THE NEED FOR SPEED: THE PATH TO STATUTORY DAMAGES IN COPYRIGHT

Steven A. Gibson

J.D. Lowry

Introduction

The irony is remarkable: copyright law provides arguably the most robust protective matrix for any intangible assets and yet remains horribly underutilized by owners of copyrights. While copyright registration is not necessary for copyright ownership,1 copyright registration provides particularly relevant and practical advantages, one of which is the ability to claim statutory damages.2 As proving damages in any lawsuit is often the province of expensive expert witness battles, the ability on the part of copyright owners to avoid altogether that battle, and merely prove ownership and then infringement to obtain substantial monetary damages, provides an immense advantage.

Copyrights: What Are They

Copyright protection attaches to “original works of authorship fixed in any tangible medium of expression.”3 “Works of authorship” include literary works; musical works (including any accompanying lyrics); dramatic works (including any accompanying music); pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.4  Copyrights ought not to be, but often are, embarrassed with trademarks, service marks, and patents. The fundamental role of a copyright is to protect expressions of ideas rather than the ideas themselves. Conversely, patents, at least the more commonly recognized utility patents, protect the functionality of inventions – the ideas associated with the function rather than the expression of the function. It is true that both copyrights and patents have as their focus the protection of a proprietary interest, but the nature of the interest that’s protected is cognizably and significantly different.5 This commonality of copyrights and patents in protecting proprietary interests arises out of Article I, Section 8, Clause 8 of the United States Constitution, which confers on Congress the power “[t]o promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” 

In contrast, trademarks and service marks are governed by the Lanham Behave,6 passed by Congress under its authority pursuant to the Commerce Clause of the United States Constitution. Marks protect indicators of source; a mark may be a single word used in a particular manner, a design, or another thing (including a musical tone) capable of imparting a sensory input. Some forms of marks, such as designs, may also engender copyright protection, while few, if any, textual marks will enjoy copyright protection, as such text almost inevitably lacks the substantiality to meet the originality threshold required for copyright protection.7

The Vast Universe of Infringements

As virtually any textual or graphical work of any material substantiality is protected by copyright, the universe of works that enjoy copyright protection approaches the infinite. Every single day, people write notes, companies produce textual material, and various entities display a vast array of content on the Internet, all of which work product is, generally speaking, properly the subject of copyright protection. It is an absolute mistake to believe that merely because content is displayed on the Internet that such content is not protected by copyright and may be reproduced without express authorization. Indeed, books in a traditional library enjoy copyright protection despite being publicly accessible. Public accessibility is one of the hallmarks of copyrighted works, not vice-versa.  An immense and almost immeasurable array of content resident in an also impressive array of media (including print, electronic, digital, and optical) is thus subject to copyright protection. A vast, perhaps almost equally incalculable, ocean of infringement exists alongside it. Various content-generating industries report billions of dollars in infringements every year in their own media alone. For example, in 2003, the Recording Industry Association of America reported over $4 billion of infringement annually faced by the recording industry.8 The Software & Information Industry Association reports $11 billion of software infringement worldwide annually,9 a figure also cited by the Business Software Alliance.10 In 2004, the senior vice-president and director of worldwide anti-piracy operations for the Motion Picture Association of America estimated copyright theft losses in the motion picture industry, not even including illegal Internet downloads of copyrighted motion images, as $3.5 billion annually.11

Perhaps a better way to analyze the vast nature of the infringements is to understand that in electronic media such as the Internet, billions of unauthorized reproductions occur in any given year.12 As discussed below, if copyright owners take necessary measures to secure their entitlement to statutory damages up to $150,000 per infringement,13 and if each of these billions of infringements were multiplied by a reduced statutory damage award of merely $100,000, the dollar value of infringements would exceed trillions of dollars, arguably into the quadrillions. Even if estimates in the quadrillion range are greatly overvalued (by even a factor of 1,000), the potential value of statutory damages for copyright infringement still mandates more aggressive action on the part of copyright owners.

1 7 U.S.C. § 401(a).

2 17 U.S.C. § 412, § 504(c).

THREE 17 U.S.C. § 102(a).

4 Id.

5 The interests protected by patents and copyrights are substantially different, but that does not mean that

the subject matter may be different at all. For example, the functionality that’s expressed by the source

code of computer software may very well be afforded patent protection (if novelty and non-obviousness

prongs are met), while the textual expression of the ideas in the wording of the source code is afforded

copyright protection.

6 15 U.S.C. § 1051 et seq.

7 In theory, an individual who writes the word “the” on a piece of paper has authored text “fixed in a tangible medium of expression.” That writing, however, is hardly substantial or original. Moreover, it would be both unfair and unworkable for that individual to enjoy the exclusive right to reproduce the word “the.” Originality often requires far more substantiality. The minimum amount of substantiality required for copyright protection can be described as slightly more than that embodied in the routine instructions on a bottle of shampoo. In another vein, the telephone directory’s white pages (as opposed to the yellow pages), while substantial in scope, are not original in nature because mere alphabetization of data does not constitute a level of originality cognizable for copyright purposes.

8 www.riaa.com/issues/piracy/default.asp, accessed September 30, 2006.

9 www.siia.net, accessed September Thirty, 2006.

10 en.wikipedia.org/wiki/Business_Software_Alliance, accessed September Thirty, 2006.

11 Press release, Federal Bureau of Investigation, February 19, 2004

(www.fbi.gov/pressrel/pressrel04/piracy021904.htm, accessed September 30, 2006).

12 One commentator has cited billions of unauthorized music downloads alone (Heins, Marjorie, “Understanding Grokster,” www.fepproject.org/commentaries/grokster.html, March Thirty, 2005 [accessed September Thirