And remind your client that the underlying idea is not protected by copyright.

3. Determine Whether You Can Show Copying The plaintiff does not have to prove copying with direct evidence; indirect evidence of copying by circumstantial proof is sufficient. Of course, it is nice to have the direct evidence of the defendant admitting to using the work (this sometimes will happen if their defense is a license of some form) or another witness testifying that the defendant used the copyrighted work. Indirect evidence requires a showing that the defendant had access to the copyrighted work and that the allegedly infringing work is substantially similar to the copyrighted work. Remember that there must be substantial similarity of expression, not just similarity of the underlying idea or concept. Where you cannot show access through either direct or indirect evidence, then, striking similarity, such that independent creation is unbelievable, can be sufficient to show infringement. a. Access to the Copyrighted Work Access to the copyrighted work can be either actual or inferred. If you know that the alleged infringer had a copy of the work or had direct access to it through work or some other way, there is actual access. Inferred access can exist where the work is publicly available, and it is reasonably probable that the alleged infringer would have access. For instance, in a case alleging that George Harrison used portions of the tune from the Chiffon’s “He So Fine” when creating “My Sweet Lord,” the court found that because “He So Fine” was on the music charts in both the United States and United Kingdom, he likely heard the song. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976). This was a circumstantial inference of access. The court held that whether conscious or not, his “My Sweet Lord” was similar in tune, and so this was circumstantial proof of copying the protected material.

112


Practice Tip Actual access does not necessarily need to be shown because it can be presumed where the infringing work is extremely similar to the copyrighted work. The relation between similarity and access is like a seesaw: the more similarity between the works, the less access is required. In some jurisdictions, “striking similarity” requires no showing of access to prove infringement.

If possible, you should try to determine how the defendant accessed your client’s materials before you instigate litigation. Your client may know if he gave his work to the alleged infringer or one of their employees or if he attends the same trade shows or other events where the alleged infringer would have seen the copyrighted work. If your client publishes or makes his material available in stores or online, then access should not be problem because it can usually be inferred. Practice Tip If your client publishes her work online, you should take screen shots using print to PDF or other screen capturing software such as SnagIt. You want evidence of such availability from before the litigation was instigated. Of course, you will want to also prove up previous availability for when the defendant accessed the work through website archives and testimony.

b. Substantial Similarity Substantial similarity is a somewhat vague concept that falls somewhere in between no similarity and complete similarity. Indeed, substantial similarity is a fact and argument intensive exercise that will vary greatly by the circumstances and the court. Practice Tip There are many old wives’ tales that are simply false. For example, many clients will reference a 10 percent or 25 percent test believing that they do not infringe if they change 10 percent or 25 percent; or that 10 measures or more of music is infringing but any less is not, or that if they make more than 5 changes to a work, then there is no infringement; or if they only copy 250 words or less, then there is no infringement. None of these “tests” exists, and any claims such as these are false. The test is substantial similarity.


The tests for substantial similarity vary from circuit to circuit, and you will need to do research within your circuit to find the appropriate test. What follows is a generalized summary of substantial similarity and some guidance to begin your research. Practice Tip Nimmer on Copyright, § 13.03 provides guidance on substantial similarity. In addition, Practicing Law Institute publishes an entire text related to substantial similarity: Substantial Similarity in Copyright Law, Osterberg & Osterberg (2003).

Courts have generally agreed that the standard test for comparing the works is the “ordinary observer test.” This test asks whether a regular lay observer would conclude that the alleged copy was actually copied from the copyrighted work. However, before evaluating the similarity of the works, you must first determine what exactly in the works should be compared. One test is called “fragmented literal similarity,” and such similarity occurs where there are aspects of the work that are copied even if the entire works are not similar. In other words, even if only small portions of a work are copied, there can still be infringement. Twin Peaks Prods., Inc. v. Publications, Int’l, Ltd., 996 F.2d 1366, 1372 (2d Cir. 1993); Roy Export Co. v. CBS, Inc., 672 F.2d 1095 (2d Cir. 1982); Nimmer on Copyright, § 13.03[A][2]. On the other hand, even if there are no exact similarities of aspects of a work, there may be comprehensive similarity of the works, often called “comprehensive nonliteral similarity.” Nimmer on Copyright, § 13.03[A][1], citing, among others, Palmer v. Braun, 287 F.3d 1325, 1330 (11th Cir. 2002); Castle Rock Enter. v. Carol Pub. Group, Inc., 150 F.3d 132 (2d Cir. 1998). This must still be weighed, however, against whether the elements copied (either portions or the work as a general whole) are copyrightable and protected. There are many things that are not copyrightable: ideas, facts, concepts, functionally required elements, standard elements, public domain elements, and more. Because these elements are not protectable, it stands to reason that the copyright owner cannot prohibit others from copying these elements, and therefore, these elements should be excluded from the comparison. On the other side of the argument, however, is that the combination of nonprotectable elements can be copyrightable as compilations if they are original and creative. In practice, it is quite difficult to extract nonprotectable elements from a work. Furthermore, courts are split in how noncopyrightable elements should be considered and when, if at all, they should be excluded from the comparison. The test acknowledged by many circuits is a two-part test that requires exclusion of nonprotectable elements when comparing the copyrighted work to the allegedly infringing work. These courts generally hold that a substantial similarity evaluation involves an analysis that first requires the exclusion of elements that are not protected by copyright, and second, a comparison of

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the remaining protected expression to the allegedly infringing work. This is sometimes referred to as the “abstraction-filtration-comparison” test. Some examples of cases applying this test are Computer Associates International Inc. v. Altai Inc., 23 U.S.P.Q.2d 1241 (2d. Cir. 1992); Autoskill Inc. v. National Education Support System, 26 U.S.P.Q.2d 1828 (4th Cir. 1993); Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 208 (3d Cir. 2005); Murray Hill Publs. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 318 (6th Cir. 2004); David & Goliath Builders, Inc. v. Elliott Construction, Inc., 2006 U.S. Dist. LEXIS 34991, *15 (W.D. WI. 2006); Country Kids ‘N City Slicks, Inc. v. Vicki Sheen, et al., 77 F.3d 1280, 1284–85 (10th Cir. 1996); The Gates Rubber Co. v. Bando Chemical Industries Ltd., 9 F.3d 823 (10th Cir. 1993); Holdings Inc. v. Arce Engineering Inc., 39 U.S.P.Q.2d 1609 (11th Cir. 1996); Elena Sturdza v. United Arab Emirates, et al., 281 F.3d 1287, 1296 (D.C. Cir. 2002). There are other courts, however, that apply a “total concept and feel” test or “work as a whole” test, which dictates that the fact finder must look at the work as a whole, without dissection of protectable versus nonprotectable elements, considering the “overall look and feel” of the structure. Usually, even these courts will acknowledge that not all elements are protectable and will consider argument that some allegedly infringed elements are not protectable and do not evidence infringement. Axelrod & Cherveny Architects, P.C. v. Winmar Homes, 2007 U.S. Dist. LEXIS 15788, *37 (2007 EDNY); Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970); Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.,166 F.3d 65, 70 (2d Cir. 1999). Practice Tip No matter what test is favored, it is important to distinguish the nonprotectable elements before comparing the works. As the plaintiff, you would want to emphasize that not only is the entire work similar, but in addition, the protected elements are also copied. As the defendant, you want to be able to eliminate as many nonprotectable elements from a work and leave the work with few protectable elements. Furthermore, as a defendant, you would want to demonstrate that the protectable elements are not copied, and even if the nonprotectable elements were copied, it does not matter because they were in the public domain, and the copyright owner is trying to prevent others from using public domain elements.

Practice Tip In addition, even if not officially considered during the infringement analysis, nonprotectable elements might be considered during the damages analysis (as discussed in more depth in the remedies section) when the defendant attempts to show that damages cannot be awarded for infringement of those elements.


C. Consider Problems with Your Case and Any Defenses If you are the plaintiff’s counsel, you should consider possible defenses that the alleged infringer will have, including basic ones like the statute of limitations or license to more nuanced defenses like fair use. Take a look at the list of defenses in the subsection below under answering a complaint. You want to have already considered and evaluated the alleged infringer’s possible defenses and discussed any that may cause problems with your client so that she, too, is aware of any risks.

D. Evaluate the Strength of the Infringement Case 1. Consider the Strength of the Copyright The work must first be original (not copied) and minimally creative. After demonstrating those two items, the work itself may incorporate public domain or noncopyrightable elements that arguably lessen the strength of the copyright. In addition, as discussed above regarding substantial similarity, they might be removed from the comparison. a. Nonprotectable Elements of a Copyrighted Work “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). Remember that copyright does not protect against the borrowing of abstract ideas contained in the copyrighted work. See Ristuccia v. Super Duper, Inc., 2008 U.S. Dist. LEXIS 14658 (S.D. Ga. 2008). Rather, copyright protects against copying the expression of those abstract ideas. For instance, an accused infringer may have “knocked off” a work but may not have actually infringed the copyright in the original work. If the only similarity between the copyrighted and infringing work is the idea and not the expression of that idea, there is no infringement. Works will sometimes appear similar because they share similar nonprotectable concepts: the concept of a romance novel with two feuding families, the concept of a split plan home design in an architectural plan, the concept of a children’s story with a curious animal, or the idea for a painting of a bowl of fruit on a table. Unless the protectable expression of the concept is substantially similar, there is no infringement. b. The Merger Doctrine Under the “merger doctrine,” infringement will not be found if a particular idea can only be expressed in a very limited number of ways—that is, the

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expression is inextricably merged with the idea. If the plaintiff’s expression is the only way or one of the only ways in which a particular idea can be expressed, then infringement may not exist. This will often be pleaded as an affirmative defense. For example, a catalog that categorized parts by brand, transmission type and type of part was not copyrightable because while the idea may have been original, the expression merged into the idea and thus could not be protected. ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005). In another example, a jewel-encrusted pin in the shape of a bee is not protected because there are only a limited number of ways in which a jeweler could create a bee shaped pin, and the “the idea of a jeweled bee pin and the expression of the idea were inseparable, thus copying the expression would not be barred by copyright registration.” Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971). Practice Tip If you represent the accused infringer, it can be effective to put third-party works that express the same idea as the infringed work in the same way before the trier (judge or jury) to show that it can only be expressed in a limited number of ways. This makes the point well that it is really just an idea or concept that many works share and that the copyright protection does not extend to those ideas. Works sharing similar concepts from before the copyrighted work was created are particularly valuable to demonstrate that the concept was in the public domain. Even better is a work created by the accused infringer that utilized the same expression of the concept from before the copyrighted work was created.

Practice Tip If you represent the copyright owner, on the other hand, it may be effective to present third-party works that have expressed the idea or concept in different ways. This effectively demonstrates that there are innumerable ways to express the concept, and the accused infringer was not creative enough to come up with his own and instead just copied your client’s expression. For example, you might show twenty different paintings of the same subject matter (i.e., a rose), each in a different style, to make this point.

c. Thin Copyrights Another way to argue that nonprotectable elements (such as ideas, concepts, and functionally required elements) should not be considered is the argument


that the copyright is thin. Copyrights with scant creativity are considered thin. For example, a compilation may be a thin copyright where the only new aspect is how it is compiled. While not universally accepted, there are several courts that have held that for a showing of substantial similarity, more similarity is required when the copyright is thin. Satava v. Lowry, 323 F.3d 805, 812 (9th 2003); Beaudin v. Ben & Jerry’s Homemade, 95 F.3d 1 (2d Cir. 1996); MiTek Holdings, Inc. v. Arce Engineering Co., Inc., 89 F.3d 1548, 1558 (11th Cir. 1996); Apple Computer, Inc. v. Microsoft Corporation, Inc., 35 F.3d 1435, 1446 (9th Cir. 1996); Nimmer on Copyright, § 13.03[A]). There are other courts and commentators that have rejected this argument. Patry on Copyright, § 99; BellSouth v. Donnelley Information Publishing, Inc, 999 F.2d 1436, 1445 n.22 (11th Cir. 1993). 2. Consider the Strength of the Infringement a. Comparing the Works for Substantial Similarity Finally, after excluding the nonprotectable elements, the trier must consider whether a regular lay observer would conclude that the alleged copy was actually copied from the copyrighted work. Here, the trier is meant to compare the works for similarities and differences. There are plenty of arguments that the parties can use of either side during this analysis. The copyright owner can point out all of the similarities or how the overall look and feel of the works are the same. The copyright owner should emphasize how the work was created and the creativity and effort that went into creating the work. Practice Tip While the amount of effort that went into creating the work (the sweat of the brow) is not really relevant, it does provide the background for the creation and helps in strengthening the sense of entitlement to protection and potentially eliciting greater damages.

The accused infringer can emphasize the differences between the works, which can be valuable if there are significant differences. Note, however, that if there is indeed copying of copyrightable elements, the infringer cannot excuse that wrong by showing how much of the work was not pirated. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936). In addition, paraphrasing is still copying—changing some of the words is not enough to avoid infringement. Nonetheless, pointing out differences may help demonstrate that the only similarities are those elements that are not protectable. Also, if the points of dissimilarity exceed the points of similarity, and the points of

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similarity are of minimal importance either quantitatively or qualitatively, then this will create a fairly strong noninfringement argument. The accused infringer can also focus on all the noncopyrightable elements to chip away at what the copyright covers. Practice Tip Before filing suit, consider how vulnerable your client’s copyright is to arguments of noncopyrightable elements. Prepare your client for these arguments, and begin thinking about how you can counter these attempts and emphasize the copyrightable elements.

Before filing suit, separate the copyrightable elements in the work, and make sure that there is copying of those elements. Remember that there is no infringement when the expression is sufficiently different—that is, the defendant’s work is not substantially similar to the copyrighted work. Your client will be worked up if someone has knocked off his work. But it is your job to make sure there is a legitimate claim. Take a hard look at the work and the alleged infringing work from a critical point of view to determine if the expression is identical or at least substantially similar to the expression in the copyrighted work. If it was just an idea that was taken and not the expression, that is not copyright infringement. Practice Tip Unfortunately, a knockoff is not always a copyright infringement. There is often nothing that an attorney can do to stop a knockoff if the expression is sufficiently different from the copyrighted work because only infringements that are substantially similar in expression to the copyrighted work can be enjoined. This is confusing and frustrating for a client. Do not be surprised if a client seeks other counsel when you tell him that while he may have been copied, there is not copyright infringement. It is better to have an angry client up front than having to explain tens or hundreds of thousands of dollars in attorneys’ fees for a claim that was invalid or weak to begin with.

b. Evaluating the Extent of the Infringement Once you have evaluated whether there is infringement, determine the extent of the infringement. Although not always successful, online research is often very helpful in this regard. You can review the alleged infringer’s website and third party websites to check whether the alleged infringer is selling products online, on their website, or through other online retailers.


Practice Tip Make copies of all the research you conduct, and include the date on the research. If you find the alleged infringer is offering infringing copies of your client’s work on his website, use “Print to PDF” or other screen capture software like SnagIt, and keep a copy of that evidence. Make sure that the date and URL are pictured at the bottom of the page (this is a print setting if you are using the print to PDF function). This way, if the defendant pulls these materials down after the lawsuit is filed, you have evidence of what he was doing.

Your client is also an excellent source of information as he likely discovered the infringement, may have collected evidence of the infringement, and may just have other inside information. Obtain copies of all of these materials as soon as possible from your client. Practice Tip Determining the extent of the infringement will aid in calculation of damages, particularly if you are left with only actual damages and not statutory damages. If the defendant has made only one copy and has offered it for sale but has made none, his profits attributable to the infringement are nonexistent. On the other hand, if, for example, the defendant has used your client’s architectural plan to build several hundred houses in a community and has made millions from sales of these houses, the defendant’s profits attributable to the infringement may be very high.

E. Determine and Research the Defendant(s) You should consider who the possible defendants are: the entire stream of commerce is a potential defendant, including the manufacturer, importer, distributor, and retailer. It will then be up to you and the client to determine which of the parties, strategically, to include as a defendant. Part of that may be legal strategy while part may be a business decision (i.e., the client may not want to sue customers or retailers of its product). Practice Tip Recall that service providers are required to provide a registered agent to the Copyright Office to be able to claim the safe harbor of the DMCA (17 U.S.C. § 512). The list of registered agents is available on the Copyright Office

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website at the home page under “Search the Copyright Office” and the link for “Online Service Providers.” There, you can click the link for browse the directory of designated agents. If a service provider does not list a designated agent, they are automatically excluded from the safe harbor and may be subject to liability for the infringement of their users. If that is the case, you might consider adding them as a defendant.

You will also want to consider whether there are any defendants who might be contributorily or vicariously liable who you want to add to the complaint. “One infringes contributorily by intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), citing Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 929–30 (2005). To the extent you can, you should also evaluate the recipient’s litigiousness so you can evaluate the type of fight you and your client face. This will help you prepare your client with respect to time and budget. While you are at it, consider whether a judgment against the defendant would be collectable. A million dollar judgment is worth very little if you cannot collect it. Practice Tip Both Westlaw and Lexis can search by party, and Lexis Total Litigator® has some powerful searches to evaluate particular parties. Call Lexis or Westlaw and ask them to suggest the best way to search; they will run various searches for you and tell you the exact search that returns the most relevant results. Free search engines such as AltLaw and Justia can also be used to give an estimate.

F. Consider Where to File Take some time to determine where you want to file the case. Of course, personal jurisdiction must exist and venue must be proper, but oftentimes there are several jurisdictions that will meet these requirements, particularly where the defendant has sold product in multiple jurisdictions. Although copyright law is governed by the Copyright Statute and is supposed to be fairly consistent, there are differences from jurisdiction to jurisdiction, as has


been pointed out throughout the text. Whether a registration or just an application is required varies among jurisdictions. The substantial similarity test varies among jurisdictions. Whether a Rule 68 offer of judgment includes attorneys’ fees as costs varies among jurisdictions. In addition, the speed of litigation varies from district to district, and there may be other advantages to different jurisdictions based on familiarity with the court, convenience of location, etc.

G. Impose a Litigation Hold Once a person or company is in anticipation of litigation or knows of pending litigation, they must retain all documents that they reasonably believe would be discoverable. If the person or company has a document retention and destruction policy, it must be suspended; otherwise they may be liable for spoliation (intentional destruction of relevant evidence), which is a highly sanctionable offense. For example, routine deletions and recycling of backup tapes must change when litigation is pending or ongoing. You can certainly verbally tell your client this, but you should also put it in writing in the form of a litigation hold letter. This letter should also be distributed to employees or others over whom the client has control (independent contractors, for instance) who may have such materials. Zubulake v. UBS Warburg LLC, 2003 U.S. Dist. LEXIS 18771 (S.D.N.Y. 2003); Heng Chan v. Triple 8 Palace, 2005 U.S. Dist. LEXIS 16520 (S.D.N.Y. 2005). A sample litigation hold letter is included in the Appendix. You should also search your firm’s document management system for current samples. Initial litigation holds should be fairly broad. At the beginning of the litigation, the parties are required to meet and discuss various discovery issues (discussed below in the discovery section), including preservation of materials, and the hold may be narrowed through discussion and negotiation. The 2006 Advisory Committee Notes regarding Rule 26(f) point out that the parties should discuss these issues early so as to avoid disputes later and that the parties “should pay particular attention to the balance between the competing needs to preserve relevant evidence and to continue routine operations critical to ongoing activities.” The Notes acknowledge that “Complete or broad cessation of a party’s routine computer operations could paralyze the party’s activities.” Thus, there is opportunity to narrow the scope of the litigation hold through discussion and negotiation with opposing counsel. However, before such discussion, it is better to be broader in the litigation hold, and you can always narrow it pursuant to an agreement with opposing counsel. There are sufficient cases sanctioning parties and attorneys because of spoliation, so that it is better to be broader if possible.

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Practice Tip As an associate, you will often be responsible for document retrieval, review, and production. You will often have direct contact with the client or their Information Technology personnel. As part of that role, you should be intimately familiar with their document management system and what they have done to stop all automatic destructions. You should also keep up to speed with the case law regarding litigation holds, spoliation, and the obligations of counsel.

II. Drafting, Filing, and Serving a Complaint Rule 8(a) of the Federal Rules of Civil Procedure gives you the details of what is required in a complaint. Specifically, Rule 8(a) requires that a complaint must contain all of the following: (1) “A short and plain statement” of the grounds for the court’s jurisdiction, which includes subject matter jurisdiction, personal jurisdiction, and venue. This is not necessarily required if the “court already has jurisdiction, and the claim needs no new jurisdictional support” such as where you are filing a counterclaim against the plaintiff. In that situation, you should still indicate that jurisdiction already exists. (2) “A short and plain statement of the claim showing that the pleader is entitled to relief.” This is referred to as notice pleading and generally requires that you state the cause of action and how the elements of the cause of action are met. (3) “A demand for the relief sought” such as injunction, money damages, attorneys’ fees, etc.

A. Venue and Jurisdiction One of the first things in any complaint will be the paragraphs regarding jurisdiction and venue. This covers subject matter jurisdiction (federal court), personal jurisdiction, and whether venue is appropriate. 1. Subject Matter Jurisdiction Since copyright infringement is a federal question and district courts have original jurisdiction over copyright cases, there is appropriate federal

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jurisdiction. This is pursuant to 28 U.S.C. §§ 1331 (Federal Question), 1338(a) (district courts have original jurisdiction over copyright, trademark, and patent cases). If there is diversity jurisdiction, you may also state that jurisdiction is appropriate pursuant to 28 U.S.C. § 1332(a). If there are additional state law causes of action, then the court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a). The way this paragraph regarding jurisdiction can be stated is: “This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1332(a), and 1338(a). This Court also has jurisdiction pursuant to the doctrine of supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).” If you are filing a declaratory judgment action, you will need to state that the court has jurisdiction to hear such a case. Fed. R. Civ. P. Rule 57. The test is “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 767, 549 U.S. 118 (2007). Take a look at the sample declaratory judgment complaint in the Appendix. 2. Personal Jurisdiction Next is personal jurisdiction. Typically, the courts apply the state statutes for personal jurisdiction for the state in which they sit, often called long-arm statutes. Generally, there is jurisdiction if the defendant (1) consents, (2) is domiciled there, or (3) is present there. If the corporation is incorporated or has an office in the state, they are either domiciled or present there (can be served there), and jurisdiction will exist. Otherwise, you will typically need to show that there are minimum contacts with the state that relate to the cause of action (as through sales or targeting consumers in the state) unless you can show that the contact with the state is “continuous and systematic” such that it creates general personal jurisdiction over the defendant. In the first few paragraphs of the complaint, you will usually identify the parties and where they reside (for an individual) or where they are incorporated and where they have their principal place of business (for a corporation). For instance, “Plaintiff John Smith is an individual residing at 123 West Street, Town, State 12345.” “Upon information and belief, Defendant ABC, Inc. is a Delaware corporation with a principal place of business at 54321 South Street, Town, State 12345.” You will then state why the court has personal jurisdiction. If the defendant is located or incorporated in the state, then you can state something like “Defendant is subject to the personal jurisdiction of this Court because Defendant is a resident of this jurisdiction.” Otherwise, you might state something like “On information and belief, Defendant is subject to the personal jurisdiction of this Court because, among other things,

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Defendant has purposefully availed itself of the benefits of doing business in the Commonwealth of Virginia by providing services to the residents of the Commonwealth of Virginia and by selling products and services to businesses and individuals located in the Commonwealth of Virginia.” Practice Tip The Internet has expanded the scope of personal jurisdiction as it is much easier to “purposely avail” oneself of doing business in jurisdictions all over the country by operating interactive websites. The test for personal jurisdiction based on online contacts varies from jurisdiction to jurisdiction, so be sure to research your jurisdiction’s standard before relying on this theory.

3. Venue 28 U.S.C. § 1400(a) applies to venue for copyright litigation and states that copyright infringement suits “may be instituted in the district in which the defendant or his agent resides or may be found.” 28 U.S.C. § 1391(c) defines “reside” for a corporation as the place it would be subject to personal jurisdiction. Practice Tip Note that this venue requirement is more limited than other federal question cases, where venue is appropriate where (1) any defendant resides; (2) where a “substantial part of the events or omissions giving rise to the claim occurred”; or (3) where any defendant is found, if no where else appropriate. 28 U.S.C. § 1391(b). This is a little-known difference.

Thus, in a copyright infringement complaint, you will include a paragraph such as “Venue is proper under 28 U.S.C. §§ 1400(a) and 1391(c) in that, upon information and belief, Defendants are residents of this District because they are companies subject to personal jurisdiction in this District.” If there were other claims in addition to the copyright claim, you might expand this to “Venue is proper under 28 U.S.C. §§ 1400, 1391(b) and 1391(c) in that, upon information and belief, a substantial part of the events giving rise to the claims occurred in this District and Defendants are residents of this District because they are companies subject to personal jurisdiction in this District.”


B. Factual Background In this section, if you didn’t already do it, you will include basic information about the plaintiff and defendant, including where they reside. While not necessarily required, you can use this section to describe the plaintiff’s business, what they do, the work that went into creating the copyright, when they registered the work, the value of the work, any licensing, how they learned of the infringement, the extent of the infringement, all of defendant’s bad acts, and how plaintiff has been damaged. This is your opportunity to tell a story. However, this story is not required, and some complaints will be fairly bare bones and exclude this. Practice Tip For the factual background section, go to your client’s website and use their description of their business and their promotional materials when you are drafting the complaint. In this way, you will use the appropriate description of your client’s business and emphasize facts that they believe are important. Also visit the defendant’s website for information about the defendant and their infringement. Trade or industry articles or news articles can also be easily found online and can provide great information to include about the industry or the parties. While notice pleading is all that is technically required, clients like to see their story in a public pleading, and it is also the first time the court will hear your story, so it helps to make it compelling.

C. Causes of Action Federal complaints only require “notice pleading,” which means that extensive detail is not required. Fed. R. Civ. P. Rule 8(a)(2) (requiring “a short and plain statement”); Fed. R. Civ. P. Rule 8(d)(1) (“Each allegation must be simple, concise, and direct. No technical form is required.”); see Elektra Entertainment Group, Inc. v. Barker, 551 F. Supp. 2d 234 (S.D.N.Y. 2008); but see National Business Development Services, Inc. v. American Credit Education & Consulting, Inc., 2007 U.S. Dist. LEXIS 58010 (E.D. Mich. 2007). However, you are still required to state at least every element of every claim and that it is met. A federal copyright infringement case requires: (1) That there is a copyright registration (or application, depending on your jurisdiction). Thus, identify the registration or application by number, claimant, title, and attach it to the complaint.

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(2) That the plaintiff owns a valid copyright. State that the copyright is valid (original and copyrightable) and that plaintiff owns the copyright or that they have the ability to sue on behalf of the owner, as for example, an exclusive licensee, and state that the copyright is valid. (3) The defendant infringes the copyright. State that the defendant infringes the work.

Practice Tip Recall that certain works can be “preregistered” before they are completed. (See Chapter 2 above regarding copyright registration). If a preregistered work has been infringed, the statute requires that the copyright owner register (preregistration does not remove the duty to register) the work within “one month after the copyright owner becomes aware of infringement.” See 17 U.S.C. §§ 408(f), 411; see also http://www.copyright.gov/prereg/. Furthermore, this must be “no later than three months after first publication.” See 17 U.S.C. §§ 408(f), 411. If the copyright owner fails to register within these deadlines, the court must dismiss the case. 17 U.S.C. § 408(f).

If you have a good faith basis to believe the infringement was willful, you should also include such a statement because willful infringement entitles plaintiff to additional statutory remedies. You will also indicate the relief that you are seeking within the count. For a copyright claim, this will be monetary damages in the form of either statutory relief if there was registration prior to infringement or defendant’s profits, or it will be plaintiff’s actual damages in the form of actual damages suffered by him because of the infringement and defendant’s profits attributable to the infringement that exceed the plaintiff’s actual damages. 17 U.S.C. § 504. You can include all of these in the complaint if they are available as you do not need to choose between them until just before final judgment. Id. You can also include a request for costs and attorneys’ fees (if registered before infringement). 17 U.S.C. § 505. In addition, you can seek a preliminary and permanent injunction. 17 U.S.C. § 502. A preliminary injunction will not be issued without additional pleadings (as discussed below in the section regarding temporary relief), but it is worth including in the complaint in case you decide to pursue it even if not immediately. Injunctions are awarded when there is “irreparable harm,” so this terminology is usually included in the claim.


Practice Tip Early on in a litigation (even before the complaint is filed if you remember), you should pull the jury instructions for the jurisdiction in which your case is pending. They provide annotated local law and are a great place to start to get the standards and elements of a claim. They will keep you focused on what you need to prove to meet those elements.

For example, a claim where there was registration prior to infringement might look like this: COUNT I Copyright Infringement of Plaintiff’s ABC Software 22. Plaintiff incorporates the prior paragraphs by reference. 23. ABC is an original copyrightable work. Plaintiff has complied in all respects with 17 U.S.C. § 101, et seq. and secured the exclusive rights in the work and has filed its copyright registration in the work with the Copyright Office in accordance with its rules and regulations. Plaintiff has received Registration No. VA123,456, registered on December 11, 2002, a copy of which is attached hereto at Exhibit A. 24. Plaintiff owns all rights, title, and interest in the copyright of ABC. 25. Upon information and belief, Defendant has infringed and is infringing the copyright of ABC by unlawfully reproducing and distributing identical copies of ABC to Defendant’s employees, in violation of the United States Copyright Act, 17 U.S.C. §§ 106 et seq. 26. Defendant’s infringements were and are willful, in bad faith, and executed with full knowledge of Plaintiff’s copyright, and in conscious disregard for Plaintiff’s exclusive rights in the protected work. 27. Plaintiff is entitled to recover Defendant’s profits, Plaintiff’s actual damages, or the highest awardable statutory damages against Defendant. 28. Plaintiff is also entitled to recover costs and attorneys’ fees. 29. Defendant’s deliberate infringement of Plaintiff’s copyright has greatly and irreparably damaged Plaintiff, and Defendant will continue to damage Plaintiff greatly and irreparably unless enjoined by this Court. In the absence of injunctive relief, Plaintiff will have no adequate remedy at law. Accordingly, Plaintiff is entitled to a temporary and permanent injunction in accordance with 17 U.S.C. § 502.

There may be additional claims that you include in your complaint, but they will not all be covered here. You can even make inconsistent claims.

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Fed. R. Civ. P. Rule 8(d)(3). (“A party may state as many separate claims or defenses as it has, regardless of consistency.”) Some examples of commonly included additional claims are breach of contract or license agreement, theft of trade secret (if the copyrighted work also included trade secret material), trademark infringement, or misrepresentation or false designation of origin under the Lanham Act. If there are state law claims (such as conspiracy or consumer protection) beware that they may be preempted by the Copyright Act. There is substantial case law that varies from court to court on this issue, but typically, a state law claim is preempted unless there is an “extra element” or the claims are sufficiently different or they provide different relief.

D. Filing the Complaint and Additional Materials Nearly everything filed with a court is electronically filed now. However, complaints are the general exception. Courts usually require that a complaint be filed in hard copy (although some also request electronic copies be filed on a disk or e-mailed in a particular format) with the clerk of the court. Check the local rules and the Electronic Case Filing (ECF) rules for the district to ensure you submit the correct materials and number of copies. In addition to the complaint, there are several other materials that must be filed along with it. Practice Tip If you send a courier to file the complaint, be sure they understand that they are supposed to wait and obtain date stamped copies of the materials and the summons that are, in turn, to be returned to you.

Practice Tip Make sure everyone on the case is included on the complaint, including you and the partners. If you are not local to the jurisdiction, then it will just be local counsel on the complaint until you are admitted pro hac vice.

1. Civil Cover Sheet A civil cover sheet must be submitted with every complaint and is typically available for download from the court’s website under the forms section. It requires that you identify the parties and their residences, the basis for


jurisdiction (i.e., Federal Question or Diversity), the citizenship of the parties, the nature of the suit (Copyrights, under the Property Rights category), whether a jury is demanded, and whether there are any related cases. Practice Tip Note that the websites for all federal courts can be linked to by first going to www.uscourts.gov and then selecting Court Locator, then clicking on the appropriate State, and then the appropriate court link.

2. Summons A summons must be completed for each defendant upon whom the complaint will be served. The summons form is also typically available on the court’s website under the forms section. You should only fill out the parties’ names and the defendant’s name and address sections. The clerk will fill out the Civil Action No. section and the rest of the first page. You give this form to the process server, and he serves a copy of it, along with the complaint, on the defendant. The process server also fills out the second page—the Proof of Service section—and returns it to you so you can file it with the court. 3. Corporate Interest and Financial Interest Disclosure Statement Most courts have a local rule that requires any corporate party submit a form typically called a corporate interest or a financial interest disclosure statement that identifies publicly held companies that are related to the corporate party. This is so that the judge can determine whether he or she must disqualify or recuse him or herself from the case. The form is, again, usually available on the court’s website under the forms section, and the local rules of the district will explain the information that must be disclosed. 4. Copyright Form-AO121 This a form that the clerk of the court is required to send to the Register of Copyrights within thirty days of filing the complaint that identifies the copyright registrations by number that are involved in the litigation. 17 U.S.C. § 508. Many clerks will complete this form on their own; however, in some districts, you are required to submit it with the complaint. In the Eastern District of Virginia, you must submit a completed form with the complaint. The form is available for download on the EDVA website http://www.vaed. uscourts.gov/formsandfees/civil.htm.

130 Chapter 6 Copyright Litigation

Practice Tip There is a similar form for trademarks and for patents. It is also usually available for download and must be submitted to the U.S. Patent and Trademark Office within a predetermined amount of time after filing.

E. Service Federal Rule of Civil Procedure Rule 4 covers service of a complaint. Under Rule 4(m), a complaint must be filed within 120 days of filing. Rule 4(c) provides that the complaint must be served by any person who is at least 18 years old and not a party, which can include a United States Marshal. But you can also hire a private process server in the area in which the defendant is located to serve the complaint, and he will effect service. The process server will then return the summons with the appropriate verification that it was served (Rule 4(l)), and you file that with the clerk of court evidencing that service was effected. The defendant has twenty days from when service was properly effected to answer or file some other responsive pleading. Fed. R. Civ. P. Rule 12(a)(1)(A)(i). If there has been prior correspondence, such as through a cease and desist letter, you may also want to request defendant’s counsel accept service. This is different than asking that defendant waive service under Rule 4(d). Under Rule 4(d), you can request that the defendant waive service and if he does not, he has to pay for service. However, the defendant then has from the date the waiver request was sent, thirty days to accept or deny waiver and sixty days to answer if he accepts the waiver (or if he is outside the United States, sixty days to accept waiver and ninety days to answer). Usually, the small fee the process server will charge for service is not worth the extra time the defendant gets to answer. If you do wish to send a waiver request to the defendant, most courts will have the form (AO399) available on their website for download. Practice Tip When serving a foreign entity, look at Rule 4(f), and also take a look at the U.S. Department of State website, which can also be found by first going to www. travel.state.gov. You can then link to the Law & Policy page, and then Information for Americans Abroad, which then has links to country specific information (i.e., regarding judicial assistance in Canada, http://travel.state. gov/law/info/judicial/judicial_682.html) and information regarding service of process abroad (http://travel.state.gov/law/info/judicial/judicial_680.html). It is always prudent to get the help of foreign counsel to ensure that you comply with all the necessary formalities.

Preliminary Injunctive Relief

Practice Tip A few courts have allowed service by e-mail. While not common, it is a trend worth following as we move forward in an increasingly digital age, particularly for hard-to-reach defendants.

F. Amending the Complaint Before the defendant answers, you can amend the complaint once as a matter of right. Fed. R. Civ. P. Rule 15(a)(1)(A). However, after that, you must seek leave to amend from opposing counsel or from the court. Fed. R. Civ. P. Rule 15(a)(2). The time to respond to an amended pleading is ten days. Fed. R. Civ. P. Rule 15(a)(3).

III. Preliminary Injunctive Relief Federal Rule of Civil Procedure Rule 65 provides that a court may issue preliminary injunction relief in the form of a preliminary injunction or a temporary restraining order (TRO). A TRO can be issued without notice to the other party under exceptional circumstances. Fed. R. Civ. P. Rule 65(b). Preliminary injunctions, however, are only issued after notice to the defendant with an opportunity to respond. Fed. R. Civ. P. Rule 65(a).

A. Temporary Restraining Orders If a plaintiff acts quickly after filing the case, it may obtain a TRO if it can demonstrate that irreparable injury is occurring. A TRO last for ten days, Fed. R. Civ. P. Rule 65(b) but can be extended by stipulation of the parties, and it can be granted ex parte, meaning that the defendant has no opportunity to respond and can be effected without prior notice to the defendant. This may be done if an affidavit or verified complaint clearly showing that “immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition,” and “the movant’s attorney certifies in writing any efforts made to give notice and the reasons why it should not be required.” Rule 65(b)(1). If a TRO is issued without notice, then the hearing on the motion for preliminary injunction must be expedited and takes precedence. Rule 65(b)(3). A party against whom a TRO has been entered may appear and move to dissolve or modify the order upon

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two days notice to the adverse party, and the court shall hear the motion as quickly as justice requires. Rule 65(b)(4). Note that before a TRO or a preliminary injunction is entered, the movant must give a security in an amount determined by the court to be “proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained.” Rule 65(c).

B. Preliminary Injunctions With or without a TRO, a motion for preliminary injunction requires notice to the adverse party. After a TRO is entered or a motion for preliminary injunction is filed, the court will accept briefs and likely hold a hearing to determine whether a preliminary injunction that will last until the case is tried should be entered. Plaintiff must conduct a quick and thorough investigation into the case, often conducting stealth discovery in order to discover sufficient facts to prove its case before ever filing a complaint. Pretext discovery may include Internet research and marketplace research. The prospective plaintiff’s investigation must be done quickly because delay in seeking such preliminary relief can defeat the plaintiff before the defendant ever says a word. The Copyright Act authorizes a federal court to “grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a) (2007). Generally, before issuing a preliminary injunction, courts should consider four factors: (1) the plaintiff’s likelihood of success on the merits of the underlying dispute, (2) the possibility of irreparable harm to the plaintiff if preliminary relief is denied, (3) the harm to the defendant if an injunction is issued, and (4) the public interest. Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 196 Fed. Appx. 166, 169 (4th Cir. 2006); Autoskill, Inc. v. Nat’l Educ. Support Sys., 994 F.2d 1476 (10th Cir. 1993); Polymer Technology Corp. v. Mimran, 37 F.3d 74 (2d Cir. 1994). Practice Tip The elements that courts consider in determining whether a preliminary injunction should be entered vary from circuit to circuit. Some simply require a likelihood of success on the merits and irreparable harm, and others require a four-step process which includes a “balancing of the hardships.” McCarthy on Trademarks and Unfair Competition lays out the test for each circuit (see Chapter 30: 22).

In copyright law, you will often hear that irreparable harm is generally presumed once a plaintiff makes a prima facie showing of infringement.

When Your Client Receives a Complaint

Christopher Phelps & Associates LLC v. Galloway, 492 F.3d 532, 544 (4th Cir. 2006). This may no longer be the case. In 2006, in a patent case that has since been extended to copyright and trademark situations, the Supreme Court held that permanent injunctions are no longer automatic when infringement is shown and that the four-factor test used for whether to issue an injunction is still required. eBay Inc. v. MercExchange, LLC, 126 S. Ct. 1837, 1839 (2006). Prior to the eBay Inc. v. MercExchange decision, many courts would hold that irreparable harm was automatic if infringement was proven, and an injunction was practically automatic. Now, you must demonstrate irreparable harm although for a copyright infringement case, it is usually presumed. Christopher Phelps & Associates LLC, 492 F.3d at 544. In citing cases for your preliminary injunction arguments, try to find cases from after the eBay Inc. v. MercExchange decision since it is widely believed to have had a significant effect on the injunction standard. Also, a claim of irreparable harm can be undermined by a delay in seeking a preliminary injunction after initiating litigation, which emphasizes the need to move quickly. The pleadings for a preliminary injunction need to be very detailed because you are essentially proving up your case without the benefit of discovery. Some courts will allow evidentiary hearings with live witnesses, while others may only want the attorneys to argue. In any event, be sure that you have declarations or affidavits to support all of the evidence that you are submitting with your pleadings. For example, when submitting a printout from a website, attach it to an affidavit from the person who printed it with a declaration from that person as to when he printed it, what website he was visiting, and whether it is a true and correct copy of the website. Essentially, you must lay the same foundation for the material as you would have to lay in court. Indeed, pursuant to the Federal Rules, the court may advance the trial on the merits and consolidate it with the hearing for preliminary injunction. Even if consolidation is not ordered, evidence received on the motion that would be admissible at trial becomes part of the trial record and need not be repeated at trial. Fed. R. Civ. P. Rule 65(a)(2). While seeking preliminary relief can be costly because a lot of the discovery and work is front loaded, if you are successful in obtaining a TRO or preliminary injunction, you not only get near immediate relief for the plaintiff and the threat of federal contempt of court if the order is violated but also an incredibly powerful bargaining chip for settlement discussions.

IV. When Your Client Receives a Complaint A. Service Federal Rule of Civil Procedure Rule 4 covers service of a complaint. Under Rule 4(m), a complaint must be filed within 120 days of filing. Rule 4(c)

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provides that the complaint must be served by any person who is at least 18 years old and not a party, which can include a United States Marshal, but more often a private process server in the area in which the defendant in is located will serve the complaint. Defendants will sometimes attempt to dodge service; you should not condone this wasteful and unethical practice. Once served, the defendant has twenty days from when service was properly effected to answer or file some other responsive pleading. If there has been prior correspondence, such as through a cease and desist letter, plaintiff’s counsel may ask you to accept service on behalf of your client. You may or may not wish to do this and should always run it past your client first. By accepting service, you are setting a precedent for collegiality and reasonableness with opposing counsel, which will usually be helpful later in the litigation. In addition, you might negotiate that you will accept service but that you want extra time to answer beyond the normal twenty days. Furthermore, it prevents your client from receiving service at work or in another place that would otherwise cause them embarrassment. Accepting service is different than waiving service under Rule 4(d). Under Rule 4(d), the plaintiff can request that the defendant waives service, and if the defendant does not agree, he has to pay for service. However, under Rule 4(d), the defendant has from the date the waiver request was sent, thirty days to accept or deny waiver and sixty days to answer if they accept the waiver (or if they are outside the United States, sixty days to accept waiver and ninety days to answer). You should agree to waive service if it is asked of your client. You do not want to pay for the service, and you want the extra time in which to respond.

B. Insurance Issues Defense of a copyright lawsuit can sometimes be covered by a client’s commercial general liability (CGL) policy under the auspices of advertising injury and liability. It is your duty to notify a client of this potential as soon as he receives the complaint, if not sooner, when he was first put on notice of a claim. You should advise him to consider every policy covering all of the years during which the infringement is alleged because multiple policies may cover the defense if the alleged infringement covers multiple years. Some clients may not wish to invoke their insurance coverage for a claim, but that is their decision. It is your duty to at least notify them of the possibility and indicate that they should take a look at their policy. If they do not have a copy of their policy, they can usually obtain a copy from their insurance broker. Prompt instruction should be given to the client, and he should, in turn, promptly notify any carrier and send them a copy of the complaint for any

When Your Client Receives a Complaint

policy on which they want to make a claim. Every liability policy requires prompt notice of any claim and delay in notification can, in some circumstances, cause prejudice and forfeiture of the insured’s rights. Thus, prompt investigation is absolutely imperative. In addition, any legal services occurring before notice to the carrier are typically not covered by the policy, which again encourages prompt notification. Furthermore, initial disclosures under Federal Rule of Civil Procedure Rule 26 require disclosure of any insurance policies that may be relevant, so early investigation is required in any event. Whether there is coverage for defense of the litigation will depend on the language of both the complaint and the policy. There has been significant litigation regarding the extent of coverage, but in general, if the infringement relates to advertising and it was done without knowledge that it was unlawful, then it may be covered. See, e.g., State Farm Fire and Casualty Co. v. Steinberg, 393 F.3d 1226 (11th Cir. 2004); Farmington Cas. Co. v. Cyberlogic Technologies, Inc., 996 F. Supp. 695 (E.D. Mich. 1998); Nationwide Mutual Insurance Co. v. Bartlett, 2000 WL 767878 (Conn. Super. Ct. 2000); Ryland Group, Inc. v. Travelers Indemnity Co. of Illinois, 2000 U.S. Dist. LEXIS 21412 (W.D. Tex. 2000); Feed Store v. Reliance Ins. Co., 774 S.W.2d 73 (Tex. App. 1989). Furthermore, the coverage may differ on whether it offers a duty to indemnify (pay any damages) or a duty to defend (pay for defense) or both. If you are in a situation of defending a client whose legal defense is being paid for by the insurance company, there are numerous ethical obligations that you need to keep in mind. There are various articles and seminars on this issue that you can take a look at for additional information. Run a search for copyright infringement insurance coverage in your favorite search engine, and you will turn up plenty of informative and freely available articles.2 In addition, you should check your state’s rules of ethics and professional responsibility, as some require you take additional actions to protect the insured or send them certain notices. See, e.g., Florida Bar Rule of Prof. Resp. 4-1.8(j). It is vital to remember that you cannot get involved in disputes between the insured and the insurance carrier regarding coverage disputes; your client is the insured (although the carrier is paying your bills); you only represent him as to the litigation. If there is a dispute or potential dispute as to coverage, you can advise the client that he should retain different counsel to deal with any such coverage dispute.

2.

For instance, Liability Insurance Coverage For Copyright Infringement: A Copyright Practitioner’s Guide from The Association of Business Trial Lawyers April 2007, available for download at http://www.loeb.com/liabilityinsurancecoveragecopyrightinfringement/.

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Another difficulty that can arise is if a client confidence is disclosed to you that could potentially jeopardize the insurance coverage; in such circumstances, it is generally accepted that you cannot disclose such information because it is covered by the attorney-client privilege. If that information is disclosed by the client in a deposition, or in another nonprivileged communication, however, it is generally accepted that you have a duty to disclose that information to the carrier. Overall, insurance defense can be a sticky area, and you should be sure to talk to partners and research the ethical landscape when you are involved in such cases.

C. Litigation Hold Once your client receives a Complaint, you should issue a litigation hold notice. Recall that once there is pending litigation, all document retention policies must be suspended, and your client must retain all documents that they reasonably believe would be discoverable. This litigation hold notice or letter should also be distributed to employees or others over whom the client has control who may have such potentially discoverable materials. A sample litigation hold letter is included in the Appendix. You should also search your firm’s document management system for current samples. Initial litigation holds should be fairly broad. There is an opportunity to narrow them at the beginning of the litigation when the parties meet to discuss discovery issues (required pursuant to Rule 26(f) and discussed above in section 6.I.G), including issues regarding preservation, but you cannot take back what has already been deleted, so it is better to be safe and broad to start with. You can always send a revised litigation hold notice after you have met with opposing counsel and agreed to a narrower preservation strategy.

D. Receiving an Amended Complaint Before the defendant answers, the plaintiff can amend the complaint once as a matter of right. Fed. R. Civ. P. Rule 15(a)(1)(A). However, after that, the plaintiff must seek leave to amend from the opposing party’s counsel or from the court. Fed. R. Civ. P. Rule 15(a)(2). If the plaintiff requests leave to amend early in the case, you should usually agree because the court will “freely give leave when justice so requires,” and you do not want to be the unreasonable party. Id. The time to respond to an amended pleading is ten days. Fed. R. Civ. P. 15(a)(3). Note that this is ten business days pursuant to Rule 6(a)(2) (“Exclude intermediate Saturdays, Sundays, and legal holidays when the period is less than 11 days.”).

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V. Initial Dispositive Motions A. Motions That Must Be Filed Before Answering There are certain initial dispositive motions that you must make before answering the complaint, or they are waived. Rule 12 of the Federal Rules of Civil Procedure specifically provides that the following defenses are waived unless they are made separately by motion before answering: (1) (2) (3) (4)

Lack of personal jurisdiction Improper venue Insufficient process Insufficient service of process

Rule 12(h)(1). If you answer without raising these defenses, they are waived. Period. You can also make a motion for a more definite statement that you feel is so vague or ambiguous that you cannot reasonably prepare a response. Rule 12(e). Again, this must be made before filing a responsive pleading and must point out the “defects complained of and the details desired.” While there is a situation for such a motion, typically in the situation where a complaint is so vague that you cannot respond, you probably also have grounds that there was a failure to state a claim (12(b)(6)), and you would file a motion for failure to state a claim upon which relief would be granted. 1. Personal Jurisdiction For personal jurisdiction, recall that the main cases on point (that you studied in law school and are always cited) are World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) and International Shoe Co. v. Washington, 326 U.S. 310 (1945) and generally provide that for specific jurisdiction, there must be “minimum contacts” between the defendant and the forum state, and the lawsuit must not “offend traditional notions of fair play and substantial justice.” Personal jurisdiction typically exists where there is: (1) (2) (3) (4)

Consent to jurisdiction; Domicile in the state; Presence in the state (served in the state); General jurisdiction through “continuous and systematic” contact with the state that is essentially equivalent to presence (Helecopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414–16 (1984)); (5) Specific jurisdiction.


Remember that whether appropriate personal jurisdiction exists will depend on the state statute regarding jurisdiction (the state long-arm statute), so you should pull that first in order to ensure you have the correct standard. Many states, such as California, simply state that the jurisdiction extends to the full extent of the constitution, so you will use the general federal case law. Others, such as the District of Columbia, specify specific instances such as contracting to provide service in D.C. or having an interest in real property there. See District of Columbia Code § 13-423(a). Practice Tip Knowing the other party’s contact with a state is not necessarily easy, and as such, in responding to a motion to dismiss for lack of personal jurisdiction, you can ask for and sometimes receive the opportunity to conduct limited discovery related to jurisdiction.

2. Improper Venue Recall that venue in copyright cases is more limited than other federal question cases (other cases covered by 28 U.S.C. § 1391(b)). In a copyright case, for venue to be proper, the venue must be one “in which the defendant or his agent resides or may be found.” 28 U.S.C. § 1400(a). For an individual defendant, this can be a powerful tool to transfer the case since it is a much narrower analysis than that for jurisdiction. For a corporate defendant, “reside” is where it would be subject to personal jurisdiction. 28 U.S.C. § 1391(c). As such, for a corporate defendant, the venue analysis is combined with the jurisdictional analysis above, although you may still be able to move the case to a different district within the state.

B. Motions That May Be Filed Before Answering In addition, the Federal Rules of Civil Procedure provide that the following reasons to dismiss may also be raised by motion before filing an answer: (1) Failure to state a claim upon which relief can be granted (2) Failure to join a party under Rule 19 (required party) Rule 12(h)(2). However, if you fail to raise these motions before answering, they are not necessarily waived and can be raised later in a judgment for motion on the pleadings or at trial so long as they were previously included as affirmative defenses. Rules 12(c); 12(h)(2).

Initial Dispositive Motions 139

Failure to state a claim upon which relief can be granted is typically filed where the plaintiff has failed to state facts to support its contentions. The standard for such a motion favors the plaintiff as Rule 8 simply requires notice pleading, not many facts or details need to be included, and all statements that are included are read in the light most favorable to the plaintiff for purposes of such a motion. However, if the plaintiff has failed to state a specific element of the claim, then a 12(b)(6) motion can be successful. For instance, in a copyright case, it might be that the complaint failed to state that the copyright was original or that it was owned by the plaintiff or that the defendant infringed in any way. In addition, some courts have found in extreme situations that non-infringement can be found on a 12(b)(6) motion to dismiss where it is clear from the submitted materials that there is no chance of success. Thomas v. Walt Disney Co., 85 U.S.P.Q.2d 1838 (S.D.N.Y. 2007); Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124 (C.D. Cal. 2007).

C. Subject Matter Jurisdiction Can Be Raised Before Answering or Any Time Thereafter The defense of lack of subject matter jurisdiction can be raised at any time, including by motion before filing an answer, and is never waived. If the court determines that it lacks subject matter jurisdiction, it must dismiss the action. Rule 12(h)(3). Practice Tip You may want to request a certified copy of the deposit material from the Copyright Office. There are fees and procedures for obtaining deposit materials as they are often not available to the public. Check the Copyright Office for directions. If the deposit material does not include what was copied, for example if it was for a different version than what was infringed, then the registration is improper, and the court lacks subject matter jurisdiction over the copyright claim.

D. Timing of Motions and Answers If you do file a motion to dismiss for one of the above reasons, then the deadline to answer is delayed until ten days after the court’s decision on the motion. Rule 12(a)(4).

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Practice Tip Remember to check the court’s local rules for any variations from the Federal Rules of Civil Procedure as to deadlines and page limitations for different motions, responses, and replies.

VI. Answering, Defenses, Counterclaims A response to a complaint or counterclaim is due twenty days after it is served. Fed. R. Civ. P. Rules 12(a)(1)(A)(i) (complaint) and 12(a)(1)(B) (counterclaim). The time to respond to an amended pleading is ten days. Fed. R. Civ. P. Rule 15(a)(3). Rules 8(c) and (d) of the Federal Rules of Civil Procedure explains the process for responding to pleadings answers. In summary, an answer will include a response or a denial to each and every allegation, any defenses, and any counterclaims.

A. Answering In answering a claim or counterclaim, you must admit or deny every allegation asserted. Fed. R. Civ. P. 8(b)(1)(B). When answering to each allegation (normally numbered in the complaint or counterclaim), you will directly respond (with the same numbers). Typically, you will: • • • •

Admit the allegation Deny the allegation in whole Deny the allegation in part and admit the other part State that you lack sufficient knowledge or information to form a belief about the truth of the allegation and thus deny

See Fed. R. Civ. P. Rule 8(b). If you fail to deny an allegation, it is considered admitted. Fed. R. Civ. P. Rule 8(b)(6). An example complaint and answer are included in the Appendix. In addition, as an example for a the copyright claim sample above, this is how the answer might look:

Answering, Defenses, Counterclaims 141 Complaint

Answer

COUNT I Copyright Infringement of Plaintiff’s ABC Software

COUNT I Copyright Infringement of Plaintiff’s ABC Software

22. Plaintiff incorporates the prior paragraphs by reference.

22. Defendant repeats and incorporates by reference all of its responses in the above paragraphs as if fully set forth herein. 23. Defendant lacks sufficient knowledge or information to form a belief as to the truth of the allegations in Paragraph 23, and on that basis denies them.

23. ABC is an original copyrightable work. Plaintiff has complied in all respects with 17 U.S.C. § 101, et seq. and secured the exclusive rights in the work and has filed its copyright registration in the work with the Copyright Office in accordance with its rules and regulations. 24. Plaintiff owns all rights, title and interest in the copyright of ABC.

25.

26.

27.

28. 29.

24. Defendant lacks sufficient knowledge or information to form a belief as to the truth of the allegations in Paragraph 24, and on that basis denies them. Upon information and belief, Defendant has 25. Defendant denies infringed and is infringing the copyright of the allegations in ABC by unlawfully reproducing and distributing Paragraph 25. identical copies of ABC to Defendant’s employees, in violation of the United States Copyright Act, 17 U.S.C. §§ 106 et seq. Defendant’s infringements were and are 26. Defendant denies willful, in bad faith, and executed with full the allegations in knowledge of Plaintiff’s copyright, and in Paragraph 26. conscious disregard for Plaintiff’s exclusive rights in the protected work. Plaintiff is entitled to recover Defendant’s 27. Defendant denies profits, Plaintiff’s actual damages, or the highest the allegations in awardable statutory damages against Defendant. Paragraph 27. Plaintiff is also entitled to recover costs 28. Defendant denies the and attorneys’ fees. allegations in Paragraph 28. Defendant’s deliberate infringement of 29. Defendant denies Plaintiff’s copyright has greatly and irreparably the allegations in damaged Plaintiff, and Defendant will continue Paragraph 29. to damage Plaintiff greatly and irreparably unless enjoined by this Court. In the absence of injunctive relief, Plaintiff will have no adequate remedy at law. Accordingly, Plaintiff is entitled to a temporary and permanent injunction in accordance with 17 U.S.C. § 502.

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B. Affirmative Defenses In addition to answering or denying each allegation, you must also state all defenses to the claim. Fed. R. Civ. P. Rules 8(b)(1)(A); 8(c)(1); 12(b). You can make various defenses, even if they are inconsistent. Rule 8(d)(3) (“A party may state as many separate claims or defenses as it has, regardless of consistency.”). Defenses not raised in your answer cannot later be raised, except for subject matter jurisdiction. So you should raise every defense you reasonably can in your responsive pleading. Practice Tip If you discover a new affirmative defense during the litigation (i.e., you discover there was fraud on the Copyright Office and the registration is not valid), you should seek to amend your pleadings to add this defense.

Typical affirmative defenses are listed in Rule 8(c) of the Federal Rules of Civil Procedure and include, among others: • • • • • • • • • • • • •

Accord and satisfaction Estoppel Failure of consideration Fraud Illegality Laches License Payment Release Res judicata Statute of frauds Statute of limitations Waiver

In addition, copyright specific affirmative defenses not mentioned above include: • • • • •

Abandonment or forfeiture of copyright Public domain Independent creation Fair use Implied license

Answering, Defenses, Counterclaims 143

• • • • •

Merger doctrine or unprotectable elements Fraud on the Copyright Office Copyright misuse Unclean hands Innocent intent

These affirmative defenses are discussed, in turn, below. 1. Statute of Limitations A civil action for copyright infringement must be commenced within three years after the claim accrued. 17 U.S.C. § 507(b). This statute seems clear; however, it raises several questions. When does the claim “accrue”? Some courts have held that the claim “accrues” when the copyright owner learns of the infringement—often called the “discovery” rule. Polar Bear v. Timex, 384 F.3d 700, 706 (9th Cir. 2004); Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996); Home Design Services, Inc. v. B&B Custom Homes, LLC, 509 F. Supp. 2d 968 (D. Colo. 2007). Other courts, however, have determined that a copyright claim “accrues” when the injury occurs—often called the “injury” rule. Auscape International v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004). What if the infringement occurred over several years? Some courts have held that if the latest infringement of the continuing infringement (often called the “continuing wrong”) occurred within three years, then liability attaches to all acts of infringement, even those falling outside the threeyear statute of limitations. Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983). However, other courts have held that recovery can only be made for infringement within the last three years before suit. Roley v. New World Pictures, Ltd., 19 F.3d 479 (9th Cir. 1994); Stone v. Williams, 970 F.2d 1043 (2d Cir. 1992). There are some exceptions that toll the statute of limitations. You can argue that the statute should be tolled if the defendant fraudulently concealed the infringement or if despite due diligence by the copyright owner, the defendant hid the infringement, or if the defendant in some other way lulled the copyright owner into not bringing suit. Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983). Practice Tip Nimmer on Copyright, § 12.05 includes further analysis and case cites regarding the interpretation and application of the copyright statute of limitations.


2. Abandonment or Forfeiture of Copyright Forfeiture of the copyright in a work occurs as an operation of law, even if the copyright owner did not intend to forfeit the work. Forfeiture can occur, for example, if notice was not included on a work that was published when notice was required. Recall that although a copyright notice is not required for works published on or after March 1, 1989, a copyright notice was required for works published before March 1, 1989, and if one was not included, the work was probably considered public domain. The first thing to determine is the date the work was first published. If the work was published before January 1, 1978, notice was required and if there was no notice, the work was considered public domain, and the copyright has been forfeited. See Brown v. Latin American Music Co., 498 F.3d 18 (1st Cir. 2007). If the work was published between January 1, 1978 and March 1, 1989, notice was required and lack of notice forfeited the work; however, there was an exception that provided for a five-year cure period wherein a copyright owner could reverse the public domain designation. See 17 U.S.C. § 405(a). If a work was published after 1989, recall that under the Berne Convention, notice is no longer required to maintain a copyright. Thus, if someone is asserting a work that was published prior to March 1, 1989, you will want to investigate whether there was ever a time that he failed to include a copyright notice on his work or if he currently fails to include a copyright notice on his work. There are additional exceptions, and you should take a look at the treatises for more detail. Abandonment, unlike forfeiture, does not occur by operation of law. Rather, abandonment requires that the copyright owner expressly surrendered the copyright in the work. Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548 (3rd Cir. 2002); A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). A copyright owner may abandon his copyright by expressly agreeing to abandon the copyright when the work is submitted to a competition. Oravec v. Sunny Isles Luxury Ventures L.C., 469 F. Supp. 2d 1148 (S.D. Fla. 2006). 3. The Work Is in the Public Domain All copyrights eventually fall into the public domain when their term expires (presumably the terms will not be extended indefinitely!). Take a look at the Quick Reference Guide for Calculating Copyright Term Lengths at the end of Chapter 1 to calculate the term length.


Practice Tip There may also be other defenses based on when the work was created that you will want to consider. An architectural plan from before December 1, 1990, for instance, was not copyrightable as an Architectural Work. Before 1990, architectural works were protected as graphic or pictorial works but not as buildings, and copyright protection was only afforded to drawings and specifications. This meant that there was no copyright infringement if a duplicate structure was constructed from the building as long as the drawing and specifications were not copied. This changed with the Architectural Works Copyright Protection Act (effective December 1, 1990) such that designers or architects now have two copyrights in their works—one for the design embodied in the drawings or building as “architectural work” and the other in the drawings themselves, as “graphic” or “pictorial” works. Now, copying a building from a building is a copyright infringement, even if the plans were not copied. However, the designs of buildings where the plans or drawings of the building were published before December 1, 1990 are protected only as graphic or pictorial works. Also, buildings constructed or otherwise published before December 1, 1990, are not protectable as “architectural works” under the Architectural Works Copyright Protection Act. This can potentially be a valuable defense if the plaintiff’s asserted plan was created before 1990 (the Act is not retroactive), and the plan was never copied, even if the building is substantially similar.

4. Independent Creation Independent creation occurs where two people create a similar, or even identical, work on their own, independent of each other. Even if the plaintiff owns a valid copyright and the copyrightable elements are identical, there is a complete defense for independent creation. While difficult, if the defendant can prove that it created the work independently and without knowledge of or without having seen the plaintiff’s work, then there was no copying, and there can be no copyright infringement. Corwin v. Walt Disney Co., Nos. 04-16554 and 05-12869 (11th Cir. 2006) (Disney demonstrated independent creation of EPCOT in defense to claim of copyright infringement). However, if the plaintiff’s work is so popular or easily available, the defendant will have a difficult time showing independent creation, even if he does not recall ever having seen or heard the work. For example, in the case discussed above in the “Access” section, where it was alleged that George Harrison used portions of the tune from the Chiffon’s “He So Fine” when creating “My Sweet Lord,” the court found that because “He So Fine” was on the music charts in both the United States and United Kingdom, George Harrison likely heard the song and used it, whether conscious or not. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976).


5. Fair Use The Copyright Act provides an explicit exception to infringement where a use of a work is considered a “fair use.” The Copyright Act provides that a use is noninfringing if it is “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” 17 U.S.C. § 107. Fair use is an equitable rule and is considered on a case-by-case basis by weighing several factors listed in the statute and applying them to the facts. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984). The listed factors to be considered are: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”

17 U.S.C. § 107. These factors are not exclusive, and they cannot be “treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994). When considering the addition of section 107 to the Copyright Statute, the House listed several examples of “fair use” (H.R. Rep. No. 94-1476), including quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a parody of some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; and incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported. While these are fairly vague and are not law, they give a general sense of what is considered fair use. Practice Tip Several treatises include more in-depth discussions of fair use, including Nimmer on Copyright, § 13.05. Fair use is generally the defense of last resort because it is very complex and uncertain.


Parody and other First Amendment protected speech, such as political and social commentary, is often evaluated in the fair use context. As with any other use, a parody or other social commentary must be evaluated under the same statutory factors so that commercial use may not be “fair,” or using the entire work may not be considered “fair,” or if it replacing or negatively impacting the market for the original work may not be considered “fair.” As the House articulated when considering section 107, use of some of a work in a parody of the work is likely a fair use. Notably, the House did not state the use of the entire work being parodied would be considered fair use. Indeed, typically, a good rule of thumb is to only use the portion that is necessary for the parody. 6. License or Implied License If there was an express license to use the work, either exclusive or nonexclusive, that is a defense so long as the use did not exceed the terms of the license. For example, going beyond the time frame, going beyond the media limitations, going outside the geographic boundaries, would ruin the license defense. Note that if there was a failure to pay the required amount in a license, that is not a breach necessarily—the license must first be terminated, and then use after the termination would be an infringement. Note also that a license that is just from one co-owner can also be a valid defense to an infringement suit by the other co-owner. Davis v. Blige, 505 F.3d 90 (2d Cir. 2007). An implied license can be granted orally or implied from conduct. NelsonSalabes, Inc. v. Morningside Development, LLC, 284 F.3d 505 (4th Cir. 2002); I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). An implied license, unlike a license, is not included in the definition of “transfer” under the Copyright Act, 17 U.S.C. § 201(d)(1), and as such it does not transfer ownership of the copyright. Rather, an implied license simply permits the use of the copyrighted work in a particular manner. Courts have different tests for determining whether an implied license exists, but it often falls under the same determination of a contract-in-fact under the state law, and you will need to evaluate the intent of the parties, the actions of the parties, and any common course of dealing between the parties or in the industry at issue to determine whether there was a common understanding that provided for an implied license. Bartsch v. Metro-GoldwynMayer, Inc., 391 F.2d 150, 153–54 (2d Cir. 1968). For example, an implied nonexclusive license for use of a copyrighted work may exist where (1) the defendant requested the creation of a work, (2) the plaintiff makes that particular work and delivers it to the licensee who requested it, or (3) the plaintiff intended that the defendant copy and distribute his work. Nelson-Salabes, Incorporated v. Morningside Development, LLC, et al., 284 F.3d 505, 514 (4th Cir. 2002); Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990).

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7. Merger Doctrine or Unprotectable Elements Recall that copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). A plaintiff cannot prevent (at least through copyright law) your client from using such a noncopyrightable element. This may not be completely obvious. For instance, works will sometimes appear similar because they share similar nonprotectable concepts: the concept of a split plan home design in an architectural plan. This might be stated as “Plaintiff’s claims are barred as attempting to cover non-copyrightable elements.” The “merger doctrine” states that infringement will not be found if a particular idea can only be expressed in a very limited number of ways—that is, the expression is inextricably merged with the idea. If the plaintiff’s expression is the only way, or one of the only ways, in which a particular idea can be expressed, then infringement may not exist. ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005); Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971). This can be simply stated as “Plaintiff’s claims are barred by the merger doctrine.” Practice Tip In an architectural plan case, consider functional requirements that determine the layout of a home. Thus, a common and often successful argument in defending an architectural plan copyright infringement case is that there are only so many ways to draw a home in a particular shape. See Howard v. Sterchi, 974 F.2d 1272, 1276 (11th Cir. 1992) (“The variety of ways a two-story rectangle can be divided into three bedrooms, two baths, a kitchen, a great room or living room, closets, porches, etc., is finite.”) This is particularly true when lot limitations, local regulations, and customer desires are considered. See Tiseo Architects, Inc. v. B&B Pools Service and Supply Co., 495 F.3d 344 (6th Cir. 2007). There are usually local regulations or construction rules regarding boundary requirements, where bedrooms may be placed in a house (i.e., requirement that they be on exterior walls), requirements for windows, or other limiting rules. Beyond regulations, functional and customer need factors further limit the design and can be raised during the defense. The idea of placing administrative offices near the front of the building, close to the road, to permit employee and public access is not protectable. Similarly, placing garages and service shops in the back is not protectable. Greenberg, 2006 U.S. Dist. LEXIS 4792. Likewise, the width of the go-kart track that accommodated the cars and the inclusion of walls to keep the cars on the track, are nonprotectable, functionally inspired elements. Fun Spot of Fla., Inc. v. Magical Midway of Cent. Fla., Ltd., 242 F. Supp. 2d 1183, 1198 (M.D. Fla. 2002).


Practice Tip In another example from the architectural plan context, a “bubble diagram” can be used and drawn in front of the jury. Going through a rough sketch step by step will drive the point home with the trier, who will realize that the overall layout of the house is often dictated by lot size, local building rules, and regulations. In addition, an architectural expert can go through this exercise with the trier by explaining HOW the plans are usually designed, the importance of flow to a home, and what the functional issues are that contribute to the design. He might describe how he could have designed the home—starting with the lot size, discussing the boundary requirements, discussing how a garage at the front is sought after in new homes, or how entering the kitchen off the garage is popular, etc. Bubble diagrams are a simple, quick, and effective way to demonstrate how a plan will be initially laid out.

Practice Tip Further, under the merger doctrine, infringement will not be found if a particular idea can only be expressed in a very limited number of ways, including the way that the plaintiff is attempting to claim copyright protection. Putting unrelated works before the trier that share similar concepts as the works at issue makes the point well that it is really just an idea or concept that many works share, and there are a limited number of ways to present this idea or concept. Works sharing similar concepts from before the plaintiff’s work was designed are particularly valuable. This will help demonstrate that some or all of the plaintiff’s work was in the public domain as a mere concept.

8. Fraud on the Copyright Office Fraud on the Copyright Office occurs when a person who submits a copyright registration knowingly fails to advise the Copyright Office of facts which might have occasioned the rejection of the application. Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir. 1984); Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 891 F.2d 452 (2d Cir. 1989). Importantly, such a “knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action.” Eckes, 736 F.2d at 861–62. In fact, the Copyright Act provides that “[a]ny person who knowingly makes

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a false representation of a material fact in the application for copyright registration . . .” can be fined up to $2500. 17 U.S.C. § 506(e). 9. Unclean Hands While the concept of fraud on the Copyright Office as an affirmative defense is related to the defense of unclean hands, unclean hands is a broader defense and covers other forms of inequitable conduct by the plaintiff. The equitable affirmative defense of unclean hands typically arises when the plaintiff has engaged in serious inequitable misconduct that relates directly to the subject matter of the infringement, and the defendant was injured by that conduct. Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1313 (9th Cir. 1997). Examples include if the plaintiff misuses the process of the courts, falsifies evidence, or is engaging or has engaged in the same conduct complained of. 10. Copyright Misuse Copyright misuse is another equitable defense much like unclean hangs and fraud on the Copyright Office that prevents a plaintiff who has misused his copyright from having it be enforced. An example of copyright misuse is an improper license agreements that tie undesirable products to desirable products in a license. MCA Television Ltd. v. Public Interest Corp., 171 F.3d 1265, 1279 (11th Cir. 1999). While actions that rise to the level of antitrust will often be considered copyright misuse, the defendant does not have to prove that the action rises to that level. Copyright misuse as an affirmative defense emerged from the defense of patent misuse. In Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990), the court held that “since copyright and patent law serve parallel public interests, a ‘misuse’ defense should apply to infringement actions brought to vindicate either right.” In Lasercomb, the plaintiff’s standard licensing agreement went beyond its copyright and prevented its licensees from using the ideas underlying the copyright. This excessive anticompetitive constraint was against public policy, and thus there was a legitimate defense of copyright misuse. Practice Tip Nimmer on Copyright, § 13.09 gives more detailed explanations and case citations relating to the defense of copyright misuse.

11. Innocent Intent In actions for copyright infringement, the innocent intent of the defendant will not constitute a defense to a finding of liability. Gregerson v. Vilana Financial, Inc., 84 U.S.P.Q.2d 1245 (D. Minn. 2007).


Intent is not generally relevant, except in one limited circumstance. If a copyright notice incorrectly indicates the owner is someone other than the true owner, then the “person who innocently begins an undertaking that infringes the copyright has a complete defense to any action for such infringement if such person proves that he or she was misled by the notice and began the undertaking in good faith under a purported transfer or license from the person named therein.” However, the defense may not be asserted if before the infringing occurred, the work had been registered in the name of the true copyright owner, or a document executed by the person named in the notice and showing the correct ownership of copyright had been recorded. 17 U.S.C. § 406(a). In addition to that exception, while it may not be a defense to infringement, innocent intent may affect the remedies against a defendant. For example, statutory damages can be decreased if the defendant can demonstrate innocent intent, just as the damages will be increased if the plaintiff can demonstrate willful infringement. 17 U.S.C. § 504. 12. Equitable Estoppel Equitable estoppel bars a plaintiff’s claim where the plaintiff has misled the defendant into infringing. This is a rare defense, but when applicable, it may bar all relief on a claim. Typically, to demonstrate equitable misconduct, the defendant must demonstrate: (1) The plaintiff knows the facts of the defendant’s infringing conduct (plaintiff knows or should know that defendant is infringing plaintiff’s copyright); (2) The plaintiff intends that its conduct shall be acted on or must so act that the defendant has a right to believe that it is so intended (plaintiff, through misrepresentation or concealment induced defendant to believe that plaintiff did not intend to enforce its copyright); (3) The defendant is ignorant of the true facts (defendant did not know that plaintiff actually intended to enforce its copyright); (4) The defendant relies on the plaintiff’s conduct to its injury (defendant continues to infringe because of plaintiff’s misrepresentations and then is sued for infringement). Hampton v. Paramount Pictures Corp., 279 F.2d 100 (9th Cir. 1960); Serv. & Training, Inc. v. Data Gen. Corp., 963 F.2d 680, 690 (4th Cir. 1992); United States v. King Features Entm’t, Inc., 843 F.2d 394, 399 (9th Cir. 1988); Nimmer on Copyright, § 12.07.

C. Counterclaims and Crossclaims Counterclaims are usually raised in your responsive pleading after the affirmative defenses are listed. Depending on the circumstances, potential

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counterclaims in a copyright litigation might include a breach of contract or license. Rule 13 of the Federal Rules of Civil Procedure covers counterclaims and crossclaims. A counterclaim is against the plaintiff, and a crossclaim is against a codefendant. Counterclaims are either permissive or compulsory. A compulsory counterclaim is one that “(A) arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim; and (B) does not require adding another party over whom the court cannot acquire jurisdiction.” Fed. R. Civ. P. 13(a)(1). An example in a copyright infringement case might be if there was a license that relates to the copyright between the parties that was breached. Compulsory counterclaims must be raised in your responsive pleading unless it is already in a pending litigation. Fed. R. Civ. P. 13(a)(1) and (2). If a compulsory counterclaim arises after you have filed the responsive pleading, or you failed to include the counterclaim because of “oversight, inadvertence, or excusable neglect,” you may be allowed to amend the pleading to add the claim. Fed. R. Civ. P. 13(e) and (f). A permissive counterclaim, on the other hand, does not have to be raised in the responsive counterclaim and does not necessarily need to relate to the transaction or occurrence. Fed. R. Civ. P. Rule 13(b). Practice Tip You may want to raise a counterclaim even if it is not compulsory to raise the stakes for the plaintiff. A counterclaim gives your side a bargaining chip for settlement discussions and helps to consolidate all of the issues between the parties into one proceeding.

A crossclaim may be raised if it arises out of the same transaction or occurrence or it relates to the property that is the subject of the original action. Fed. R. Civ. P. Rule 13(g). For instance, it may be a claim by one defendant placing blame on the other defendant and seeking indemnification or a claim that the other defendant provided the copyrighted work or stated that he had a license that was, in turn, given to the other defendant.

Practice Tip If your client does have a crossclaim against a codefendant from whom he wishes to be indemnified, it is often better to first contact that defendant’s counsel to determine whether he is going to step up and indemnify your client and pay for your client’s defense.

Remedies

VII. Remedies A. Monetary Damages Pursuant to the Copyright Act, a copyright owner can recover statutory damages or actual damages, and the defendant’s profits are not taken into account when calculating actual damages. Statutory damages, however, are only available if the copyright was registered before the infringement began or within ninety days of publication. 17 U.S.C. § 412. The copyright owner may elect to recover statutory damages rather than actual damages and profits and can do so at any time before final judgment. 17 U.S.C. § 504(c). Practice Tip Because the extent of infringement and damage are often not clear until after discovery, the copyright owner is given until just before final judgment to elect the type of damages he wishes to seek. The statute technically allows the plaintiff to select the damages “at any time before final judgment” is entered, which raises the question of whether they may be selected after the jury returns a verdict on actual damages that the plaintiff is unhappy with. Nimmer on Copyright’s treatise discusses this issue in detail and notes that a Supreme Court has made the determination that if the plaintiff elects a trial by jury, then the selection must be made before the case is submitted to the jury for deliberation. Nimmer on Copyright, § 14.04[A], citing Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 347 (1998).

Statutory damages can be awarded in the range of $750 to $30,000 for each instance of infringement, as the court considers just. If the plaintiff shows willful infringement, this can be increased to $150,000 for each instance of infringement. On the other hand, if the defendant can demonstrate innocent infringement—that he was not aware and had no reason to believe that his actions constituted copyright infringement—the court, in its discretion, may decrease the award to $200. 17 U.S.C. § 504(c). This is a good reason for copyright owners to include the copyright notice so they preclude that lower floor because if there is notice, innocent infringement cannot be claimed. 17 U.S.C. § 401(d). Practice Tip Each instance of confusion means that for each registered work that is infringed, the copyright owners can recover one instance of statutory damages. If the registered work is a collection and three of the works in the

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registered collection are infringed, only one instance is permitted because there is only one registration. Furthermore, even if there are multiple defendants, where they are jointly and severally liable, the copyright owner is only entitled to one instance of statutory damages—the copyright owner is not entitled to an award for each defendant. Smith v. NBC Universal, 2008 U.S. Dist. LEXIS 15714 (S.D.N.Y. 2008).

Alternatively, the copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement. 17 U.S.C. § 504(b). It is the plaintiff’s burden to demonstrate what his actual damages were. Often this will be the license fee that he typically charges for use of the work or lost sales. However, the plaintiff can argue for alternative measures of his damages. For instance, some courts have found that plaintiffs might recover the “value of use” as part of actual damages. Deltak, Inc. v. Advanced Systems, Inc., 767 F.2d 357 (7th Cir. 1985); Nimmer on Copyright, § 14.02[B]. If the copyright owner chooses the actual damages route, then the copyright owner is also entitled to any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. 17 U.S.C. § 504(b). The plaintiff must present proof only of the accused infringer’s gross revenue attributable to the infringement, and then the accused infringer is required to prove its deductible expenses and the elements of profit attributable to factors other than the copyrighted work. 17 U.S.C. § 504(b). In determining what revenue is “attributable” to the infringement, the copyright holder cannot just show the gross revenue from all of a defendant’s revenue streams but must point to those streams that are attributable to the infringing product. Some courts have termed the attribution requirement a “causal link” requirement or stated that the revenue must be “reasonably related” to the infringement and have called the add-on revenue “indirect” revenue because it goes beyond the direct revenue from the infringing product. Phoenix Renovation Corp. v. Rodriguez, 258 Fed. Appx. 526, 533 (4th Cir. 2007). Generally, the infringing product is fair game, and revenue from the infringing product is easily found to be “attributable.” However, sometimes you can go beyond this to other related products, such as add-on products or services related to the infringing product. Sometimes called indirect profits, if it can be established that an infringing use leads to the defendant’s receipt of profits, then those profits, from whatever source, are deemed attributable to the infringement and are recoverable. Patry on Copyright, § 22:131. This theory does not allow overbroad recovery, however. If the copyright was for software and the infringing product was software, you may try to link the associated maintenance services or the add-on software products that were additionally sold because of the original infringement. In another example, an artist whose

Remedies

painting is used in a brochure to promote a service or product may try to seek all revenue from the sale of the service or product, but a causal link must be proven. Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002) (symphony sales and sculpture pictured in brochure); Lynch v. Trendwest Resorts Inc., 64 Fed. Appx. 44 (9th Cir. 2003) (condominium sales and videotape); Bouchat v. Baltimore Ravens, 346 F.3d 514, 520 (4th Cir. 2003) (sale of merchandise and concessions and team logo). Once the plaintiff meets its burden of demonstrating revenues attributable to infringement, it is the defendant’s burden to cut those revenues down in various ways. First, the defendant may try to cut the causal link (“attributable”) to the infringement by demonstrating that consumers would have purchased the infringing product even without the infringing elements. Next, the defendant will want to prove up all of its costs in order to demonstrate profits because the plaintiff is only entitled to profits attributable to the infringement. If a defendant fails to prove its deductible expenses, the court can simply award revenues. Practice Tip If you are the defendant, you will want to produce all financial documents demonstrating costs so that you can cut down your revenue. If you do not produce them during discovery, you likely will not be permitted to use them at trial, and then you will be stuck with revenue since it is the defendant’s duty to cut down revenue and if not proven, then the gross revenue will be presumed to be profit. See Nelson-Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 511–12 n.9 (4th Cir. 2002).

Furthermore, the defendant can try to cut the attributable profits back by proving that some of the profits are attributable to other factors and the damages should be appropriately apportioned. The Supreme Court of the United States has held that apportionment is appropriate when the evidence shows that not all of the infringer’s profits are the result of the infringement. See Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 400–06 (1940). Importantly, it is the defendant’s burden to prove apportionment and if defendant fails to do so, all the profits will be fair game. 17 U.S.C. § 504(b); Christopher Phelps & Assoc., LLC v. Galloway, 492 F.3d 532 (4th Cir. 2007). The fact finder will calculate the apportionment of a copyright infringer’s profits on a case-by-case basis. The law provides no clear-cut legal guidelines regarding such calculations, and the apportionment determinations made by courts and juries are frequently unpredictable and vary based on the facts. Furthermore, the apportionment often becomes very subjective, and a “reasonable approximation,” rather than mathematical exactness, is sufficient. Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 408 (1940).

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In making your case for apportionment, you will want to take a look at cases in the same subject matter as your client’s work or in an analogous subject matter.3 In addition, it is valuable to have an expert who is an economist with some experience in the specific market to opine on the various factors that contribute to the sales price of the work.

B. Costs and Attorneys’ Fees In the court’s discretion, it may award costs and fees to a prevailing party. 17 U.S.C. § 505 (“the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs”). However, a prevailing plaintiff is not entitled to recover attorneys’ fees unless the copyrighted work was registered before the infringement began or within ninety days of publication. 17 U.S.C. § 421. A prevailing defendant, however, is not limited by that requirement that the plaintiff registered the copyright prior to infringement. Some courts have stated that there is a “presumption” that the prevailing party, whether plaintiff or defendant, is entitled to fees. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994); Mostly Memories, Inc. v. For Your Ease Only, Inc., 526 F.3d 1093 (7th Cir. 2008). The court does retain discretion as to whether to award attorneys’ fees and there is no guarantee that a prevailing party will recover. Furthermore, determining which party is the prevailing party can be a convoluted area as well, for instance where some, but not all, requested relief is obtained. This is especially true where an offer of judgment (Fed. R. Civ. P. 68) was made, the amount was not recovered, but other relief not offered was recovered.

C. Injunctions A permanent injunction may be awarded if copyright infringement is found, preventing the defendant from continuing the infringement or engaging in any future infringement. 17 U.S.C. § 502; Fed. R. Civ. P. Rule 65.

3.

General Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1175 (1st Cir. 1994); Sheldon v. Metro-Goldwin Pictures Corp., 309 U.S. 390, 407–09 (1940) (motion picture); Bruce v. Weekly World News, Inc., 310 F.3d 25, 31–32 (1st Cir. 2002) (photographs on t-shirts); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 480 (9th Cir. 2000) (musical recording); Blackman v. Hustler Magazine, Inc., 620 F. Supp. 792, 801 (D.D.C. 1985) (magazine and photographs); Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 518 (9th Cir. 1985) (musical recording in casino); Christopher Phelps & Assoc., L.L.C. v. Galloway, 492 F.3d 532, 541 (4th Cir. 2007) (architectural plan); Powell v. Penhollow, 260 Fed. Appx. 683, 684 (5th Cir. 2007) (architectural plan); Danielson v. Winchester-Conant Properties, Inc., 322 F.3d 26 (1st Cir. 2003).

Remedies

Practice Tip Whether to grant an injunction is an equitable decision for the court, and if you have a jury trial, the judge will not usually allow the jury to decide whether an injunction is appropriate. Instead, you will need to file a post-trial motion seeking a permanent injunction. See the post-trial motion section near the end of this chapter for more information.

To acquire a permanent injunction, you will need to demonstrate several factors: (1) That the copyright owner has suffered an irreparable injury; (2) That remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) That considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; (4) That the public interest would not be disserved by a permanent injunction. eBay Inc. v. MercExchange, LLC, 126 S. Ct. 1837, 1839 (2006); Christopher Phelps & Associates LLC v. Galloway, 492 F.3d 532, 543 (4th Cir. 2006). Prior to the MercExchange decision, many courts would hold that if infringement was proven, then irreparable harm was presumed, and an injunction was practically automatic. Now, you must demonstrate irreparable harm, although for a copyright infringement case, it is usually presumed, and you can argue that the copyright owner has been irreparably harmed by the infringement because of the nature of copyright being a right that is somewhat intangible. Christopher Phelps & Associates LLC, 492 F.3d at 544. In response to a motion for an injunction by a copyright owner, the defendants will often respond that they have ceased all infringing activity and do not plan to resume that activity. If, however, there is any doubt, such a promise is usually insufficient. United States v. Oregon State Medical Society, 343 U.S. 326, 333 (1952); Cypress et al. v. Newport News General and Nonsectarian Hospital Association, Inc. et al., 375 F.2d 648, 658 (4th Cir. 1967). Practice Tip An injunction, simply because it is a court order, is much more effective in preventing an infringer from resuming similar infringing activity than a promise that he will not.

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D. Destruction of the Infringing Goods A copyright owner can also seek an order that the defendant return or destroy the copyrighted work and any copies and derivative works. 17 U.S.C. § 503(b) (“As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.”).

Practice Tip Include your motion for destruction or return in your motion for permanent injunction that you file post-trial.

As with an injunction, destruction or return of infringing goods is an equitable remedy that will be decided by the judge. Reasonableness will typically be used in such circumstances, meaning that a court will usually not require the destruction of a house that was built from infringing architectural plans and is itself an infringement. Such destruction would simply be wasteful, and a defendant can argue that such destruction would simply be inequitable. On the other hand, a court would likely order that all copies of an infringing photograph or prints be destroyed because there would be no significant waste and is an equitable remedy.

VIII. Discovery Once the complaint is filed, served, and answered, the court will enter a preliminary scheduling order. All dates on that order must be docketed, and any other standing orders referred to in the order must be noted. Typically, that initial order will set a deadline for Rule 26(a) disclosures as well as a date for a scheduling conference with the court and/or a deadline to submit a joint discovery plan.

Practice Tip Note that your local rules may have additional requirements (such as requiring that the Rule 16 conference occur in person, as in the Middle District of

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Florida; or requiring that you state your positions as to potential settlement or mediation before a magistrate) that you will need to meet, or it may set shorter deadlines in the initial order or in the local rules for the conference and the discovery plan.

If no deadline is set in the initial order or in the local rules, at least 21 days prior to the court’s scheduling conference, the parties’ counsel must meet to discuss the case, potential settlement, schedule and plan, including discovery deadlines, any limitations on discovery (i.e., limits to the number of interrogatories or depositions), as well as the procedure that you will follow as to discovery of electronically stored information (ESI), preservation, and inadvertent disclosure. Fed. R. Civ. P. Rules 16, 26(f). Rule 26(f)(2) lists the specific topics that the parties must discuss. Within 14 days after that conference, the parties must submit a joint report of the conference with their discovery plan. Rule 26(f)(3) lists the specific topics that the parties must include in the plan. The court will then use that joint discovery plan to create an overriding case management order (sometimes referred to as a scheduling order) for the case. Practice Tip Be well prepared for the scheduling meeting with opposing counsel. You should review the local rules and the court’s standing order as to discovery and deadlines. You must also take the time before this meeting to talk to your client about how they store their electronic documents, e-mails, and other electronically stored information. Fed. R. Civ. P. Rule 26(f)(3)(C); also take a look at the 2006 Advisory Committee Notes for subsection (f). You should also be up-front with opposing counsel about any unusual storage methods your client uses that may interfere with producing ESI so that you can adequately work out any issues regarding production. You will want to reach an agreement with opposing counsel early on as to how to search and produce ESI. Note that Rule 26(f)(3)(C) specifically requires the parties to discuss the form in which ESI will be produced. If you fail to be adequately prepared for the scheduling conference, either with opposing counsel or before the court, you may be sanctioned. Fed. R. Civ. P. Rule 37(f).

Rule 16(c) sets forth the matters that the court may take up at a pretrial conference, and you should be prepared to discuss such issues and have a position on each issue before the conference. Rule 16(b)(3) also covers what content must, and may be, included in the scheduling order by the court; again, be prepared to discuss these issues and have a position on each before the conference.

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Discovery cannot usually be served until after the parties have held their Rule 26(f) conference. Fed. R. Civ. P. Rule 26(d). However, sometimes the initial order from the court will state that discovery may commence immediately (common in the Eastern District of Virginia and Northern District of Florida).

A. Rule 26 Disclosures The scheduling order from the court will usually set the date for the Rule 26(a) initial disclosures. If not, then the local rules usually will. Otherwise, Rule 26(a)(1)(C) provides that they be made within 14 days from the parties’ Rule 26(f) conference. Rule 26(a) disclosures are the first things disclosed to the opposing side. Pursuant to Rule 26(a)(1) of the Federal Rules of Civil Procedure, the initial disclosures must identify key individuals (including name, address, and telephone number), documents, damage calculations, and any insurance information. The attorney will likely have a format that she likes to use, and a paralegal can then input the information that he or she is already aware of, such as the party names and contact information, any documents that have already been produced by the client, and whether there is any insurance information. If there is coverage from an insurance company, obtain the insurance policy from either the client or its insurance adjustor because it will most likely need to be produced to opposing counsel. It often takes some time to obtain the policy, so it is best to ask for it sooner, rather than later. Recall that it states in the Rule (Fed. R. Civ. P. Rule 26(e)) that initial disclosures can and should be amended. During the litigation, you should amend the initial disclosures to ensure that every witness you intend to use is listed. If they are not, you may not have the opportunity to use their testimony at trial. The other side will argue that if you knew you wanted to use that witness, you should have identified them so that they had the opportunity to depose them.

B. Written Discovery Written discovery includes requests for production of documents, interrogatories, and requests for admission. Before you begin drafting, you should first pull the local rules regarding discovery and the case management or scheduling order and note any particular limitations imposed by either the case management order or the local rules. You should also note and calendar the fact discovery deadline and docket at 30 days prior to that date (the deadline to send out any discovery requests because the recipient has 30 days to respond,

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so docketing 33 or 35 days is advisable to allow for mailing time), as well as 45 days or 60 days prior to the close of discovery (to allow time to draft additional discovery). When drafting discovery requests, you will want to keep the elements of the claims, counterclaims, or defenses in mind while you are drafting, and be sure that you are asking for information that will help your prove them. Practice Tip Jury instructions for the various causes of action will be valuable to use to list out the elements of the claims, counterclaims, or defenses so that you keep in mind what you will ultimately have to demonstrate to the jury.

Practice Tip The elements of each claim will be particularly helpful for use in requests for admission. For example, you can ask the defendant to admit that he had access to the copyrighted work, that he copied the work, or that he made a derivative of the work.

Also, you will want to keep all the parties’ Rule 26(a) disclosures on hand to determine key documents and key people about whom to draft interrogatories. The other side should have identified all the individuals that they believe “likely to have discoverable information” as well as documents and ESI that it “may use to support its claims or defenses.” Fed. R. Civ. P. Rule 26(a)(1). Finally, remember to sign all discovery requests. This is required under the Federal Rules of Civil Procedure, and if you fail to do so, then the other side has no duty to respond to them. Fed. R. Civ. P. Rule 26(g). 1. Plaintiff ’s General Requests As a basic checklist in a copyright infringement case, the plaintiff will seek information regarding: • Infringement Access and acquisition Where and when the defendant first acquired/heard/saw the plaintiff’s work or a copy of it Defendant’s knowledge or awareness of the plaintiff or the plaintiff’s work Similarity between the works Copies of the work(s) and any drafts that you will ultimately put before the trier of fact ■

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This will entail the copyright registration, a copy of the work, and any assignments or other contracts transferring the copyright. In addition, the plaintiff will want to prove up its portion of the damages, namely, its lost profits. This may include typical license fees charged or other ways in which the plaintiff was damaged by the infringement, including damage to the value of the work or damage to the reputation of the owner. Those items that are necessary for the claim should be identified in the Rule 26(a) disclosures and should be produced to the other side without them requesting them pursuant to your Rule 26 obligations. 2. Defendant’s General Requests As another basic checklist in a copyright infringement case, the defendant will typically seek information regarding: • Validity What the copyright covers • Ownership Creation of the work Identity of the author, when the work was created, whether other works were referred to when it was created, the general method of creation Any assignments, employment agreements, work for hire agreements • Damages Value The time and cost for creation Typical license fees Any license negotiations Price to sell the work, copies of the work, derivatives of the work Plaintiff’s revenue attributable to the work Plaintiff’s lost profits This will overlap with the value but may also include how plaintiff’s revenue and profits pre -and post-infringement Consequential damages Whether plaintiff intends to seek consequential damages, what those consequential damages might be, and any evidence they have of such consequential damages • Defenses Keeping the defenses and the elements in mind and ask for information needed to prove them up • General discovery Any communications between the parties License, implied license, estoppel, or laches defenses should typically be revealed in such communications ■

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Any communications that plaintiff has had that relate to the claims This may expose license negotiations, issues with ownership, copyright misuse, or other weaknesses in the plaintiff’s case

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Recall that the defendant will also need to prove up the elements of any defenses and will need to prove all deductible costs and attribution that can decrease damages. Typically, this will include all costs, profit and loss statements, and any financial records that demonstrate the value of other features. Those items that are necessary for the defendant to prove up for his defenses, counterclaims, or to counter damages claims should be identified in the Rule 26(a) disclosures and should be produced to the other side without them requesting them pursuant to your Rule 26 obligations. 3. Interrogatories Interrogatories are questions that are used to acquire information and to get a verified response from a party that you can later hold her to. Rule 33 of the Federal Rules of Civil Procedure covers interrogatories. You will also want to check the Local Rules and the scheduling order for specific rules such as limitations on the number of interrogatories (often in the scheduling order) or the scope and timing of interrogatories (i.e., S.D.N.Y. Local Rule 33.3). Interrogatories start with a definitions section that covers broad definitions of terms such as “document,” “any and all,” and “communication.” You can take a look at the sample interrogatories included in the Appendix for sample broad definitions; you should also take a look at your firm’s document management system of samples in the jurisdiction in which you are litigating. The definitions section will also include specific definitions such as identifying the parties by short form or defining the “copyrighted work” or the “infringing work.” They can also get specific as to the specific product names or lines or particular license agreements or contracts that you want to refer to by a defined term. For example, you might state: • The term the “1999 License Agreement” shall refer to the contract entered between XYZ Corporation and Mr. Smith on January 12, 1999; or • The term the “Snowfall Product Line” shall include the candleholder, the teacup and saucer, and the bowl and serving platter offered by the defendant, that bears the Snowfall design at issue in this case. After the definition section, you will go to the questions. What follows are some examples of the interrogatories that either the plaintiff or defendant might ask with regard to specific topics.

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a. Creation of the Work The defendant will want to ask the plaintiff to describe the creation of the work, including when it was created, by whom it was created, why it was created, how long it took to create the work, how much it cost to create the work, the methodology used to create the work, whether the work is itself a derivative work, whether other materials were referred to in creating the work, whether there are older or newer versions of the work, and whether there are any public domain elements to the work. This information can lead to the discovery of information such as lack of ownership, registration of the incorrect work (if a later version is infringed, but the earlier version was registered), any weakness in the copyright (public domain items or components that were themselves copied from another work), and damages issues (such as an argument that the value of the work is less because it took only ten minutes for an employee who was paid $40,000 a year salary). There are various ways that you can solicit this information through interrogatories. You might try a broad interrogatory such as: • “Describe in detail the creation of the Work, including when it was created, by whom it was created, in what capacity the author created the Work, why the author created the Work, the time spent creating the Work, and the methodology used to create the Work.” Such an interrogatory is arguably compound and may be counted as several interrogatories, so you could instead try more narrow, specific interrogatories such as: • “Identify every author of the Work and their affiliation with Plaintiff.” • “Identify all costs associated with creation of the Work.” • “Identify any and all versions of the Work and specify the creation date for each version.” Or you can get even more specific and narrow: • “Identify every author of the Work.” • “For every author identified in your response to Interrogatory No. __ above, identify his connection to Plaintiff.” • “Identify any and all versions of the Work.” • “For every version identified in your response to Interrogatory No. __, identify the date that version was created.”

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Practice Tip The type of question that you ask and the specificity that you use will depend in large part on the partner that you are working with and the jurisdiction in which you are located. Every partner has her own style, and it is wise to take a look at other discovery from the partner’s other cases to get a sense of her style. In addition, the type of request may depend on whether you are in a fast or a slow moving jurisdiction. If you are in a slow moving jurisdiction that allows a year for discovery, you may want to start with a few broad interrogatories in the first round of discovery, and then you can ask more specific questions as necessary depending on the responses that you receive. On the other hand, if you are somewhere like the Eastern District of Virginia, where you will have only four months for discovery, you may not have the luxury of four or five sets of interrogatories and will instead only have time for two or three. In this case, you will want to ask more questions and gather as much information as you can up front before depositions are taken.

b. Validity Despite this low threshold for originality and creativity, it is certainly worth it to the defendant to ask the plaintiff about her creation because you never know what she might say. For instance, either through an interrogatory or during a deposition, you will want to ask the plaintiff (or author) about his process, how he gets his ideas, whether he looked at other works, and how he generally created the work. These will often overlap with the creation interrogatories above. As above, you might ask something like: • “Describe in detail the creation of the Work, including how the author created the Work, including anything considered or used during the creation, the time spent creating the Work, and the methodology used to create the Work.” c. Ownership Ownership is another required element; although it is fairly self explanatory, it can lead to surprises, and it is worth it for the defendant to request information regarding any licenses, assignments, or other transfers of the copyright, as well as any business sales agreements that may have transferred ownership of any rights in the works, as well as any employment or contractor agreements involving the author. You will be surprised at how often

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ownership of works created by independent contractors is not properly papered or does not cover all of the versions of the work. You might ask: • “State the basis for your claim of ownership.” • “Identify any and all assignments, contracts, licenses or other agreements pertaining to the Work.” • “If created by an employee, identify the job description of that employee.” (recall that if it was outside the employee’s job description, the work would not automatically be a work for hire). d. Infringement The plaintiff will want to ask about access to the copyrighted work, including whether the defendant had a copy of the work or when the defendant first acquired/heard/saw the copyrighted work or a copy of it. Your client may know some of this information, in which case you may be able to just request this information in a request for admission (i.e., admit that you acquired a copy of the work from plaintiff at the 2002 trade show.). If in an interrogatory, you might ask • “Describe in detail how you accessed the Work, including when you first saw the Work and when you first acquired a copy of the Work.” The plaintiff will also want to ask about the creation of the infringing work(s), which will aid with proving infringement, how the copyrighted work was used, and whether the defendant is going to claim independent creation. As with creation of the copyrighted work, there are many ways that this can be asked, including • “Describe in detail the creation of the Infringing Work, including when it was created, by whom it was created, in what capacity the author created the Work, why the author created the Work, the time spent creating the Infringing Work, and the methodology used to create the Infringing Work.” • “Identify the authors of the Infringing Work and their relationship to the Defendant.” • “Identify all costs associated with creating the Infringing Works.” • “Identify the time period over which the Infringing Work was created.” • “Identify all versions of the Infringing Work, including when they were created.” • “Identify any and all works relied upon in creating the Infringing Work.”

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The plaintiff can also attempt to ascertain the extent of the infringement through interrogatories (and also through depositions and document requests). In an interrogatory, you can request information as to the variety of infringement and the number of infringements. There are a variety of ways to request this information and much will depend on the type of work, the type of products, and the information that you already have. Some examples include: • “Describe in detail any and all ways in which the Work has been used by Defendant.” • “Identify any and all of Defendant’s products that were created by using or referring to the Work.” • “Identify any and all versions of the Infringing Work.” • “Identify all products that use the Snowfall design.” • “Identify the number of copies that have been made of the Infringing Work.” • “Identify the number of items from the Snowfall Product Line sold, offered for sale, or distributed.” • “Identify all persons or entities who purchased the Infringing Work.” e. Damages The plaintiff might have the option of statutory damages (if the copyrighted work was registered before infringement occurred), for which there is not much discovery that will be necessary outside of the number of plaintiff’s works which were infringed. The plaintiff will also have the option of actual damages, including both damages to the plaintiff and the defendant’s profits attributable to the infringement. As to damages caused to the plaintiff, he has the burden to prove up any such damages. The defendant, in order to counter any claimed damages to plaintiff, will want to ask for information regarding the value of the copyrighted work, how much it cost to create, and what a typical license fee is. For example, the defendant may want to ask • • • •

“Identify the total costs attributable to the creation of the Work.” “Identify the total time it took to create the Work.” “Identify any and all licenses to use the Work.” “Identify any and all license negotiations to use the work.”

As for the defendant’s profits attributable to the infringement, the plaintiff has the burden to demonstrate revenue attributable to the infringement and so will want to request that particular information for the infringing work and any related revenue streams. Plaintiff might go so far as to ask • “Identify all revenue for the past __ years.”

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While this may be overbroad for a company that sells hundreds of products that are unrelated to the infringement, it would be perfectly reasonable for a single product company where any revenue would be related (or at least arguably related if add-ons or services associated with the product) to the infringement. Furthermore, if the defendant is going to try and claim that general overhead costs should be deducted from revenue, then the plaintiff might argue that general revenue should be produced and subject to collection. If it is obvious that such an interrogatory would be overbroad, it could be narrowed to the product group or section of the company, such as: • “Identify all revenue for the Least Cost Routing division for the past __ years.” • “Identify all revenue related to the Snowfall Collection for the past __ years.” The time frame during which plaintiff will request the data will vary but should cover at least the length of time the infringing work has been made and might go earlier than that. Earlier revenue data is arguably relevant to apportionment if the defendant intends to argue that the infringement did not increase revenue or that the revenue can be attributed to factors other than the infringement. The defendant, in turn, has the burden to cut that revenue down by proving costs and any apportionment to other elements. The plaintiff might ask for this information in its interrogatories but may wait for the defendant to raise it through their documents. The plaintiff might ask • “Identify any and all deductible expenses from the revenue identified above in response to Interrogatory __.” • “Identify any and all evidence of apportionment of the revenue identified above in response to Interrogatory __, if you intend to claim that anything less than 100% of the profits should be apportioned to the infringement of the Work.” f. Defenses The defendant must include all affirmative defenses in its answer to the complaint. The plaintiff, in turn, will want to ask the defendant for the bases for its defenses. Something as broad as • “Identify all evidence in support of your affirmative defenses” can work. However, the defendant may object as overbroad or as encompassing multiple subparts to the interrogatory and thus going over the limit.

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Instead, the defendant may want to request documents that evidence each defense (there is usually no limit to the number of requests for production) first and then ask particular interrogatories later for the defenses plaintiff is particularly concerned with. It will not usually be worth it to ask an interrogatory for each affirmative defense since the Federal Rules limit each party to 25 interrogatories. Fed. R. Civ. P. Rule 33(a). If you are the defendant, on the other hand, you will have the burden to prove up your defenses and will need to acquire the required information from the plaintiff. You should ideally pull the jury instructions for the various defenses and, keeping the elements in mind, ask for information needed to prove them up. You may also explore possible defenses through discovery, such as fraud, by asking for details of the copyright registration; for copyright misuse, by asking for details of license agreements; and for estoppel, by asking when the plaintiff became aware of the infringement. Most of these questions will already be asked as the defendant is seeking other information or through broad, fact-finding, general discovery requests, which are discussed next. g. General Discovery Aside from proving up specific elements, both the plaintiff and the defendant will want to do some general fact-finding discovery that is broader in scope, while still relevant, that may turn up unanticipated information. For example, both sides will usually want to ask for any communications between the parties as well as any communications between the opposing party and others regarding the cause of action. For the defendant, this can turn up evidence of an implied license, estoppel, or laches defenses, or even ownership issues, copyright misuse, or weaknesses in the plaintiff’s case. For the plaintiff, it can help refute such defenses and may turn up evidence of willful infringement or additional infringement, as well as weaknesses in the defendant’s case. Examples of such interrogatories include: • “Identify any and all communications between the parties.” • “Identify any and all communications you have had regarding the subject matter underlying the claims in this action.” h. Counterclaims As with the general claim, both the plaintiff and the defendant will want to consider all the elements of any counterclaims and draft interrogatories to either acquire evidence of those elements or refute those counterclaims.

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Practice Tip No matter how well you craft your discovery requests, you may not get the answers you are looking for. Often, you will not receive substantial answers to, in particular, your interrogatories and admissions. Often, you must rely on documents and depositions to get the whole story (or at least as much of the story that you can get).

4. Requests for Admission Rule 36 of the Federal Rules of Civil Procedure covers requests for admissions. You will also want to check the Local Rules, the case management order, and any standing orders from the court or the judge. While the Federal Rules of Civil Procedure are fairly broad as to requests for admission (Fed. R. Civ. P. Rule 36), the local rules may limit the number allowed. (i.e., District of Maryland, L.R. 104 limiting to thirty). Unlike interrogatories and requests for production of documents, requests for admissions (often referred to as RFAs) are not typically used to acquire information. Instead, they are used to pin the other side down to a position and to establish which facts are undisputed that you do not necessarily need to prove up. A request for admission can request the opposing party admit the truth of any facts, the application of law to facts, opinions about either facts or the application of the law to facts, or the genuineness of a document. Rule 36(a)(1). If requesting an admission as to the genuineness of a document, a copy of the document must be attached or otherwise made available. As with all written discovery, you will want to include a definitions section at the beginning to define the terms that you are using within the requests for admission. In requests for admission, in particular, you may wish to use narrower definitions or avoid overbroad definitions generally because the other side may attempt to avoid admitting a request simply by pointing to an overbroad definition. Instead of drafting one request for admission for the “Snowfall Collection,” you may, in addition or instead, draft a request for admission for each product within that collection. Practice Tip Under the Federal Rules of Civil Procedure, there are no limitations to the number of requests for admission, so you can draft each request in a variety of ways if you are concerned that the recipient may try to avoid admitting one by claiming ambiguity or that she is unsure of a term.

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Practice Tip Many attorneys draft requests for admissions with the opposite question after the first question so that the recipient either has to respond to one or the other. For instance, “Admit that you are the author of the Infringing Work.” And “Admit that you are not the author of the Infringing Work.”

As an exemplar, a plaintiff may wish to ask: Creation • Admit that Plaintiff created the Work. • Admit that Defendant created the Infringing Work. Validity • Admit that the copyright registration for the Work is valid. • Admit that you have no reason to doubt the validity of the copyright registration for the Work. • Admit that the Work is copyrightable. • Admit that you have no reason to doubt the copyrightability of the Work. Ownership • Admit that plaintiff is the owner of the copyright in the Work. • Admit that you have no reason to doubt that Plaintiff is the owner of the copyright in the Work. Infringement • • • • •

Admit that you created a derivative work from the Work. Admit that the Infringing Work is a derivative work of the Work. Admit that you are the author of the Infringing Work. Admit that you made an electronic copy of the Work. Admit that you posted an electronic copy of the Work on your website, www.xyz.com. • Admit that you first accessed the Work in 2005. • Admit that you first made a copy of the Work in 2005. • Admit that you first distributed copies of the Work in 2005. Damages • Admit that revenue attributable to the Infringing Work is $___. (This could be narrowed to each year.)

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• Admit that profits attributable to the Infringing Work is $___. (This could be narrowed to each year.) • Admit that you would not have sold the maintenance service for the Infringing Work had you not first sold the Infringing Work. • Admit that you cannot put a specific percentage on what revenue should be apportioned to items other than the Infringing Work. Defenses • Admit that you did not have a written license to use the Work to create a derivative work. • Admit that you did not have a written license to display the Work. • Admit that you did not have a written license to make copies of the Work. • Admit that you did not have a written license to use the Work in any way. • Admit that you did not received explicit permission to use the Work in any way. On the other hand, the defendant may wish to ask: Creation • Admit that John Smith created the Work. • Admit that John Smith was an independent contractor of Plaintiff. • Admit that John Smith was not an employee of Plaintiff. Validity • Admit that the copyright registration for the Work is invalid. • Admit that certain aspects of the work are not copyrightable. • Admit that Plaintiff does not own the copyright in the idea underlying the Work. • Admit that Plaintiff cannot own the copyright in the idea underlying the Work. • Admit that Plaintiff does not own the copyright in the concept underlying the Work. • Admit that Plaintiff cannot own the copyright in the concept underlying the Work. • Admit that the concept of a split plan architectural plan is not copyrightable. • Admit that the concept of a love story of two feuding families is not copyrightable. • Admit that [ASPECT X] is not copyrightable.

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Ownership • Admit that John Smith did not assign the copyright in the Work to Plaintiff. • Admit that John Smith did not sign a work for hire agreement relating to the Work. • Admit that plaintiff is not the owner of the copyright in the Work. Infringement • Admit that the Infringing Work is not substantially similar to the Work. • Admit that the kitchen in the Infringing Work is not substantially similar to the kitchen in the Work. • Admit that the Author incorporated elements from the public domain into the Work. • Admit that the only similarities between the Infringing Work and the Work are elements that are in the public domain. Practice Tip As the defendant, you should try to get the plaintiff to admit that certain elements are either in the public domain, not copyrightable, or dissimilar.

Damages • • • •

Admit that costs of production are deductible expenses. Admit that salaries are deductible expenses. Admit that advertising expenses are deductible expenses. Admit that the most important thing in selling a home is location (in refuting that revenue from the sale of a home is 100 percent apportioned to an architectural plan). • Admit that consumers do not choose a hotel for the artwork in the bathroom (in refuting that 100 percent of revenue is apportioned to an infringing print in the bathrooms). Defenses • Admit that you knew about the alleged infringement in 20__ (over three years before for a statute of limitations defenses). • Admit that you told defendant that he could use the Work to create a derivative work. Practice Tip Do not be surprised when, after having drafted brilliant requests for admission, the other side equivocates or denies what you know they should admit.

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Unfortunately, many attorneys play that game. Remember, however, that if you later prove that they should have admitted a fact because you prove it up, you may be able to see costs and fees as a remedy for their failure to properly respond. As with other sanctions, however, many courts are reluctant to enforce them.

5. Requests for Production of Documents and Things Rule 34 of the Federal Rules of Civil Procedure covers requests for production of documents, things and ESI, and requests to permit access to land or property. You will also want to check the Local Rules and the scheduling order for specific rules such as limitations on the number of requests, and the manner in which materials are to be produced (stated as kept in the ordinary course of business or organized and labeled pursuant to each request in Rule 34(2)(E) but may be altered by the parties and stated in the scheduling order). As a general rule, there is no limit to the number of document requests you can make. But you should check your local rules for potential limits. (i.e., District of Maryland, L.R. 104 limiting to thirty). It is also a “be careful what you wish for” situation where you do not necessarily want to ask for documents you do not need because they will just bog you down as far as review costs. Practice Tip There are a couple of strategies for requesting documents. One is to ask for everything and be fairly broad in your requests. The other is to be narrow and specific to the documents that you are certain that you need. The resulting costs for these strategies can vary substantially, and your client’s budget may well play a role. A broad sweep of documents will result in more documents produced and will require more attorney review time. On the other hand, a narrow sweep may not get all of the unexpected or unanticipated information (i.e., a request for all communications regarding the Infringing Work may cost a lot to review, result in a lot of junk and one or two key items, but not requesting a broad production would not yield as many documents, would be cheaper to review, but might miss one or two key items that you could not have anticipated). In any event, if you can think of a category of documents that will return relevant documents, you should request those documents.

As with all discovery requests, you should include the definitions section at the beginning, before the requests. The definitions will include the definition of “evidencing,” “referring to,” “regarding,” “relating,” “communications,” “use,”

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and other somewhat generic terms, to be broader and encompass various terms. For example, “The term evidencing shall include referring to, regarding, relating to, describing, proving, and discussing.” The requests will follow after the definitions. The requests must “describe with reasonable particularity each item or category of items” to be inspected or produced, must specify a reasonable time, place and manner for the inspection or production, and may specify the form in which ESI is to be produced. Fed. R. Civ. P. Rule 34(b)(1). Practice Tip An easy way to start your requests is to copy and paste your interrogatories and change them into the form of a document request. If the question was worth an interrogatory, then it is worth a document request. You can change “Identify all costs associated with creation of the Work” to “Please produce any and all documents evidencing all costs associated with creation of the Work.” Then go through the resulting requests, and see how you can add to them.

Practice Tip Many attorneys will now reach agreements regarding electronically stored information such that certain key terms will be run on servers (document or e-mail) or on the hard drives of specific custodians to acquire relevant documents. Typically, such agreements are in addition to the normal requests for production of documents to which the recipient is still expected to respond by acquiring known responsive documents.

Practice Tip If documents do not exist that you expect should, be sure to ask if they ever existed and if they did, why and when they were destroyed.

Practice Tip So how do you know if you have received everything from the other side or from your client? The simple answer is that you don’t. The system only works if everyone plays by the rules, and this is a reason why there are serious consequences for not playing by the rules. Clients will often fight about production and not want to produce relevant but damaging or incriminating documents. If you know of these documents, you must not condone such activity. You must be hard-line about producing requested and relevant document—if not, not only the client, but you will also be subject to serious sanctions.

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a. Creation of the Work and Validity The defendant will want to ask the plaintiff to produce any documents related to the creation of the work, including documents evidencing when it was created, by whom it was created, why it was created, how long it took to create the work, how much it cost to create the work, the methodology used to create the work, whether the work is itself a derivative work, whether other materials were referred to in creating the work, and whether there are older or newer versions of the work. As with an interrogatory on this subject, the resulting documents can lead to the discovery of information such as lack of ownership, registration of the incorrect work, any weakness in the copyright (copied portions), and damages issues. There are various ways that you can solicit this information through document requests. You might try a broad interrogatory such as: • “Please produce any and all documents evidencing [describing/referring to/relating to] the creation of the Work, including documents evidencing [describing/referring to/relating to] when it was created, by whom it was created, in what capacity the author created the Work, why the author created the Work, the time spent creating the Work, and the methodology used to create the Work.” Or you might try more narrow, specific requests such as: • “Please produce any and all documents evidencing [describing/referring to/relating to] every author of the Work and their affiliation with Plaintiff.” • “Please produce any and all documents evidencing [describing/referring to/relating to] all costs associated with creation of the Work.” • “Please produce any and all documents evidencing [describing/referring to/relating to] any and all versions of the Work and specify the creation date for each version.” And you can (and should) get even more specific and narrow for particular documents that you can identify and know that you want. • • • • •

“Please produce every version of the Work.” “Please produce all drafts of the Work.” “Please produce all source material relied upon in the creation of the work.” “Please produce the 1999 License.” “Please produce all drafts of the 1999 License.”

You will also want to request all communications regarding those documents or issues. For instance, • “Please produce copies of all communications regarding [relating to/ discussing] the creation of the Work.”

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• “Please produce copies of all communications regarding [relating to/ discussing] the costs associated with the creation of the Work.” b. Ownership The defendant should request copies of any licenses, assignments or other transfers of the copyright, any business sales agreements that may have transferred ownership of any rights in the works (in both directions), any employment or contractor agreements involving the author, and any communications regarding any of the foregoing. For example, you might ask • “Please produce any and all documents evidencing [describing/referring to/relating to] any and all assignments, contracts, licenses or other agreements pertaining to the Work.” • “Please produce copies of any and all assignments, contracts, licenses or other agreements pertaining to the Work.” • “Please produce copies of communications regarding [relating to/discussing] any and all assignments, contracts, licenses, or other agreements pertaining to the Work.” • “Please produce copies of all communications regarding [relating to/ discussing] the ownership of the Work.” c. Infringement The plaintiff will want to ask for all copies of the copyrighted work in the defendant’s possession as well as any documents evidencing when the defendant first acquired/heard/saw the copyrighted work or a copy of it. You might request • “Please produce all copies of the Work that are in your possession.” • “Please produce all documents evidencing [describing/referring to/ relating to] when and how you accessed the Work, including documents evidencing when you first saw the Work, and when you first acquired a copy of the Work.” • “Please produce copies of communications regarding [relating to/discussing] when and how you accessed the Work, including documents evidencing when you first saw the Work and when you first acquired a copy of the Work.” The plaintiff will also want to ask about the creation of the infringing work(s) and ask for copies of the infringing work, any other versions of the infringing work, any drafts of the infringing work, and any other works that were created using either the copyrighted work or the infringing work.

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Such documents will aid with proving infringement and how the copyrighted work was used. You might ask • “Please produce all documents evidencing [describing/referring to/ relating to] the creation of the Infringing Work, including when it was created, by whom it was created, in what capacity the author created the Infringing Work, why the author created the Infringing Work, the time spent creating the Infringing Work, and the methodology used to create the Infringing Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] the authors of the Infringing Work and their relationship to the Defendant.” • “Please produce all documents evidencing [describing/referring to/ relating to] all costs associated with creating the Infringing Works.” • “Please produce all documents evidencing [describing/referring to/relating to] the time period over which the Infringing Work was created.” • “Please produce all documents evidencing [describing/referring to/ relating to] all versions of the Infringing Work, including when they were created.” • “Please produce copies of all versions of the Infringing Work.” • “Please produce all documents evidencing [describing/referring to/relating to] any and all works relied upon in creating the Infringing Work.” • “Please produce copies of all works relied upon in creating the Infringing Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] any and all works created using Work.” • “Please produce copies of all works created using Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] any and all ways in which the Work has been used by the Defendant.” • “Please produce all documents evidencing [describing/referring to/ relating to] any and all of the Defendant’s products that were created by using or referring to the Work.” • “Please produce copies of any and all of the Defendant’s products that were created by using or referring to the Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] all products that use the Snowfall design.” • “Please produce all documents evidencing [describing/referring to/ relating to] the number of copies that have been made of the Infringing Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] the number of items from the Snowfall Product Line sold, offered for sale, or distributed.”


d. Damages The plaintiff will have the option of actual damages, including both damages to the plaintiff and the defendant’s profits attributable to the infringement. As to damages caused to the plaintiff, he has the burden to prove up any such damages. The defendant, in order to counter any claimed damages to plaintiff, will want to ask for documents regarding the value of the copyrighted work, how much it cost to create, and what a typical license fee is. For example, the defendant may want to ask • “Please produce all documents evidencing [describing/referring to/ relating to] the total costs attributable to the creation of the Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] the total time it took to create the Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] any and all licenses to use the Work.” • “Please produce copies of any and all licenses to use the Work.” • “Please produce all documents evidencing [describing/referring to/ relating to] any and all license negotiations to use the work.” The defendant will also want to request communications regarding the foregoing issues. As for the defendant’s profits attributable to the infringement, the plaintiff has the burden to demonstrate revenue attributable to the infringement and so will want to request documents that evidence that particular information for the infringing work and any related revenue streams. As with the interrogatories, a variety of different requests will be appropriate depending on the circumstances. • “Please produce all documents evidencing [describing/referring to/ relating to] all revenue for the past __ years.” • “Please produce all documents evidencing [describing/referring to/ relating to] all revenue for the Least Cost Routing division for the past __ years.” • “Please produce all documents evidencing [describing/referring to/ relating to] all revenue related to the Snowfall Collection for the past __ years.” Remember that the defendant, in turn, has the burden to cut that revenue down by proving costs and any apportionment to other elements. The plaintiff might ask for these documents specifically or might wait for the defendant to raise it through his documents. The plaintiff might ask • “Please produce all documents evidencing [describing/referring to/ relating to] any and all deductible expenses from the revenue identified above in response to Interrogatory __.”

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• “Please produce all documents evidencing [describing/referring to/ relating to] any and all evidence of apportionment of the revenue identified above in response to Interrogatory __, if you intend to claim that anything less than 100 percent of the profits should be apportioned to the infringement of the Work.” The defendant has the burden to prove costs and any apportionment and must produce such documents even without the plaintiff requesting them pursuant to Rule 26. e. Defenses The plaintiff can ask the defendant for all documents evidencing or proving its defenses. It is best to be specific and ask for document supporting each specific defense. • “Please produce all documents upon which you intend to rely [evidencing] to support your affirmative defense of fraud on the Copyright Office.” • “Please produce all documents upon which you intend to rely [evidencing] to support your affirmative defense of implied license.” The defendant, in turn, will want to request documents evidencing its defenses. As with interrogatories and requests for admissions, when drafting the requests, the defendant should keep the elements (ideally from the jury instructions) for the various defenses in mind. f. General Discovery Aside from proving up specific elements, both the plaintiff and the defendant will want to do some general fact-finding discovery that is broader in scope, while still relevant, that may turn up unanticipated information. By asking for communications regarding every issue, this will often turn up additional information (although it can become burdensome to review extensive communications). In addition, both sides will usually want to ask for any communications between the parties as well as any communications between the opposing party and others regarding the cause of action. For example, • “Please produce copies of any and all communications between the parties.” • “Please produce copies of any and all communications you have had regarding the subject matter underlying the claims in this action.”

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g. Counterclaims As with the general claim, both the plaintiff and the defendant will want to consider all the elements of any counterclaims and draft requests to either prove or refute those counterclaims.

C. Confidentiality Agreements/Protective Orders Before exchanging information and documents, the parties may want to enter into a protective order or a confidentiality agreement. Some courts have standing orders or local rules that they will not enter protective orders and instead leave it to the parties to enter their own confidentiality agreement. Make sure to check the local rules and the scheduling order/case management order for your case. Once a protective order is entered, you should keep it on hand because you will refer to it regularly before producing documents to ensure that before production, documents have been properly marked. In addition, before documents are used in motions or in depositions, if they have been marked as confidential, there will be hoops to jump through, as laid out in the protective order and potentially the local rules. A sample agreement/order is included in the Appendix. As you will see, protective orders or confidentiality agreements often will have a couple of categories of documents. One of the categories will be “confidential” documents and the other potential category will be “highly confidential—attorneys’ eyes only.” The order/agreement will lay out the types of documents that fall within each category, how each category should be labeled, who can see each category of documents, and generally how they should be treated. Other important clauses to include in the agreement, termed “claw back provisions,” provide for how inadvertently produced privileged documents or mislabeled documents (i.e., not marked attorneys’ eyes only inadvertently) should be treated, the amount of time the party has to request return of an inadvertently produced privileged document, and how disputes will be handled.

D. Responding to Written Discovery If the materials or information sought is relevant to the claims or defenses, meaning that it is likely to lead to the discovery of admissible evidence, then the other side has a reasonable basis to request the materials or information, and you should respond. Fed. R. Civ. P. Rule 26(b). There are, of course, exceptions and you are not expected to produce materials covered by attorney-client privilege or the attorney work product doctrine. However, if you are withholding materials or information for privilege reasons, you must explicitly state that reason and produce a privilege log

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that explains what materials have been withheld. Fed. R. Civ. P. 26(b)(5). You can also object to discovery requests for a variety of other reasons, including that that production would be burdensome, goes beyond relevant requests (overbroad), or is unreasonably duplicative or cumulative. Fed. R. Civ. P. Rule 26(b)(2)(C). Furthermore, when it comes to ESI, a party may refuse to produce the materials if he is “not reasonably accessible because of undue burden or expense.” Fed. R. Civ. P. Rule 26(b)(2)(B). Similarly, with regard to ESI, a party will not be sanctioned for failing to produce materials that were deleted as a result of “the routine, good-faith operation of an electronic information system.” Fed. R. Civ. P. Rule 37(e). However, that exception does not apply once a party is in anticipation of litigation or destroys documents in bad faith, which would be spoliation and highly sanctionable. (See 6.I.G above regarding litigation hold requirements). You are required to supplement or correct the responses in a timely manner if you learn that they are incorrect or discover new information. Fed. R. Civ. P. Rule 26(e). All responses and objections must be signed by an attorney or by the individual responding to the requests to certify that they are complete and correct and consistent with the rules. If it is not signed, it can be stricken by the court. Fed. R. Civ. P. Rule 26(g). Practice Tip Have your client sign responses to interrogatories and admissions. The responses are based on what information your client has provided you, and they should be the one to certify its veracity and completeness. As to objections to document requests or to objections on their own (without any substantive responses), these are appropriate for an attorney to sign as they are a legal argument and not factual.

1. Interrogatories Rule 33 of the Federal Rules of Civil Procedure covers interrogatories and responding to them. Generally, you have thirty days from the date of service to serve objections and responses to any interrogatories. The objections must be stated “with specificity,” and each interrogatory must be answered separately. Remember that there is a three-day mailing rule so that you receive an additional three days on top of any deadlines. Fed. R. Civ. P. Rule 6(d). The Federal Rules provide that service by electronic means still garners the threeday mailing extension. Fed. R. Civ. P. Rules 6(d) and 5(b)(2)(E). However, check your local rules and CM/ECF rules as to whether the three-day mailing rule applies to electronically served materials or electronically filed documents because some jurisdictions have changed this.


Practice Tip Check your local rules and the pretrial order for specific rules that apply to discovery in your case and find samples for the jurisdiction in which you are litigating. Under the Federal Rules of Civil Procedure, you have thirty days in which to respond to interrogatories. However, in the Eastern District of Virginia, you are required to object to interrogatories within 15 days and respond within 30 days. If you do not object within the 15 days pursuant to the local rule, you have arguable waived all objections to the interrogatory.

Many attorneys include a section at the beginning of responses called “General Objections.” These are listed before the objections and responses to specific interrogatories and are meant to serve as a catch-all. These are typical and generally boilerplate and you can find a sample in the Appendix and certainly on your firm’s document management system. Practice Tip However, because general objections are boilerplate and generic, several judges and districts (e.g., the E.D. Va) discourage the use of these objections and will strike them if the recipient moves to have them stricken. Again, check the local rules, check with local practitioners, and check samples from that district or judge.

After the general objections section, you will list each interrogatory along with any specific objections and a specific response. A sample is included the Appendix. Typical specific objections will include burdensome (if it asks for too much data); overbroad (goes beyond relevant information); unreasonably duplicative or cumulative (asked multiple times in different ways); vague and/or ambiguous (if there are specific terms that are not defined and/or can be interpreted various ways); compound (multiple subparts); or calling for a legal conclusion (by asking a party to discuss whether the works are substantially similar or copyrightable, for instance). If an interrogatory is truly compound—that is, it has “discrete subparts”—you may state that the interrogatory itself counts as several interrogatories, and since interrogatories are limited in number, you might argue that the party has exceeded the number of interrogatories permitted. Fed. R. Civ. P. Rule 33(a)(1). When you object, you will often still provide an answer, often after a phrase like “Notwithstanding those objections, . . . .” For instance in response to the interrogatory: • INTERROGATORY NO. 8: “Identify all products that use the Snowfall design.”

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you might object and respond: • RESPONSE: “Defendant objects that the interrogatory is vague and ambiguous as to the term “use” and “all products” and is overbroad and burdensome. Notwithstanding that objection, Defendant responds that the “Snowfall Line” includes a cup, saucer, bowl, plate, and serving platter.” If the answer to an interrogatory can be determined through review of documents (or ESI), and the burden would be substantially the same for either party, you are allowed to respond that you will produce documents (or ESI) in response to the interrogatory (instead of providing a written response) pursuant to Rule 33(d) of the Federal Rules of Civil Procedure. For instance, in response to the interrogatory: • INTERROGATORY NO. 10: “Identify the total costs attributable to the creation of the Work,” you might object and respond: • RESPONSE: “Plaintiff objects that the interrogatory is vague and ambiguous as to the term “costs.” Notwithstanding that objection, Plaintiff responds that the work was created over a 4-month period by the equivalent of 12 full-time employees. Plaintiff pays those employees a salary; must cover health care and other overhead expenses; provides the offices; licenses various software, including MATLAB ; and provides computer hardware, as well as other equipment that are all necessary for creation of the work. Plaintiff will produce documents, pursuant to Rule 33(d), in response to this interrogatory.”

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If you choose to “33(d),” you must identify with specificity the documents that are responsive. Frequently, the response will simply say that documents will be produced (as in the example above) since production of documents is often being done concurrently with responding to discovery. Eventually, however, you must supplement (or request that the other side supplement) that response to identify specific documents, usually by Bates range. If the documents are not specified, the response is technically nonresponsive, and a motion to compel will likely be in order. For instance, you might supplement: • SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 10: “Plaintiff incorporates its previous objection and response and supplements its response to Interrogatory No. 10 to identify the following responsive documents by Bates range PLT0012345–PLT0012456.”


As discussed above, generally all responses must be signed by either the party or the attorney verifying that the response (for interrogatories, that would preferably be the client since he is providing the responsive information). Fed. R. Civ. P. Rule 26(g). Recall also that you are required to supplement the responses to correct or update the response as the case moves forward if any additional information comes available or the response changes in any way. Fed. R. Civ. P. Rule 26(e). 2. Requests for Admission Rule 36 of the Federal Rules of Civil Procedure covers requests for admissions and responding to them. Rule 36(a)(3) provides thirty days to respond and object; however, you should check the local rules, any standing orders, and scheduling order for different time lines. Also keep track of how the requests were served (if by hand, you do not get the extra three days that you get for other types of service), and check your local rule as to the three-day rule as to whether you receive the additional three days for electronic service (the Federal Rules give you the extra three days, but some jurisdictions or scheduling orders will limit this). If you fail to meet the deadline, the request is considered admitted. Fed. R. Civ. P. Rule 36(a)(3). In response to a request for admissions, you must either admit or specifically deny or state in detail why you cannot admit or deny. A denial must fairly respond to the substance and must explain if the answer is qualified or is only responding in part. Fed. R. Civ. P. Rule 36(a)(4). As with interrogatories, many attorneys include a section at the beginning of responses called “General Objections.” These are often boilerplate, and you can find a sample in the Appendix and certainly on your firm’s document management system. You may also object to the request, as long as you specifically state the grounds. Fed. R. Civ. P. Rule 36(a)(5). For example, if a request asked for an admission of law, that would be an appropriate objection because requests for admission can only request the opposing party admit the truth of any facts, the application of law to facts, opinions about either facts or the application of the law to facts, or the genuineness of a document. Fed. R. Civ. P. Rule 36(a)(1). Furthermore, you would appropriately object if the request seeks an admission as to the genuineness of a document, but a copy of the document is not attached or otherwise made available. Fed. R. Civ. P. Rule 36(a)(2). In order to avoid admitting a bad fact, attorneys often object on technicalities in a request for admission. If you have a problem with the phrasing of a request, however, you really should simply respond with the appropriate phrasing because a denial “must fairly respond to the substance” and must explain if the answer is qualified or is only responding in part. Fed. R. Civ. P. Rule 36(a)(4). For example, in response to • “Admit that the Infringing work is a derivative work of the Copyrighted work,”

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you might respond, depending on the circumstances: • “Defendant objects that this admission requires a legal conclusion and interpretation of the term “derivative.” Notwithstanding that objection, Defendant admits that he referred to the Copyrighted work when creating the Infringing work and that he replicated certain discrete elements in the Copyrighted work in the Infringing work.” • “Denied.” (if you can truly deny that the work is not a derivative). 3. Requests for Production of Things and/or Documents Rule 34 of the Federal Rules of Civil Procedure covers requests for production and responding to them. As with other forms of discovery, the Federal Rules provides thirty days to provide a written response and objections to requests for production of documents. Fed. R. Civ. P. Rule 36(b)(2). Typically, documents will be produced after this date, and the parties will agree upon the time frame for production. However, local rules, any standing orders, and scheduling orders may alter this. As with interrogatories, many attorneys include “General Objections” at the beginning of the document. These are typical and generally boilerplate, and you can find a sample in the Appendix and certainly on your firm’s document management system. Following the general objections, objections to specific requests must specify the part of the request objected to and indicate what will be produced or what may be inspected. Fed. R. Civ. P. Rule 34(b)(2). If you simply indicate that you object to the request, it is presumed that you are not producing any documents. Thus, you will usually object and then follow it with a “Notwithstanding that objection, defendant will produce any responsive documents in its possession, custody or control.” Typical objections will include burdensome (if it asks for too many documents or asks for them in a difficult format), overbroad (goes beyond relevant information), unreasonably duplicative or cumulative (asked multiple times in different ways and documents that are responsive will already be produced), or vague and/or ambiguous (if there are specific terms that are not defined and/or can be interpreted various ways). Recall also that requests must “describe with reasonable particularity each item or category of items” to be inspected or produced; must specify a reasonable time, place, and manner for the inspection or production; and may specify the form in which ESI is to be produced. Fed. R. Civ. P. Rule 34(b)(1). You might object that a request has failed to describe a category of documents with reasonable particularity, if for instance, the requests simply seeks something as broad as “all documents relating to the cause of action.” You might also object to the form that the opposing party, requesting you produce the ESI, if it is particularly burdensome, difficult, or costly. Pursuant to the rules, you are supposed to produce documents as they are kept in the ordinary course of business or


organized and labeled pursuant to each request in Rule 34(b)(2)(E), but this may be altered by the parties and stated in the scheduling order. In this day and age of electronically stored information, we have a much greater burden to work with clients to produce responsive documents. Electronic discovery is a new concept for many attorneys. However, searching and producing electronic information will likely be required in many cases. It is important for both attorneys and their staff to be conscious of types of electronic documents, the software the firm has that is used for review, and whether vendors are required. You should have had a tutorial from your client or its IT personnel, on how it stores the ESI, prior to the initial scheduling conference; at this point, you will need to revisit where responsive documents are stored. You will then need to determine how to search those locations to ensure you find the responsive documents. Practice Tip Some attorneys are using search terms to find responsive documents such that they run search terms on the servers or hard drives based on the request, which they expect will return all responsive documents. Case law on this issue and related electronically stored information issues is still being created and is not covered in this text. You can take a look at the Sedona Conference Institute notes on ESI for more information, available at http://www.thesedonaconference.org/. The Sedona Conference also hosts regular ESI and eDiscovery CLEs that are thorough and useful. The best and safest route is to reach an agreement with the other side on what terms you intend to use to search so that you have an agreement up front and avoid any future disputes.

Practice Tip Many attorneys are also reaching agreements regarding ESI such that certain key terms will be run on servers (document or e-mail) or on the hard drives of specific custodians to acquire relevant documents. Typically, such agreements are separate and distinct from the normal requests for production of documents to which the recipient is still expected to respond by acquiring known responsive documents. Being open and frank with opposing counsel on the searches being run and for what purpose they are being run is encouraged and vital for avoiding disputes.

Once documents are received from the client, they will have to be reviewed for privilege and responsiveness. Organizing the documents and putting them

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into an electronically searchable format (using optical character recognition (OCR) or leaving them in native searchable format) is often useful if there are a large number of documents. Once the documents have been reviewed and flagged for privilege, those privileged materials will then need to be redacted or removed from production. Following that, the documents will be produced. Practice Tip Typically, if there is a large volume of documents (many cases now require review and production of millions of pages), using an outside document vendor is useful. There are numerous vendors competing for your business, so it is worth shopping around, getting tutorials of their different software applications, and negotiating on price.

Practice Tip With large productions, costs can become excessive quickly. It is worth becoming familiar with ways to run electronic searches to remove privileged documents and to explore different software to facilitate the process and cut costs.

Practice Tip When privilege culling is done, it will pay off to be organized and have all redacted documents kept in one central location so that creating a privilege log is simple.

E. Subpoenas Federal Rule of Civil Procedure Rule 45 covers subpoenas. You should also check the local rules for district where the third party to whom you are sending the subpoena is located, for any particular rules. 1. Issuing a Subpoena Most courts will have the fillable subpoena form (AO88) available on their website for download. Starting at the top of the page, you identify the district court from which the subpoena will issue. This is the district where either


the hearing or trial will occur, where the deposition will occur, and from where production of documents will be made. Fed. R. Civ. P. Rule 45(a)(2). Note that the places for testimony cannot require the party travel more than one hundred miles. Fed. R. Civ. P. Rule 45(c)(3). As a rule of thumb, the district should be the court that has jurisdiction over the party upon whom you are serving the subpoena and can force them to comply with the subpoena, which will be where the party is located. So even if your case is pending in the Southern District of New York, if the third party is in Los Angeles, your subpoena will state Central District of California at the top. You then identify the case by its caption and case number. Next, you indicate to whom the subpoena is directed. This can be an individual or a corporation. You then have the option of checking one (or more) of several boxes— (1) subpoena to give court testimony, (2) subpoena to give deposition testimony, (3) subpoena to produce documents, and (4) subpoena to permit inspection of a place. During discovery in a copyright case you will usually be issuing the subpoena for either (3) deposition or (4) production of documents. If the deponent is an individual, check the box for deposition. If the subpoena is for the deposition of a corporation, it will be a corporate representative deposition pursuant to Fed. R. Civ. P. Rule 30(b)(6). In the space after the box which can be checked, if it is for a corporation, you can state “See attached Schedule A” or something along those lines; you then attach Schedule A in which you identify the topics about which you will question the corporate representative pursuant to Rule 30(b)(6). The “Place of Deposition” must be within one hundred miles from where the person resides, is employed, or regularly transacts business in person. Fed. R. Civ. P. Rule 45(c)(3)(stating that a subpoena must be quashed if it requires travel of more than one hundred miles). It will typically be in the district where the third party is located and the district from where the subpoena is issuing. The “Date and Time” must be a “reasonable” time after service of the subpoena. Fed. R. Civ. P. Rule 45(c)(3) (stating that a subpoena must be quashed if it fails to allow a reasonable time to comply). Some local rules provide a specific date range. Fourteen days is usually sufficient notice. For a deposition, you must also “State the Method for Recording the Testimony” (i.e., court reporter or videographer or both). Fed. R. Civ. P. Rule 45(a)(1)(B). For production of documents, you check the box and then can include a list in the space provided or say “See Schedule B” or something along those lines and attach a Schedule listing the documents or materials to be produced. The “Place” for production should also be where the party is located under the Rule 45. Fed. R. Civ. P. Rule 45(e) (providing contempt if a recipient fails to obey, except where the subpoena requires the party to “attend or produce at a place outside the limits of Rule 45(c)(3)(A)(ii)” which in turn is the one hundred mile limit).

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Practice Tip If you are with a large firm that has an office in the district, you can have it sent there. Otherwise, you can usually have a court reporter accept service, especially if you are also using them for the deposition. In addition, once the subpoenaed party is served and retains a lawyer, she may agree to just send the materials directly to you because in reality it makes little difference to them where they mail the documents or disk.

The “Date and Time,” again, must be a “Reasonable” time after service of the subpoena. Fed. R. Civ. P. Rule 45(c)(3). One subpoena can be sent for both a deposition and production of documents, and they can include different places and different dates and times for compliance. You will request production of the documents and materials before the deposition so that you can review them before deposing the person. Just remember that the earlier date still allows a “Reasonable” time within which to comply. Moving to the bottom of the subpoena form, the issuing officer can be the attorney for the party that is issuing the subpoena. It does not have to go through the court but can simply be signed by an attorney of record and then served upon the party. Fed. R. Civ. P. Rule 45(a)(3). Service of a subpoena is done pursuant to Rule 45(b) and a subpoena, much like service of a complaint, must be served by someone who is at least 18 years old and not a party. Fed. R. Civ. P. Rule 45(b)(1). Note, also, that if the subpoena is for production of documents or things, then a notice must be served on each other party to the case before the subpoena is served. Id. Practice Tip Service in a foreign country is difficult. Getting documents or testimony from a foreign entity is MUCH easier if it is done voluntarily by that party. If you must subpoena them, take a look at 28 U.S.C. § 1783. You typically will need to go through the Hague Convention and issue Letters Rogatory. Information on this point can be found at the U.S. Department of State website, which can also be found by first going to www.travel.state.gov. You can then link to the Law & Policy page and then Information for Americans Abroad, which then has links to country specific information and information regarding service of process abroad. The Letters Rogatory process can take several months, so if you are in a fast paced jurisdiction (such as EDVA), you need to move quickly and start the process as soon as possible.

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2. Responding to a Subpoena Rule 45 subparts (c) and (d) deal with objecting and responding to subpoenas. Generally, they are similar to discovery in that you can object to the subpoenas, although it must be done the sooner of 14 days from service or before compliance is required. Fed. R. Civ. P. Rule 45(c)(2)(B). The party issuing the subpoena can then move to compel. Like discovery, you can also object as to attorney-client privilege or work product protection. Fed. R. Civ. P. Rule 45(d)(2)(A). In addition, you can move to quash a subpoena if it does not provide a reasonable time in which to comply, requires over one hundred miles of travel, or otherwise subjects the party to undue burden. Fed. R. Civ. P. Rule 45(c)(3). When responding to a request for production of documents, Rule 45(d)(1) provides the form in which they should be produced. Typically, you can negotiate with the party issuing the subpoena if a particular method of production would be unduly burdensome. If the party insists, you can also move to quash and indicate that you offered to produce the materials in a more reasonable way and let the court decide who is being more reasonable.

F. Depositions Rules 27–32 of the Federal Rules of Civil Procedure are concerned with depositions. This section will briefly cover depositions and will provide some tips for copyright cases. However, this text is not the place to give a thorough primer on depositions; there are already many books and articles written exclusively on depositions, style, and preparation of witnesses. The National Institute for Trial Advocacy (NITA) has an excellent one called “The Effective Deposition Techniques and Strategies that Work,” by Malone and Hoffman. 1. Who to Depose The first thing to determine is who you want to depose. As a start, you will usually want to depose the parties and experts. The Rule 26 disclosures should be pulled because the people identified therein will probably also need to be deposed. In addition, the individuals identified in interrogatory responses and/or document production should be noted and considered. Preparing a list of all of those individuals and their roles is valuable, particularly when there are numerous individuals because the number of depositions is usually limited to ten depositions. Fed. R. Civ. P. Rule 30(a)(2).

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Practice Tip Check the local rules and scheduling order as to the number of depositions permitted, the length of time allowed for each deposition, whether expert depositions are counted separately, whether third-party depositions and party depositions are counted separately, and for any other particular rules.

2. When to Take the Depositions Once the depositions are identified, the order of the depositions must be considered and can have strategic importance. Think through what you will get from each witness, and consider whether one witness’ testimony builds off another’s or whether some testimony will depend on the testimony from a different witness. For instance, you often will want to take a corporate representative deposition (Fed. R. Civ. P. Rule 30(b)(6)) before other depositions because it will allow discovery of broad facts and other potential deponents. Also, you can depose an expert who is expected to testify at trial only after they have submitted their expert report. Fed. R. Civ. P. Rule 26(b)(4).

Practice Tip Note that if you need to depose someone who is outside the United States, as discussed above regarding subpoenas, it is MUCH easier if it is done voluntarily by that party. If you must subpoena him, take a look at 28 U.S.C. § 1783, Fed. R. Civ. P. Rule 28(b), and the Practice Tip above regarding subpoenas to foreign entities. Importantly, you should get started on foreign entity discovery early because the process can be very time consuming because there are foreign lawyers and laws to consult.

Practice Tip The cost for deposing an expert witness is placed on the party requesting the testimony under the Rules. Fed. R. Civ. P. Rule 26(b)(4)(C). In practicality, most parties pay their own experts’ fees for responding to discovery and for deposition since both sides have their own expert. Nonetheless, this might be a good option if, for instance, you are the only party with a witness.


3. Noticing the Deposition Before taking a deposition, you must give reasonable written notice to every other party. When you notice a deposition, you must state the date, time, location, and method of recordation, and you must provide the notice. Fed. R. Civ. P. Rule 30(b). If the deponent is a party, an expert, or someone over which a party has control (employee or independent contractor), you can just send notice to that party’s counsel.

Practice Tip If the deponent is an employee or independent contractor, you should request that counsel notify you immediately if they do not have control over that person so you know that you must serve a subpoena. As a personal war story, I once sent a deposition notice to the opposing party’s counsel noticing a deposition for a person who I believed was an employee of that party. As it turned out, although the person was an employee when the litigation commenced, she left the company before the deposition notice was served, opposing counsel never notified me, and I did not subpoena the former employee (because I thought she was an employee). I learned all of this while sitting at the deposition with opposing counsel and the court reporter and no witness. The moral of the story is that you should confirm with opposing counsel that they will produce the deponent and if they will not, then you must subpoena that person.

Practice Tip Before noticing a deposition, coordinate with opposing counsel as to dates and locations for depositions. If opposing counsel will not work with you to schedule the deposition, then go ahead and set it, and it can always be amended later with the revised date and place.

Practice Tip When scheduling depositions, consider the location. Depositions are preferably held in a neutral location or a location favorable to the client. For instance, the deposition of a client should preferably not be taken at the opposing counsel’s office.

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4. Depositions of an Organization You have the option of taking depositions of individuals or of organizations. When noticing a corporate deposition (Fed. R. Civ. P. Rule 30(b)(6)), a list of areas of inquiry must be provided, and the corporation or organization must produce a person or multiple people to respond to the various areas of inquiry on behalf of the entity. When creating the list, think about the elements and the general areas of coverage listed in sections B.1 and B.2 above for discovery: validity, ownership, infringement, damages, defenses, and counterclaims. Practice Tip The corporate designee for a 30(b)(6) deposition does not have to be an officer or even an employee of the corporation or organization. The Rule states that “other persons who consent to testify on its behalf” may be the corporate designee. All that is required is that the designee be prepared to “testify about information known or reasonably available to the organization.”

5. Preparing to Take a Deposition There are hundreds of different ways to prepare a deposition, and every attorney has his own style. However, some common basic methods to prepare are to (1) review potentially relevant documents, (2) prepare an outline, and (3) prepare the exhibits you will use during the deposition. In preparing for a deposition, it is useful to pull, review, and use as exhibits basic documents such as the complaint, answer, any attachments to those pleadings, copies of the work and infringing work, copies of the registration, and discovery responses. Among the documents produced, search for documents relevant to the topics about which you will be questioning the witness (i.e., financial documents if you will be discussing damages) and if you are dealing with large document production, run a search of the document production for the name of the deponent to find additional useful documents. In preparing an outline, some attorneys prepare very detailed outlines while others prepare bare bones lists of topics. Different methods work for different people, and there are different theories as to which method is better. In any event, you should at minimum prepare a bare bones outline so you ensure that you do not skip any topics and that you prepare the necessary exhibits that you need for the deposition. The topics listed above in B.1 and B.2 will be a good place to start as to what you may want to discuss with a deponent. In preparing for a deposition, you should also consider the sequence of your questioning. The flow and order of the questions will play a part in the answer you get. That said, do not feel that you must stick to that outline


order—it is more important to follow the natural flow of the conversation to allow the witness to open up to you. You can always go back to points that you skipped. a. Creation of the Work The defendant will want to question the plaintiff and the author as to the creation of the work, including when it was created, by whom it was created, why it was created, how long it took to create the work, how much it cost to create the work, the methodology used to create the work, whether the work is itself a derivative work, whether other materials were referred to in creating the work, and whether there are older or newer versions of the work. b. Validity The defendant will want to question the plaintiff and the author as to the creation because you never know what they might say. For instance, you will want to ask the plaintiff (or author) about his process, how he gets his ideas, whether he looked at other works, and how he generally created the work. These will often overlap with the creation interrogatories above. Practice Tip In an architectural plan case, you may ask the author how he gets his ideas, whether he worked off another plan, if he goes to home shows, if he looks through plan books, if he tours homes to get ideas, etc. The author can either admit to looking at other plans (which almost all designers do) or he can deny it and appear disingenuous.

Practice Tip In a software case, you might ask the software engineer whether she wrote similar programs before, whether she has used similar programs, whether there was a specific program she was looking to emulate, or whether she had to include certain components because of the coding language used.

c. Ownership The defendant will want to question the plaintiff and the author as to the ownership, any licenses, assignments or other transfers of the copyright, as well as any business sales agreements that may have transferred ownership of any rights in the works, as well as any employment or contractor agreements involving the author.

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d. Infringement The plaintiff will want to question the defendant and the author of the infringing work(s) as to whether defendant copied, used, displayed, or otherwise infringed the work. While you may not expect that he will admit it, he might. The plaintiff will want to ascertain where and when the defendant first acquired/heard/saw the copyrighted work or a copy of it, whether he made any copies of the work, the number of such copies, what he did with the work, the number of infringing copies made, and any other details as to the use. The plaintiff will want to question the defendant and the author as to how they created the infringing work, what method was used, what materials were relied upon, the time frame for creation, and any costs associated with creation. The plaintiff can also try to pin the defendant or the author down on the similarities between the works by putting them in front of them and asking them to compare the works. e. Damages Both parties will want to question the opposing party, her financial designee, and damages experts regarding damages. As with written discovery requests, the parties will want to discern the extent of the infringement, the defendant’s revenue attributable to the infringement, the ways in which the defendant will attempt to decrease the revenue (costs and apportionment), the value of the work (cost for creation) and the value of the use of the work (license fees), and the plaintiff’s lost profits. In looking at a profit and loss statement, for instance, the plaintiff may want the defendant to explain each of its costs categories and what is included in each of those categories. Practice Tip If you have a damages expert, talk to him about what information he needs and even ask him to suggest topics of inquiry as to the financial information. Have him help you draft your questions for the corporate financial representative as well as the other side’s damages expert.

f. Defenses and Counterclaims The plaintiff will want to ask about the bases for any defenses and counterclaims the defendant has asserted. Practice Tip For example, if the defendant alleges that there was fraud on the copyright office as a defense, ask him about the basis for that claim. Similarly, if he

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claims independent creation, ask him all about his creation, how he came up with the idea, whether he had ever seen plaintiff’s work, when he created the work, whether anyone else helped him with it, whether that person had seen plaintiff’s work, any early drafts of the work, and the source material he used to create the work.

If the defendant lacks any basis, the defenses may be ripe for a motion for summary judgment or a voluntary withdrawal by defendant. The defendant, in turn, will want to keep the elements for each defense or counterclaim in mind and ask for the information needed to prove them up. After an outline is prepared, you will want to consider every document that you will want to use as an exhibit during the deposition. Once you have them, make multiple copies of each document for the deposition: one for the court reporter (which the deponent will use during the deposition), one for opposing counsel, and one for the attorney taking the deposition. Practice Tip Creating a deposition binder (either hard or soft copy) after depositions is also helpful. You can ask an assistant or paralegal to prepare the binder with the deposition transcripts and the exhibits used in the deposition in one binder. This will be key in preparing for future depositions as you are determining what further information you may need to acquire from a witness and how different witnesses portray the same situation. In addition, deposition binders are valuable later when (or if) the case goes to trial.

6. Taking a Deposition As with preparing for a deposition, there are hundreds of different ways to take a deposition, and every attorney has his own style. This section will not cover deposition style in detail, as there are numerous books and articles on this topic, but will just point out some key patterns, styles, and tips. NITA has an excellent book called The Effective Deposition Techniques and Strategies that Work, by Malone and Hoffman, and Nolo’s Deposition Handbook, by Bergman and Moore, is another common one on attorneys’ bookshelves. As an initial matter, before your first deposition, you should try and attend a few taken by different attorneys so that you get a sense of the different styles, what works, what doesn’t work, the type of objections made, the frequency of objections, the initial instructions that are given, and generally how the whole process works.

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Practice Tip Aside from watching depositions live, you might ask if anyone has a videotaped deposition that you can watch or a transcript from a deposition that you can read. A deposition from a copyright case will be particularly helpful.

One of the only consistent aspects of a deposition is the very beginning when the court reporter places the deponent under oath. After that, the deposition depends on the attorney and the witness. Many attorneys start by asking the witness to state her name and address for the record and then give some basic instructions. An example of the first few statements in a deposition might be: ATTORNEY: Good morning, my name is Mr. Smith and I represent the plaintiff ABC Company. WITNESS: Good morning. ATTORNEY: Can you please state your name and address for the record? WITNESS: Bob Jones, 123 5th St., Jonesville, State. ATTORNEY: Mr. Jones, have you previously had your deposition taken? WITNESS: Yes. ATTORNEY: How many times? WITNESS: Once. ATTORNEY: When? WITNESS: In 1998. ATTORNEY: What was that deposition in relation to? WITNESS: A lawsuit where my company was sued for employment discrimination. . . . [attorney may ask more detailed questions about previous depositions] ATTORNEY: You probably spoke to your attorney about this, but let me go over some of the ground rules for today’s deposition. First, for the court reporter you need to provide a verbal response to my question, rather than just nodding your head, OK? WITNESS: OK. ATTORNEY: Your attorney may object to some of my questions today, but unless you are told not to answer the question, you must still provide an answer. Do you understand that? WITNESS: Yes.

200 Chapter 6 Copyright Litigation ATTORNEY: If at any time today you need to take a break, you can,; all I ask is that if there is a question pending at that time, that you answer the question first? Is that OK? WITNESS: Yes. ATTORNEY: Are you currently on any medications that would affect your ability to answer fully and truthfully? WITNESS: No. ATTORNEY: Is there any other reason that you would be unable to answer truthfully or fully today? WITNESS: No. ATTORNEY: If that changes at any point during the deposition, will you let me know? WITNESS: Yes. ATTORNEY: Do you have any questions about this process? WITNESS: No.

This is a generic opening, and some attorneys may skip this introduction. Many attorneys, however, find this is a good way to warm up and get the niceties out of the way and to ensure the witness cannot later claim there was a problem with the testimony. Practice Tip Asking whether someone is on medication that may affect his testimony can be uncomfortable, but is a good idea. I was once involved in a case where this question was not asked of the witness, and it later turned out he had an illness that required he take medication that he later claimed affected the part of his testimony where he made some damaging remarks for his case.

While every deposition can move differently, a common format followed is after that after the general introduction above, the attorney will proceed to the deponent’s educational background and work history. The deposition then moves onto his current position and then his relationship to the parties, and finally to questions about the case. Some attorneys, however, will avoid all the preliminary matters and jump right into the questions about the case. As long as you get the information that you need, it all comes down to different styles. In a 30(b)(6) deposition, there will typically be one additional step where the attorney discusses the deposition notice, the topics to which the deponent

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is prepared to testify, and what the deponent did to prepare for the deposition. Here is an example of how those questions might appear in a transcript: ATTORNEY: Mr. Jones, in addition to testifying as an individual today, do you understand that you are also here to testify on behalf of ABC Corp. on certain topics? WITNESS: Yes. ATTORNEY: I will ask the court reporter to mark what I am handing her as Exhibit 1. *EXHIBIT 1 marked.* ATTORNEY: Mr. Jones, I am handing you what has been marked as Plaintiff’s Exhibit 1. Would you please look through this and tell me if you have seen this before? WITNESS: Yes, I have seen this document before. ATTORNEY: Do you understand that you are here today to testify as to certain topics on that list? WITNESS: Yes. ATTORNEY: We have previously been told by your counsel that you are here to testify as to topics 7, 14, 15, 18, 19, 26, 27, 34, 35, and 36. I have taken the liberty of circling those in Exhibit 1. Please look those over. WITNESS: OK. ATTORNEY: Did I circle the correct topics? WITNESS: Yes. ATTORNEY: Are you prepared to testify as to all of those topics today? WITNESS: Yes. ATTORNEY: Are there any additional topics on which you will be responding on behalf of Defendant XYZ Company? WITNESS: No. ATTORNEY: What did you do to prepare to be able to respond to these topics? WITNESS: I reviewed some papers and spoke to some colleagues. . . . The attorney should now go into detailed questioning on what documents were reviewed and which colleagues were spoken to and the substance of each of the conversations.

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As far as demeanor, there are various ways that you can go about a deposition and again, it all depends on personal style. Generally, attorneys will be cordial and friendly with the witness. Nonetheless, there are some attorneys that will be more aggressive because they find that style more effective for them or for a particular witness. As for questioning style, it has generally been my experience that a conversational style elicits better responses from the witness because he is more comfortable, less rigid, more forthcoming, and will want to explain his responses as in a conversation. Along those lines, sticking too close to your notes or outline can detract from the conversation, as can watching the transcript on the screen (as with a program like LiveNote ). Something that seasoned attorneys often point out is that young attorneys stick too close to their outline, do not really listen to what the witness is saying, instead just wait to ask the next question, and in the process fail to ask the follow-up questions that arise from a witness’ answer. What seasoned, effective attorneys do is remain flexible. They go where the witness is going and along the way may acquire information that they could not have anticipated.

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Practice Tip Feel free to take breaks and go back through your outline, check off items you have covered, and determine which areas you still need to cover. In fact, take the time to make a phone call if necessary or look through some documents. It is your deposition and you can take breaks.

Comparing the work and the infringing work is a common exercise in a deposition in a copyright infringement case. When doing this, be sure to make the testimony verbal. What that means is that instead of saying, “Both that and that are similar, aren’t they” and pointing to the items on the works, you should include descriptive detail such as, “On the left-hand side of the work and the infringing work, they both have a similar pink rose, do they not?” Similarly, if the witness says something like, “No, they are totally different; see, the slant here is different than the slant there,” you should clarify and say, “So, what you are saying is that the slant of the stem on the flower in the bottom right corner of the work is different than the slant of the stem on the flower in the bottom right corner of the infringing work?” This rule to describe exhibits verbally applies across the board, from listing the Bates number of the exhibit to describing the particular column in the profit and loss statement being discussed. If you do not, you end up with vague testimony that the witness can backtrack from and is difficult to use in any motions or at trial. When ending the deposition, there are various ways that you can leave it. If the witness was not prepared, the opposing party has failed to produce

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necessary documents, they produced documents at the last moment, or there was some other problem, you may want to leave the deposition open until a future date. You can specify that it is left open (i.e., suspended, adjourned, left open) until the opposing party complies with certain requirements, until the court rules on a particular motion, or until a specific date. Alternatively, you might say that the deposition is concluded subject to your right to recall the witness if necessary (this might be a good call if documents are still being produced, for instance). Otherwise, you could simply close the deposition and say that you have no further questions for the witness. 7. Defending a Deposition The first step in defending a deposition is preparing your witness. You want to prepare them for the situation by explaining that it is a question and answer session that is under oath, during which the opposing counsel may try to get her to say something that will hurt her case. You can tell them about the basic setup, including who will be there, what the day will be like from a schedule stand point, and then ask her some practice questions. Procedurally, there are several tips that a witness should get from you. Different attorneys say it differently, but the main concepts are the same: • • • • • • • • • • • •

Take your time in responding Listen to the question, and make sure you understand the question Give your attorney time to object Answer only the question asked “Yes” or “No” answers are ideal Do not tell your story—a deposition is not the place to ramble You are not having a conversation; it is a question and answer session Ask for any clarification or restatement if you do not understand the question Feel free to say, “I don’t know” if you do not know Do not guess Feel free to correct an answer later if you made a mistake If the other side is confused, it is not your job to be helpful and clear up his confusion (remember, only answer the question that is asked)

Substantively, you can review the topics likely to be covered and go through practice questions with the witness. By doing this, he can think about how he phrases his responses. This is not to imply in any way that the witness should not tell the truth; of course, your witness must tell the truth, and you must make that clear to him. What this means is that your witness may think about better ways to explain himself or his answers. During the deposition, your role is to protect your witness. You need to object (although they must still answer) to preserve the objection. You need

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to advise your witness not to answer when necessary to protect the attorneyclient privilege or work product doctrine, and you need to ask for breaks when you think your witness needs one. In addition to attorney-client privilege and attorney work product privileges, the typical objections during a deposition will be those that would be raised at trial as to admissibility, including: • • • • • • • • • • • • •

Hearsay Ambiguous Vague Compound Misleading or leading Calling for speculation Lacking foundation Misstates the testimony Argumentative Calls for a legal conclusion Goes beyond the scope of the topic (30(b)(6)) Goes beyond qualifications (expert) Asked and answered

Objections are to be “stated concisely and in a nonargumentative and nonsuggestive manner.” Fed. R. Civ. P. Rule 30(c)(2). What is not permitted during a deposition is a “speaking objection”—that is, an argument or discussion of what was wrong with the question, which might in turn lead the witness or suggest how she should respond. An objection is supposed to state the basis solely to preserve the objection. What many attorneys do is to state “Object to the form of the question” rather than state the precise reason each time. In some jurisdictions, such as the E.D. Tex., objections to “form” are all that are permitted. Check your local rules and talk to local counsel on this point. Practice Tip Many attorneys will use speaking objections to see if they can get away with it. Do not let them get away with it. One or two is one thing, but if it continues, remind them that speaking objections are not permitted and they will usually back off.

If the attorney taking the deposition is annoying, embarrassing, or oppressing the witness, it is your job to stand up for the witness. Depending on the severity of the behavior, you should put on the record what the attorney is doing and that you object to the behavior, and you may want to state that if it continues, you will be forced to take additional measures such as terminating the deposition or calling the judge. If the behavior continues and gets to the point where he is unreasonably annoying, embarrassing, or oppressing the

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witness, you can and should seek to terminate the deposition. Fed. R. Civ. P. Rule 30(d)(3). You can do this by calling the judge and moving to terminate on the phone; or if the judge is not available, you can terminate the deposition on your own accord, and the opposing counsel can move to reopen it. Your final duty at the end of the deposition is to either “read” or “waive” the right to read the deposition transcript. Every witness has the right to read her deposition transcript and make appropriate corrections to it. Fed. R. Civ. P. Rule 30(e). You should not waive that right; you should “read.”

G. Discovery Disputes During discovery, there are often disputes between the parties, and they sometimes lead to one or both parties filing either a motion to compel, requesting that the Court compel the opposing party to produce a document, to answer an interrogatory, or to produce a witness or a corporate designee for a particular topic, or a motion for protective order requesting protection from producing a document, from answering an interrogatory, or producing a witness or a corporate designee on a particular topic. 1. Motions to Compel Rule 37(a) of the Federal Rules of Civil Procedure generally governs motions to compel discovery. The Rule requires that you confer in good faith with opposing counsel to attempt to resolve the issue before filing the motion and include a certification that you have done so within the motion. The Rule also requires that the motion be filed where the action is pending if it is related to a party. However, if it is directed to a nonparty (i.e., third party’s failure to respond to a subpoena), it must be filed where it is to be enforced (where the discovery is located or where the deposition will be taken). Practice Tip When filing a motion to compel as to a nonparty that is outside the jurisdiction in which the case is pending, you will first have to open a miscellaneous matter with the court in that district because your motion must be affiliated with a matter before the court. Most local rules or court websites will provide direction as to how to logistically open a miscellaneous matter.

Rule 26(b) provides that parties “may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense” where relevant means that the material “appears reasonably calculated to lead to the discovery of admissible evidence.” This definition is fairly broad; however, materials can be withheld for privilege and in certain other circumstances


articulated in the rules and other arguable reasons. For example, when it comes to ESI, a party may refuse to produce the materials if they are “not reasonably accessible because of undue burden or expense.” Fed. R. Civ. P. Rule 26(b)(2)(B). Similarly, with regard to ESI, a party will not be sanctioned for failing to produce materials that were deleted as a result of “the routine, good-faith operation of an electronic information system.” Fed. R. Civ. P. Rule 37(e). However, that exception does not apply once a party is in anticipation of litigation or destroys documents in bad faith, which would be spoliation and highly sanctionable. In other situations, if the discovery sought is unreasonably cumulative or can be obtained from a less burdensome source, or the burden of producing outweighs the benefit, the court must limit the discovery requested. Fed. R. Civ. P. Rule 26(b)(2)(C). Practice Tip Remember, as with everything else in litigation, to check the local rules for specific requirements for motions to compel. Many districts require that the specific request and response be included verbatim in the motion before the argument regarding the motion (i.e., Middle District of Florida, L.R. 3.04; District of Maryland, L.R. 104.8.a) or set time limits for when it can be filed (i.e., District of Maryland, L.R. 104.8.a).

Practice Tip In preparing a motion to compel, compiling the documents produced and comparing them to what was requested will expose exactly which documents have been withheld. In addition, comparing the privilege log to redacted documents is important to determine whether to move to compel a document that has been redacted to alleged privilege or whether to request that the privilege log be supplemented.

Note that the Federal Rules provide a fee shifting provision for motions to compel. If you win a motion to compel, you can seek attorneys’ fees and costs associated with the motion. Fed. R. Civ. P. Rule 37(a)(5). However, if you lose a motion to compel, you may have to pay the other side’s fees and costs. This hopefully encourages reasonableness and negotiation and avoids unnecessary discovery disputes. 2. Protective Orders A protective order is the counter to a motion to compel and will often be included in an opposition to a motion to compel. However, it can be filed on

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its own, seeking a variety of relief, including to forbid certain discovery, place limitations on discovery, limiting those who may be present at a deposition or who may have access to discovery, sealing certain discovery materials, or otherwise limiting how certain discovery is revealed. Rule 26(c) of the Federal Rules of Civil Procedure covers protective orders and generally permits a party to seek an order from the court to protect a person from “annoyance, embarrassment, oppression, or undue burden or expense.” As with a motion to compel, the Rule requires that you confer in good faith with opposing counsel to attempt to resolve the issue before filing the motion and include a certification that you have done so within the motion. The Rule also requires that the motion be filed where the action is pending, or if it is related to a deposition, in the district where the deposition is to be taken. Also, as with a motion to compel, the Federal Rules provide a fee and cost- shifting provision pursuant to Fed. R. Civ. P. Rule 37(a)(5).

IX. Experts A. Types of Experts In copyright cases, a damages expert and a potential “technical” expert in the field are the typical types of witnesses. A damages expert is often an economist or accountant who will analyze the financial records produced by the parties and calculate revenue, deductible costs, and profits. The damages expert will sometimes also be able to opine on the allocation of the profits to the copyright infringement. In an architectural plan copyright infringement case, you might use an expert who is an economist that also has experience in the real estate market who might explain that the sale of a home is based on numerous factors, including location, land, building quality, interior style, marketing, as well as other factors, aside from the architectural plan. An expert for the defendant in that circumstance would try to apportion the profits to various factors, perhaps based on their expertise, or articles in the industry, or economic principles to decrease the profits attributable to the infringing architectural plan. Any opinion will obviously hold more water if the expert actually has experience in the field of the work—be it artwork, architecture, software, books, films, or another field. The damages expert may also opine on the actual damages to the plaintiff, for example, by calculating lost profits, or damage to the value of the work or to the plaintiff’s reputation. Of course, if there are no actual damages because there was no damage to the plaintiff or there were no sales by the defendant, an expert will likely be unnecessary. Similarly, if the case involves only a single work where the revenue and profit can be easily determined by the jury, then an expert may not be necessary.

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A “technical” expert might be used to compare the works for substantial similarity or explain the field to the jury. An expert’s testimony may only be used to explain something to the jury that they would not be able to determine on their own. Specifically, the Federal Rules of Evidence provide that an expert who is qualified by “knowledge, skill, experience, training or education” may testify if the “scientific, technical or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. Rule 702. Thus, comparing a photograph and a painting where a layperson could simply look at the works and compare them will not warrant an expert comparison. Indeed, an expert’s testimony as to the substantial similarity of two works where the jury can do the comparison themselves is usually inadmissible because the comparison is based on an “ordinary observer.” This is not to say that an expert cannot be used to explain the field. If an expert would be useful to explain the process of creation, the time to create work, or the value of an artist’s work, that may be admissible. For instance, in an architectural plan case, an expert can be valuable for explaining how plans are designed, the steps in the process, the different types of plans that are necessary, and what consumers may be looking for. However, an architectural expert cannot opine on the similarity of the copyrightable elements of the plans. Rottlund v. Pinnacle, 452 F.3d 726, 731 (8th Cir. 2006). On the other hand, in a case involving infringement of software code, you will likely need an expert to opine on the similarity of the code because a layperson cannot compare source code effectively. Furthermore, a software expert for the defendant might again explain the process of writing source code and explain why certain similarities exist simply because they are the best way to write the code and not because they were copied. On the other hand, a software expert for the plaintiff might explain why certain parts of the code (i.e., the comments) are not functional at all, and any similarity would be a dead giveaway that there was infringement.

B. Locating an Expert Finding an expert can be a difficult process, and young associates are often tasked with finding several potential experts. A great place to start is with your client who will usually have suggestions for experts in the field of the copyrighted work. Software engineers will know other engineers; architects will know architects and builders; painters will know painters, galleries and agents. The next place to search is with other attorneys at your firm. Some firms have expert databases that compile and comment on experts that have been used in other cases. Otherwise, ask around with other attorneys in your practice area or send out an e-mail to other attorneys asking for recommendations. Usually, people are quick to recommend an expert who has done a

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good job in the past. Bar associations sometimes also have expert databases, such as Los Angeles Bar Association (expert4law.org). Finally, general Internet searches work. A search engine search will often yield possible experts, including groups of experts such as TASA (www.tasanet.com); Silicon Valley Expert Witness Group (www.svewg.com); general expert databases such as ALM Experts (www.almexperts.com); ExpertPages (www. expertpages.com); or ExpertLaw (www.expertlaw.com). You might also try universities that have departments in the field of specialty (i.e., computer science; architecture school; economics department; music school). Once you have narrowed your search to several potential experts, you might consider running a search for previous cases in which the potential expert testified. Typically, a potential expert will include such information in her curriculum vitae, and if not, you can run a general Lexis or Westlaw search for the expert’s name. You will want to look for cases where the expert’s testimony was excluded or where there was a negative opinion expressed by the court as to the expert’s opinion. You should also look for certain patterns that might make the expert vulnerable to attack: if they have a propensity for testifying for plaintiffs or defendants. You will also want to search for prior publications or expressed opinions to determine if they have previously taken a contrary or damaging position.

Practice Tip This research as to the opposing side’s expert will also be helpful in finding ways that you can decrease the credibility in the expert’s opinion or credentials by showing that they have taken contrary positions, that they are biased toward certain parties, or that there is some other weakness in their credibility.

Practice Tip Aside from credentials and expertise in the filed, prior to hiring an expert witness, you will also want to consider his demeanor, his ability to explain concepts to a jury, whether he is condescending, and how he will appear to a jury.

Practice Tip When selecting the expert, it is often useful to use someone that is local. The professor from the local university will hold more clout than a professor

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from the same caliber university in a different part of the country. Similarly, it is usually useful for the expert to have a sense of the market for the works—both copyrighted and infringing. In an architectural plan case, a technical expert who is comparing works and has designed in the same geographic location for the same market of buyers can discuss what home buyers in those locations are looking for because homebuyers in different regions and neighborhoods have different needs and will look for different design elements in a home. Similarly, an art dealer can explain what the market demands for different types of artwork and in different markets.

C. Communications with an Expert Materials given to, and communications had with, an expert who will testify at trial are discoverable. When the expert report (discussed in the next section) is prepared, it must include a list of the data or information considered by the expert in forming his opinions. Fed. R. Civ. P. Rule 26(a)(2). Furthermore, communications that you, or your assistant, or a paralegal, or another attorney, or the client, have with the expert is discoverable. Thus, any written communications with an expert should be carefully drafted to avoid disclosing any privileged information or other opinions that the client or attorney would not want disclosed to opposing counsel. Furthermore, any draft expert reports are also discoverable. If an expert sends you a draft and you mark it up, those exchanges and the documents are discoverable.

Practice Tip Many experts work around these disclosures by only having one document, meaning that they never save drafts and only have a working version so there is only ever one version to produce—the final version. In working on drafts with an expert, many attorneys also choose to meet in person with the expert to work on changes in the one working version of the document on the expert’s computer. Another work-around that many attorneys use is an online meeting or web conferencing service such as WebEx that allows the attorney to see the expert’s computer screen and the “working version” of the document and comment on it orally on a conference call without actually creating a record of the comments.

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However, if the expert is a consulting expert and is not expected to testify at trial, opposing counsel cannot discover facts known or opinions held by that expert. Fed. R. Civ. P. Rule 26(b)(4). Practice Tip Because materials given to a testifying expert are discoverable, it is valuable to set up and maintain a file for each expert that includes copies of all documents sent to the expert as well as copies of all communications had with that expert so that it is on hand for easy production, as well as for use in reviewing the expert report and preparing the expert for deposition and testimony. Ask the paralegal or your assistant to maintain this file, and be sure to cc or bcc him on those communications.

Practice Tip Many attorneys opt to reach a different agreement with opposing counsel such that all communications with experts will be confidential or that all draft reports will not be disclosed. This benefits you; but remember that this also benefits opposing counsel. Consider carefully how far you want to go with such an agreement.

D. Expert Reports Rule 26(a)(2) provides that the parties must disclose expert testimony prior to trial. The case management order (usually based on the Rule 26(f) report with the agreed dates of the parties) will set the date for the disclosure of the expert testimony in an expert report. Otherwise, they must be submitted at least ninety days prior to the date set for trial. Fed. R. Civ. P. Rule 26(a)(2)(C). Rule 26(a)(2)(B) specifically provides that the testimony should be in the form of a written report and lays out the elements that must be included in the report, namely the expert’s opinions and methods, data considered by the expert (including documents), exhibits to be used to support opinions, expert’s qualifications and publications from the past ten years, a list of cases in which the expert has testified at deposition or trial in the last four years, and identification of compensation paid to the expert (typically listed as an hourly rate). Rebuttal reports must also be exchanged pursuant to the dates set forth in the case management order, or, if no date is set, within thirty days after service of the report that it is rebutting. Fed. R. Civ. P. Rule 26(a)(2)(C).

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Practice Tip Note that because expert reports will often rely on documents that have been marked as confidential or highly confidential, any part of the report that discloses that confidential or highly confidential information must be appropriately marked as such. This can put a damper on settlement negotiations if the report must itself be marked highly confidential—attorneys’ eyes only. In such circumstances, you might agree with opposing counsel to make a limited exception to show the reports to key decision makers of your client to facilitate settlement negotiations.

Just as with all other disclosures required under Rule 26 and other discovery responses, you are required to supplement an expert report and responses given by an expert during a deposition to make corrections or additions. Fed. R. Civ. P. Rule 26(e)(2). Such supplementation must be made by the time the final pretrial disclosures (exhibit, testimony, and witness lists) are made pursuant to Rule 26(a)(3).

E. Deposition of an Expert You can depose an expert who is expected to testify at trial only after she has submitted her expert report. Fed. R. Civ. P. Rule 26(b)(4). The cost for deposing an expert witness is placed on the party requesting the testimony under the Rules. Fed. R. Civ. P. Rule 26(b)(4)(C). In practicality, however, most parties pay their own experts’ fees for responding to discovery and for deposition since both sides have their own expert. Nonetheless, this might be a good option, if for instance, you are the only party with an expert witness or if you do not intend to depose the opposing side’s expert. A deposition of an expert is an opinion finding opportunity and a time to determine how the expert will comport his or herself. Typical topics for an expert deposition will include his educational and employment background, questions regarding his expertise and qualifications (whether he, in fact, is an expert in the field to which he is providing an opinion), questions regarding previous expert work and testimony, questions regarding his report and expressed opinion (including materials and theories relied upon), questions as to his preparation of the report; and questions as to his communications with counsel. If possible, you can try to force certain admissions out of the expert or determine how he or she will react to certain probing although there are different strategies as to how much you reveal during the deposition as to holes you plan to make in their credibility or opinion.

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Practice Tip Have your own expert help you come up with questions or areas on inquiry for the deposition of the other side’s expert. She will help you spot the weaknesses in the other side’s expert’s opinions. Your damages expert can also often be helpful in creating questions for the 30(b)(6) depositions that relate to financial or technical areas. She will let you know what information she needs.

General advice regarding depositions is discussed above in section 6.VIII.F.

F. Motions to Exclude Experts Expert testimony can be excluded if it does not meet the standards set forth in Federal Rule of Evidence Rule 702 and in Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579, 113 S. Ct. 2786 (1993)4. First, the expert must be qualified as an expert “by knowledge, skill experience, training or education.” Fed. R. Evid. Rule 702. Then, the opinion testimony is admissible if “(1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.” Id. Then, the opinion testimony must actually “assist the trier of fact to understand the evidence or determine a fact in issue.” Id. Furthermore, the data or information relied must be what an expert in the field would reasonably relied upon. Fed. R. Evid. Rule 703. If any of these things are lacking: if the expert is not qualified as an expert, if the expert is using data or information not normally relied upon by experts in the field, or if the expert is using a methodology that would not normally be relied upon by an expert in the field, then you probably have a good basis for a motion to exclude the expert’s testimony. Such motions are often referred to as “Daubert motions” after the seminal case on point. Practice Tip As with any motions, be sure to ask others in your firm for motions they have done in the past and search for samples on the firm’s document management system. In addition, you should save any samples that you find or that you write to a folder that you can later turn to the next time you are drafting such a motion.

4.

Daubert applies to all expert testimony, and not only to expert testimony based on science. Kumho Tire Co. v. Carmichael, 526 U.S. 137, 119 S. Ct. 2786, 125 L.Ed.2d 469 (1993).

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X. Dispositive Motions The term “dispositive motions” usually refers to a motion for summary judgment, but other motions can also be dispositive in that they dispose of a claim or the entire case. Examples include a default judgment (Fed. R. Civ. P. Rule 55), a motion to dismiss for failure to state a claim (Fed. R. Civ. P. Rule 12(b)(6)), and a motion for judgment on the pleadings (Fed. R. Civ. P. Rule 12(c)). A motion for a default judgment will be filed early in the case if the defendant fails to appear, plead, or otherwise defend himself. Federal Rules of Civil Procedure Rule 55 covers default and default judgments. The local rules of the district will usually specify the procedure for seeking default. Usually, you will need to apply with the clerk for “entry of default” and after the clerk has entered default, you will then file a motion for “default judgment” against the party. Fed. R. Civ. P. Rule 55. Demonstrating proper service will be of the utmost importance in achieving a default judgment. Once you have a default judgment, you will often then need to move separately for a damages award and present evidence of the money to which your client is entitled. A motion to dismiss for failure to state a claim is one of the Rule 12(b) motions that may be raised in a motion before a responsive pleading is filed, as part of a Rule 12(c) motion for judgment on the pleadings, or even at trial. Fed. R. Civ. P. Rule 12(h). As with any defense, however, it must have at least been raised in the responsive pleading. Fed. R. Civ. P. Rule 12(b). A motion to dismiss for failure to state a claim by that name is raised before a responsive pleading. The general standard is that all facts alleged in the complaint are viewed in the light most favorable to the nonmoving party, and the question is whether, assuming all those facts to be true, has the nonmoving party stated a claim for relief. If the party has failed to include an element of the claim, including ownership or copying in the case of a copyright infringement claim, then such a motion would be successful. In addition, some courts have found that non-infringement can be found on a motion to dismiss where it is clear from the submitted materials that there is no infringement. Thomas v. Walt Disney Co., 85 U.S.P.Q.2d 1838 (S.D.N.Y. 2007); Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124 (C.D. Cal. 2007); Franklin Machine Products v. Heritage Food Service Equipment, Inc., 2007 U.S. Dist. LEXIS 89666 (N.D. Ind. 2007). A motion for judgment on the pleadings is made after all the pleadings are made (after the complaint, answer, any counterclaims, and other responsive pleadings are filed) but “early enough not to delay trial.” Fed. R. Civ. P. Rule 12(c). Such motions are filed early in the case, and they are based entirely on the pleadings. Usually, a motion for judgment on the pleadings, if it deals with strictly procedural defects in the pleadings, can be decided as a motion for judgment on the pleadings and will apply a similar standard as to that used in a 12(b) motion—that is, the facts alleged in the pleadings are viewed

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in the light most favorable to the nonmoving party. However, if the motion goes beyond the procedural to the substantive merits of the case, then it is usually treated as a motion for summary judgment. A motion for summary judgment is permitted under Federal Rule of Civil Procedure 56. The standard for a motion for summary judgment is that the movant is entitled to summary judgment, or judgment as a matter of law, if the submissions “show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. Rule 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322–26 (1986). Stated another way by the Supreme Court, summary judgment is appropriate when the “inquiry performed is the threshold inquiry of determining whether there is a need for trial—whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). Courts have found summary judgment even on the factual inquiry of substantial similarity where they determine that no reasonable trier of fact could find that the two works are substantially similar (Thornton v. J Jargon Co., 580 F. Supp. 2d 1261 (M.D. Fla. 2008)) or that no reasonable trier of fact could find that the two works are not substantially similar (Livingston v. Morgan, 2007 U.S. Dist. LEXIS 55605 (N.D. Cal. 2007)). Practice Tip When conducting research, call Westlaw or Lexis for help with searches. They will help you determine which database to use, what search terms to use, and will let you know which are most effective and how much they cost. They will usually run the search while you are on the line and tell you the number of resulting hits.

The scheduling order/case management order will typically set a deadline for filing dispositive motions, which sometimes may be based on a hearing date, and you will need to count back to determine the deadline for filing the motion. It may also set page limitations or other procedural rules. The local rules will often have specific rules for motions for summary judgment, including page limitations, whether a statement of undisputed facts should be included, and what the statement should include and other similar rules or requirements. Also check the judges’ standing order, if he or she has one, for other limitations. When filing a motion for summary judgment, evidence should be submitted and may include deposition transcripts, affidavits, and documents produced by the opposing party.

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Practice Tip It will be imperative to have these documents well organized and available for filing. It will also be very important to determine whether any of the documents that you wish to use with the motion are covered by a protective order or a confidentiality agreement. If they are, there will likely be a procedure laid out in the protective order or confidentiality agreement for filing the confidential documents under seal.

XI. Hearings It goes without saying that in preparing for a hearing, you should read all the pleadings, the rules, and the cases to be as well prepared as possible for any questions. You should be particularly familiar with any decisions that were written by your judge or other judges in the district. You should also consider the weaknesses in your argument and how you will address those weaknesses. Try to anticipate the judge’s questions and prepare answers ahead of time. Practice Tip Learn to listen. Listen to the judge’s questions of you and of your opponent and address those issues. You are there to convince the judge and address his or her concerns, so listen to where he or she wants you to go. It is amazing how many attorneys forget this and simply want to stick to their own agenda.

Another great way to prepare for a hearing and scope out a judge is to go to court and watch your judge in action. Even if the case or hearing is unrelated to copyrights, you will get a sense of the judge. Formality, importance placed on case law, general courtroom decorum, and whether he or she asks many questions, can be discerned from watching a few hearings. At the least, you should ask other attorneys who know the judge for any tips or guidance they can give you. Practice Tip Even if you do not have the opportunity to argue, whenever you have time, you should go to hearings so you are familiar with the judges and can advise the partner for their argument and will be well prepared for when you do get on your feet before that judge.

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XII. Settlement and Mediation The vast majority of cases settle before reaching trial. This can happen through informal settlement communications and meetings or can be the result of more formal mediation proceedings. Mediation is essentially a meeting where the decision makers for the parties, their attorneys, and a mediator gather to discuss settlement. Mediation is required in many jurisdictions. The mediator is a third-party neutral who is there to facilitate settlement. The mediator does this by helping the parties see the opposing side’s positions as well as the strengths and weaknesses in the parties’ positions. The mediator does not decide any issues or who should prevail; the alternative dispute resolution mechanism for having a third-party neutral decide the outcome is arbitration. The mediator can be a judge, and many districts will provide the services of magistrate judges as mediators. However, the mediator can just be a third party hired for the occasion; typically a retired judge or an attorney who has moved to the field of mediation (usually they become certified mediators). Practice Tip Finding a mediator who is familiar with copyright law can be a challenge. Once you find one, you will probably stick with that person case after case. Many of the best mediator’s schedules book up early, so if you are in a jurisdiction where mediation is mandatory by a date certain, you will want to coordinate with mediators early on in the case to get on their schedule. If you have a mediator who is not familiar with copyright law, be prepared to explain it; you may even want to bring a copy of the statute of key cases that are relevant to your arguments with you to the mediation.

There are typically no hard and fast rules for mediation (check the local rules though), and the mediator will usually set out how the mediation will run with a letter that directs the procedures for the mediation. The letter will direct the parties to submit statements of mediation (to all parties and/or to only the mediator) before the mediation and to prepare a presentation for the mediation and may dictate the length and depth of such presentations. Usually, mediation begins with the mediator giving a brief overview of mediation, his or her role, and what will be expected. The parties will then each have an opportunity to present their case in a brief presentation. The depth and detail of the presentation varies but usually is a fairly informal and short presentation (after all, the parties have read all the pleadings) describing the party’s position. Then, the parties will be split into two rooms and the mediator will shuttle back and forth between the two, transferring messages and offers back

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and forth. During this process, a good mediator will hear both sides, will get a sense of where the parties are willing to go, and will work both sides to get them to reach a settlement. Practice Tip Mediation is generally useful and quite effective. Mediation can be very valuable if you have a client who refuses to see the weaknesses in his case because hearing the weaknesses from a third-party neutral will usually hit home. Also, if you suspect that opposing counsel is not adequately explaining the weaknesses in the case to their client, it is very useful to have the opportunity to explain your position and have a third-party neutral reinforce the strengths in your case and weaknesses in the opposing party’s case.

Practice Tip Before mediation, explain the process to your client, and explain that it is essentially an assisted settlement conference, not an arbitration. You should also explain the strengths and weaknesses of your case to your client (you should throughout the case anyway) so that there are no surprises during the mediation. Furthermore, you should try to determine what the actual outcome is that your client is seeking; what does he really want out of the litigation, what could he live without, and what is absolutely necessary. For instance, he may say that an injunction is absolutely necessary, or he might say that while he would prefer an injunction, he could live with a license for the right amount of money. Get him thinking about where they are willing to compromise, and give them the worst and best case scenarios for the outcome of the litigation if it goes to trial so they can make the appropriate business decision.

Practice Tip Come to mediation with a predrafted settlement agreement. Include all of the terms that you want in the agreement. This will allow you to consider the terms that are important before the mediation and will give you the upper hand of having carefully reviewed and considered all the terms. You might also want to bring an electronic copy of the document so you can get on a computer at the mediation and make changes according to what the parties agree. Leaving a mediation with a “settlement” in terms but not in writing is usually not a good idea—many of those settlements never get done.

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Of course, parties can also hold settlement meetings without a mediator. They can also simply make settlement offers either from party to party or counsel to counsel at any time during the litigation. A draft settlement agreement is included in the Appendix. Settlement offers are sometimes put in the form of an “offer of judgment” pursuant to Rule 68 of the Federal Rules of Civil Procedure. Rule 68 states that “[i]f the judgment finally obtained by the offeree is not more favorable than the offer, the offeree must pay the costs incurred after the making of the offer.” Stated another way, if Plaintiff rejects an offer of judgment, is successful at trial, but is awarded less money than was offered in the offer of judgment, the “cost-shifting” provision of Rule 68 applies. The value of a Rule 68 greatly rides on whether attorneys’ fees are included in the definition of “costs,” since the fees are usually where the expense lies. On its face, Rule 68 does not provide for recovery of attorneys’ fees. Instead, the general rule is that whether attorneys’ fees fall within the category of “costs” subject to Rule 68’s cost-shifting requirement depends upon the precise language of the statute providing for the fee award. Sheppard v. Riverview Nursing Center, Inc., 88 F.3d 1332, 1337 (4th Cir. 1996), citing Marek v. Chesny, 473 U.S. 1, 9 (1985). The Federal Copyright Act provides that “except as otherwise provided by this title, the court may also award a reasonable attorneys’ fee to the prevailing party as part of the costs.” 17 U.S.C. § 505. This seems to imply that attorneys’ fees do indeed fall within “costs.” However, courts have issued conflicting rulings as to the inclusion of attorneys’ fees. For example, the Eleventh Circuit and Southern District of New York have found that Rule 68 permits a defendant to recover attorneys’ fees when the plaintiff is awarded less than the Offer of Judgment. See Jordan v. Time, Inc., 111 F.3d 102, 105 (11th Cir. 1997); Baker v. Urban Outfitters, Inc., 431 F. Supp. 2d 351, 361–62 (S.D.N.Y. 2006). Other courts have reached the opposite conclusion, reasoning that the copyright statute permits attorneys’ fees to be awarded only to the prevailing party, and a defendant who loses is not a prevailing party. See Harbor Motor Co. v. Arnell Chevrolet-Geo, Inc., 265 F.3d 638, 646–47 (7th Cir. 2001); Boisson v. Banian Ltd., 221 F.R.D. 378, 382 (E.D.N.Y. 2004). The important thing is that you research this issue if your client receives an offer of judgment so she can better weight the costs and benefits of accepting or declining such an offer. Furthermore, if you are in a district where attorneys’ fees do fall within “costs,” you may want to consider putting settlement offers in the form of an offer of judgment. Practice Tip Do not rely entirely on the case law cited in this book. Instead, think of it as a jumping-off point. As with all case citations in this book, be sure to do the research yourself as well to ensure that there has been no subsequent overruling or new law.

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Practice Tip Another issue that arises to complicate offers of judgment is nonmonetary relief. For instance, if the plaintiff sought an injunction, the offer of judgment offered money but no injunction, and the plaintiff ultimately prevailed, obtained an injunction against defendant, but recovered less in monetary value than defendant offered, there is an argument that the ultimate award was more favorable than the offer—though not monetarily. Again, courts are split,and you will need to research in your district and keep this in mind as a snag that can arise.

XIII. Pretrial Rule 26(a)(3) provides that prior to trial, the parties must disclose certain information to one another, namely, witnesses, testimony from depositions the party intends to use, and an exhibit list. Rule 26(a)(3)(B) provides that they be made at least 30 days before trial, and any objections be made within 14 days after they are made. However, the court will set a different time for disclosure of the pretrial materials in the case management order or in a subsequent order. Furthermore, many courts will set a deadline for a joint report to be filed by the parties before which the parties must meet or exchange draft reports, which include exhibit lists, undisputed facts, deposition designations (if any deposition testimony will be used at trial), jury instructions, and voir dire. The case management order, or a subsequent order from the judge, will usually lay out what must be included in a pretrial report submitted to the court. If not, then the local rules will usually set forth the procedures. Typically, a pretrial report submitted by the parties will include: • • • • • • • • • • •

An explanation of the issues Any admitted or undisputed facts A list of issues to be litigated The law applicable to the issues to be litigated A list of witnesses to be called Deposition designations (page and line numbers) A list of exhibits to be used, along with any objections to the exhibits Any amendments to the pleadings Any outstanding issues for the court to decide Any in limine motions that are expected to be filed How demonstrative exhibits are to be handled and exchanged

The exhibit and witness lists only are required to include exhibits and witnesses that a party intends to call in its case in chief; rebuttal witnesses,

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and exhibits do not generally need to be included. Making a list of the elements that you will need to prove up or refute during trial, along with the testimony and evidence that you will need to elicit, is useful to ensure that you are complete in your lists. Around the same time, you will usually also submit jury instructions. Either the parties will each submit their own proposed jury instructions, or the court will require the parties submit a joint proposed set of jury instructions. If you must submit joint jury instructions, simply include any disputes within them if you cannot agree with opposing counsel on an instruction. The court will then choose jury instructions, which may be based on those submitted or may be different. Note that if you have an objection to a jury instruction, you must raise it in the joint submission and to the court if there is a hearing. If you fail to raise an objection to an instruction before it goes to the jury, then it is waived. Fed. R. Civ. P. Rule 51. Drafting proposed jury instructions can be easy or difficult, depending on whether the district has model jury instructions. Many jurisdictions have model jury instructions for the general instructions regarding a jury’s role, how to weigh evidence, etc. For example, the Third Circuit (http://www.ca3. uscourts.gov/modeljuryinstructions.htm) and the Eighth Circuit (http://www. juryinstructions.ca8.uscourts.gov/). Other jurisdictions do not, however, and you will have to piece instructions together from samples you can find on your firm’s documents system, samples you get from local counsel (if you have local counsel), and samples from other jurisdictions. Beyond the general instructions, drafting the copyright specific instructions can also be a challenge depending on whether your jurisdiction has model instructions. The Ninth Circuit has excellent model instructions (http://207.41.19.15/web/ sdocuments.nsf/civ). If you are outside a jurisdiction with models, you will again need to piece instructions together based on samples and case law. You need to indicate the source of the instruction after each instruction. Even if you are not required to cite the source, you should keep track of it for yourself so you are prepared when it comes to arguing over the instructions. If there is no model, you may just be citing to the Copyright Act and case law from the jurisdiction for various instructions. A sample of a pieced-together set of instructions is included in the Appendix (there, the case was pending in Maryland where there were model instructions for the general instructions but not for the copyright specific instructions).

Practice Tip Visit the website for your district, where there may be a link to model jury instructions. Alternatively, run a search on a search engine for “model jury instructions” plus your district, circuit, or the area of law—here, copyright.

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Voir dire, or questions that are posed to the jury to determine which jurors should be selected, usually must also be submitted around the time of the pretrial. Again, you can look for samples on your firm’s document management system, ask local counsel, and run searches on the court’s website and on the Internet. Voir dire is intended to determine whether the potential juror has a bias, hardship, or other reason such that they cannot serve as a juror. Questions will usually include those related to: • Whether they have previously served on a jury • Whether they are a lawyer or have a family member who is a lawyer • Whether they have been involved in litigation, including for copyright infringement • Whether they know any of the parties • Whether they know any of the lawyers • Whether they know any of the witnesses • Whether they are familiar with the issues in the case • Whether they have worked at the Copyright Office or know anyone who has • Whether they own any copyrights • Whether they have other biases related to the parties or the case Practice Tip Even if you submit voir dire, it is common for judges to use their own voir dire and to ask the questions of the jurors rather than allow the attorneys to ask questions of the jurors.

In addition to pretrial submissions, motions in limine to exclude evidence must be filed before trial. Motions in limine focus on irrelevant (Fed. R. Evid. Rules 401 and 402 require relevance) and prejudicial (Fed. R. Evid. Rule 403 excludes prejudicial evidence) evidence that you do not want the opposing side to be able to bring up during trial. Your arguments in a motion in limine will focus on the standards in the Federal Rules of Evidence. Similarly, motions to exclude any expert testimony must also be filed before trial (discussed at more length above in the section regarding experts).

XIV. Trial and Preparing for Trial This book does not focus on trial strategy or practice in detail because there is not much that is done differently in a copyright infringement trial than in any other trial and there are already numerous books, articles, and guides

Post-Trial

written on trial practice that provide excellent trial advice. An useful resource is Trial Techniques, by Thomas Mauet. As with any trial, you must be familiar with the local rules and practice and the rules of evidence. In a copyright case in particular, you should be sure to know the rules for admitting visual exhibits and demonstratives. In a copyright case, you will want blow ups or side-by-side comparisons of the works, and you will want the jury to be able to take them back when they deliberate, so be sure you know how to do that in your jurisdiction. Some jurisdictions will say that anything that is not objected to is an exhibit in evidence, while others will require foundation, and that you move for the admission of the exhibit. The main thing to remember in trial is to make sure the jury understands your case. Keep your case as simple as possible and provide adequate background so the jurors can understand your arguments. Looking smarter than the other side’s attorneys and winning objections does not win a case. After the other side’s case in chief, remember to make a motion for judgment as a matter of law pursuant to Rule 50 of the Federal Rules of Civil Procedure. According to the rules, once a party has been fully heard on an issue during a jury trial, a party may make a motion for judgment as a matter of law, and the court may grant the motion if a reasonable jury “would not have a legally sufficient evidentiary basis to find for the party on that issue.” Such a motion must be made before the case is submitted to the jury. Typically these motions are made orally to the judge, and they are quickly denied. But occasionally they are granted. You must then renew your motion after the jury returns with a verdict, if it is not in your favor or if you want to preserve the issue for appeal. See Young v. Langley, 793 F.2d 792, 794 (6th Cir. 1986). If you do not, you will not be able to appeal on that point.

XV. Post-Trial After trial, just when you think you are done, come all the post-trial motions.

A. Equitable Relief A request for injunction, return of materials, or other equitable relief will usually not go to a jury specifically because it is “equitable” and to be decided by the judge. Thus, if you win a verdict from the jury in your client’s favor as the plaintiff, and you are also seeking an injunction, then you will usually need to file a separate motion for a permanent injunction (as usual, check the local rules and standing orders). A permanent injunction after a finding of infringement used to be a matter of course. However, in 2006, the Supreme Court in eBay Inc. v. MercExchange,

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LLC, 126 S. Ct. 1837, 1839 (2006) changed that standard, and plaintiffs must now demonstrate several factors to demonstrate that a permanent injunction is necessary. These factors include (1) that plaintiff has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. See Christopher Phelps & Associates LLC, 492 F.3d at 543, citing eBay Inc. v. MercExchange, LLC, 126 S. Ct. 1837, 1839 (2006). Note that a promise to stop infringing is often not enough, and injunctions are arguably necessary even then. United States v. Oregon State Medical Society, 343 U.S. 326, 333 (1952). According to the Copyright Act, a plaintiff can also seek the return or destruction of all copies and derivatives works made and the instruments or implements used to make those infringing works (i.e., printing plates). 17 U.S.C. § 503(b). Again, this would be filed as an equitable relief motion, typically in conjunction with a motion for a permanent injunction.

B. Relief from Judgment If you are displeased with the outcome of the trial, common motions are a motion for new trial or remittitur (Fed. R. Civ. P. Rule 59) or a motion to set aside judgment (Fed. R. Civ. P. Rule 60). Note that a motion pursuant to Rule 59 must be filed within ten days after judgment is entered. Fed. R. Civ. P. Rules 59(b) and (e). Practice Tip The date that judgment is entered is not necessarily the date that the order of judgment appears on the docket on the electronic filing system. Check the date that the judgment order is actually signed.

If you file one of these motions, you must also file a motion to stay entry of proceedings to enforce the judgment (Fed. R. Civ. P. Rule 62), or the judgment can be enforced. If you file a stay, however, you will usually be required to post some sort of bond or insurance because the rule requires “appropriate terms for the opposing party’s security.” Fed. R. Civ. P. Rule 62(b). In addition, you can appeal a judgment. You must file an appeal within thirty days of judgment (Fed. R. App. P. Rule 4(a)(1)(A)) or within thirty days of an order on a motion for new trial under Rule 59 or relief under Rule 60 (Fed. R. App. P. Rule 4(a)(4)(A)). The Federal Rules of Appellate Procedure and the local rules for the Circuit to which you are appealing will govern the procedure for such an appeal.

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C. Collecting on a Judgment Once a judgment is entered, you can begin proceedings to enforce a judgment. If the party against whom you are collecting is out of the state, you will need to follow to local rules for the district in which they are located as to collections. If there is difficulty in collecting, the Federal Rules of Civil Procedure provide that, in addition to remedies under state law, you can go so far as to seek to garnish wages. Fed. R. Civ. P. Rule 64. In addition, if you are attempting to recover a judgment, you are also entitled to request limited discovery as to the party’s assets in the form of postjudgment interrogatories or requests for production. This will, again, need to be accomplished through the court where the party resides, and a case will need to be opened in the district. Check the local rules for the court where the party resides—note that this should be accomplished through state court even if the judgment was from a federal court. You should request information as to the party’s assets, such as houses, land, cars, businesses, as well as any debts owed to them by customers, clients, or others, because you can often attach these assets and the party is not in a position to hide such assets.

Practice Tip An unfortunate realty is that there are times when you may not be able to collect the judgment you worked so hard to achieve. Considering whether a judgment is collectable before initiating litigation is an important factor to consider. If you can achieve a million dollar judgment, but cannot collect it, it is worth as much as the paper you print it on. Of course, in some cases, an injunction may be a valuable result.

D. Recovering Fees and Costs If the copyright was registered, then attorneys’ fees may be recoverable for a successful plaintiff, but you must file a motion requesting fees. If you are defendant and you successfully defended an infringement claim, you may be able to recover attorneys’ fees, whether or not the copyright was registered. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). See the damages section above for more detail. Even if the copyright was not registered before infringement, you may still be entitled to recover costs of the litigation as the prevailing party. Fed. R. Civ. P. Rule 54(d). A motion, usually in the form of a “Bill of Costs” should be submitted requesting costs be taxed. Check the local rules for the timing of filing the request for costs, as it is usually shortly after judgment is entered.

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Quick Reference Guide Checklist Before Filing a Complaint

1. Is the copyright valid? 17 U.S.C. § 102. a. Original b. Creative c. Copyrightable subject matter 2. Who owns the copyright? a. Who created the work? i. Was it a work for hire? ii. Was there an assignment? iii. Is there joint authorship? 3. Has the copyright fallen into the public domain? a. Copyright term b. Forfeiture c. Abandonment 4. Register the work if not already registered. 5. Talk to your client about the cost of litigation—be sure they are prepared. 6. Is there infringement? a. Was there copying of the expression? i. Access ii. Substantial similarity. 7. What is the extent of the infringement? a. How many copies? b. Willful? 8. What potential damages are there? a. Statutory (registration before the infringement) b. Actual (plaintiff’s losses and defendant’s improper gains) 9. Are attorneys’ fees available? a. Was there registration before infringement? 10. What potential defenses are there? a. Licenses, Statute of limitations, Fair Use, Independent creation, Merger Doctrine, Estoppel 11. Who is the defendant? a. Litigious? b. Deep pockets/collectable? c. Where are they located? d. Are there other defendants in the chain of infringement?


12. Jurisdiction a. Subject matter jurisdiction i. Registration required for Federal jurisdiction b. Personal jurisdiction i. Where are the parties located? 13. Venue

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Quick Reference Guide: Determining Whether Registration of Application is Adequate for Subject Matter Jurisdiction

What follows is a list of cases from each Circuit that discuss whether registration or application for registration are required for jurisdiction. This list should get you started in the right direction, but you should be sure to look for more recent cases and check if these have been overruled. FIRST CIRCUIT: • Inkadinkado, Inc. v. Meyer, 2003 WL 22282177 (D. Mass.) • Foraste v. Brown University, 248 F. Supp. 2d 71, 76 (D.R.I. 2003) SECOND CIRCUIT: • New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 2003 WL 22290313 (D.Conn) • Rommel v. Laffey, 194 F.R.D. 441, 443–44 (N.D.N.Y. 2000). • Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002), aff’d, 354 F.3d 112 (2d Cir. 2003) • Capitol Records, Inc. v. Wings Digital Corp., 218 F. Supp. 2d 280, 284 (E.D.N.Y. 2002) • Salerno v. City Univ. of New York, 191 F. Supp. 2d 352, 356 (S.D.N.Y. 2001) • Lennon v. Seaman, 63 F. Supp. 2d 428, 432 (S.D.N.Y. 1999) • Corbis Corp. v. UGO Networks, Inc., 322 F. Supp. 2d 520, 521 (S.D.N.Y. 2004) • U-Neek, Inc. v. Wal-Mart Stores, Inc., 147 F. Supp. 2d 158, 160–70 (S.D.N.Y. 2001) THIRD CIRCUIT: • SportsMEDIA Tech. Corp. v. Upchurch, 839 F. Supp. 8, 9 (D. Del. 1993) • Tang v. Hwang, 799 F. Supp. 499, 502–03 (E.D. Pa 1992) • Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682 (D.N.J. 1994) FOURTH CIRCUIT: • Berlyn, Inc. v. The Gazette Newspapers, Inc., 157 F. Supp. 2d 609, 623 (D. Md. 2001)


• Smoot v. Simmons, 2006 U.S. Dist. LEXIS 51561 (D. Md. July 14, 2006) • Mays & Associates, Inc. v. Euler, 370 F. Supp. 2d 362, 368–69 (D. Md 2005) • Iconbazaar, L.L.C. v. America Online, Inc., 308 F. Supp. 2d 630, 633 (M.D.N.C. 2004) • Miller v. CP Chems., Inc., 808 F. Supp. 1238, 1241 (D.S.C.1992) • Phoenix Renovation Corp., v. Rodriguez, 403 F. Supp. 2d 510 (E.D. Va. 2005) • Datatel, Inc. v. Rose & Tuck, LLC, 2005 WL 1668020 (E.D.Va. Jun 17, 2005) • Secure Servs. Tech., Inc. v. Time & Space Processing, Inc., 722 F. Supp. 1354, 1364 (E.D. Va. 1989) FIFTH CIRCUIT: • Geoscan, Inc. of Texas v. Geotrace Techs., Inc., 226 F.3d 387, 393 (5th Cir. 2000) • Lakedreams v. Tayler, 932 F.2d 1103, 1108 (5th Cir. 1991) • Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984) • Levingston Corp. v. Dewayles, Ltd. Intl., 2008 U.S. Dist. LEXIS 12327 (E.D. La. 2008) SIXTH CIRCUIT: • Sadler-Cisar, Inc. v. Commercial Sales Network, Inc., 786 F. Supp. 1287, 1296 (N.D. Ohio 1991) SEVENTH CIRCUIT: • Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) • Goss Int’l Am. Inc., v. A-Am. Mach. & Assembly Co., 2007 U.S. Dist. LEXIS 88382, No. 07 C 03248 at *7 (N.D. Ill. Nov. 30, 2007) • Villa v. Brady Publishing, 2002 WL 832574 (N.D. Ill.) EIGHTH CIRCUIT: • Action Tapes Inc. v. Mattson, 462 F.3d 1010 (8th Cir. 2006) • Denenberg v. Berman, 2002 U.S. Dist. LEXIS 20490 (D. Neb.) • Prospect Planet, LLC v. Paychecks for Life.Com, 2003 WL 751023 (D.N.D.) NINTH CIRCUIT: • Tabra, Inc. v. Treasures de Paradise Designs, Inc., 1990 U.S. Dist. LEXIS 19478

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• Brush Creek Media, Inc. v. Boujaklian, 2002 U.S. Dist. LEXIS 15321 (N.D. Cal) • Oyster Software, Inc. v. Forms Processing, Inc., 2001 U.S. Dist. LEXIS 22520, 2001 WL 1736382, *10–11 (N.D. Cal.) • Gable-Leigh, Inc. v. N. Am. Miss, 2001 WL 521695, *4 (C.D. Cal. April 13, 2001) • Dielsi v. Falk, 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996) • Loree Rodkin Mgmt. Corp. v. Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1054–55 (C.D. Cal 2004) • Brown v. Adidas Int., 938 F. Supp. 628, 636 (S.D. Cal.,1996) TENTH CIRCUIT: • La Resolana Architects v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) • Home Design Services Inc. v. B&B Custom Homes LLC, 81 USPQ2d 1363 (D. Col. 2006) • Goebel v. Manis, 39 F. Supp. 2d 1318, 1320 (D. Kan.1999) • Westport Historical Soc’y v. Lee, 43 U.S.P.Q.2d 1858, 1860 (D. Kan. 1997) ELEVENTH CIRCUIT: • M.G.B. Holmes v. Ameron Homes, 903 F.2d 1468, 1488 (11th Cir. 1990) • Watkins v. Southeastern Newspapers, Inc., 163 Fed. Appx. 823, 824 (11th Cir. 2006) • Simplexgrinnell LP v. Ghiran, 84 U.S.P.Q.2d 1062 (M.D. Fla 2007) • Kaye Homes, Inc. v. Original Custom Homes Corp., 2007 U.S. Dist. LEXIS 60847 (M.D. Fla. 2007) D.C. CIRCUIT: • Strategy Source, Inc. v. Lee, 233 F. Supp. 2d 1, 4–7 (D.D.C. 2002) • Int’l Kitchen Exhaust Cleaning Ass’n v. Power Washers of N. Am., 81 F. Supp. 2d 70.

CHAP T ER

7 United States Customs and the International Trade Commission

I. U.S. Customs Recordal

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A. Recordal

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B. Enforcement

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II. International Trade Commission

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Chapter 7 United States Customs and the International Trade Commission

United States Customs and the International Trade Commission (ITC) are often cited as alternative enforcement means. They are useful in some circumstances; however, for many copyright owners, they are not always as practical, cost effective, or speedy as civil litigation or other adversarial methods. For starters, these methods only apply to importation, so if the infringer is within the United States and is manufacturing the infringing goods within the United States, they are not helpful. Second, they are not practical for a copyright owner that owns hundreds or thousands of copyrights (as many photographers and artists do). Furthermore, the ITC is not as quick paced as it once was; at the time of publication, statistics show that an average ITC case takes 18 months for a resolution. The Eastern District of Virginia (a “rocket docket”) takes 8–10 months for a resolution. Finally, only injunctions are available through the ITC, and damages are not awarded.

I. U.S. Customs Recordal The United States Customs and Border Patrol (CBP) has a system through which intellectual property owners can record their rights with the CBP, and they will work with you to stop the importation and exportation goods that infringe those rights. Specifically, the CBP website states that stopping the flow of fake goods is a “priority” for the United States government and that it uses recordation information to actively monitor shipments and prevent the importation or exportation of infringing goods. The Code of Federal Regulations provides the rules for the CBP recordation and enforcement for copyrights in 19 CFR § 133.31 et seq. Practice Tip The CBP website provides explanations, advice, links to the CFR, and contact information for its Intellectual Property Rights Helpdesk and its CBP attorneys and advisors, where you can get advice regarding enforcement procedures and notify them of suspected infringement. At the time of publication, all of the contact information for these resources was available at http://www.cbp.gov/ xp/cgov/trade/priority_trade/ipr/ipr_assistance.xml.

A. Recordal First, the copyright must be registered. 19 CFR § 133.31. Once registered, you can record the copyright with CBP through its website at a page called the “Intellectual Property Rights e-Recordation (IPRR) online system.” The link

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to the systems is https://apps.cbp.gov/e-recordations/. The website includes step-by-step directions on how to complete the form. Basically, to record the copyright, you need to provide: • • • • • • •

The copyright registration information The name and address of the copyright owner The country where the genuine articles are manufactured The foreign entities who are permitted to use the work Any foreign titles of the work The names of the performing artists (if for a sound recording) A copy of the copyright registration (and a certified copy of any transfer if the applicant for recordation is different than the owner on the registration) • Electronic copies of the copyrighted materials • The fee ($190 at the time of publication) 19 CFR § 133.32; 19 CFR § 133. Once the application for recordation is approved, the recordation is considered effective (much like registration with the Copyright Office). Confirmation that the recordation has been approved can be obtained online by searching for recorded copyrights through the CBP website at http://iprs.cbp.gov/. An official Notice of Recordation is later mailed to the filing correspondent, but that can take several months. Practice Tip Unlike registration with the Copyright Office, a collection cannot be recorded as one work, and you must record each and every work individually. For many artists and photographers with dozens, hundreds, or even thousands of works, recordation would be an expensive and fruitless process. However, for a client with a limited number of particular consumer products (i.e., Mattel protecting its Barbie® dolls), this can be a worthwhile exercise.

Once recorded, the recordation lasts for twenty years. This period can be shorter if the copyright ownership expires, is cancelled or revoked, or if the recordant seeks to cancel the recordation. 19 CFR § 133.34. After the recordal term expires, it can be renewed for another twenty years, or the length of time remaining on the copyright, if it is shorter, by filing an application for renewal. The renewal application must be filed at least three months before the recordation is set to expire, along with proof that the copyright ownership is valid (i.e., with an affidavit from the recordant), any statement of change of ownership, and the fee ($80 at the time of publication). 19 CFR § 133.37. If you miss the three-month deadline, then you have to file a new recordation rather than a renewal application.

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During the recordal term, if there is a transfer in the ownership of the copyright, the new owner can file an application to maintain the recordation along with a certified copy of the transfer and a fee ($80 at time of publication). 19 CFR § 133.35. Similarly, if the owner of the copyright changes his name, he can file an application to revise the recordation along with a certified copy of the document filed with the U.S. Copyright Office showing the name change and a fee ($80 at time of publication). 19 CFR § 133.36.

B. Enforcement Once recorded, U.S. Customs can deny entry and seize goods that infringe a copyright. There are two different scenarios and two different procedures that must be followed depending on whether CBP determines that an imported item is infringing or if they merely suspect that the item is infringing. Practice Tip CBP indicates on its website that it also monitors nonrecorded trademarks and copyrights; however it gives recorded trademarks and copyrights priority. It is unclear how CBP would have the capacity, however, to actually monitor unrecorded copyrights and trademarks or even know what it is supposed to be looking for. If you are going to rely on CBP to stop importation of infringing goods, you should record your client’s rights and make a point to meet with a CBP officer to explain what to keep an eye out for and how they can actively find infringing product. CBP is willing to meet with attorneys to discuss intellectual property rights enforcement and on individual cases. Meeting with a CBP officer is one of the most effective things that you can do for your client because you put your client’s IP on the CBP radar and can help CBP understand the types of goods that are likely to be infringing.

If Customs determines that there is infringement, it must seize the infringing items. 19 CFR § 133.42. If Customs merely suspects (“has reason to believe”) that there is infringement, however, they will withhold delivery but will notify the importer and give the importer an opportunity to respond. 19 CFR § 133.43. If the importer does not respond and deny infringement within thirty days, then customs seizes the infringing items. If, however, the importer denies the infringement within thirty days, then the copyright owner is notified and, in turn, has thirty days to request that the goods be denied importation and must file an appropriate bond. The copyright owner can request a copy of the infringing article in order to evaluate the infringement if she provides an appropriate bond. 19 CFR §§ 133.42 and 133.43. If the

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copyright owner seeks the denial of the goods and files the appropriate bond, then the parties will be given a period of time within which they exchange evidence and submit it to Customs Headquarters for review and decision. As an alternative, the copyright owner can seek a court injunction and submit that to CBP for enforcement. 19 CFR § 133.43. If Customs headquarters determines that the imported article is infringing, then the goods are seized and destroyed and the bond filed by the copyright owner is returned. 19 CFR § 133.52. If, on the other hand, it is determined that the article is not infringing, then Customs releases the detained merchandise and gives the copyright owner’s bond to the importer. 19 CFR § 133.44.

II. International Trade Commission The U.S. ITC hears claims called “Section 337 investigations” that typically relate to intellectual property and antitrust disputes. An entire book could be written about proceedings before the ITC, and many have. This section will only provide a bare bones description of the proceeding so that you are aware that it is an option. For further information on ITC proceedings, take a look at Unfair Competition and the ITC: Actions Before the International Trade Commission Under Section 337 of the Tariff Act of 1930, West Group. Practice Tip The ITC website also provides information regarding section 337 investigations at http://www.usitc.gov/trade_remedy/int_prop/index.htm,or by going to www.usitc.gov, then linking to Trade Remedy Investigations and then Section 337 Investigations or Intellectual Property Rights Infringement. The web page includes links to the statute, frequently asked questions, a link to the Section 337 rules of practice and procedure to be followed in the investigation, and various other notices and guidelines. Be sure that you are intimately familiar with the rules of practice and procedure.

Allegations of copyright infringement can be asserted through Section 337 investigations in the ITC. ITC Section 337 investigations are conducted pursuant to 19 U.S.C. § 1337 and 5 U.S.C. § 500 et seq. (the Administrative Procedure Act). As in a civil litigation, the ITC investigations include the exchange of discovery and a trial proceeding. Unlike civil litigation, however, ITC investigations are held before administrative law judges, include an additional party (the Commission Investigative Attorney, who remains neutral until the submission of pretrial statements), are reviewed by the ITC, and will not consider counterclaims. 19 U.S.C. § 1337(c).

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In addition, for an ITC investigation, there must be a domestic industry already established or in the process of being established, meaning that there is a factory or employees creating the protected goods. 19 U.S.C. §§ 1337(a) (2)–(3). Furthermore, notice pleading is not acceptable; specificity is required, and the complaint must be verified. 19 U.S.C. § 1337(b). Jurisdiction, however, is in rem (over the product) rather than in personam (over the person or company), which makes it easier to target foreign corporations. The procedure is also different than civil litigation. Once the complaint is filed, it will be reviewed to determine whether it meets the formal requirements, and within thirty days the Commission will determine whether to commence the investigation. Once initiated, the respondent will have a specific time within which to answer, and then the Administrative Law Judge will shortly thereafter issue rules for the proceeding, including discovery deadlines and a protective order. The ITC trial will be before the Administrative Law Judge and live witness testimony may be provided, although witness statements may also be submitted. The Administrative Law Judge will then issue an “initial determination,” and the full Commission then decides whether to review the decision or allow it to become the final decision. That final decision may then be appealed to the Court of Appeals for the Federal Circuit within sixty days. 19 U.S.C. § 1337(c). The order can also be overturned by the President if he disapproves. 19 U.S.C. § 1337(j). Another important difference from civil proceedings is that damages are not available. Instead, the primary remedy in an ITC investigation is an exclusion order that directs Customs and Border Patrol to stop infringing imports from entering the United States. In addition, forfeiture of items imported (19 U.S.C. § 1337(i)) and cease and desist orders can be entered against specific importers, which, if violated, carry a large monetary penalty of not more than the greater of $100,000 or twice the domestic value of the articles entered or sold on the day in violation of the order (19 U.S.C. § 1337(f)). The timing of an ITC investigation is one of the most frequently cited reasons for pursuing this rather than civil litigation. ITC litigation is known as being particularly fast paced because the rules previously required that the investigation be conducted within 12 months. This changed, however, and the rule now requires that the proceeding be conducted “at the earliest practicable time.” 19 U.S.C. § 1337(b)(1). At the time of publication, statistics showed that it was taking approximately 18 months for an investigation. This is shorter than many civil litigations (the Northern District of California can take up to three years, and the previously fast-paced Eastern District of Texas can also take over two years to reach trial) but is slower than others (the Eastern District of Virginia makes a serious effort to maintain its eight to ten months to trial schedule). In sum, ITC proceedings are an option for a client with a valid copyright and with a domestic industry who is not looking for damages but instead is

International Trade Commission

looking for an injunction to stop the import of infringing goods, particularly if by a foreign corporation. Practice Tip The power of the ITC is in flux at the time of publication because of a ruling by the Federal Circuit Court of Appeals that held that an ITC exclusive order as to downstream manufacturers not named in the investigation whose products contain infringing parts was improper. Kyocera Wireless Corporation v. International Trade Commission, No. 2007-1493 (Fed. Cir. 10/14/2008). This decision marked a blow to the value of an ITC order; however, at the time of publication, an en banc decision was being sought, and it was expected that any decision would be appealed as necessary.

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APPENDIX

Chapter 3: Copyright Transfer: Assignments and Licenses

1. Sample Assignment Assignment of Copyright Comes now, Joe Smith, whose principal place of business is located at 1234 John Street, Smithville, VA 98765 (hereafter referred to as Photographer) and who hereby assigns certain rights, as set forth herein: Photographer has been engaged to photograph the works of Jane Jones. It has always been the intent and understanding of the parties that the sole copyright in and to the photographs, negatives, artwork, all derivative works, any modifications and variations of the works, have always and continue to vest solely in Jane Jones. This document shall constitute a complete and absolute assignment of any and all Copyrights and any other rights which Photographer may have acquired as a result of its taking of the photographs set out on Exhibit A attached hereto. Good and valuable consideration has been given to the undersigned for the assignment of these rights. I have read and understood the terms of this assignment and agree to abide by them as evidence from my signature below.

Photographer: _______________________________ Signature _______________________________ Printed Name _______________________________ Date

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2. Sample Simple License License Agreement COMES NOW the undersigned (“Grantor”) and hereby grants ABC Corp. (“ABC”) a nonexclusive license to use the materials identified on Exhibit A (“Materials”) under the following terms and conditions. 1. Grantor grants ABC a nonexclusive license to the Materials. The Materials may from time to time be added to by written amendment. 2. Pursuant to the terms of this License, ABC may use the Materials [how they may be used]. 3. When the Materials are used, as provided for in this License, appropriate source/credits will be provided to Grantor as set forth on Exhibit B. [The inadvertent failure to properly credit Grantor shall not be deemed a material breach of this agreement, but any such omissions will be rectified as soon as possible by ABC.] 4. This license shall allow ABC, as provided for herein, to use the Materials in any and all media. For purpose of illustration but not limitation, hard copies, Power Points, electronic uses, on CDs, online, are media. 5. All underlying rights to the materials, shall, except for the nonexclusive license Grantor herein, shall remain vested solely in the Grantor. 6. Nothing in this agreement is intended to, in any way, limit Grantor’s use of the Materials for his own use or other purposes. 7. ABC, in consideration for the nonexclusive license provided for herein, shall pay to Grantor an annual license fee of $[insert]. [Insert details of payment schedule.] 8. Grantor warrants and represents that, by granting the rights set forth in this License, no third-party rights are violated, that no third permissions are required; and that Grantor has the full unencumbered right to grant this license. 9. Grantor warrants that Grantor is the copyright owner or has a license and/or authority from the copyright owner to grant this agreement and agrees to indemnify ABC from any claims made resulting to any costs, damages, or expenses from the breach of these warranties.

Appendix IN WITNESS WHEREOF, having read the terms of this License and understanding the terms and conditions and agrees to be bound by them as evidenced by the signature below. Grantor hereby executes this License on the date set forth below.

Date:______________________

________________________________ Signature ________________________________ Printed Name ________________________________ Title

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3. Sample Long License License Agreement THIS AGREEMENT is effective as of the date of signing, by and between John Smith, an individual, residing at 123 Nice Drive, City, State 45678 (“LICENSOR”) and ABC Designs, Inc., a California corporation, with offices at 1234 Good Avenue, City, California 98765 (“LICENSEE”). WITNESSETH: WHEREAS, LICENSOR is the sole and exclusive owner of the Property or Properties identified more fully in Schedule A attached hereto (the “Property”); WHEREAS, LICENSOR has the power and authority to grant to LICENSEE the right, privilege, and license to use, manufacture, and sell those types of products that incorporate or are otherwise based on the Property as identified in Schedule A attached hereto (the “Licensed products”); WHEREAS, LICENSEE has represented that it has the ability to manufacture, market, and distribute the Licensed Products in the countries identified in Schedule A attached hereto (the “Territory”); WHEREAS, LICENSEE desires to obtain from LICENSOR an exclusive license to use, manufacture, have manufactured, and sell Licensed Products in the Territory; and WHEREAS, both LICENSEE and LICENSOR are in agreement with respect to the terms and conditions upon which LICENSEE shall use, manufacture, have manufactured, and sell Licensed Products; NOW, THEREFORE, in consideration of the promises and agreements set forth herein, the parties, each intending to be legally bound hereby, do promise and agree as follows.

1. License Grant A. LICENSOR hereby grants to LICENSEE, for the term of this Agreement as recited in Schedule A attached hereto (the “Term”), the right and license to use, manufacture, have manufactured, sell, distribute, and advertise the Licensed Products in the Territory. It is understood and agreed that this license shall pertain only to the Licensed Products and does not extend to any other product or service.

Appendix B. LICENSEE may not grant any sublicenses to any third party without the prior express written consent of the LICENSOR, which consent may be withheld for any reason.

2. Term of the Agreement This Agreement and the provisions hereof, except as otherwise provided, shall be in full force and effect commencing on the date of execution by both parties and shall extend for a Term as recited in Schedule A attached hereto (the “Term”).

3. Compensation A. In consideration for the licenses granted hereunder, LICENSEE agrees to pay LICENSOR, during the Term of this Agreement, a royalty in the amount recited in Schedule A attached hereto (the “Royalty”) based on LICENSEE’s Net Sales of Licensed Products. B. In the event LICENSEE conducts any Free on Board or Freight on Board transactions (commonly called FOB Sales), LICENSEE agrees to pay LICENSOR the current Royalty plus an additional four percent (4%) of the Net Sales of Licensed Products. C. The Royalty owed LICENSOR shall be calculated on a quarterly calendar basis (the “Royalty Period”) and shall be payable no later than thirty (30) days after the termination of the preceding full calendar quarter, commencing on the first (1st) day of January, April, July, and October with the exception of the first and last calendar quarters which may be “short” depending upon the effective date of this Agreement. D. With each Royalty Payment, LICENSEE shall provide LICENSOR with a written royalty statement in a form acceptable to LICENSOR. Such royalty statement shall be certified as accurate by a duly authorized officer of LICENSEE, reciting on a country-by-country basis, the stock number, product, description, wholesale list price, gross sales and units, returns and units, and net sales and units for each Licensed Product. Such statements shall be furnished to LICENSOR whether or not any Licensed Products were sold during the Royalty Period. E. LICENSEE agrees to pay to LICENSOR a Guaranteed Minimum Royalty in accordance with the terms of Schedule A attached hereto (the “Guaranteed Minimum Royalty”). As recited in Schedule A, a portion of the Guaranteed

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Appendix Minimum Royalty for the first year shall be payable as an Advance against royalties (the “Advance”). The actual royalty payments shall reflect the amount of all Guaranteed Minimum Royalty payments including any Advances made. F. “Net Sales” shall mean LICENSEE’s gross sales (the gross invoice amount billed customers) of Licensed Products, less trade volume discounts actually shown on the invoice (except cash discounts not deductible in the calculation of Royalty), and, further, less any bona fide returns (net of all returns actually made of allowed as supported by credit memoranda actually issued to the customers). No other costs incurred in the manufacturing, selling, advertising, and distribution of the Licensed Products shall be deducted nor shall any deduction be allowed for any uncollectible accounts or allowances. G. A Royalty obligation shall accrue upon the sale of the Licensed Products regardless of the time of collection by LICENSEE. For purposes of this Agreement, a Licensed Product shall be considered “sold” upon the date when such Licensed Product is billed, invoiced, shipped, or paid for, whichever event occurs first. H. If LICENSEE sells any Licensed Products to any party affiliated with LICENSEE, or in any way directly or indirectly related to or under the common control with LICENSEE, at a price less than the regular price charged to other parties, the Royalty payable LICENSOR shall be computed on the basis of the regular price charged to other parties. I. The receipt or acceptance by LICENSOR of any royalty statement, or the receipt or acceptance of any royalty payment made, shall not prevent LICENSOR from subsequently challenging the validity or accuracy of such statement or payment. J. Upon expiration or termination of this Agreement, all Royalty obligations, including any unpaid portions of the Guaranteed Minimum Royalty, shall be accelerated and shall immediately become due and payable. K. LICENSEE’s obligations for the payment of a Royalty and the Minimum royalty shall survive expiration or termination of this Agreement and will continue for so long as LICENSEE continues to manufacture, sell or otherwise market the Licensed Products. L. All payments due hereunder shall be made in United States currency drawn on a United States bank, unless otherwise specified between the parties.

Appendix M. Late payments shall incur interest at the rate of ONE AND ONE-HALF PERCENT (1 ½%) per month from the date such payments were originally due. N. For purposes of this Agreement, all funds due LICENSOR, even though not segregated shall be deemed trust funds.

4. Audit A. LICENSOR, or an authorized representative of LICENSOR, shall have the right, upon at least five (5) days written notice and no more than once per calendar year, to inspect LICENSEE’s books and records and all other documents and material in the possession of or under the control of LICENSEE with respect to the subject matter of this Agreement at the place or places where such records are normally retained by LICENSEE. LICENSOR, or an authorized representative of LICENSOR, shall have free and full access thereto for such purposes and shall be permitted to be able to make copies thereof and extracts therefrom. B. In the event that such inspection reveals a discrepancy in the amount of Royalty owed LICENSOR from what was actually paid, LICENSEE shall immediately pay such discrepancy, plus interest calculated at the rate of ONE AND ONE-HALF PERCENT (1 ½%) per month from the date such payments were originally due. In the event that such discrepancy is in excess of ONE THOUSAND UNITED STATES DOLLARS ($1,000.00) or THREE PERCENT (3%), whichever is less, in any calendar quarter. LICENSEE shall also reimburse LICENSOR for the cost of such inspection including any accounting and reasonable attorneys’ fees incurred in connection therewith. C. All books and records relative to LICENSEE’s obligations hereunder shall be maintained and kept accessible and available to LICENSOR for inspection for at least three (3) years after termination of this Agreement. D. In the event that an investigation of LICENSEE’s books and records is made, certain confidential and proprietary business information of LICENSEE may necessarily be made available to the person or persons conducting such investigation. It is agreed that such confidential and proprietary business information shall be retained in confidence by LICENSOR and shall not be used by LICENSOR or disclosed to any third party without the prior express written permission of LICENSEE unless required by law. It is understood and agreed, however, that such information may be used in any proceeding based on LICENSEE’s failure to pay its actual Royalty obligation.

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5. Warranties and Obligations A. LICENSOR represents and warrants that it has the right and power to grant the licenses granted herein and that there are no other agreements with any other party in conflict herewith. B. LICENSOR further represents and warrants that the Property do not infringe any valid right of any third party. C. LICENSEE represents and warrants that it will use its best efforts to promote, market sell and distribute the Licensed Products. D. LICENSEE shall be solely responsible for the manufacture, production, sale and distribution of the Licensed Products and will bear all related costs associated therewith. E. It is the intention of the parties that LICENSEE shall introduce the Licensed Products in all countries in the Territory on or before the Product introduction Data recited in Schedule A and commence shipment of Licensed Products in all countries in the Territory on or before Initial Shipment date recited in Schedule A. Failure to meet either the Product Introduction Date or the Initial shipment Date shall constitute grounds for immediate termination of this Agreement by Licensor. F. LICENSOR shall provide biographical information to LICENSEE for use relating to the sale, promotion, and presentation of the Licensed Products, and share any pertinent historical or other information relating to the development of the Licensed Products with the LICENSEE’s editorial staff. G. LICENSOR agrees to make each year no less than four (4) personal appearances in order to enhance the marketing of the Licensed Products, upon request of LICENSEE and at the expense of LICENSEE.

6. Notices, Quality Control, and Samples A. The Licenses granted hereunder are conditioned upon LICENSEE’s full and complete compliance with the marking provisions of the copyright laws of the United States and all countries participating in the Berne Convention. B. The Licensed Products, as well as all promotional, packaging and advertising material relative thereto, shall include all appropriate legal notices as required by LICENSOR.

Appendix C. The Licensed Products shall be of a high quality which is at least equal to comparable products manufactured and marketed by LICENSEE and in conformity with a standard sample approved by LICENSOR. D. If the quality of the Licensed Products falls below such a production-run quality, as previously approved by LICENSOR, LICENSEE shall use its best efforts to restore such quality. In the event that LICENSEE has not taken appropriate steps to restore such quality within thirty (30) days after notification by LICENSOR, LICENSOR shall have the right to terminate this Agreement. E. Prior to the commencement of manufacture and sale of the Licensed Products, LICENSEE shall submit to LICENSOR, at no cost to LICENSOR and for approval as to quality, two (2) sets of samples of all Licensed Products which LICENSEE intends to manufacture and sell and one (1) complete set of all promotional and advertising material associated therewith. Failure of LICENSOR to approve such samples within ten (10) working days after receipt hereof will be deemed approval. If LICENSOR should disapprove any sample, it shall provide specific reasons for such disapproval. Once such samples have been approved by LICENSOR, LICENSEE shall not materially depart therefrom without LICENSOR’s prior express written consent, which shall not be unreasonably withheld. F. Upon production of Licensed Products, LICENSEE shall provide to LICENSOR, six (6) sets of samples of Licensed Products, and agrees to sell any additional Licensed Products to LICENSOR at cost plus twenty-percent (20%). G. The LICENSEE agrees to permit LICENSOR or its representative to inspect the facilities where the Licensed Products are being manufactured and packaged.

7. Notice and Payment A. Any notice required to be given pursuant to this Agreement shall be in writing and delivered personally to the other designated party at the above-stated address or mailed by certified or registered mail, return receipt requested or delivered by a recognized national overnight courier service. B. Either party may change the address to which notice or payment is to be sent by written notice to the other in accordance with the provisions of this paragraph.

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8. Intellectual Property Protection A. LICENSOR shall seek, obtain and, during the Term of this Agreement, maintain in its own name and at its own expense, appropriate intellectual Property protection for the Property. B. It is understood and agreed that LICENSOR shall retain all right, title and interest in the original Property as well as in any modifications or improvements made to the Property by LICENSEE. C. The parties agree to execute any documents reasonably requested by the other party to effect any of the above provisions. D. LICENSEE acknowledges LICENSOR’s exclusive rights in the Property and, further, acknowledges that the Property are unique and original to LICENSOR and that LICENSOR is the owner thereof. LICENSEE shall not, at any time during or after the effective Term of the Agreement, dispute or contest, directly or indirectly, LICENSOR’s exclusive right and title to the Property or the validity thereof. LICENSOR, however, makes no representation or warranty with respect to the validity of any copyright which may issue or be granted therefrom. E. LICENSEE agrees that its use of the Property inures to the benefit of LICENSOR and that the LICENSEE shall not acquire any rights in the Property.

9. Termination The following termination rights are in addition to the termination rights provided elsewhere in the Agreement: A. Immediate Right of Termination. LICENSOR shall have the right to immediately terminate this Agreement by giving written notice to LICENSEE in the event that LICENSEE does any of the following: (1) fails to meet the Product Introduction Date or the Initial Shipment Date as specified in Schedule A; or (2) after having commenced sale of the Licensed Products, fails to continuously sell Licensed Products for three (3) consecutive Royalty Periods; or

Appendix (3) fails to obtain or maintain product liability insurance in the amount and of the type provided for herein; or (4) files a petition in bankruptcy or is adjudicated a bankrupt or insolvent, or makes an assignment for the benefit of creditors, or an arrangement pursuant to any bankruptcy law, or if the LICENSEE discontinues its business or a receiver is appointed for the LICENSEE or for the LICENSEE’S business and such receiver is not discharged within thirty (30) days; or (5) branches any of the provisions of this Agreement relating to the unauthorized assertion of rights in the Property; or (6) fails, after receipt of written notice from LICENSOR, to immediately discontinue the distribution or sale of the Licensed Products or the use of any packaging or promotional material which does not contain the requisite legal legends; or (7) fails to make timely payment of Royalties when due two or more times during any twelve-month period. B. Immediate Right to Terminate a Portion. LICENSOR shall have the right to immediately terminate the portion(s) and/or for any country in the Territory if Licensee, for any reason, fails to meet the Product Introduction Dates or the Initial Shipment Dates specified in Schedule A or, after the commencement of manufacture and sale of a particular Licensed Product in a particular country, ceases to sell commercial quantities of such Licensed product in such country for three (3) consecutive Royalty Periods. C. Right to Terminate on Notice. This Agreement may be terminated by either party upon thirty (30) days written notice to the other party in the event of a breach of a material provision of this Agreement by the other party, provided that, during the thirty (30) day period, the breaching party fails to cure such breach. Right to cure may only be exercised once. D. LICENSEE shall have the right to terminate this Agreement at any time on sixty (60) days written notice to LICENSOR. In such event, all moneys paid to LICENSOR shall be deemed non-refundable and LICENSEE’s obligation to pay any guaranteed moneys, including the Guaranteed Minimum Royalty, shall be accelerated and any yet unpaid guaranteed moneys shall become immediately due and payable.

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10. Post-Termination Rights A. Not less than thirty (30) days prior to the expiration of this Agreement or immediately upon termination thereof, LICENSEE shall provide LICENSOR with a complete schedule of all inventory of Licensed Products then on-hand (the “Inventory”). LICENSOR shall have the option to conduct a physical inventory in order to verify such inventory. In the event the LICENSEE refuses to permit LICENSOR to conduct such physical inventory, the LICENSEE shall forfeit its rights hereunder to dispose of such inventory. B. Upon expiration or termination of this Agreement, except for reason of a breach of LICENSEE’s, LICENSEE shall be entitled, for an additional period of three (3) months and on a nonexclusive basis, to continue to sell such Inventory. Such sales shall be made subject to all of the provisions of this Agreement and to an accounting for and the payment of a Royalty thereon. Such accounting and payment shall be due and paid within thirty (30) days after the close of the said three (3) month period. C. Upon the expiration or termination of this Agreement, all of the rights of LICENSEE under this Agreement shall forthwith terminate and immediately revert to LICENSOR and LICENSEE shall immediately discontinue all use of the Property and the like, at no cost whatsoever to LICENSOR. D. Upon termination of this Agreement for any reason whatsoever, LICENSEE agrees to immediately return to LICENSOR all material relating to the Property including, but not limited to, all artwork, color separations, prototypes and the like, as well as any market studies or other tests or studies conducted by LICENSEE with respect to the Property, at no cost whatsoever to LICENSOR. Upon loss or damage LICENSEE shall pay full replacement value. E. Upon termination of this Agreement due to a breach of LICENSEE’s duties as stated herein, LICENSOR shall be entitled to retain and receive all Guaranteed Minimum Royalties as defined in Schedule A attached hereto, which become due and payable within thirty (30) days of terminate of this Agreement. All funds due LICENSOR, even though not segregated shall be deemed trust funds.

11. Goodwill LICENSEE recognizes the value of the good will associated with the Property and acknowledges that the Property and all rights therein including the good will pertaining thereto, belong exclusively to LICENSOR.

Appendix

12. Infringements A. LICENSOR shall have the right, in its discretion, to institute and prosecute lawsuits against third persons for infringement of the rights licensed in this Agreement. B. If LICENSOR does not institute an infringement within ninety (90) days after LICENSEE’s written request that it do so, LICENSEE, with permission of LICENSOR, may institute and prosecute such lawsuit. Any lawsuit shall be prosecuted solely at the cost and expense of the party bringing suit and all sums recovered in any such lawsuits, whether by judgment, settlement or otherwise, in excess of the amount of reasonable attorneys’ fees and other out of pocket expenses of such suit, shall be divided equally between the parties. C. Upon request of the party bringing the lawsuit, the other party shall execute all papers, testify on all matters, and otherwise cooperate in every way necessary and desirable for the prosecution of any such lawsuit. The party bringing suit shall reimburse the other party for the expenses incurred as a result of such cooperation.

13. Indemnity A. LICENSEE agrees to defend and indemnify LICENSOR, its officers, directors, agents, and employees, against all costs, expenses, and losses (including reasonable attorneys’ fees and costs) incurred through claims of third parties against LICENSOR based on its actions, including the manufacture or sale of the Licensed Products including, but not limited to, actions founded on product liability. B. LICENSOR agrees to defend and indemnify LICENSEE, its officers, directors, agents and employees, against all costs, expenses, and losses (including reasonable attorneys’ fees and costs) incurred through claims of third parties against LICENSEE, challenging the authenticity of the originally submitted Property; provided however, that such indemnity shall only be applicable in the event of a final decision by a court of competent jurisdiction from which no appeal of right exists and shall be limited to the amount of the actual moneys received by LICENSOR under this Agreement. Further, this indemnity does not cover any modifications or changes made to the Property by LICENSEE.

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14. Insurance LICENSEE shall, throughout the Term of the Agreement obtain and maintain at its own cost and expense from a qualified insurance company licensed to do business in California, standard Product Liability Insurance naming LICENSOR as an additional named insured. Such policy shall provide protection against any and all claims, demands and causes of action arising out of any defects or failure to perform, alleged or otherwise, of the Licensed Products or any material used in connection therewith or any use thereof. The amount of coverage shall be as specified in Schedule A attached hereto. The policy shall provide for ten (10) days notice to LICENSOR from the insurer by Registered or Certified Mail, return receipt requested, in the event of any modification, cancellation or termination thereof. LICENSEE agrees to furnish LICENSOR a certificate of insurance evidencing same within thirty (30) days after execution of this Agreement and, in no event, shall LICENSEE manufacture, distribute or sell the Licensed Products prior to receipt by LICENSOR of such evidence of insurance.

15. Force Majeure It is understood and agreed that in the event of an act of the government, or war conditions, or fire, flood or labor trouble in the factory of LICENSEE or in the factory of those manufacturing parts necessary for the manufacture of the Licensed Products, which prevents the performance by LICENSEE of the provisions of this agreement, then such nonperformance by LICENSEE shall not be considered as grounds for breach of this Agreement and such nonperformance shall be excused while the conditions herein prevail and for two (2) months thereafter.

16. Jurisdiction and Disputes A. This Agreement shall be governed in accordance with the laws of the State of California. B. All disputes arising out of the Agreement shall be submitted to meditation in accordance with the rules of Arts Arbitration and Mediation Services, a program of California Lawyers for the Arts. If mediation is not successful is resolving the entire dispute, any outstanding issues shall be submitted to the final and binding arbitration in accordance with the rules of that program. The arbitrator’s award shall be final, and judgment may be entered upon it by any court having jurisdiction thereof. If any party hereto is

Appendix required to institute arbitration to enforce its rights under this Agreement, or to have the meaning of any of its terms and provisions over which there is dispute declared and determined by arbitration, the prevailing party shall be entitled to reasonable attorney’s fees as awarded by the arbitrator in additional to all other recoverable costs and damages. Notwithstanding this provision, LICENSOR shall be entitled to seek injunctive and any other equitable relief it deems necessary in order to protect its rights.

17. Agreement Binding on Successors The provisions of the Agreement shall be binding upon and shall inure to the benefit of the parties hereto, their heirs, administrators, successors, and assigns.

18. Waiver No wavier by either party of any default shall be deemed as a waiver of prior or subsequent default of the same or other provisions of this Agreement.

19. Severability If any term, clause or provision hereof is held invalid or unenforceable by a court of competent jurisdiction, such invalidity shall not affect the validity or operation of any other term, clause, or provision and such invalid term, clause or provision shall be deemed to be severed from the Agreement.

20. No Joint Venture Nothing contained herein shall constitute this arrangement to be employment, a joint venture or a partnership.

21. Assignability The license granted hereunder is personal to LICENSEE and shall not be assigned by any act of LICENSEE or by operation of law unless in connection with a transfer of substantially all of the assets of LICENSEE or with consent of LICENSOR.

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22. Integration This Agreement constitutes the entire understanding of the parties, and revokes and supersedes all prior agreements between the parties, including any option agreements that may have been entered into between the parties, and is intended as a final expression of their Agreement. It may be modified or amended only in writing signed by the parties hereto and specifically referring to this Agreement. This Agreement shall take precedence over any other documents that may conflict with said Agreement. IN WITNESS WHEREOF, the parties hereto, intending to be legally bound hereby, have each caused to be affixed hereto its or his/her hand and seal the day indicated.

LICENSOR: JOHN SMITH Signature: __________________________ Date: ______________________________

LICENSEE: ABC DESIGNS, INC. Signature: __________________________ Name/Title: ________________________ Date: ______________________________

Appendix

4. Sample Work-For-Hire/Assignment Work for Hire and Assignment of Copyright Comes now, Joe Smith, whose principal place of business is located at 1234 John Street, Smithville, VA 98765 (hereafter referred to as Photographer) and who hereby assigns certain rights, as set forth herein: Photographer has been engaged to photograph the works of Jane Jones. It has always been the intent and understanding of the parties that the sole copyright in and to the photographs, negatives, artwork, all derivative works, any modifications and variations of the works, have always and continue to vest solely in Jane Jones. Photographer’s work shall be considered a work made for hire under 17 USCA § 101, et seq. and all copyright and other rights in the Photographer’s work shall belong to Jane Jones. In the event it is deemed that Photographer’s work is not a work for hire, then this document shall constitute a complete and absolute assignment of any and all Copyrights and any other rights which Photographer may have acquired as a result of its taking of the photographs set out on Exhibit A attached hereto. Good and valuable consideration has been given to the undersigned for the assignment of these rights. I have read and understood the terms of this assignment and agree to abide by them as evidence from my signature below.

Joe Smith

Jane Jones

_______________________________

______________________________

_______________________________ Date

______________________________ Date

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Chapter 4: DMCA Take-Down Notices

1. Sample Take-Down Notice Multiple example take-down notices can be found at ChillingEffects.org. Below is a simple sample: Date VIA OVERNIGHT FEDERAL EXPRESS AND E-MAIL Mr. John Smith Webhost, Inc. 123 First Avenue City, CA 98765 Re: Take Down Notification Pursuant to 17 U.S.C § 512 Dear Mr. Smith: I am writing to you as the designated agent of ABC, Inc. (“ABC”). You are hosting the Web site www.xyz.com containing works that infringe upon my client’s copyrights. ABC is the copyright owner of the infringed upon works. A list of the infringed upon works and the URLs where the infringing works are found are listed on the attachment to this letter. The infringing works which appear on the www.xyz.com Web site are copies of my client’s original copyrighted artworks or are substantially similar to my client’s works. All correspondence regarding this matter, on behalf of the copyright owners, should be directed to our offices as follows: Jane Jones, Esq. Firm LLP Street City, State 12345 phone fax e-mail address

Appendix I have a good faith belief that the use of the material and the matter complained of in this letter are not authorized by the copyright owners, any of their agents, or under the law. The information in this notification is correct and I swear under the penalty of perjury that I am authorized to act on behalf of the owners of the exclusive rights. This includes, specifically, the copyrights that we allege to be infringed upon. Upon receipt of this notification you now have actual notice that the material on your system is infringing and, in order to avoid liability, it is incumbent upon you pursuant to 17 U.S.C § 512 to remove and/or disable the infringing materials immediately. If you have any questions regarding this notice or the information contained therein, please feel free to contact me. We look forward to your speedy acquiescence to the requirements of the Copyright Act, the removal of the infringing works, notification, and your cooperation in this matter.

Sincerely, Jane Jones, Esq.

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2. Sample Counter Notice A sample counter notice can be created at ChillingEffects.org, specifically at: http://www.chillingeffects.org/dmca/counter512.pdf.

Appendix

Chapter 5: Cease and Desist Letters

1. Sample Cease and Desist Letter Cease and desist letters can be written in innumerable ways with innumerable tones and demands. Check your firm’s document system for samples. Below is a sample but is certainly not the only way that a cease and desist letter can be written. The items included in square brackets are optional or may not always be appropriate, depending in part on the partner with whom you are working and the facts of your case. VIA OVERNIGHT FEDEX and EMAIL

[FOR PURPOSES OF SETTLEMENT SUBJECT TO FRE 408]

Ms. Jane Jones President & CEO ABC Corp. 123 Smith Road Nice Town, ST 01234 Re: Copyright Infringement/Cease and Desist Dear Ms. Jones: The undersigned and this law firm are intellectual property counsel for XYZ Designers, Inc. They have advised us that it appears that ABC Corp. is infringing on their copyrights. [A copy of each of the infringing items and our client’s original artworks are attached hereto, as well as copies of the copyright registrations for their artworks under Registration No. VA 1-234-567.] ABC’s actions constitute a violation of federal law, specifically, the United States Copyright Act, 17 U.S.C. § 101 et seq. In particular, ABC is violating our client’s exclusive right as copyright owner as provided for in 17 U.S.C. § 106. Demand is made that ABC immediately cease and desist from the manufacturing, importation, distribution, exportation, sale, public display, and creation of any derivative, immediately. Furthermore, demand is made that ABC sequester any and all infringing products for destruction and recall any that are in the market place.

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Appendix [ABC is on notice of a claim against it and the principals of the company. As such, ABC may not under Federal Rules of Evidence destroy any documentation, products, or materials which in any way relate to our client’s claim or ABC’s defenses to their claims or to the infringing products. To do so would constitute spoliation under federal law.] [Further, demand is made that ABC turn over to us all documentation regarding the infringement. This includes specifically, but not limited to, the contact information for the source of the goods, copies of any and all purchase orders, invoices, contracts, and correspondence with whatever party(ies) ABC obtained the infringing goods from. This also includes any documentation regarding any disposition of these goods: contact information for all parties who received the infringing product from ABC, any and all invoices, purchase orders, contracts, agreements, and correspondence regarding the sale, distribution and public display of the infringing products.] ABC is liable to XYZ Designs for their actual damages which represent any losses they incurred, plus any and all profits attributable to the infringement of their copyright (see 17 U.S.C. § 504) which it earned and the profits of any customer of ABC and the profits of any person who sold its products. Furthermore, XYZ Designs is entitled to injunctive relief by which it can have a court immediately order ABC to cease and desist from any of its infringing activities (see 17 U.S.C. § 502). XYZ Designs furthermore has the right to have all infringing goods impounded, disposed, and destroyed that include the infringing products and the materials used for the creation of the infringement (see 17 U.S.C. § 503 and 17 U.S.C. § 509) (e.g., plates, molds, equipment, etc.). [As my client has filed copyright registrations prior to the commencement of the infringing activity, they are also entitled to have their costs and attorneys’ fees paid for by ABC (see 17 U.S.C. § 505) and they are further entitled to statutory damages which can range as high as $150,000 per infringement if ABC’s actions are deemed willful (see 17 U.S.C. § 504(c)). As my clients also have copyright notices on their works, the claim that ABC is an innocent infringer is not available (see 17 U.S.C. § 401). In this matter ABC has infringed on at least two (2) copyrights, and as such ABC’s exposure is $300,000, plus attorneys’ fees.] [My clients are diligent in the enforcement of their rights and will not hesitate to seek the full legal recourse available to them against ABC, its customers and any principals, officers, and directors who have participated in the infringing activities. Individuals involved in the infringing activities are not protected by any corporate status and are liable jointly and severely as contributory and/or vicarious infringers from the entity for which they have engaged in their infringing conduct.]

Appendix Whether this matter is resolved amicably or through litigation will be determined solely by your response to this letter and your course of conduct thereafter. Failure to respond to this letter will not make this matter disappear but only exacerbate the situation, increase fees and make any financial settlement significantly higher. [As my clients are entitled to their attorneys’ fees, the longer this matter drags on, the greater the exposure.] Upon receipt of all the information sought, my client will be in a position to make a financial demand upon ABC to settle this matter. If we do not hear from you within _____weeks/days of the date of this letter, we will assume that ABC is not interested in amicably resolving this matter and will proceed accordingly. [This letter is without prejudice to or waiver of any rights, claims or damages that my clients may have, legal, equitable or otherwise, against you and/or your affiliated companies.] I look forward to hearing from you or your counsel. All rights and remedies are reserved.

Sincerely yours, John Smith, Esq.

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Appendix

Chapter 6: Copyright Litigation

1. Sample Litigation Hold Letter There are many different ways to write a litigation hold letter, and your firm may already have a form letter. You can also search on the internet for sample letters. What follows is a basic litigation hold letter. Date PRIVILEGED & CONFIDENTIAL ATTORNEY-CLIENT COMMUNICATION Ms. Jane Jones President & CEO ABC Corp. 123 Smith Road Nice Town, ST 01234 Re: Dispute with XYZ Designs Dear Jane: I am writing to advise you that certain steps need to be taken as soon as possible to ensure that ABC Corp. (the “Company”) complies with its legal duty to preserve all information that may be discoverable should this matter go forward to litigation. In particular, the Company and your employees are obliged to take all reasonable steps to preserve all information, including all paper copies of documents and all electronically stored information (“ESI”) that is or may reasonably be considered relevant to the lawsuit. ESI includes, but is not necessarily limited to, all initial, interim, draft, and final versions of the following: e-mail, voice mail, and other electronic communications (e.g., logged IM); databases; digitized images; spreadsheets; word processing documents; PowerPoint® slides and presentations; computerized calendars and personal information manager (PIM) or personal digital assistant (PDA) information; Internet usage, telephone, and network

Appendix access logs; recorded telephone calls; billing, accounting, or ledger entries; Web sites and Web pages; and all similar data that is stored on, utilized on, or transmitted via a computer or computer network, including the Internet. ESI may be found or stored on laptop or desktop computers (on or off-site, including, potentially, on employees’ home computers); network servers or drives; fixed and portable hard drives; floppy drives; thumb drives; flash memory or flash drives; backup “tapes” or drives; CD-ROM; DVD; secure digital (“SD”) and similar memory “cards”; cell phones; pagers; PDAs/PIMs; handheld wireless devices (e.g., BlackBerry® or Palm®devices); and iPod®, MP3 and similar mobile digital devices and portable hard drives. Such storage locations or devices fall within the scope of this preservation directive to the extent that the Company or its employees exercise dominion, care, custody or control over the locations or devices. The Company should suspend immediately any document destruction policy that, if not suspended, might result in the destruction of discoverable information. The suspension should be applied to paper documents and to electronically stored information, including e-mail, voice mail, spreadsheets, power points, and word processing documents. The suspension also should be applied to all media for storing information in electronic format, including network servers, e-mail servers, workstations, laptops, hand-held devices, compact disks and back-up tapes, that may contain discoverable information. The suspension of routine and automated document destruction should be aimed at preserving, at a minimum, all paper documents and electronically stored information concerning the [dispute – may include a long list here of party names, product names, and other litigation issues], including information that may be maintained on the Company’s servers, hard drives, laptops, hand-held devices and any back-up tapes. This information should include, but may not necessarily be limited to, any e-mail, files, records, correspondence, notes or other documents or electronic information related to [the dispute]. If the Company has installed any programs for the automated deletion of e-mail or other electronic files, those programs should be suspended to the extent necessary to prevent the destruction of discoverable information. Back-up tapes potentially containing discoverable information should be removed from routine recycling until further notice. The Company should fulfill this duty to preserve from the date of this letter until the resolution of its dispute with XYZ Designs. Failure to promptly preserve such evidence, whether intentional or merely negligent, may result in substantial sanctions and/or additional litigation, in addition to the loss of evidence for use in the Company’s own claims and/or defenses.

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264 Appendix This memo has been addressed to you, but you should forward this memo to your employees who may have information concerning the matters at issue to [the dispute]. We greatly appreciate your prompt attention to these issues, and look forward to helping you bring this matter to a successful conclusion. If you have any questions, please do not hesitate to contact me.

Very truly yours, John Smith, Esq.

Appendix

2. Sample Pleadings: Complaints, Answers Use your firm’s document management system as your primary place to search for samples, particularly for samples from the particular partner you are working for or associates whose work you know is excellent. What follows are some simple samples that you will likely want to “beef up” to include additional facts and a stronger story for your client.

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2. A. Sample Complaint U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.

Plaintiffs, v. XYZ Inc. Defendant.

) ) ) ) ) ) ) ) ) )

Case No.: ______________

COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF Plaintiff, ABC Corp. (“ABC” or “Plaintiff”), for its complaint against Defendant XYZ Inc. (“XYZ” or “Defendant”), alleges as follows: NATURE OF THE ACTION 1. This is an action for preliminary and permanent injunctive relief, federal copyright infringement under 17 U.S.C. §§ 101 et seq. 2. Plaintiff brings this action to prevent the continuing and irreparable harm that Plaintiff is suffering and will continue to suffer due to Defendant’s willful infringement of the copyrights in Plaintiff’s software and manuals. THE PARTIES 3. Plaintiff is a Delaware corporation with its headquarters and principal place of business at _____________. 4. Upon information and belief, Defendant is a Delaware corporation with its headquarters and principal place of business at _________. JURISDICTION AND VENUE 5. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1332(a), and 1338(a). This Court also has jurisdiction pursuant to the doctrine of supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).

Appendix 6. [Defendant is subject to the personal jurisdiction of this Court because Defendant is a resident of this jurisdiction.] [Upon information and belief, Defendant is subject to the personal jurisdiction of this Court because, among other things, Defendant has purposefully availed itself of the benefits of doing business in the this District by providing services to the residents of this District and by selling products and services to businesses and individuals located in this District]. 7. [Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), 1391(c), and 1400(a) because each Defendant has committed acts within this judicial district giving rise to the action.] [Venue is proper under 28 U.S.C. §§ 1400(a) and 1391(c) in that, upon information and belief, Defendants are residents of this District because they are companies subject to personal jurisdiction in this District.] FACTUAL ALLEGATIONS 8. Plaintiff is a company specializing in _____. 9. Plaintiff is the copyright owner in an original work of art inter alia, in the original work of art known as ____. 10. [Work] is a wholly original work that is copyrightable subject matter under the laws of the United States. 11. Plaintiff filed copyright applications for [work]. The issued registrations for said works are attached hereto as Exhibit A. 12. Plaintiff is currently and at all relevant times has been the sole proprietor of all rights, title and interest in and the copyrights of [work]. 13. Plaintiff has produced the subject work in strict conformity of the provisions of the Copyright Act of 1976, and all laws governing copyrights. The [work] is an original work of authorship developed by Plaintiff and its employees as works for hire, is owned by Plaintiff. 14. Upon information and belief, the Defendant has knowingly and willfully copied and distributed the derivative works of Plaintiff’s [work] in their entirety and on that basis allege that the Defendant copied the [work] for the specific purpose of infringing Plaintiff’s copyrights and selling illegal and unauthorized copies of the [work].

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Appendix 15. The natural and probable foreseeable result of Defendant’s wrongful conduct has been or contained to deprive the Plaintiff of the benefits of selling the its work embodying [work] and licensing others to sell products embodying [work], and to be deprived the true good will and injure Plaintiff’s relationship with present and prospective customers. 16. Upon information and belief, Plaintiff has lost and will continue to lose substantial revenues and have also sustained damage as a result of Defendant’s wrongful conduct. 17. Defendant’s production and sale of the infringing products, and Defendant’s wrongful conduct has also deprived and continues to deprive the Plaintiff an opportunity of expanding its good will. 18. Plaintiff is informed and believes, and that on that basis alleges, that unless enjoined by this Court, Defendant will continue its course of conduct and to wrongfully use, infringe upon, sell, and otherwise profit from Plaintiff’s copyrighted work. 19. Plaintiff, as a direct and proximate result of the acts of the Defendant alleged above, has already suffered irreparable damages and has sustained loss profits. Plaintiff has no adequate remedy at law to address all of the injuries that Defendant has caused and intends to cause by their conduct. 20. Plaintiff will continue to suffer irreparable damage and sustain loss profits until Defendant’s actions as alleged above are enjoined by the Court. COUNT 1 Copyright Infringement (17 U.S.C. §§ 101 et seq.) 21. Plaintiff incorporates the prior paragraphs by reference. 22. [Work] is an original copyrightable work. Plaintiff has complied in all respects with 17 U.S.C. § 101, et seq. and secured the exclusive rights in the work and has filed its copyright registration in the work with the Copyright Office in accordance with its rules and regulations. 23. Plaintiff owns all rights, title, and interest in the copyright of [work]. 24. Upon information and belief, Defendant has infringed and is infringing the copyrights of [work] by unlawfully reproducing and distributing identical copies of [work], in violation of the United States Copyright Act, 17 U.S.C. §§ 106 et seq.

Appendix 25. Defendant’s infringements were and are willful, in bad faith, and executed with full knowledge of Plaintiff’s copyright, and in conscious disregard for Plaintiff’s exclusive rights in the protected work. 26. Defendant’s deliberate infringement of Plaintiff’s copyrights has greatly and irreparably damaged Plaintiff, and Defendants will continue to damage Plaintiff greatly and irreparably unless enjoined by this Court. In the absence of injunctive relief, Plaintiff will have no adequate remedy at law. Accordingly, Plaintiff is entitled to a temporary and permanent injunction in accordance with 17 U.S.C. § 502. 27. Plaintiff is further entitled to recover from Defendant the damages, including attorneys’ fees, it has sustained and will sustain, and any gains, profits and advantages obtained by Defendant as a result of Defendant’s acts of infringement alleged above. At present, the amount of such damages, gains, profits and advantages cannot be fully ascertained by Plaintiff. JURY DEMAND PLAINTIFF hereby demands trial by jury on all issues triable to a jury.

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Appendix

2. B. Sample Declaratory Judgment Complaint U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

COMPLAINT FOR DECLARATORY RELIEF Plaintiff, ABC Corp. (“ABC” or “Plaintiff”), for its complaint against Defendant XYZ Inc. (“XYZ” or “Defendant”), alleges as follows: NATURE OF THE ACTION 1. ABC maintains that XYZ is not the copyright owner and has no right to the copyrights. 2. This is an action seeking the Court’s declaration that: a) XYZ does not own any copyright in [work]; b) That ABC is not required to include a copyright notice identifying XYZ as the copyright owner on the [work]; and c) That ABC has not infringed upon any copyright in [work]. PARTIES 3. Plaintiff is a Delaware corporation with its headquarters and principal place of business at _____________. 4. Upon information and belief, Defendant is a Delaware corporation with its headquarters and principal place of business at _________.

Appendix JURISDICTION AND VENUE 5. Pursuant to 28 U.S.C. § 1331, this Court has subject matter jurisdiction to grant ABC the declaratory relief requested herein because the action arises under the Copyright Act, 17 U.S.C. § 101 et seq. 6. [Defendant is subject to the personal jurisdiction of this Court because Defendant is a resident of this jurisdiction.] [Upon information and belief, Defendant is subject to the personal jurisdiction of this Court because, among other things, Defendant has purposefully availed itself of the benefits of doing business in the this District by providing services to the residents of this District and by selling products and services to businesses and individuals located in this District]. 7. [Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), 1391(c), and 1400(a) because each Defendant has committed acts within this judicial district giving rise to the action.] [Venue is proper under 28 U.S.C. §§ 1400(a) and 1391(c) in that, upon information and belief, Defendants are residents of this District because they are companies subject to personal jurisdiction in this District.] STATEMENT OF FACTS 8. ________________ COUNT ONE DECLARATORY RELIEF 9. ABC incorporates by reference its allegations in paragraphs 1 through 15 above, inclusive, as if each were separately restated here. 10. In light of XYZ’s assertion that ABC has infringed XYZ’s copyright in the [work], ABC has an objectively real and reasonable apprehension of litigation in the immediate future if it fails to do so. 11. Without a prompt determination of whether ABC must license and include a copyright notice identifying XYZ as the copyright owner, ABC cannot know with any certainty whether it is exposing itself to liability if it does not agree to license and include the copyright notice identifying XYZ as the copyright owner. 12. A declaratory judgment in this case would serve a useful purpose in clarifying and settling the respective legal rights and obligations of the parties, stop the misleading of the public as to copyright ownership, preserve ABC’s

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272 Appendix rights and it will terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to this proceeding. PRAYER FOR RELIEF WHEREFORE, Plaintiff, for the foregoing reasons, and based on the evidence that will be introduced in this matter, respectfully requests that the Court grant the following relief: a) Enter a declaratory judgment that XYZ does not own any copyright in [work]; b) Enter a declaratory judgment that ABC is not required to include a copyright notice identifying XYZ as the copyright owner on the [work]; and c) Enter a declaratory judgment that ABC has not infringed upon any copyright in [work]; and d) Enter a declaratory judgment that ABC such other and further relief the Court deems just and appropriate. JURY TRIAL DEMAND Pursuant to Fed. R. Civ. P. 38(b), Plaintiff hereby demands a trial by jury on any issue triable of right by a jury.

Appendix

3. Sample Discovery: Requests and Responses Sample interrogatories, requests for production, deposition notices (including corporate representative depositions) can be found in Nimmer, Chapter 36. Sample interrogatories and responses to interrogatories are included in this Appendix. The instructions and general objections included in these samples would be similar to those found in requests for production and requests for admissions. Sample interrogatories, requests for production, and requests for admission are included in the book in Chapter 6.

3. A. Sample Interrogatories As with all of the other samples in this Appendix, these interrogatories are only one example. They are not perfect, and they are not the best. They should be narrowed, broadened, broken out, increased or decreased in number or scope, depending on the facts of your case, the Local Rules, the style of the partner you are working with, and your personal style. As always, look at samples in your firm’s document management system first for samples appropriate for your jurisdiction and partner. U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

PLAINTIFF’S FIRST SET OF INTERROGATORIES TO DEFENDANT Plaintiff ABC Corp. ( “Plaintiff”) by its undersigned attorneys, propounds these Interrogatories, to which XYZ Inc. (“Defendant”) shall respond separately and fully within the time prescribed by the Federal Rules of Civil Procedure and the Local Rules, in accordance with the Instructions and Definitions set forth hereinafter.

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Appendix INSTRUCTIONS 1. If in responding to an interrogatory, you assert a privilege with respect to documents or communications, you shall provide the following information for each such document or communication in a “privileged log” or similar format: (i) type of document/communication; (ii) general subject matter of the document/communication; (iii) date of the document/communication; (iv) author(s) of the document/communication; (v) addressee(s) and any other recipient(s) of the document/ communication; and (vi) custodian of the document/communication, where applicable. 2. Each interrogatory that seeks information relating in any way to communications to, from, or within a business and/or corporate entity is hereby designated to mean, and should be construed to include, all communications by and between representatives, employees, agents, directors, trustees, and/or servants of the business and/or corporate entity. 3. If, in answering these interrogatories, the responding party encounters any ambiguities when construing a question, instruction, or definition, the responding party’s answer shall set forth the matter deemed ambiguous and the construction used in answering. 4. An Interrogatory requesting you to “describe” or to “explain” includes an identification of all relevant circumstances, including but not limited to an identification of persons and dates. 5. For an Interrogatory requesting you to “specify in detail” or to “identify in detail” or to “describe in detail” or to “state all facts” or the “facts upon which you rely” relating to an allegation, fact, legal theory, contention, or denial, please furnish a full and complete statement of the factual basis of any such allegation, fact, legal theory, contention, or denial, the reason or rationale that such facts so relate or pertain, and how such facts so relate or pertain.

Appendix DEFINITIONS Notwithstanding any definition below, each word, term, or phrase used in these Interrogatories is intended to have the broadest meaning permitted under the Federal Rules of Civil Procedure. 1. The term “Complaint” shall refer to the Complaint filed in this case and available at docket entry number 1. 2. The term “Answer” shall refer to the Answer filed in this case by Defendant on [date]. 3. The term “Work 1” shall refer to the work attached to the Complaint as Exhibit 1. 4. The term “Work 2” shall refer to the work attached to the Complaint as Exhibit 2. 5. The term “The Works” shall refer to Work 1 and Work 2. 6. The term “Infringing Product” shall refer to the work pictured in the photo attached to the Complaint at Exhibit 5. 7. The term “third party” or “third parties” means any person or entity not named as a party to this lawsuit. 8. “Document” or “documents” as used herein shall include all “writings” and “recordings,” to the broadest extent permitted by the Federal Rules of Civil Procedure, including without limitation the originals (absent any original, a copy) of any recordation of any intelligence or information, whether handwritten, typed, printed or otherwise visually or aurally reproduced, letters, compilations, data, notebooks, laboratory notebooks, work papers, graphs, charts, blueprints, books, pamphlets, brochures, circulars, manuals, instructions, ledgers, drawings (including photographs), diaries, sales literature, advertising literature, agreements, minutes of meetings, punch cards, magnetic tape or wire, other machine producible records including films, computer disks and files, software, electronic mail, videotapes and sound reproductions, printout sheets, summaries or records of telephone conversations, personal conversations or interviews, and/or any and all other writings, typings, printings, drafts, red-lines, mark-ups, margin notes, copies and/or mechanical or photographic reproductions or recordations thereof in your possession, custody or control, or otherwise reasonably available to you, and/or any of its representatives, or known to any of your representatives, whether or not prepared by them.

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Appendix 9. “Document” or “documents” also includes all copies which are not identical to the originals, such as those bearing marginal comments, alterations, notes or other notations not present on the original documents as originally written, typed or otherwise prepared. 10. “Communication” means any transmission, conveyance, or exchange of information whether by written, oral, or other means, including but not limited to electronic communications and electronic mail. 11. The terms “evidence,” “evidencing,” “concern,” “refer to,” “relate to,” “concerns,” “refers to,” “relates to,” “concerning,” “referring to,” or “relating to” shall mean summarize, demonstrate, constitute, reflect, contain, study, analyze, consider, explain, mention, show, discuss, describe, comment upon, or result from. 12. When referring to a person, to “identify” means to state the person’s full name, present or last known address, and, when referring to a natural person, additionally, the present or last known place of employment. If the business and home telephone numbers are known to the answering party, and if the person is not a party or present employee of a party, said telephone numbers shall be provided. Once a person has been identified in accordance with this subparagraph, only the name of the person need be listed in response to subsequent discovery requesting the identification of that person. When referring to documents, to “identify” means to state the: (i) type of document; (ii) general subject matter; (iii) date of the document; and (iv) author(s), addressee(s), and recipient(s) or, alternatively, to produce the document. 13. The terms “occurrence” and “transaction” mean the events described in the Complaint and other pleadings, as the word “pleadings” is defined in Fed. R. Civ. P. 7(a). 14. The terms “you” or “your” include the person(s) to whom these requests are addressed, and all of that person’s agents, representatives and attorneys. 15. The present tense includes the past and future tenses. 16. “All” means “any and all”; “any” means “any and all.” 17. “Including” means “including but not limited to.”

Appendix INTERROGATORIES 1. Identify and describe in detail the design of the Infringing Work, including when it was designed, where it was designed, by whom it was designed, and their relationship to Defendant, and anything that was referred to during the design. 2. Identify and describe in detail the manufacture of the Infringing Work and any copies of it, including the number of units that have been manufactured, when they were manufactured, where they were manufactured, by whom they were manufactured and their relationship to Defendant. 3. If a third party was involved in the design, creation or manufacture of the Infringing Work, identify any and all other works associated with Defendant with which that third party was also associated, and include a detailed description of the work and the third party’s involvement in that work. 4. Identify and describe in detail your current, past and projected future inventory of the Infringing Work. 5. Identify and describe in detail all sales or giveaways of the Infringing Work, including the number of units sold, the channel through which they were sold including whether they were sold through Web sites, through catalogs, at trade shows, in retail locations, the specific entity that effected the sale, and to whom they were sold. 6. Identify and describe in detail all promotion and offering for sale of the Infringing Work, including identification of all Web sites, catalogs, trade shows, and retail locations through which the Infringing Work has been promoted or offered for sale. 7. Identify and describe in detail all of your revenue associated with the Infringing Work. 8. Identify and describe your profit for the period since the Infringing Work was first promoted or offered for sale. 9. Identify and describe in detail the costs associated with the Infringing Work, including any fees paid to any third parties for design, creation or manufacture. 10. Identify all witnesses with knowledge of information concerning your design, creation, manufacture, promotion, offering for sale, sale and other

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278 Appendix distribution of the Infringing Work, and specify the extent of each individual’s knowledge and their relationship to you. 11. Identify and describe in detail when you first became aware of the Works, including when and where you first saw them. 12. Identify and describe in detail when you first became aware of Plaintiff and his artwork, including when and where you first saw the artwork. 13. Identify all copies of the Works in your possession and describe in detail when, from whom, and why you obtained such copies. 14. Identify and describe any copyright searches effected by you or on your behalf. 15. Identify and describe any copyright registrations that you have applied for or obtained, including for the Infringing Work. 16. Identify and describe any prior or pending instances of copyright infringement alleged by or against you. 17. Identify and describe in detail all facts in support of your Affirmative Defenses numbered 1 through 7 as articulated in your Answer. 18. Identify and describe in detail all dealings that you have had with Plaintiff, including all communications you have had with Plaintiff regarding this litigation and any of the issues raised herein. 19. Identify and describe in detail all communications you have had with any third party regarding this litigation and any of the issues raised herein.

Appendix

3. B. Sample Response to Interrogatories U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

PLAINTIFF’S OBJECTIONS AND RESPONSES TO THE DEFENDANT’S FIRST SET OF INTERROGATORIES Pursuant to Rule 33 of the Federal Rules of Civil Procedure and the Local Rules, Plaintiff ABC Corp. (“Plaintiff”) hereby submits its objections and responses to Defendant XYZ Inc.’s (“Defendant”) Firts Set of Interrogatories to Plaintiff.

GENERAL OBJECTIONS 1. These General Objections are hereby incorporated by reference into the responses made with respect to each separate interrogatory. The inclusion of any specific objection to an interrogatory or request for production in any response below is neither intended as, nor shall in any way be deemed, a waiver of any General Objection or of any other specific objection made herein or that may be asserted at a later date. In addition, the failure to include at this time any general or specific objection to an interrogatory or request for production is neither intended as, nor shall in any way be deemed, a waiver of Plaintiff’s rights to assert that or any other objection at a later date. 2. Plaintiff objects to the interrogatories as unduly burdensome and oppressive to the extent they (a) seek information that is not relevant to any issue in this action or are not reasonably calculated to lead to the discovery of admissible evidence and/or (b) seek information that is unduly burdensome to locate or obtain.

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280 Appendix 3. Plaintiff objects to the interrogatories to the extent that they are vague, ambiguous, confusing, overly broad, unduly burdensome, oppressive or otherwise lack sufficient precision or particularity to permit response. 4. Plaintiff objects to the interrogatories to the extent they seek information protected from disclosure by the attorney-client privilege, the attorney work-product doctrine, or any other applicable statutory or common-law privilege, prohibition, limitation or immunity from disclosure. Plaintiff will not provide such privileged information and any inadvertent production thereof shall not be deemed a waiver of any privilege, immunity, prohibition or limitation with respect to such information or of any work-product doctrine which may be attached thereto. Nothing contained in these responses is intended as, or shall in any way be deemed, a waiver of any attorney-client privilege, attorney work product doctrine or any other applicable privilege, immunity, prohibition or limitation. 5. Plaintiff objects to the interrogatories to the extent they differ from or seek to expand the requirements set forth in the Federal Rules of Civil Procedure or the Local Rules of this Court. 6. Plaintiff objects to the interrogatories to the extent they seek information not currently in its possession, custody or control, or refer to persons, entities or events not known to it, on the grounds that such interrogatories seek to require more of Plaintiff than obligations imposed by law, would subject Plaintiff to unreasonable and undue annoyance, burden and expense and would seek to impose upon Plaintiff an obligation to investigate or discover information or materials from third parties or sources accessible to Defendant. 7. Plaintiff objects to the definitions and instructions set forth in the interrogatories to the extent said definitions or instructions differ from the Federal Rules of Civil Procedure, the Local Rules of this Court and the applicable case law developed thereunder. 8. Plaintiff objects to the definitions and instructions set forth in the interrogatories to the extent said definitions or instructions purport to enlarge, expand or alter in any way the plain meaning and scope of any specific demand on the grounds that such enlargement, expansion or alteration renders said demand vague, ambiguous, unintelligible, unduly broad and uncertain. 9. Plaintiff will respond to the interrogatories based on the best of its present knowledge, information and belief. Its responses are at all times subject to such additional or different information that discovery or further investigation may disclose and, while based on the present state of its recollection, are subject to such refreshing of recollection, and such additional knowledge of facts, as may result from further discovery or investigation.

Appendix 10. Plaintiff objects to these interrogatories to the extent that they seek information relating to issues of law, law applied to facts, or abstract issues that are not based on the facts of this case. These responses are made solely for the purpose of this action. Each response is subject to all objections as to competence, relevance, materiality, admissibility, and any and all other objections that would require the exclusion of any statement contained herein if such statement were made by a witness present and testifying in court. All such objections and grounds are reserved and may be interposed at the time of trial.

RESPONSES TO INTERROGATORIES 1. Provide the name, address, and relationship to you of all persons who provided information used in the preparation of these answers. Objection and Response John Smith, Title for Plaintiff, Address. 2. Identify all persons with whom Plaintiff discussed the planning and creation of the Registered Works. Objection and Response Plaintiff objects to this interrogatory as overbroad. Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows. _______. 3. Identify all collaborators or contributing authors of the Registered Works. Objection and Response Plaintiff worked on these images on his own and had no collaborators. 4. Identify all sources consulted in creating and planning the Registered Works. Objection and Response Plaintiff objects to this interrogatory as being overbroad and vague as to the term “sources.” Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows. ___________.

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Appendix 5. Describe in detail how the Registered Works were converted from an idea into an expression. Objection and Response Plaintiff objects to this interrogatory on the grounds that the parties are competitors and the interrogatory seeks information that is proprietary and confidential commercial information. Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows. _______. 6. Identify all facts supporting your contention that Defendant infringed any of your rights in the Registered Works, including the identification of any of Defendant’s allegedly infringing works. Objection and Response Plaintiff objects to this interrogatory on the grounds that it requests information that is already in the Defendant’s possession. Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows: This interrogatory can be answered by referring to the tracing of the infringing item compared to the original artwork as showcased in Exhibit __ of the Complaint. 7. Describe in detail all similarities between the Registered Works and any of Defendant’s alleged infringing works, including the ____. Objection and Response Plaintiff objects to this interrogatory on the grounds that it requests information that is already in the Defendant’s possession. Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows: This interrogatory can be answered by referring to Exhibit __ of the Complaint. 8. Describe in detail how you first learned of Defendant’s allegedly infringing works, including the ____, and the identity of the person or persons who first learned of the Defendant’s allegedly infringing works. Objection and Response _________. 9. Describe in detail what actions you took after you first learned of Defendant’s allegedly infringing works, including the ____.

Appendix Objection and Response Plaintiff objects to this interrogatory as being overbroad and vague as to the term “actions.” Plaintiff also objects to this interrogatory to the extent it seeks information covered by the attorney-client or work product privileges. Subject to and without waiving the foregoing general and specific objections, the Plaintiff states as follows: _____. 10. Describe in detail all damages you have allegedly incurred due to Defendant’s alleged infringement of the Registered Works, including your basis and evidentiary support for your claim of actual damages and statutory damages. Objection and Response The damages Plaintiff has suffered is as follows: (1) the potential lost opportunity to license the images in the product category; (2) the loss of royalty revenues; (3) any profits earned by Defendant and the loss of goodwill by having unauthorized works in the marketplace; and (4) statutory damages under 17 U.S.C. § 504(c)(2), at the rate of up to $150,000 per image. 11. Describe in detail the basis, including the evidentiary support, for your claim for attorneys’ fees. Objection and Response The infringed upon works were registered with the Copyright Office before Defendant began infringing on the works therefore we are entitled to attorneys’ fees. The court has the ability to award attorneys’ fees under 17 U.S.C. § 505.

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3. C. Sample Protective Order U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

PROTECTIVE ORDER To facilitate discovery and protect the confidentiality of and rights to information and documents disclosed in connection with this litigation, the parties hereby stipulate to the following: 1. Applicability of This Protective Order. All testimony, information, things, and documents filed with the Court or produced by any party or nonparty in discovery in this action shall be governed by this Protective Order. 2. Use of Information Produced Pursuant to This Order. Testimony, information, things and documents produced or exchanged in discovery in this case and designated by a party or nonparty as “Confidential” or “Highly Confidential—Attorneys’ Eyes Only” pursuant to the terms of this Protective Order (hereafter collectively referred to as “Confidential Material”) shall not be made available to any person or entity except as authorized under this Protective Order. Confidential Material shall be used, by the party or parties to whom the information is produced, solely for the purpose of litigating this case, including appeals. Such information and material shall not be used or disclosed to any other person or entity for any other use or purpose, unless otherwise agreed in writing by the producing party or so ordered by a court. For purposes of this Protective Order, the party or nonparty designating testimony, information, things or documents as Confidential Material is defined as the “Designating Party.” Nothing contained in this Protective Order shall affect the right of a Designating Party to disclose or use its own Confidential Material for any purpose.

Appendix 3. Confidential Information Designation. A party or nonparty may designate as “CONFIDENTIAL” any document, material, item, deposition testimony, or information that is filed with the Court or produced in discovery in this action whether in written, oral, electronic, graphic, audiovisual, or any other form, that the designating party in good faith believes contain information that is (a) confidential, sensitive, competitive, or potentially invasive of an individual’s privacy interests; (b) not generally known; or (c) not normally revealed to the public or third parties or, if disclosed to third parties, is such that the designating party has required such third parties to maintain the information in confidence. 4. Highly Confidential—Attorneys’ Eyes Only Designation. A party or nonparty may designate as “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY” any document, material, item, deposition testimony, or information that is filed with the Court or produced in discovery in this action whether in written, oral, electronic, graphic, audiovisual, or any other form, such materials as contain (a) particularly sensitive information relating to research, development, or production of products; (b) highly sensitive business or research information; (c) highly sensitive financial information or marketing plans and forecasts, customer lists, pricing data, cost data, customer orders, or customer quotations; (d) pending or abandoned patent, trademark and copyright applications, foreign or domestic, unless published or otherwise publicly available; or (e) such other documents, information, or materials that relate to confidential information that the producing party reasonably believes is of such nature and character that the unauthorized disclosure of such information could irreparably injure the producing party. 5. Designating and Marking Confidential Material. Confidential Material shall be designated and marked as follows: a. A document is to be designated as Confidential Material by stamping or writing on it one of the following legends, or an equivalent thereof: “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY.” Whichever legend is used shall be placed on the first page of the document and on each page that the Designating Party claims to contain Confidential Material. b. Information or material produced in an electronic medium (such as floppy diskette, CD, DVD, or tape) is to be designated as Confidential Material by marking or labeling the medium container with one of the legends specified in subsection 5(a) above. If any person or entity who receives such a designated electronic medium prints or otherwise transfers to another medium any of the information contained on the electronic medium, any resulting document or other medium shall be

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286 Appendix marked by that person or entity as Confidential Material in accordance with subsection 5(a) above or this subsection 5(b). c. A physical exhibit is to be designated as Confidential Material by affixing to it a label with one of the legends specified in section 5(a) above. d. A discovery response is to be designated as Confidential Material by placing, on the first page of the set of responses and on each page that contains information that the Designating Party claims to be Confidential Material, one of the legends specified in subsection 5(a) above. e. The relevant confidential portions of a deposition transcript (including exhibits) are to be designated as Confidential Material (i) by making a statement to that effect on the record, during the deposition, or (ii) by sending to all other parties, the court reporter for the deposition, and all other persons known to the Designating Party to have received a copy of the deposition transcript, within twenty days after counsel for the Designating Party receives the deposition transcript, a letter or other written notice designating the relevant portions, of the transcript as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL— ATTORNEYS’ EYES ONLY.” The letter or other notice shall identify the appropriate level of confidentiality, and identify the pages and lines, and/ or exhibits, to be Confidential Material. Each copy of the transcript, and portions thereof, so designated shall be marked, by the person receiving the letter or other notice, with the legend specified in subparagraph 5(a) above indicating the level of confidentiality claimed by the Designating Party and shall be governed by the terms of this Protective Order. A Designating Party may comply with this portion of the Protective Order by designating the entire deposition transcript as either “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY” and then, upon written request from any other party, lowering or removing the level of confidentiality for specific portions of the deposition transcript. If a portion of a deposition is designated on the record, during the deposition, as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL— ATTORNEYS’ EYES ONLY,” the deposition shall continue, and if any persons not approved for access to Confidential Material under this Protective Order are attending the deposition, they shall leave. The court reporter and/or videographer shall separately bind any portion of the transcript of the deposition or hearing that has been designated to contain Confidential Material. Copies of the separately bound portions of

Appendix the transcript containing Confidential Material may be provided only to persons permitted by the other provisions of this Protective Order to receive such Confidential Material. When any such separately bound portion of the transcript is provided by the court reporter and/or videographer, it shall be provided in a separate, sealed envelope. The Parties shall not be permitted to discuss or disclose the contents of the deposition until such time for designation has occurred. 6. Inadvertent or Unintentional Disclosure of Confidential Information by Producing Party. The inadvertent or unintentional disclosure by the producing party of Confidential Information, either by way of document production or deposition testimony, regardless of whether the information was so designated at the time of disclosure, shall not be deemed a waiver in whole or in part of a claim of confidentiality, either as to the specific information disclosed or as to any other information relating thereto on the same or related subject. Any such inadvertently or unintentionally disclosed Confidential Information not designated as such shall be so designated, by giving written notice to all parties, as soon as reasonably possible after the producing party becomes aware of the inadvertent or unintentional disclosure. Within three (3) business days of such notice and receipt of substitute copies bearing the appropriate confidentiality legend, the receiving party shall return said documents and things and not retain copies thereof, destroy said documents and things, or raise this matter with the Court and request an Order permitting the receiving party to retain the originally disclosed information. Unless the receiving party is opposing the return or destruction of such information, the receiving party also shall use good faith efforts to arrange for the return or destruction of said documents and things from parties and individuals to whom it may have distributed the documents or things but who were not authorized to receive Confidential Information under this protective order. If the receiving party opposes the return or destruction of such information, it shall, after receiving notice from the producing party, nonetheless use good faith efforts to avoid any further distribution of such information to unauthorized parties or individuals, pending resolution of the issue by the Court. The receiving party’s disclosures, prior to the receipt of notice from the producing party of a new designation, of Confidential Information to unauthorized parties or individuals shall not be deemed a violation of this protective order. If the receiving party is unable to arrange for the return or destruction of such documents and things from such unauthorized parties or individuals, the receiving party shall notify the producing party within three (3) business days of notice from the producing party of the identity of such unauthorized parties or individuals and the efforts made to secure the return or destruction of such documents and things. Upon the re-designation of information under this paragraph, upon agreement of the

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288 Appendix parties, or by Court order, said information shall thereafter be treated as Confidential Information, as designated by the producing party. 7. Inadvertent or Unintentional Disclosure of Privileged Information. If a producing party inadvertently discloses to a receiving party information that is privileged or otherwise immune from discovery, said producing party shall promptly upon discovery of such disclosure so advise the receiving party in writing and request that the item or items of information be returned, and no party to this action shall thereafter assert that such disclosure waived any privilege or immunity. It is further agreed that the receiving party will immediately return such inadvertently produced item or items of information and all copies thereof upon receiving a written request for the return of such item or items of information. The party having returned such inadvertently produced item or items of information may thereafter seek production of any such item or items, including by challenging the privilege or immunity claimed by the disclosing party. If data or information has been extracted or copied from a document that is thus subsequently returned, that information and/or data shall be expunged and not used. To the extent, however, that, before being notified of the inadvertent production, the receiving party has in good faith used such information and/or data in documents filed with the Court or at depositions, the receiving party shall have no obligation to expunge such information and/or data from, or otherwise to alter, any such document filed with the Court or the transcript of any such deposition. 8. Disclosure of “Highly Confidential—Attorneys’ Eyes Only” Materials. Information and material designated as “HIGHLY CONFIDENTIAL— ATTORNEYS’ EYES ONLY” may be disclosed only to the following persons, unless the Designating Party first otherwise agrees in writing or the Court first otherwise orders: a. Full-time employees, associates and partners of outside counsel for the parties to this litigation, including necessary secretarial, clerical, and litigation support or copy service personnel assisting such counsel, provided, however, that none have any relationship whatsoever as employees, officers, directors or owners of any party to this litigation; b. Consultants or expert witnesses performing services in connection with the prosecution or defense of this litigation, provided that each such person is not an officer, director, owner or employee of any party, and provided that each such person executes a copy of the Consent attached to this Order. Counsel disclosing Confidential Material to consultants or expert witnesses pursuant to this section shall provide a copy of each executed Consent to opposing counsel.

Appendix The party wishing to make a disclosure to an outside consultant or expert witness pursuant to subsection 7(b) above shall identify that person in writing to all other parties and shall provide a copy of that person’s résumé describing all relevant employment, so that it is received by all other parties at least ten calendar days prior to the disclosure of any Confidential Material to that person. A party (such party is defined as the “Objecting Party” for purposes of this section) has ten calendar days from the date of receipt of identification of a consultant or expert witness to send written notice of its objection to disclosure and the grounds for such objection to the party intending to disclose Confidential Material. If no objection is made within ten calendar days, then the disclosure may be made. Upon the making of such an objection, the Objecting Party then shall have ten calendar days from sending the notice of its objection in which to challenge, by filing the appropriate motion with the Court, the disclosure of the Confidential Material to the outside consultant or expert witness. If the Objecting Party does not file the appropriate motion with the Court within that time, or within any additional time within which to move as may be granted by the Court or agreed to by stipulation of the parties, the Objecting Party waives its right to challenge the disclosure of Confidential Material to the identified outside consultant or expert, and the Confidential Material may then be disclosed to the identified outside consultant or expert witness. An identified outside consultant or expert witness shall not be provided any Confidential Material while a timely-filed objection or motion challenging such consultant or expert is pending. The identification of any nontestifying consultant pursuant to this section 7 shall not waive or detract from any work product protection that would otherwise apply; c. The Court, Court personnel, and court reporters; d. Deposition witnesses, where at least one of the following conditions applies: i. the witness is an employee of the Designating Party when the disclosure is made; ii. the attorney taking the deposition and showing the witness the Confidential Material represents the Designating Party; iii. the witness’ name appears on the Confidential Material as a person who has previously seen or received the Confidential Material, or it is otherwise established that the witness has previously

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Appendix seen or received the Confidential Material or knows the information contained within it; iv. the Designating Party has consented on the record of the deposition to the showing of the Confidential Material to the witness; or v. at least ten business days before the deposition, the party wishing to show the witness the Confidential Material notifies the Designating Party in writing of its intent to do so, with a specific listing of the Confidential Material to be shown, and the Designating Party fails to provide, within five business days of receipt of the notice, written objection to this use of Confidential Material. If a timely written objection is provided, the Confidential Information listed in the written objection shall not be shown to the witness unless and until the party wishing to show that Confidential Material to the witness moves for and obtains appropriate relief from the Court. Witnesses being shown Confidential Material under subsection (v) above must sign the Consent Form annexed to this Order before being shown the Confidential Material. Counsel defending the deponent to which Confidential Information is disclosed during deposition shall provide to counsel for the Designating Party, prior to the start of the deposition, a copy of the executed Consent Form. 9. Disclosure of Confidential Materials. Materials designated as “CONFIDENTIAL” may be revealed to any of the categories of persons designated in section 7 above, as well as the parties to this litigation and up to three representatives who are employees of any named party to the litigation, provided that the party identifies its representatives in writing before disclosing Confidential Material to them, and further provided that each designated representative executes, before receiving the disclosure, a copy of the Consent Form attached to this Order. 10. Use of Confidential Material by Designating Party. Nothing in this Protective Order limits a party’s ability to show materials which that party has designated as “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY” or “CONFIDENTIAL” to whomever the Designating Party may deem appropriate. Further, nothing in this Protective Order limits a party’s ability to show materials designated by another party as “HIGHLY CONFIDENTIAL— ATTORNEYS’ EYES ONLY” or “CONFIDENTIAL” to the party that designated the materials as “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY” or “CONFIDENTIAL” , including any present officer, director, employee, or representative thereof.

Appendix 11. Jurisdiction. Each person receiving Confidential Material under the terms of this Protective Order hereby agrees to subject himself or herself to the jurisdiction of this Court for purposes of any proceedings relating to the performance under, compliance with, or violation of this Protective Order. 12. Protecting Confidential Materials. Each person who receives any Confidential Material shall exercise due and proper care, in connection with the storage, custody, use, and dissemination of such material, to avoid any intentional or inadvertent disclosure to persons to whom disclosure is not permitted under this Protective Order. 13. Challenging Designation of Materials as Confidential. A party may challenge the designation of Confidential Material according to the procedure described below or any other procedure permitted by the Court: a. If a party believes that material designated by another party as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY” has not been properly so designated or should be reclassified or revealed to an individual not otherwise authorized to have access to such material under the terms of this Protective Order, that party (defined as the “Challenging Party” for purposes of this section) shall provide to the Designating Party written notice of this disagreement. The parties shall then attempt in good faith to resolve such dispute informally. b. If the parties cannot resolve their dispute informally, the Challenging Party may request appropriate relief from the Court. The Designating Party bears the burden to establish that the contested material is confidential and is entitled to the level of confidentiality selected by the Designating Party. The material involved shall be treated according to its original designation during the pendency of the challenge. 14. Submitting Confidential Materials to the Court. Confidential Material may be submitted to the Court only as follows: a. Where a party seeks to submit to the Court documents which have been designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIALATTORNEYS’ EYES ONLY” by another party, the submitting party shall bring a motion to file such documents under seal according to the procedures set forth in the Local Rules and shall lodge the documents containing the confidential information in accordance with the Local Rules. Where a party seeks to submit its own documents to the Court which have been designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL-ATTORNEYS’ EYES ONLY,” the submitting party may,

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292 Appendix in its discretion, bring a motion to file such documents under seal according to the procedures set forth in the Local Rules and lodge the documents containing the CONFIDENTIAL or HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY material in accordance with the Local Rules. Where a submitting party intentionally declines to seek an order sealing documents it submits to the Court containing its own CONFIDENTIAL or HIGHLY CONFIDENTIAL—ATTORNEYS’ EYES ONLY material, the submitted material will lose its status as CONFIDENTIAL or HIGHLY CONFIDENTIAL—ATTORNEY’S EYES ONLY material under this Protective Order. 15. Conclusion of Litigation. All provisions of this Protective Order restricting the communication or use of Confidential Material shall continue to be binding after the conclusion of this action, unless otherwise agreed by all the parties or ordered by the Court. No later than ninety calendar days following the settlement or conclusion of the litigation, a party in possession of Confidential Material shall either (a) return such documents to counsel for the Designating Party or, upon consent of the Designating Party, (b) destroy the documents and certify in writing that the documents have been destroyed. 16. Use of Confidential Material During Court Proceedings. If any Confidential Material is used in any Court pretrial proceeding in this litigation (including, but not limited to, conferences, oral arguments, and hearings), the Confidential Material shall not lose its status as Confidential Material through such use so long as the District Court Judge agrees. The parties shall take all steps reasonably necessary to protect the confidentiality of the Confidential Material during any such use, including, but not limited to, requesting in camera proceedings. The terms of this Protective Order do not preclude, limit, restrict, or otherwise apply to the use of documents at trial. The parties agree to meet and confer in good faith prior to trial to establish procedures for the use of Confidential Material at trial. 17. Improper Disclosure of Confidential Materials. If any Confidential Material is disclosed to any person to whom such disclosure is not authorized by this Protective Order, or other than in a manner authorized by this Protective Order, the party responsible for the disclosure shall, upon discovery of the disclosure, immediately inform the Designating Party of all facts pertinent to the disclosure that, after due diligence and prompt investigation, are known to the party responsible for the disclosure (including the name, address, telephone number, and employer of the person to whom the disclosure was made), shall immediately take all reasonable efforts to prevent further disclosure by each unauthorized person who received such information, and shall immediately require each unauthorized person to return all Confidential Material that was improperly disclosed to that person, all

Appendix copies made of the improperly disclosed Confidential Material, and all documents containing excerpts from or references to the improperly disclosed Confidential Material. 18. No Admissions. Compliance with this Protective Order in no way constitutes an admission by any party that any information designated pursuant to this Protective Order is or is not proprietary, confidential, or a trade secret. 19. Modification of Protective Order. Each party reserves the right to request that the Court modify the terms of this Protective Order in the event that the party believes that a modification is necessary. If such an application is made, all signatories of copies of the Certification, as well as persons described herein, shall remain bound by this Protective Order unless and until it is modified by the Court. SO STIPULATED: U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

CONSENT ACKNOWLEDGMENT UNDER PROTECTIVE ORDER OF ______________________________ [NAME] I, __________________________________, declare: 1. My address is _______________________________________. My present occupation is ___________________________.

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294 Appendix 2. I have received a copy of the Protective Order in this action. I have carefully read and understand the provisions of the Protective Order. 3. I will comply with all of the provisions of the Protective Order. I will hold in confidence, will not disclose to anyone other than those persons specifically authorized by the Protective Order, and will not copy or use, except for purposes of this action, any Confidential Materials that I receive in this action. 4. I do not have an ongoing relationship with any of the parties to this litigation or with any competitor of any party to this litigation and I am not a former agent, representative, officer, director, attorney, employee, or retiree of any party to this litigation (or any predecessor in interest of any party) except as follows: 5. By executing this acknowledgement, I agree to submit to the jurisdiction of the Superior Court of New Jersey for purposes of enforcement of the terms of the Protective Order. Executed this ____ day of, __________________, ___ at _________________ I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

[NAME]

Appendix

4. Sample Motion For Summary Judgment A sample motion for summary judgment can be found in Nimmer, Chapter 37. The motion will of course vary depending on the issues in your particular case. Below is a very simple sample motion for summary judgment where access and substantial similarity were to be demonstrated. The case law is not consistently from one Circuit and should not be relied upon. This sample is mainly for a format and general outline sample. U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


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Case No.: ______________

PLAINTIFFS’ MOTION AND MEMORANDUM IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT Pursuant to Rule 56 of the Federal Rules of Civil Procedure, Plaintiff hereby files this Motion and Memorandum in Support seeking entry of Summary Judgment in its favor and against Defendant, and show the Court as follows: BACKGROUND Plaintiff is an artist. (Statement of Undisputed Facts, ¶1)1. There are two copyrighted and infringed upon artworks at issue in this case, titled [work] and [work] (“Works”). Copies of the Works are attached hereto and incorporated herein as Exhibit __ and __, respectively. (SOF, ¶¶3,4). Both of the Works were created by Plaintiff in 1990. (SOF, ¶¶3,4,5). Plaintiff is the owner of the copyright in both of the Works. (SOF, ¶¶1,3,4,5). Accordingly, Plaintiff applied for and received copyright registration for the Works. (SOF, ¶6). Copies are attached hereto and incorporated herein as Exhibits __ and __, respectively. (SOF, ¶6).

1. The Statement of Undisputed Facts is referred to herein as “SOF.”

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296 Appendix Plaintiff makes his artwork available to the public through his Web site, through catalogs, and at trade shows. (SOF, ¶11). Both of The Works are wholly original artwork and unique creations of Plaintiff that are not derived from any single source, are Plaintiff’s unique interpretation of [the image]. (SOF, ¶7). Here, Defendant has used The Works to create a derivative work (the “Infringing Product”), namely a [product] that incorporates both of The Works. (SOF, ¶12). A photograph of the Infringing Product is attached hereto and incorporated herein as Exhibit __. (SOF, ¶12). A basic visual comparison of the Infringing Product to The Works evidences not only the overwhelming substantial similarity of the products, but that the Infringing Product is essentially a tracing of The Works. (Compare Exs. __ and __). Plaintiff did not license Defendant any right to use The Works in any way, let along to create a derivative work that it has then offered for sale and sold. (SOF, ¶17). On [date], after Defendant refused to enter into meaningful settlement negotiations, Plaintiff initiated this suit against Defendant for copyright infringement. (See Dkt. 1). On [date], Defendant filed it Answer and Affirmative defenses. (See Dkt. 13). Discovery closed on [date]. (See Dkt. 31). Defendant has failed to produce any evidence of any defenses or refute any of Plaintiff’s rights. Thus, Plaintiff is entitled to summary judgment and files this motion seeking that relief. LEGAL STANDARD Summary judgment is appropriate when the submissions “show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-26 (1986). “The inquiry performed is the threshold inquiry of determining whether there is a need for trial—whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). Once the movant has demonstrated the absence of any genuine issues of material fact, the burden shifts to the nonmoving party to show that summary judgment should not be granted. Celotex, 477 U.S. at 325. The party opposing summary judgment must “do more than simply show that there is some metaphysical doubt as to material facts.” Matsushita Elect. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The nonmoving party cannot merely rely on its pleadings, mere allegations or general denials or even theoretical or metaphysical doubts about the moving party’s evidence. Anderson, 477 U.S. at 256–57 (the mere existence of a “scintilla of evidence” is insufficient to

Appendix defeat a motion for summary judgment); see also Matsushita, 475 U.S. at 586. Instead, the nonmoving party must come forward with some actual, sworn evidence that, if believed by a trier of fact, would be a sufficient basis for deciding the issue in the nonmoving party’s favor. See Anderson, 477 U.S. at 249. In copyright cases, summary judgment is appropriate where the degree of substantial similarity is overwhelming. Axelrod & Cherveny, Architects, P.C. v. T. & S. Builders Inc., 2008 U.S. Dist. LEXIS 60212 (E.D.N.Y. 2008); citing Axelrod & Cherveny Architects, P.C. v. Winmar Homes, 2007 U.S. Dist. LEXIS 15788 (E.D.N.Y. 2007), Nilson v. McGlaughon, 2004 U.S. Dist. LEXIS 30357, 2004 WL 906322 (E.D.N.C. Mar. 19, 2004) (granting summary judgment in part where no question that the works were substantially similar), Bonner v. Dawson, 2003 U.S. Dist. LEXIS 19069, 2003 WL 22432941 (W.D. Va. Oct. 14, 2003) (entering judgment as a matter of law as to infringement because works substantially similar); 3 NIMMER ON COPYRIGHT, § 12.10[B][3] (2003)(grant of summary judgment to plaintiff is appropriate where substantial similarity is overwhelming, precluding finding of independent creation); Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 62 (1st Cir. Mass. 2000). ARGUMENT 1. Defendant Has, and Continues To, Infringe Plaintiff’s Copyrights To establish a prima facie case of copyright infringement, a plaintiff must prove ownership of a valid copyright, and infringement of that copyright. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). The owner of copyright has certain exclusive rights, including the right to do and to authorize any of the following: (1) to reproduce the copyrighted work; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or of the copyrighted work to the public by sale or other transfer of ownership; (4) to display the copyrighted work publicly. 17 U.S.C. § 106 (emphasis added). A party infringes a copyright of another if he violates any of those exclusive rights. 17 U.S.C. § 501. To prove copying, “plaintiff is first required to show that the defendant had access to the plaintiff’s work; second, the plaintiff must show that the defendant’s work is substantially similar to the plaintiff’s protected expression.” Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 & n. 11 (11th Cir.1982).

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298 Appendix First, Plaintiff owns a valid copyright. Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, including, among other things, pictorial works, drawings, prints, fine art, and art reproductions. 17 U.S.C. §§ 101, 102. The Works were original works created by Plaintiff and are therefore copyrightable. (SOF, ¶7). Defendant has not, and cannot, dispute that The Works are original, creative work of art subject to protections under 17 U.S.C. § 101, et seq., that Plaintiff is the copyright owner in The Works, or that Plaintiff complied in all respects with the U.S. Copyright Act of 1976, 28 U.S.C. § 101, et seq. and applied for and received copyright registrations in The Works, specifically, copyright registrations _____. (SOF, ¶6). Second, Defendant had access to The Works. The Eleventh Circuit “regards a ‘reasonable opportunity to view’ as access.” Herzog, 193 F.3d at 1249 citing Ferguson v. NBC, 584 F.2d 111, 113 (5th Cir. 1978). Even if there is no proof of access, if the works are “strikingly similar,” then access can be inferred. Ferguson, 584 F.2d at 113. Here, Plaintiff’s artworks and licensed works are widely available to the public. (SOF, ¶11). Plaintiff has regularly shown their works at a wide variety of trade shows. (SOF, ¶11). Plaintiff published his works as prints and has made numerous prints available to the general public. (SOF, ¶11). Plaintiff has licensed scores of products embodying his artworks. (SOF, ¶11). The Works are available for view by the general public on Plaintiff’s Web site thereby providing access to these works by Defendant and/ or the manufacturer of the alleged infringing works. (SOF, ¶11). By making its works so accessible to the public through these various channels, Defendant and/or the manufacturer certainly had a reasonable opportunity to view The Works. Furthermore, the Defendant’s Infringing Product and Plaintiff’s The Works are so strikingly similar that access can be inferred. See Ferguson, 584 F.2d at 113. Third, Defendant’s Infringing Product is substantially similar to The Works. “Substantial similarity exists where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982). In fact, Defendant’s Infringing Product is overwhelmingly and strikingly similar to The Works. A basic visual comparison of the Infringing Product to The Works evidences the substantial similarity of the works. (Compare Exs. __ and __). Indeed, it would appear that Defendant traced Plaintiff’s works with only the slightest variations, and those slight variations probably occurred in the rendering of the tracing into a computer generated drawing.

Appendix It is clear from a visual comparison of the works that the Infringing Product is based on a tracing of The Works. Any reasonable jury, properly instructed, would find that the Infringing Product and The Works are nearly identical, overwhelmingly similar, certainly strikingly similar, and so much more than merely substantially similar. Indeed, no reasonable jury, properly instructed, could find otherwise. Finally, Defendant has no defense to this showing of copyright infringement. At no time did Plaintiff ever grant permission, license or any other way authorize Defendant to reproduce, prepare derivative works, distribute copies, display copies, or use in any way, the Works. (SOF, ¶17). Furthermore, Defendant has not presented any evidence that the Infringing Product or the image thereon was independently created. (SOF, ¶18). In fact, the striking similarity between Infringing Product over The Works would preclude Defendant from demonstrating independent creation. Ferguson, 584 F.2d at 113. Defendant has admitted manufacturing and distributing the Infringing Product (SOF, ¶19), thereby acknowledging its violation of Plaintiff’s rights to make derivative works and plaintiff’s right of distribution. CONCLUSION Plaintiff is entitled to judgment as a matter of law for its claim of copyright infringement because there is no genuine issue as to any material fact related to Plaintiff’s rights, no reasonable jury could find that there was not infringement, and Defendant has no defense. Plaintiff’s rights have been violated and the law provides Plaintiff with a remedy. Plaintiff therefore seeks: (1) an entry of judgment in its favor against Defendant for copyright infringement; (2) a permanent injunction retraining Defendant from creating products that infringe the copyrighted works of Plaintiff; (3) a permanent injunction restraining Defendant or its agents from distributing and/or offering for sale the infringing Marshall product or any other products embodying Plaintiff’s copyrighted works; (4) the return of any copies of Plaintiff’s works; (5) destruction of any unsold copies of the Infringing Product or any other products embodying Plaintiff’s copyrighted works;

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300

Appendix (6) actual or statutory damages, in an amount to be proven at a separate hearing and/or an amount to be determined by the Court to be just and proper; and (7) attorneys’ fees, interest, and costs. WHEREFORE, Plaintiff respectfully requests that the Motion for Summary Judgment be granted, and the relief sought be ordered.

Appendix

5. Sample Jury Instructions U.S. DISTRICT COURT FOR THE DISTRICT OF _______________ _______ Division ABC Corp.


) ) ) ) ) ) ) ) ) )

Case No.: ______________

PLAINTIFFS’ PROPOSED JURY INSTRUCTIONS Pursuant to Local Rule—-, and the Scheduling Order dated——-, and Rule 51 of the Federal Rules of Civil Procedure, Plaintiffs, by their undersigned counsel, submit these Proposed Jury Instructions as follows: PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 1. (Introduction) Instructions at Beginning of Trial Most Courts will have form introductory jury instructions and some may include pattern jury instructions for copyright matters. Check the District Court website, the Circuit (appellate) website, and run a generic search engine search. Otherwise, the ABA offers sample form jury instructions. What follows below are some copyright specific instructions based on case law, statutory sections and various sample or pattern instructions. Citations are included. It is a good idea to include citations in the proposed instructions so you have a basis to argue your instructions when the opposing party or the court disagree with your instruction.

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Appendix PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 2. (Copyright Infringement) On the plaintiff’s copyright infringement claim, the plaintiff has the burden of proving both of the following by a preponderance of the evidence: (1) Plaintiff is the owner of a valid copyright; and (2) Defendant infringed that copyright. Source: Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 143 (4th Cir. 2000); 17 U.S.C. § 501(a)–(b) If you find that the plaintiff has proved both of these elements, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed to prove either of these elements, your verdict should be for the defendant. Source: Ninth Cir. Model Jury Instr. § 17.4 (2007) PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 3. (Ownership of a Valid Copyright) The first thing that the plaintiff Mr. Smith must prove is that he is the owner of a work protected by the Copyright Act. Copyright automatically exists in a work the moment it is fixed in any tangible medium of expression. The owner of the copyright may register the copyright by delivering to the Copyright Office of the Library of Congress a copy of the copyrighted work. After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues a certificate of registration to the copyright owner. Source: Ninth Cir. Model Jury Instr. § 17.0 (2007). A plaintiff’s certificate of registration of its copyright is what is called prima facie evidence of validity of the copyright. In other words, if there is no evidence against a plaintiff as to the validity of the copyright, the registration certificate alone is sufficient to establish validity of the copyright. Source: 17 U.S.C. § 410(c) (“In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the

Appendix facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.”) You are instructed that a copyright may be obtained in photographs. Source: 17 U.S.C. §§ 101, 102. PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 4. (Infringement) Plaintiff Mr. Smith must also prove that the defendant infringed his rights in his copyrighted work. A defendant infringes the rights of a copyright owner if he or she: (1) copies the copyrighted work; (2) makes derivative works based upon the copyrighted work; (3) distributes copies of the copyrighted work or any derivative works to the public by sale or other transfer of ownership; 4) displays the copyrighted work or any derivative works publicly. Source: 17 U.S.C. § 106; 17 U.S.C. § 501. A presumption of copying is created by showing that the infringing material is substantially similar to the protected material and that the infringer had access to the protected material. Source: Ale House Mgmt., Inc., 205 F.3d at 143, citing Towler v. Sayles, 76 F.3d 579, 581-82 (4th Cir. 1996). PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 5. (Defense of Implied License) One who owns a copyright may give another an implied nonexclusive license. Such an implied license permits the use of a copyrighted work in a particular manner. The existence of an implied nonexclusive license constitutes an affirmative defense to an allegation of copyright infringement. An implied nonexclusive license is not a written license and can be given either orally or implied from conduct.

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Appendix An implied nonexclusive license for use of a copyrighted work exists if: (1) the defendant requested the creation of a work, (2) the plaintiff makes that particular work and delivers it to the licensee who requested it, and (3) the plaintiff intended that the defendant copy and distribute his work. Source: Nelson-Salabes, Incorporated v. Morningside Development, LLC, et al., 284 F.3d 505, 514 (4th Cir. 2002); Dawson v. Brandsberg, 2006 U.S. Dist. LEXIS 73512 (W.D. Va. 2006). PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 6. (Defense of Fraud on the Copyright Office) The defendant asserts as an affirmative defense that plaintiff’s copyrights are invalid because plaintiff engaged in fraud on the Copyright Office. Fraud on the Copyright Office occurs when a person who submits a copyright registration knowingly fails to advise the Copyright Office of facts which might have occasioned the rejection of the application. Source: Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir. 1984) (fraud on the Copyright Office arises from ‘‘the knowing failure to advise the Copyright Office of facts which might have occasioned rejection of an application,’’ which ‘‘constitutes reason for finding the registration invalid’’); Mueller Brass Co. v. Reading Indus., 352 F. Supp. 1357 , 1371 –72 (E.D. Pa. 1972). The defendants have the burden of proving fraud on the Copyright Office by clear and convincing evidence. Source: See Maryland Pattern Jury Instructions—Civil 1:9 BURDEN OF PROOF—CLEAR AND CONVINCING EVIDENCE STANDARD (2003) (requiring clear and convincing evidence for claim of fraud) PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 7. (Injunction) If you find for the plaintiff on the plaintiff’s copyright infringement claim, you may issue a permanent injunction to prevent future infringement, preventing Defendant from copying, displaying or distributing the copyrighted work or any derivatives, or from creating any other derivative works.

Appendix Source: 17 U.S.C. § 502; Service & Training, Inc. v. Data General Corp., 963 F.2d 680, 690 (4th Cir. 1992)(Once a plaintiff establishes a prima facie claim of copyright infringement, the court may presume irreparable harm). You may also order the Defendant to return the copyrighted work and any derivative works to the plaintiff Mr. Smith. Source: 17 U.S.C. § 503(b) (As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner’s exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.) PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 8. (Damages for Copyright Infringement) If you find for the plaintiff on the plaintiff’s copyright infringement claim, you must determine the plaintiff’s damages. The plaintiff is entitled to recover the actual damages suffered as a result of the infringement. In addition, the plaintiff is also entitled to recover any profits of the defendant attributable to the infringement. The plaintiff must prove damages by a preponderance of the evidence. Source: Ninth Cir. Model Jury Instr. § 17.22 (2007); 17 U.S.C. § 504 PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 9. (Actual Damages) The copyright owner is entitled to recover the actual damages suffered as a result of the infringement. Actual damages mean the amount of money adequate to compensate the copyright owner for the reduction of the fair market value of the copyrighted work caused by the infringement. The reduction of the fair market value of the copyrighted work is the amount a willing buyer would have been reasonably required to pay a willing seller at the time of the infringement for the actual use made by the defendant of the plaintiff’s work. That amount also could be represented by the lost license fees the plaintiff would have received for the defendant’s unauthorized use of the plaintiff’s work. Source: Ninth Cir. Model Jury Instr. § 17.23 (2007); 17 U.S.C. § 504(b)

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Appendix PLAINTIFFS’ PROPOSED JURY INSTRUCTION NO. 10. (Defendant’s Profits) In addition to actual damages, the copyright owner is entitled to any profits of the defendant attributable to the infringement. You may not include in an award of profits any amount that you took into account in determining actual damages. Source: Ninth Cir. Model Jury Instr. § 17.24 (2007); 17 U.S.C. § 504(b) Under copyright law “profits” can be based on the money that was saved by using the infringing material. Source: Deltak, Inc. v. Advanced Systems, Inc., 767 F.2d 357, 361, 363 (7th Cir. 1985); Roeslin v. District of Columbia, 921 F. Supp. 793, 799 (D.D.C. 1995).

Table of Cases

A Advantage Inspection Intl., LLC v. Sumner, 2008 U.S. Dist. LEXIS 3337 (D.S.C. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.II.D A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.2 Anderson v . Liberty Lobby, Inc., 477 U.S. 242 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . 6.X Apple Computer, Inc. v. Microsoft Corporation, Inc., 35 F.3d 1435 (9th Cir, 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.c ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.b, 6.VI.B.7 Auscape International v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 Autoskill, Inc. v. National Education Support System, 994 F.2d 1476 (10th Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.III.B, 6.I.B.3.b Axelrod & Cherveny Architects, P.C. v. Winmar Homes, 2007 U.S. Dist. LEXIS 15788 (2007 E.D.N.Y.) . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

B Baker v. Urban Outfitters, Inc., 431 F. Supp. 2d 351 (S.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XII Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir. 1968) . . . . . . . . . 6.VI.B.6 Beaudin v. Ben & Jerry’s Homemade, 95 F.3d 1 (2d Cir. 1996) . . . . . . . . . . . . . 6.I.D.1.c BellSouth v. Donnelley Information Publishing, Inc., 999 F.2d 1436 (11th Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.c Bieg v. Hovnanian Enters, Inc. 157 F.Supp. 2d 475 (E.D.Pa. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.II.D Boisson v. Banian Ltd., 221 F.R.D. 378 (E.D.N.Y. 2004) . . . . . . . . . . . . . . . . . . . . . . 6.XII Bouchat v. Baltimore Ravens, 346 F.3d 514 (4th Cir. 2003) . . . . . . . . . . . . . . . . .6.VII.A Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.a, 6.VI.B.4 Brown v. Latin American Music Co., 498 F.3d 18 (1st Cir. 2007). . . . . . . . . . . . 6.VI.B.2

C Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). . . . . . . . . . . . . . . . . . . 6.VI.B.5 Castle Rock Enter. v. Carol Pub. Group, Inc., 150 F.3d 132 (2d Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

307

308

Table of Cases CCNV v. Reid, 490 U.S. 730 (1989). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.I.J Celotex Corp. v. Catrett, 477 U.S. 317 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.X Christopher Phelps & Assoc., LLC v. Galloway, 492 F.3d 532 (4th Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.V.D, 6.III.B, 6.VII.C, 6.VII.A, 6.XV.A Computer Associates International Inc. v. Altai Inc., 23 USPQ2d 1241 (2d. Cir. 1992). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Corwin v. Walt Disney Co., Nos. 04-16554 and 05-12869 (11th Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.4 Country Kids ‘N City Slicks, Inc. v. Vicki Sheen, et al., 77 F.3d 1280 (10th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Coyne’s & Co., Inc. v. Enesco, LLC, 2007 U.S. Dist. LEXIS 76114 (D. Minn. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.II.E Cypress, et al. v. Newport News General and Nonsectarian Hospital Association, Inc., et al., 375 F.2d 648 (4th Cir. 1967) . . . . . . . . . . . . . . . . . . . . .6.VII.C

D Dalton-Ross Homes, Inc. v. Williams, 83 U.S.P.Q.2d 1953 (D. Ariz. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.V.D Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548 (3rd Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.2 Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993) . . . . . . . . . . . . . . . 6.IX.F David & Goliath Builders, Inc. v. Elliott Construction, Inc., 2006 U.S. Dist. LEXIS 34991 (W.D. Wisc. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.6 Deltak, Inc. v. Advanced Systems, Inc., 767 F.2d 357 (7th Cir. 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.VII.A

E eBay Inc. v. MercExchange, LLC, 126 S.Ct. 1837 (2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.III.B, 6.VII.C, 6.XV.A Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984) . . . . . . . . . . . . . . . . . . 6.VI.B.8 Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.6 Elektra Entertainment Group, Inc. v. Barker, 551 F. Supp. 2d 234 (S.D.N.Y. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.II.C Elena Sturdza v. United Arab Emirates, et al., 281 F.3d 1287 (D.C. Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

F Farmington Cas. Co. v. Cyberlogic Technologies, Inc., 996 F. Supp. 695 (E.D. Mich. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.IV.B Feed Store v. Reliance Ins. Co., 774 S.W.2d 73 (Tex. App. 1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.IV.B Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) . . . . . 6.I.B Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998). . . . . . . . . . . .6.VII.A Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). . . . . . . . . . . . . . . . . . . . . . 6.VII.B, 6.XV.D

Table of Cases 309 Franklin Machine Products v. Heritage Food Service Equipment, Inc., 2007 U.S. Dist. LEXIS 89666 (N.D. Ind. 2007). . . . . . . . . . . . . . . . . . . . . . . . . 6.X Fun Spot of Fla., Inc. v. Magical Midway of Central Florida, Ltd., 242 F. Supp. 2d 1183 (M.D. Fla. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.7

G Greenberg v. Town of Falmouth, et al., 2006 U.S. Dist. LEXIS 4792 (D. Mass. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.7 Gregerson v. Vilana Financial, Inc. 84 U.S.P.Q.2d 1245 (D. Minn., 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.11

H Hampton v. Paramount Pictures Corp., 279 F.2d 100 (9th Cir. 1960) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.12 Harbor Motor Co. v. Arnell Chevrolet-Geo, Inc., 265 F.3d 638 (7th Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XII Helecopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (1984). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.V.A.1 Heng Chan v. Triple 8 Palace, 2005 U.S. Dist LEXIS 16520 (S.D.N.Y. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.G Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.b, 6.VI.B.7 Holdings Inc. v. Arce Engineering Inc., 39 USPQ2d 1609 (11th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Home Design Services, Inc. v. B&B Custom Homes, LLC, 509 F. Supp. 2d 968 (D. Colo. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 Howard v. Sterchi, 974 F.2d 1272 (11th Cir. 1992). . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.7

I I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996). . . . . . . . . . . . . . . . . . . 3.II.E, 6.VI.B.6 International Shoe Co. v. Washington, 326 U.S. 310 (1945) . . . . . . . . . . . . . . . . .6.V.A.1

J Jordan v. Time, Inc., 111 F.3d 102 (11th Cir. 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XII

K Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (3d Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1993) . . . . . . . . . . . . . . . . . . . . . . . . 6.IX.F Kyocera Wireless Corporation v. International Trade Commission, No. 2007-1493 (Fed. Cir. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.II

L Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.10 Lenz v. Universal Music Corp., N.D. Cal., No. 07-3783, 8/20/08 . . . . . . . . . . . . . . . 4.IV

310

Table of Cases Levi Strauss & Co. v. Shilon, 121 F.3d 1309 (9th Cir. 1997) . . . . . . . . . . . . . . . . 6.VI.B.9 Livingston v. Morgan, 2007 U.S. Dist. LEXIS 55605 (N.D. Cal. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.X Lynch v. Trendwest Resorts Inc., 64 Fed.Appx. 44 (9th Cir. 2003) . . . . . . . . . . . .6.VII.A

M Mackie v. Rieser, 296 F.3d 909 (9th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.VII.A Marek v. Chesny, 473 U.S. 1 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XII Marquis Models., Inc. v. Green Valley Ranch Gaming, LLC, 2007 U.S. Dist LEXIS 73663 (D. Nev. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.V.B MCA Television Ltd. v. Public Interest Corp., 171 F.3d 1265 (11th Cir. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.10 MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) . . . . . . . . . . . . 5.I.D, 6.II.A.1 Merchant v. Levy, 92 F.3d 51 (2d Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.E MiTek Holdings, Inc. v. Arce Engineering Co., Inc., 89 F.3d 1548 (11th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.c Mostly Memories, Inc. v. For Your Ease Only, Inc., 526 F.3d 1093 (7th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VII.B Murray Hill Publications. v. Twentieth Century Fox Film Corp., 361 F.3d 312 (6th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

N National Business Development Services, Inc. v. American Credit Education & Consulting, Inc., 2007 U.S. Dist. LEXIS 58010 (E.D. Mich. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.II.C Nationwide Mutual Insurance Co. v. Bartlett, 2000 WL 767878 (Conn. Super. Ct. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.IV.B Nelson-Salabes, Inc. v. Morningside Development, LLC, 284 F.3d 505 (4th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.II.E, 6.VI.B.6, 6.VII.A Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., 166 F.3d 65 (2d Cir. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

O Online Policy Group v. Diebold, Inc. 337 F. Supp. 2d 1195 (N.D. Cal. 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.V.A Oravec v. Sunny Isles Luxury Ventures L.C., 469 F. Supp. 2d 1148 (S.D. Fla. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.2

P Palmer v. Braun, 287 F.3d 1325 (11th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.E Phoenix Renovation Corp. v. Rodriguez, 258 Fed. Appx. 526 (4th Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.VII.A

Table of Cases 311 Polar Bear v. Timex, 384 F.3d 700 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 Polymer Technology Corp. v. Mimran, 37 F.3d 74 (2d Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.III.B

R Ristuccia v. Super Duper, Inc., 2008 U.S. Dist. LEXIS 14658 (S.D. Ga. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.a Roley v. New World Pictures, Ltd., 19 F.3d 479 (9th Cir. 1994) . . . . . . . . . . . . . 6.VI.B.1 Rossi v. Motion Picture Association of America, 391 F.3d 1000 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.IV Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Rottlund v. Pinnacle, 452 F.3d 726 (8th Cir. 2006). . . . . . . . . . . . . . . . . . . . . . . . . 6.IX.A Roy Export Co. v. CBS, Inc., 672 F.2d 1095 (2d Cir. 1982) . . . . . . . . . . . . . . . . . 6.I.B.3.b Ryland Group, Inc. v. Travelers Indemnity Co. of Illinois, 2000 U.S. Dist. LEXIS 21412 (W.D. Tex. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.IV.B

S Sandisk v. STMicroelectronics, 2007 U.S. App. LEXIS 7029 (Fed. Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.I.D Satava v. Lowry, 323 F.3d 805 (9th 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.1.c Sebastian Music Group, Inc. v. Ayala-Rodriguez, 2008 U.S. Dist. LEXIS 28517 (D.P.R. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.A Serv. & Training, Inc. v. Data Gen. Corp., 963 F.2d 680 (4th Cir. 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.12 Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.D.2.a Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390 (1940) . . . . . . . . . . . . . .6.VII.A Sheppard v. Riverview Nursing Center, Inc., 88 F.3d 1332 (4th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XII Siegel v. Warner Bros. Entertainment, Inc., 542 F. Supp. 2d 1098 (C.D. Cal. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.IV Smith v. NBC Universal, 2008 U.S. Dist. LEXIS 15714 (S.D.N.Y. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.VII.A Sony Corp. of America, et al. v. Universal City Studios, Inc., 464 U.S. 417 (1984). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.5 Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., 497 F.3d 1271 (Fed. Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.I.D State Farm Fire and Casualty Co. v. Steinberg, 393 F.3d 1226 (11th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.IV.B Stone v. Williams, 970 F.2d 1043 (2d Cir. 1992). . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 Streetwise Maps v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.V.D Stuart Weitzman LLC v. Microcomputer Resources Inc., 542 F.3d 859 (11th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.I.D, 6.I.A Surefoot LLC v. Sure Foot Corp., No. 06-4294 (10th Cir., 7/8/08) . . . . . . . . . . . . . . 5.I.D Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) . . . . . . . . 3.II.E

312 Table of Cases

T Taylor v. Meirick, 712 F.2d 1112 (7th Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.1 The Gates Rubber Co. v. Bando Chemical Industries Ltd., 9 F.3d 823 (10th Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b Thomas v. Walt Disney Co., 85 U.S.P.Q.2d 1838 (S.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.V.B, 6.X Thornton v. J Jargon Co., 580 F. Supp. 2d 1261 (M.D. Fla. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.X Tiseo Architects, Inc. v. B&B Pools Service and Supply Co., 495 F.3d 344 (6th Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.7 Twin Peaks Prods., Inc. v. Publications, Intl, Ltd., 996 F.2d 1366 (2d Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.B.3.b

U United States v. King Features Entertainment, Inc., 843 F.2d 394 (9th Cir. 1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.12 United States v. Oregon State Medical Society, 343 U.S. 326 (1952). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VII.C, 6.XV.A Universal Furniture Intl, Inc. v. Collezione Europa USA, Inc., 196 Fed. Appx. 166 (4th Cir. 2006) . . . . . . . . . . . . . . . . . . . .6.III.B

W Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 891 F.2d 452 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.VI.B.8 World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.V.A.1

X Xoom, Inc. v. Imageline, Inc., 323 F.3d 279 (4th Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.V.D

Y Young v. Langley, 793 F.2d 792 (6th Cir. 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.XIV

Z Zella v. E.W. Scripps Co., 529 F.Supp. 2d 1124 (C.D. Cal. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.V.B, 6.X Zubulake v. UBS Warburg LLC, 2003 U.S. Dist LEXIS 18771 (S.D.N.Y. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.I.G

Index

material excluded from the claim, 2.V.D.1 nation of publication, 2.V.A.8 new material included in the claim, 2.V.D.3 online, 2.I.A, 2.III.A, 2.IV in paper form, 2.IV preregistered works, 2.V.A.11 previous registrations information, 2.V.D.2 previous title of the work, 2.V.A.4 publication as contribution to larger work, 2.V.A.9 publication date, 2.V.A.6 registration certificate contact, 2.V.G rights and permissions contact, 2.V.E serial issues, 2.V.A.3, 2.V.A.10, 2.V.B.6 title of the work, 2.V.A.2, 2.V.A.4 work being registered, 2.V.A.1 year of completion of the work, 2.V.A.5 arbitration as distinguished from mediation, 6.XII architectural work, 6.VI.B.3 depositions on validity of copyright, 6.VIII.F.5.b experts and, 6.IX.A merger doctrine and, 6.VI.B.7 Architectural Works Copyright Protection Act (1990), 6.VI.B.3 artist’s credit, 3.VI.B artwork deposit requirement, 2.III.B First Amendment speech and, 3.VIII licensing, 3.VI.B selling of original distinguished from publication, 2.X.A ASCAP (American Society of Composers, Authors and Publishers), 3.VI.A.1 assignment, 1.I.I, 1.I.A, 3.II.A agreements, 3.II.D, 3.V.B

A abandonment of copyright checking before filing claim, 6.I.B.1 as defense, 5.VII, 6.VI.B.2 abstraction-filtration-comparison test, 6.I.B.3.b access to copyrighted work evidence of copying and, 6.I.B.3, 6.I.B.3.a plaintiff’s discovery requests about, 6.VIII.B.1 actual damages, 1.I.G, 6.II.C, 6.VII.A extent of infringement and calculation of, 6.I.D.2.b interrogatories about, 6.VIII.B.3.e registration after infringement and, 2.I.B, 5.IV.E ALM Experts, 6.IX.B AltLaw, 5.IV.H, 6.I.E ambiguousness, objections to in interrogatories, 6.VIII.D.1 in requests for document production, 6.VIII.D.3 amendments of complaints, 6.II.F, 6.IV.D of initial disclosures, 6.VIII.A American Society of Composers, Authors and Publishers (ASCAP), 3.VI.A.1 anti-dumping, 3.VI.B application for copyright registration, 2.III, 2.V alternative title of the work, 2.V.A.4 certification, 2.V.H claimant different from author, 2.V.C.4 correspondence contact, 2.V.F forms, 2.I.A, 2.III.A information about author, 2.V.B information about claimant, 2.V.C information about work, 2.V.A ISBN, 2.V.A.7 limitation of copyright claim, 2.V.D

313

314 Index attorney-client privilege during depositions, 6.VIII.F.7 objection to subpoena and, 6.VIII.E.2 responding to written discovery and, 6.VIII.D attorneys’ fees recovery, 6.II.C, 6.VII.B, 6.XV.D courts’ conflicting rules on, 6.I.A, 6.I.F, 6.XII early registration and, 2.I.B, 5.IV.E motion to compel and, 6.VIII.G.1 offer of judgment and, 6.XII preregistration and, 2.VIII registration and, 1.I.G attorney work product protection during depositions, 6.VIII.F.7 objection to subpoena and, 6.VIII.E.2 responding to written discovery and, 6.VIII.D author impossibility to locate or identify, 1.I.K as owner of copyright, 1.I.I, 3.I registration application and, 2.V.B authors, multiple, 6.I.B.1 copyright notice, 2.X.A multiple registrations and, 2.V.A.1 ownership of copyright and, 3.I

B balancing the hardships, 6.III.B bar associations, as sources for experts, 6.IX.B Berne Convention and duration of copyright protection, 1.I.L BMI. See Broadcast Music, Inc. book licensing, 3.VI.C, 3.VI.C.2 breach of contract as addition claim, 6.II.C as counterclaim, 6.VI.C Broadcast Music, Inc. (BMI), 3.VI.A.1 bubble diagrams, 6.VI.B.7 burdensome, objection to in interrogatories, 6.VIII.D.1 in requests for discovery, 6.VIII.D in requests for document production, 6.VIII.D.3 buy back option, 3.VI.B

C case management order date for disclosure of expert testimony, 6.IX.D deadlines for filing dispositive motions, 6.X

limitations on written discovery, 6.VIII.B on pretrial report, 6.XIII on requests for admission, 6.VIII.B.4 causal link requirement in apportionment of infringer’s profit, 6.VII.A causes of action, 6.II.C CBP. See U.S. Customs and Border Patrol CD-ROM format, deposit requirements, 2.III.B, 2.VI cease and desist letters, receiving declaratory judgment action in response to, 5.I.D, 5.V, 5.VII defenses, 5.VII lack of response to, 5.I.C, 5.V responding to, 5.VII cease and desist letters, sending, 5 copies to several persons, 5.VI.A cost of versus litigation, 5.I.A drafting, 5.VI including complaint with, 5.III outcomes and repercussions, 5.V preventing client from sending copies to third parties, 5.VI.B pros and cons, 5.I, 5.II research before, 5.IV speed of result, 5.I.B civil cover sheet, 6.II.D.1 claims. See also filing a claim for copyright infringement, steps prior to accruing of, 6.VI.B.1 evaluating existence of, 6.I.D.2.a, 6.I.B inconsistent, 6.II.C claw back provisions, 6.VIII.C Code of Federal Regulations, 1.I.B collateral, copyright use as, 3.III.B collecting on a judgment, 6.I.E, 6.XV.C collections as one infringement, 6.VII.A recordation with CBP and, 7.I.A registration of, 2.I.A, 2.I.B, 2.IV collective works ownership, 3.I comparing original work and infringing work, 6.VIII.F.6. See also substantial similarity compel, motion to, 6.VIII.G.1 compilations, 1.I.E copyright notice, 2.X.A creativity and, 2.V.D.3 of nonprotectable elements, 6.I.B.3.b registration, 2.V.D.3 complaint, amending, 6.II.F, 6.IV.D

Index complaint, answering, 6.VI.A motions that may be filed before, 6.V.B motions that must be filed before, 6.V.A complaint, content requirements, 6.II causes of action, 6.II.C factual background, 6.II.B parties’ identification, 6.II.A.2 relief sought, 6.II.C subject matter jurisdiction, 6.II.A.1 venue, 6.II.A.3 complaint, filing, 6.II.D before sending cease and desist letter, 5.III complaint, receiving, 6.IV amended complaint, 6.IV.D insurance issues, 6.IV.B litigation hold, 6.IV.C service, 6.IV.A complaint, service of, 6.II.E, 6.IV.A compound interrogatories, objections to, 6.VIII.D.1 comprehensive nonliteral similarity, 6.I.B.3.b compulsory counterclaim, 6.VI.C compulsory licenses, 3.VI.A. See also license computer programs depositions on validity of copyright, 6.VIII.F.5.b deposit requirements, 2.III.B, 2.VI experts, 6.IX.A preregistration, 2.VIII registration, 2.VI release date as date of publication, 2.X.A confidentiality agreements, 6.VIII.C. See also protective orders Constitution on copyright, 1.I.B constructive notice, recordation of transfer as, 3.III.B continuing wrong, 6.VI.B.1 copying determining evidence of, 6.I.B.3, 6.I.B.3.a paraphrasing as, 6.I.D.2.a See also substantial similarity Copyright Act, 1.I.B on attorneys’ fees, 6.XII duration of protection, 1.I.L exception for religious settings, 3.VI.E on fair use, 3.VI.D on transfer of ownership, 3.II copyright agent. See designated agent copyright enforcement, registration and, 2.I.B copyright misuse, 6.VI.B.10 interrogatories about, 6.VIII.B.3.f copyright notice, 2.X

advantage of, 1.I.F elements of, 2.X.A forfeiture and, 5.IV.B, 6.VI.B.2 publication date and requirement of, 5.IV.B, 6.VI.B.2 Copyright Office. See also deposit material with Copyright Office deposit account with, 2.III.C, 2.V.H list of ISP registered agents, 4.VII, 6.I.E on new versions, 2.V.D recordation of transfer of copyright property, 3.III.A registration fees, 2.I.A, 2.III.C sending to, 2.IV, 2.V.H Copyright Office circulars “Copyright Notice,” 2.X.A “Copyright Office Fees,” 2.IV “Copyright Registration for Computer Programs,” 2.III.B, 2.VI “Copyrights Basics,” 2.X.A “Duration of Copyright,” 1.I.L “International Copyright Relations of the United States,” 1.I.L, 2.V.A.8 “Reproduction of Copyrighted Works by Educators and Librarians,” 3.VI.D “Special Handling,” 2.VII Copyright Office website definitions on, 1.I.B as resource for registration, 2.II service providers agents on, 4.VII on statutory mechanical license rates, 3.VI.A.2 copyright registration. See registration of copyright Copyright Royalty Board, 3.VI.A.2 © symbol, 2.X, 2.X.A as copyright notice, 1.I.F Copyright Term Extension Act (U.S., 1998), 1.I.L corporate interest and financial interest disclosure statement, 6.II.D.3 correspondence addressing to lawyer, 5.V contact in registration application, 2.V.F costs. See also attorneys’ fees recovery advising client about cost of litigation, 6.I, 6.I.E award to prevailing party, 6.VII.B deposing an expert witness, 6.VIII.F.2, 6.IX.E document production and, 6.VIII.D.3 motions to compel and fee shifting, 6.VIII.G.1

315

316

Index costs. (cont.) preregistration, 2.VIII rates for music licensing, 3.VI.A.2 recording copyright with CBP, 7.I.A recording ownership transfer, 3.III.A recovering, 6.XV.D registration, 2.I.A, 2.III.C seeking preliminary relief, 6.III.B counterclaims, 6.VI.C depositions on, 6.VIII.F.5.f document requests and, 6.VIII.B.5.g interrogatories and, 6.VIII.B.3.h permissive, 6.VI.C plaintiff’s general discovery requests, 6.VIII.B.1 counter notice to take-down notice, 4.V drafting, 4.V.A receiving, 4.VII courts, conflicting rules of. See also local rules on attorneys’ fees, 6.I.A, 6.I.F, 6.XII on determination of implied license, 6.VI.B.6 preliminary injunction and, 6.III.B on registration requirement, 1.I.H, 2.I.C, 6.I.A, 6.I.F substantial similarity test, 6.I.A, 6.I.F test for personal jurisdiction based on online contacts, 6.II.A.2 creation of the work. See also independent creation as defense defendant’s interrogatories on, 6.VIII.B.3.a depositions and, 6.VIII.F.5.a document requests about, 6.VIII.B.5.a requests for admission and, 6.VIII.B.4 creativity compilations and, 2.V.D.3 copyright protection and, 1.I.F, 6.I.D.1, 6.I.B.2 thin copyright and, 6.I.D.1.c crossclaims, 6.VI.C cumulative interrogatories, objections to, 6.VIII.D.1 cumulative requests, objections to, 6.VIII.D, 6.VIII.D.3

D damage calculations defendant’s proof of deductible costs, 6.VIII.B.2 extent of infringement and, 6.I.D.2.b in initial disclosures, 6.VIII.A

damages. See also actual damages; damage calculations; statutory damages; infringer’s profits depositions on, 6.VIII.F.5.e discovery requests about, 6.VIII.B.2 document requests about, 6.VIII.B.5.d experts, 6.VIII.F.5.e, 6.IX.A interrogatories about, 6.VIII.B.3.e plaintiff’s general discovery requests, 6.VIII.B.1 requests for admission about, 6.VIII.B.4 unavailability in ITC proceedings, 7.II Daubert motions, 6.IX.F. See also expert; motions; excluding evidence deadlines. See also timing appeal, 6.XV.B deposition after subpoena, 6.VIII.E.1 disclosure of expert testimony, 6.IX.D dispositive motions, 6.X fact discovery, 6.VIII.B in ITC procedure, 7.II motion for new trial, 6.XV.B objecting to subpoena, 6.VIII.E.2 pretrial disclosures, 6.XIII for responding to interrogatories, 6.VIII.D.1 responses to amended pleading, 6.VI to complaint or counterclaim, 6.VI to requests for admission, 6.VIII.D.2 to requests for document production, 6.VIII.D.3 for Rule 26(a) disclosures, 6.VIII three-day mailing rule, 6.VIII.D.1, 6. VIII.D.2 declaratory judgment actions jurisdiction, 6.II.A.1 registration and, 6.I.A in response to cease and desist letter, 5.I.D, 5.V, 5.VII standard, 5.I.D, 5.II default judgment, motion for, 6.X defendant determination, 6.I.E defenses, 6.VI.B abandonment of copyright, 6.VI.B.2 based on date of creation of work, 6. VI.B.3 copyright misuse, 6.VI.B.10 defendant’s discovery requests and, 6.VIII.B.2 defendant’s interrogatories to prove, 6.VIII.B.3.f depositions on, 6.VIII.F.5.f

Index document requests about, 6.VIII.B.5.e equitable estoppel, 6.VI.B.12 fair use, 6.VI.B.5 forfeiture of copyright, 6.VI.B.2 fraud on the Copyright Office, 6.VI.B.8 general discovery and, 6.VIII.B.3.g implied license, 6.VI.B.6 improper venue, 6.V.A, 6.V.A.2 independent creation, 6.VI.B.4 insufficient process, 6.V.A insufficient service of process, 6.V.A lack of personal jurisdiction, 6.V.A, 6.V.A.1 lack of subject matter jurisdiction, 6.V.C license, 6.VI.B.6 merger doctrine, 6.I.D.1.b, 6.VI.B.7 nonvalidity of innocent intent, 6.VI.B.11 plaintiff’s general discovery requests, 6.VIII.B.1 plaintiff’s interrogatories about, 6.VIII.B.3.f public domain, 6.VI.B.3 requests for admission and, 6.VIII.B.4 statute of limitations, 6.VI.B.1 unclean hands, 6.VI.B.9 unprotectable elements, 6.VI.B.7 definitions in Copyright Act, 1.I.B deponent as employee or independent contractor, 6.VIII.F.3 production of, 6.VIII.F.3 deposit account with Copyright Office, 2.III.C, 2.V.H deposit material with Copyright Office, 2.III.B for computer programs, 2.VI preregistration and, 2.VIII requesting certified copy, 5.VII, 6.V.C deposition binder, 6.VIII.F.5.f Deposition Handbook (Bergman and Moore), 6.VIII.F.6 depositions, 6.VIII.F of an organization, 6.VIII.F.4 defending, 6.VIII.F.7 of experts, 6.IX.E leaving open, 6.VIII.F.6 noticing, 6.VIII.F.3 order of, 6.VIII.F.2 persons to depose, 6.VIII.F.1 preparing to take, 6.VIII.F.5 questions, 6.VIII.F.5 reading transcript, 6.VIII.F.7

scheduling, 6.VIII.F.3 subpoenas, 6.VIII.E.1 taking, 6.VIII.F.6 timing, 6.VIII.F.2 watching as learning process, 6.VIII.F.6 derivatives as copyrightable subject matter, 1.I.E exclusive right, 1.I.A licenses to make, 3.VI.A registration of, 2.IX year of publication, 2.X.A designated agent as recipient of cease and desist letter, 5.VI.A of service provider, 4.II.A, 4.VII Deskbook of Art Law, The (DuBoff and Caplan), 3.VI.B destruction of infringing goods, 6.VII.D, 6.XV.A by Customs Border Patrol, 7.I.B Digital Millennium Copyright Act (DMCA, 1998). See also take-down notices compliance, 4.VII safe harbor protection, 4.I digital performance rights, 3.VI.A.1, 3. VI.A.2 disclosures corporate interest and financial interest statement, 6.II.D.3 of expert testimony, 6.IX.D pretrial, 6.XIII Rule 26 disclosures, 6.VIII.A, 6.XIII deadlines, 6.VIII depositions and, 6.VIII.F.1 discovery, 6.VIII communications with experts and, 6.IX.C electronic discovery, 6.VIII.D.3 pretext discovery, 6.III.B discovery, written, 6.VIII.B defendant, 6.VIII.B.2 plaintiff, 6.VIII.B.1 responding to, 6.VIII.D discovery disputes, 6.VIII.G motions to compel, 6.VIII.G.1 protective orders, 6.VIII.G.2 discovery rules, 6.VI.B.1 dismiss, motion to, 6.V.D, 6.X Disney Act. See Copyright Term Extension Act (U.S., 1998) displaying the work, 1.I.A dispositive motions, 6.X Distance Learning and Copyright: A Guide to Legal Issues (Armatas), 3.VI.D

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Index distributing copies of the work, 1.I.A DMCA. See Digital Millennium Copyright Act (DMCA, 1998) DMCA take-down notices. See take-down notices “DMCA Take-Down . . . . Or Copyright Law Breakdown?” (Luther), 4.VI documents. See also electronically stored information (ESI) requests for production of, 6.VIII.B.5 retention and destruction policy, 6.I.G, 6.IV.C reviewing for privilege and responsiveness, 6.VIII.D.3 subpoena for production of, 6.VIII.E.1 using outside document vendor, 6.VIII.D.3 drafting agreements, 3.V assignment, 3.V.B book publication, 3.VI.C.2 exclusive license, 3.V.C nonexclusive license, 3.V.D work for hire, 3.V.A drafting cease and desist letters determining recipient, 5.VI.A elements of, 5.VI.B drafting counter notice to take-down notice, 4.V.A drafting discovery requests, 6.VIII.B duplication, objections to in interrogatories, 6.VIII.D.1 in requests for discovery, 6.VIII.D in requests for document production, 6.VIII.D.3 duration of copyright protection, 1.I.L. See also Copyright Term Extension Act (U.S., 1998)

E ECF. See Electronic Case Filing rules eCO (electronic Copyright Office), 2.IV registration of computer programs, 2.VI e-discovery, 6.VIII.D.3 effective date of preregistration, 2.VIII of registration, 2.IX Effective Deposition: Techniques and Strategies that Work, The (Malone and Hoffman), 6.VIII.F, 6.VIII.F.6 “Efficient Process or ‘Chilling Effect’? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act” (Urban and Quilter), 4.III

electronically stored information (ESI) agreement regarding searches on, 6.VIII.D.3, 6.VIII.B.5 discovery of, 6.VIII motion to compel and, 6.VIII.G.1 objections to requests for, 6.VIII.D as response to interrogatory, 6.VIII.D.1 searching and producing, 6.VIII.D.3 Electronic Case Filing (ECF) rules, 6.II.D, 6.VIII.D.1 electronic discovery, 6.VIII.D.3 employees, copyright and, 1.I.J entry of default, application for, 6.X equitable decisions copyright misuse, 6.VI.B.10 destruction or return of infringing goods, 6.VII.D estoppel, 6.VI.B.12 fair use, 6.VI.B.5 injunctions, 6.VII.C unclean hands, 6.VI.B.9 equitable relief, 6.XV.A ESI. See electronically stored information estoppel equitable, 6.VI.B.12 interrogatories about, 6.VIII.B.3.f ethics and insurance coverage of client, 6. IV.B evidence duty to preserve, 5.VIII motion in limine, 6.XIII. See also Daubert motion; expert; excluding evidence; motions evidence of copying access to copyrighted work and, 6.I.B.3, 6.I.B.3.a determining, 6.I.B.3 excluding evidence/expert testimony, 6.XIII. See also Daubert motion; expert exclusive license, 3.II.B. See also license agreement, 3.V.C price of, 3.V.C to use a book or portion of a, 3.VI.C.1 expedited registration. See registration, expedited ExpertLaw, 6.IX.B ExpertPages, 6.IX.B experts, 6.IX communications with, 6.IX.C on damages, 6.VIII.F.5.e depositions of, 6.VIII.F.2, 6.IX.E

Index locating, 6.IX.B materials given to and discovery, 6.IX.C motions to exclude, 6.IX.F, 6.XIII. See also Daubert motion reports, 6.IX.D timing of motion to exclude expert testimony, 6.XIII types of, 6.IX.A expiration of copyright, 6.VI.B.3. See also Copyright Term Extension Act (U.S., 1998) checking before filing claim, 6.I.B.1 as defense, 5.VII expression of original work, 1.I.D merged with idea, 6.I.D.1.b, 6.VI.B.7 extent of infringement. See infringement

F fact-finding discovery, document requests and, 6.VIII B.5.f failure to join a party, 6.V.B failure to state a claim, motion to dismiss for, 6.X failure to state a claim upon which relief can be granted, 6.V.B fair use, 6.VI.B.5 of books in educational setting, 3.VI.C.1, 3.VI.D as defense, 6.VI.B.5 Federal Rules of Civil Procedure Rule 4, 6.II.E Rule 8(a), 6.II Rule 8(c), 6.VI.B Rule 11, 6.I.B Rule 13, 6.VI.C Rule 15, 6.II.F Rule 26, 6.VIII.A, 6.VIII.G.1, 6.VIII.G.2, 6.IX.D Rule 33, 6.VIII.D.1, 6.VIII.B.3 Rule 34, 6.VIII.D.3, 6.VIII.B.5 Rule 36, 6.VIII.D.2, 6.VIII.B.4 Rule 37(a), 6.VIII.G.1 Rule 45, 6.VIII.E Rule 50, 6.XIV Rule 55, 6.X Rule 56, 6.X Rule 65, 6.III Rule 68, 6.XII Rules 27–32, 6.VIII.F Federal Rules of Evidence, Rule 702, 6.IX.F filing a claim for copyright infringement, steps prior to, 6.I consideration of where to file, 6.I.F

considering problems with case and defenses, 6.I.C copyright registration (See registration of copyright) determination of defendant(s), 6.I.E evaluation of existence of claim, 6.I.D.2.a, 6.I.B evaluation of strength of the case, 6.I.D, 6.D.1 litigation hold, 5.VIII, 6.I.G, 6.IV.C First Amendment protected speech, 6.VI.B.5 versus right to publicity, 3.VIII foreign country deposition of someone in, 6.VIII.F.2 serving in, 6.II.E serving subpoena in, 6.VIII.E.1 forfeiture of copyright checking before filing claim, 6.I.B.1 checking before sending cease and desist letter, 5.IV.B as defense, 5.VII, 6.VI.B.2 forms copyright form-AO121, 6.II.D.4 paper for copyright registration, 2.III.A, 2.IV subpoena for (A088), 6.VIII.E.1 for waiver of service request, 6.II.E forum choice, declaratory judgment action and, 5.VII fragmented literal similarity, 6.I.B.3.b fraud on the Copyright Office, 6.VI.B.8 deposition questions on, 6.VIII.F.5.f interrogatories and, 6.VIII.B.3.f

G general discovery defendant’s requests, 6.VIII.B.2 document requests and, 6.VIII.B.5.f interrogatories and, 6.VIII.B.3.g plaintiff’s requests, 6.VIII.B.1 general liability policies and defense cost. See insurance general objections to interrogatories, 6.VIII.D.1 geographical limitation of exclusive license, 3.V.C good faith, 6.I.B Graphic Artists Guild, 3.V.C

H Hague Convention, 6.VIII.E.1 The Harry Fox Agency, 3.VI.A.1 hearings, 6.XI

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320 Index

I ideas, not copyrightable, 1.I.D, 6.I.D.2.a image on commercial products, license to use, 3.VI.B implied license, 3.II.E. See also license as defense, 6.VI.B.6 in limine. See motions in limine inconsistencies of claims, 6.II.C of defenses, 6.VI.B indemnification in art license agreements, 3.VI.B independent contractors. See work for hire independent creation as defense, 6.VI.B.4 deposition questions on, 6.VIII.F.5.f inequitable conduct by the plaintiff. See unclean hands infringement. See also innocent infringement; willful infringement; substantial similarity considering strength of before filing, 6.I.D.2 depositions on, 6.VIII.F.5.c, 6.VIII.F.5.d evaluating extent of, 6.I.D.2.b plaintiff’s document requests about, 6.VIII.B.5.c plaintiff’s general discovery requests, 6.VIII.B.1 plaintiff’s interrogatories about, 6.VIII.B.3.d requests for admission about, 6.VIII.B.4 infringer’s profits. See also damages apportionment of, 6.VII.A calculation of actual damages and, 6.VII.A defendant’s proof of deductible costs, 6.VIII.B.2 depositions on, 6.VIII.F.5.e document requests about, 6.VIII.B.5.d plaintiff’s interrogatories about, 6.VIII.B.3.e as relief sought, 6.II.C initial dispositive motions, 6.V injunctions, 6.VII.C. See also preliminary injunctive relief; post-trial defendants’ responses to motions for, 6.VII.C innocent infringement, 2.X, 6.VI.B.11. See also copyright notice decrease of damages, 6.VII.A insufficient service of process, 6.V.A insurance

covering defense cost, 6.IV.B in initial disclosures, 6.VIII.A intellectual property rights e-Recordation, 7.I.A International Trade Commission (ITC), 7.II internet. See also online research expansion of scope of personal jurisdiction, 6.II.A.2, 6.V.A.1 licenses to play music on, 3.VI.A, 3.VI.A.1 online application for preregistration, 2.VIII online application for registration, 2.I.A, 2.III.A, 2.IV online meetings with experts, 6.IX.C online recordation with CBP, 6.I serving by e-mail, 6.II.E internet service providers. See also takedown notices designated agent, 4.II.A ensuring compliance with the DMCA, 4.VII interrogatories as basis for drafting documents requests, 6.VIII.B.5 copyright misuse, 6.VIII.B.3.f counterclaims, 6.VIII.B.3.h creation of the work, 6.VIII.B.3.a damages, 6.VIII.B.3.e defenses, 6.VIII.B.3.f drafting, 6.VIII.B.3 estoppel, 6.VIII.B.3.f fraud on the Copyright Office, 6.VIII.B.3.f general discovery, 6.VIII.B.3.g infringement, 6.VIII.B.3.d ownership of copyright, 6.VIII.B.3.c responding to, 6.VIII.D.1 signature of client, 6.VIII.D validity of copyright, 6.VIII.B.3.b intestate succession, transfer of copyright ownership and, 3.II.D irreparable harm, presumption of, 6.III.B

J judgment as a matter of law, motion for, 6.XIV judgment on the pleadings, motion for, 6.X jurisdiction, 6.I.F. See also personal jurisdiction of federal courts, 1.I.B of International Trade Commission, 7.II subject matter jurisdiction, 1.I.B, 6.II.A.1

Index jurors, questions for potential (voir dire), 6.XIII jury instructions. See also model jury instructions checking, 6.II.C drafting, 6.XIII drafting discovery requests and, 6.VIII.B submitting, 6.XIII Justia, 5.IV.H, 6.I.E

K knockoff versus copyright infringement, 1.I.D, 5.IV.F, 6.I.D.1.a, 6.I.D.2.a

L legal conclusion, interrogatories calling for, 6.VIII.D.1 Letters Rogatory, 6.VIII.E.1 Lexis, 5.IV.H, 6.I.E help with searches, 6.X Lexis Total Litigator®, 6.I.E license, 1.I.I, 1.I.A, 3.II.B. See also book licensing; exclusive license; nonexclusive license; compulsory license; implied license; synchronization licenses as counterclaim, 6.VI.C as defense, 6.VI.B.6 compulsory, 3.VI.A in education settings, 3.VI.D fees/rates, 3.V.C, 3.VI.A.2 in religious settings, 3.VI.E verifying before filing claim, 6.I.B.1 verifying before sending cease and desist letter, 5.IV.C Licensing Royalty Rates (Battersby and Grimes), 3.V.C limitations to document requests, 6.VIII.B.5 to number of depositions, 6.VIII.F.1 to requests for admission, 6.VIII.B.4 to written discovery, 6.VIII.B literary work computer programs as, 2.VI preregistration, 2.VIII registration, 2.III.A litigation cost of, 5.I.A, 6.I, 6.I.E expediting registration and, 2.VII implied license as defense, 3.II.E registration as prerequisite to, 1.I.H, 2.I, 2.I.C, 2.IX, 6.I.A speed of, 6.I.A, 6.I.F litigation holds, 5.VIII, 6.I.G

defendant, 6.IV.C lobbying copyright law and, 1.I.B Copyright Term Extension Act and, 1.I.L local rules. See also courts, conflicting rules on appeal, 6.XV.B on deadlines, 6.V.D for responding to interrogatories, 6.VIII.D.1 on discovery, 6.VIII, 6.VIII.B on interrogatories, 6.VIII.B.3 on limitations to dispositive motions, 6.X on mediation, 6.XII on motion for a default judgment, 6.X on motions to compel, 6.VIII.G.1 on number of depositions, 6.VIII.F.1 on objections during depositions, 6.VIII.F.7 on pretrial report, 6.XIII on requests for admission, 6.VIII.B.4 on requests for production of documents and things, 6.VIII.B.5 on subpoenas, 6.VIII.E, 6.VIII.E.1 on three-day mailing rule, 6.VII.D.2 on trial, 6.XIV long-arm statutes, 6.II.A.2, 6.V.A.1 lyrics, copyright in, 3.VI.A

M McCarthy on Trademarks and Unfair Competition, 6.III.B mechanical licenses, 3.VI.A, 3.VI.A.1 rates, 3.VI.A.2 media, exclusive license and, 3.V.C mediation, 6.XII medication affecting testimony, 6.VIII.F.6 merger doctrine, 6.I.D.1.b defenses and, 6.VI.B.7 Mickey Mouse Protection Act. See Copyright Term Extension Act (U.S., 1998) misuse. See copyright misuse model jury instructions, 6.XIII monetary damages. See actual damages; statutory damages; damages; infringer’s profits motion picture/audiovisual work deposit requirements, 2.III.B preregistration, 2.VIII registration, 2.III.A motions for default judgment, 6.X

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322

Index motions for judgment as a matter of law, 6.XIV motions for judgment on the pleadings, 6.X motions for new trial (remittitur), 6.XV.B motions for summary judgment, 6.X motions in limine, 6.XIII. See also Daubert motion; expert; excluding evidence motions to compel, 6.VIII.G.1 motions to dismiss for failure to state a claim, 6.X timing of, 6.V.D motions to exclude expert testimony, 6.IX.F, 6.XIII. See also Daubert motion; expert; excluding evidence motions to set aside judgment, 6.XV.B motions to stay entry of proceedings to enforce the judgment, 6.XV.B multimedia package deposit requirement, 2.III.B musical compositions different copyrights in, 3.VI.A preregistration, 2.VIII registration as performing arts work, 2.V.A.1 music licensing, 3.VI.A, 3.VI.A.1 rates, 3.VI.A.2

N National Institute for Trial Advocacy (NITA), 6.VIII.F new trial (remittitur), motion for, 6.XV.B Nimmer on Copyright on choice of types of damages, 6.VII.A on copyright misuse, 6.VI.B.10 on equitable estoppel, 6.VI.B.12 on fair use, 6.VI.B.5 on joint ownership, 6.I.B.1 on statute of limitations, 6.VI.B.1 on substantial similarity, 6.I.B.3.b on thin copyrights, 6.I.D.1.c on U.S. work, 6.I.A nonexclusive license. See also license agreement, 3.V.D conflict with non recorded transfer, 3.III.B as distinguished from transfer, 3.II.E implied, 6.VI.B.6 to use a book or portion of a, 3.VI.C.1 noninfringement, warranty of, 3.VI.C.2 nonmonetary relief, 6.XII. See also injunctions; destruction of infringing goods nonprotectable elements, 6.I.D.1.a, 6.I.B.3.b

notarization, 3.II.D notice of copyright. See copyright notice notice of deposition, 6.VIII.F.3 notice pleading, 6.II.C, 6.II.B notice. See copyright notice

O object code, registration of computer programs and, 2.VI objections during depositions, 6.VIII.F.7 to discovery requests, 6.VIII.D, 6.VIII.D.3 to interrogatories, 6.VIII.D.1 to requests for admission, 6.VIII.D.2 to requests for document production, 6.VIII.D.3 to subpoenas, 6.VIII.E.2 offer of judgment, 6.XII online publication, demonstrating, 6.I.B.3.a online research. See also Lexis; Westlaw; Justia; AltLaw; Copyright Office website; Copyright Office circulars; websites on experts, 6.IX.B on extent of infringement, 6.I.D.2.b opposing counsel, agreement with on dates and locations for depositions, 6.VIII.F.3 on ESI searches, 6.VIII, 6.VIII.D.3, 6. VIII.B.5 on narrowing scope of litigation hold, 6.I.G ordinary observer test, 6.I.B.3.b. See also substantial similarity originality, 1.I.C, 6.I.D.1, 6.I.B.2 orphan work, 1.I.K out of print books, 3.VI.C.1 clause in publication agreement, 3.VI.C.2 overbroad, objection to in interrogatories, 6.VIII.D.1 in requests for discovery, 6.VIII.D in requests for document production, 6.VIII.D.3 owners, multiple, and licenses, 6.VI.B.6 ownership of copyright, 3.I. See also work for hire; transfer of ownership of copyright defendant’s discovery requests about, 6.VIII.B.2 defendant’s document requests about, 6.VIII.B.5.b

Index defendant’s interrogatories about, 6.VIII.B.3.c depositions on, 6.VIII.F.5.c determination before filing claim, 6.I.B.1 determination before sending cease and desist letter, 5.IV.B as distinguished from ownership of the work, 3.II.C plaintiff’s burden of proof, 6.VIII.B.1 requests for admission and, 6.VIII.B.4

P paraphrasing as copying, 6.I.D.2.a parody, 6.VI.B.5 Patent and Trademark Office, 1.I.B patents, 1.I.B Patry on Copyright on profits due to infringement, 6.VII.A on thin copyrights, 6.I.D.1.c performance, public as distinguished from publication, 1.I.M, 2.V.A.6 as exclusive right, 1.I.A licenses, 3.VI.A.1, 3.VI.A.2 performing arts work licenses, 3.VI.A.1 registration, 2.III.A performing rights organizations, 3.VI.A.1. See also ASCAP; BMI; SESAC, Inc. permanent injunction, 6.II.C, 6.VII.C, 6.XV.A permissions to use work in education settings, 3.VI.D personal jurisdiction lack of, as defense, 6.V.A, 6.V.A.1 test based on online contacts, 6.II.A.2 persons’ image, use of, 3.VIII phonorecords of sound recordings, 2.X.A photography preregistration, 2.VIII registration of multiple works as collection, 2.I.A plaintiff’s lost profits depositions on, 6.VIII.F.5.e proving, 6.VIII.B.1 pocket filing, 5.III post-trial, 6.XV preliminary injunctive relief, 6.III. See also injunctions preliminary injunctions, 6.II.C, 6.III.B temporary restraining orders, 6.III.A

preregistration, 2.VIII litigation and, 6.II.C registration of pregistered works, 2.V.A.11 pretext discovery, 6.III.B pretrial, 6.XIII Pricing and Ethical Guidelines (Graphic Artists Guild), 3.V.C privilege log, comparing to redacted documents, 6.VIII.G.1 problems with case and defenses, considering before filing, 6.I.C proceedings to enforce judgment, 6.XV.C profits. See also infringer’s profits; plaintiff’s lost profits indirect, 6.VII.A protection of copyright, 1.I.B duration of, 1.I.L, 1.I.B independent from registration, 2.I protective orders, 6.VIII.C, 6.VIII.G.2 publication copyright and, 1.I.M definition, 2.V.A.6 year of, 2.X.A public domain, 6.VI.B.3 public performance. See performance, public public venues, license to play music in, 3.VI.A, 3.VI.A.1, 3.VI.A.2 Publishing Law Handbook, The (Perle and William), 3.VI.C.2

Q quality approval in art licensing, 3.VI.B quashing a subpoena, 6.VIII.E.2

R “reasonable apprehension of suit” test for declaratory judgment, 5.I.D recordation of a transfer of copyright ownership, 3.III advantages, 3.III.B effecting, 3.III.A registration and, 2.IX recordation with U.S. Customs, 2.I.D recovering a judgment, 6.XV.C registered agents of ISPs, 6.I.E, 4.II.A. See also take down notices; Digital Millennium Copyright Act registration, expedited, 1.I.H, 2.I.C, 2.VII, 6.I.A cost, 2.III.C

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Index registration of copyright. See also application for copyright registration benefits of, 1.I.G, 2.I, 2.I.B, 5.IV.E copyright notice and, 2.X deposit material requirements (See deposit material with Copyright Office) done in-house by client, 2.I.A early, 2.I.B, 5.IV.E eCO, 2.IV guidelines, 2.II new methods of, 2.IV not required for litigation about non-U.S. work, 6.I.A recordation with U.S. Customs and, 2.I.D recovery of attorneys’ fees and timing of, 6.VII.B requirement before filing, 6.II.C requirement before filing claim, 6.I.A requirement before recording with CBP, 7.I.A timing of, 2.VIII, 6.VII.B registration of copyright application. See application for copyright registration relief from judgment, 6.XV.B remedies, 6.VII. See also actual damages; destruction of infringing goods; attorneys’ fees recovery; injunctions; return of infringing goods; statutory damages; damages; infringer’s profits; preliminary injunctions renewal period, recapturing, 3.IV reproducing the work as exclusive right, 1.I.A requests for admission, 6.VIII.B.4 answering, 6.VIII.D.2 requests for production of documents and things, 6.VIII.B.5 answering, 6.VIII.D.3 counterclaims, 6.VIII.B.5.f on creation of the work, 6.VIII.B.5.a on damages, 6.VIII.B.5.d on defenses, 6.VIII.B.5.e general discovery, 6.VIII.B.5.f on infringement, 6.VIII.B.5.c on ownership, 6.VIII.B.5.b research before answering cease and desist letter, 5.VII research before filing a claim, 6.I determination of defendant(s), 6.I.E infringement extent, 6.I.D.2.b research before sending a cease and desist letter, 5.III, 5.IV copyrightable work, 5.IV.A

copyright ownership, 5.IV.B defenses of infringer, 5.IV.D infringement existence, 5.IV.F infringement extent, 5.IV.G licensing history, 5.IV.C recipient, 5.IV.H registration evaluation, 5.IV.E research on potential expert, 6.IX.B return of infringing goods, 6.VII.D, 6.XV.A revisions of books, 3.VI.C.2 right of publicity, 3.VIII Rights of Publicity and Privacy, The (McCarthy), 3.VIII royalties in book publishing, 3.VI.C.2 rates, 3.VI.B Rule 26 disclosures, 6.VIII.A, 6.XIII deadlines, 6.VIII depositions and, 6.VIII.F.1 rule of doubt concept, registration and, 2.VI

S safe harbor protection of service providers, 4.I satellite radio/television, licenses to play music on, 3.VI.A, 3.VI.A.1 scheduling meeting, 6.VIII scheduling order about interrogatories, 6.VIII.B.3 deadlines for filing dispositive motions, 6.X limitations on discovery, 6.VIII.B on number of depositions, 6.VIII.F.1 preliminary, 6.VIII on requests for document production, 6.VIII.B.5 scripted language, registration of computer programs and, 2.VI Section 337 investigations (ITC), 7.II security for preliminary injunctive relief, 6.III.A Sedona Conference Institute, 6.VIII.D.3 sell-off rights, 3.VI.B serial issues, 2.V.A.3, 2.V.A.10, 2.V.B.6 service of complaint, 6.II.E, 6.IV.A of subpoena, 6.VIII.E.1 SESAC, Inc., 3.VI.A.1 set aside judgment, motion to, 6.XV.B settlement agreement, 6.XII settlement negotiations, 6.XII counterclaims and, 6.VI.C expert reports and, 6.IX.D

Index signatures of admissions, 6.VIII.D in assignment agreement, 3.V.B on discovery requests, 6.VIII.B in exclusive license agreement, 3.V.C of interrogatories, 6.VIII.D, 6.VIII.D.1 in nonexclusive license agreement, 3.II.E, 3.V.D of objections to document requests, 6.VIII.D for recordation of transfer agreement, 3.III.A for transfer of copyrights, 3.II.D in work for hire agreements, 3.II.D, 3.V.A Silicon Valley Expert Witness Group, 6.IX.B single serial issue registration, 2.III.A software. See computer programs; source code; object code; CD-Rom Sonny Bono Copyright Term Extension Act. See Copyright Term Extension Act (U.S., 1998) SoundExchange, 3.VI.A.1 sound recordings copyright, 3.VI.A digital performance rights, 3.VI.A.1, 3. VI.A.2 preregistration, 2.VIII registration, 2.III.A, 2.V.A.1 source code, registration of computer programs and, 2.VI speaking objections during depositions, 6.VIII.F.7 special handling of registration. See registration, expedited spoliation, 6.I.G, 6.VIII.D. See also litigation holds standing orders on limitations to dispositive motions, 6.X requests for admission and, 6.VIII.B.4 state laws affecting copyright, 1.I.B on right of publicity, 3.VIII statute of limitations, 5.VII affirmative defense and, 6.VI.B.1 statutory damages, 6.II.C, 6.VII.A decrease due to innocent intent, 6.VI.B.11 early registration and, 2.I.B, 5.IV.E increase due to willful infringement, 6.II.C, 6.VII.A preregistration and, 2.VIII registration timing and, 1.I.G statutory licenses, 3.VI.A. See also license stay entry of proceedings to enforce the judgment, motion to, 6.XV.B

strength of the case, evaluating before filing claim, 6.I.D strength of the copyright, considering before filing claim, 6.I.D, 6.I.D.1 strength of the infringement, considering before filing claim, 6.I.D.2 “striking similarity,” evidence of copying and, 6.I.B.3.a. See also substantial similarity subject matter jurisdiction, 6.II.A.1 lack of, 6.V.C subpoenas, 6.VIII.E issuing, 6.VIII.E.1 responding to, 6.VIII.E.2 substantial similarity, 1.I.A, 6.I.B.3, 6.I.B.3.b comparing works for, 6.I.D.2.a evaluation, 6.I.B.3.b experts and, 6.IX.A thin copyrights and, 6.I.D.1.c Substantial Similarity in Copyright Law (Osterberg and Osterberg), 6.I.B.3.b summary judgment, motion for, 6.X summons, 6.II.D.2 synchronization licenses, 3.VI.A, 3.VI.A.1 rates, 3.VI.A.2

T take-down notices, 4. See also Digital Millennium Copyright Act determination of designated agent, 4.II.A drafting, 4.II elements of, 4.II.B excessive use of, 4.III, 4.IV preventing, 4.VI receiving, 4.V, 4.VII responding, 4.V.A speed of, 4.III tangible medium of expression, 1.I.C TASA, 6.IX.B Teach Act, 3.VI.D technicalities, objections to requests for admission on, 6.VIII.D.2 temporary restraining order (TRO), 6.III.A. See also injunctions; preliminary injunctive relief termination clause in exclusive license agreement, 3.V.C in publication agreement, 3.VI.C.2 testimony, places for, 6.VIII.E.1 tests for determining existence of implied license, 6.VI.B.6

325

326

Index for personal jurisdiction based on online contacts, 6.II.A.2 reasonable apprehension of suit test for declaratory judgment, 5.I.D for substantial similarity, 6.I.A, 6.I.B.3.b, 6.I.F thin copyright, 1.I.C, 6.I.D.1.c timing. See also deadlines depositions, 6.VIII.F.2 dispositive motions, 6.X expert testimony, 6.IX.E motion for judgment as a matter of law, 6.XIV motion in limine to exclude evidence, 6.XIII motion to dismiss, 6.V.D, 6.VI motion to exclude expert testimony, 6.XIII registration of copyright, 1.I.G, 2.VIII total concept and feel test, 6.I.B.3.b. See also substantial similarity trademarks, 1.I.B trade secrets computer programs, 2.III.B, 2.VI theft of as additional claim, 1.I.B transfer of ownership of copyright, 3.II.D. See also assignment; license; ownership of copyright checking recordations before filing claim, 6.I.B.1 definition, 3.II recordation, 3.III, 3.III.A, 3.III.B recordation with CBP and, 7.I.A termination to recapture renewal period, 3.IV trial, 6.XIV Trial Techniques (Mauet), 6.XIV TRO. See temporary restraining order

U unclean hands, 6.VI.B.9 Unfair Competition and the ITC: Actions Before the International Trade Commission Under Section 337 of the Tariff Act of 1930 (West Group), 7.II unprotectable elements, defenses and, 6.VI.B.7 updates of books, 3.VI.C.2 U.S. Customs and Border Patrol, 7.I U.S. Customs Recordal, 7.I, 7.I.A enforcement, 7.I.B

V vague, objections to in interrogatories, 6.VIII.D.1 in requests for document production, 6.VIII.D.3 validity of copyright defendant’s discovery requests about, 6.VIII.B.2 defendant’s interrogatories about, 6.VIII.B.3.b depositions and, 6.VIII.F.5.b document requests about, 6.VIII.B.5.a ensuring before filing claim, 6.I.B.2, 6.II.C registration and presumption of, 1.I.G, 2.I.B, 6.I.B.2 requests for admission and, 6.VIII.B.4 value of copyrighted work, 6.VIII.B.3.e. See also damages; remedies value of use recovery, 6.VII.A venue, 6.II.A.3 improper, 6.V.A, 6.V.A.2 versions, registration of every, 2.V.D, 2.IX computer programs, 2.VI vessel hull designs, 2.IV visual arts work registration, 2.III.A visual exhibits and demonstratives, rules for admitting, 6.XIV voir dire, 6.XIII

W waiving service of complaint, 6.II.E, 6.IV.A websites. See also online research as basis of information about the defendant and their infringement, 6.II.B as basis of plaintiff’s description in complaint, 6.II.B on copyright expirations and public domain works, 3.VI.C.1 of Customs and Border Patrol, 7.I on DMCA take-down notices, 4.III of federal courts, 6.II.D.1 of International Trade Commission, 7.II live date as date of publication, 2.X.A of performing arts organizations, 3.VI.A.1 useful, 1.I.L Westlaw, 5.IV.H, 6.I.E help with searches, 6.X Wikipedia on copyright term lengths, 1.I.L

Index will and transfer of copyright ownership, 3.II.D willful infringement increase of damages due to, 6.VI.B.11, 6.VII.A statutory remedies and, 6.II.C witness, preparing, 6.VIII.F.7 work as a whole test, 6.I.B.3.b. See also substantial similarity work for hire, 1.I.J. See also ownership of copyright agreement, 3.V.A

commission versus employment, 3.I, 3.V.A ownership of copyrights and, 3.I provision included in assignment of copyright, 3.II.D registration application and, 2.V.B.5 work of authorship, 1.I.C works in progress, preregistration of, 2.VIII World Intellectual Property Organization, 1.I.L written discovery. See discovery, written

327

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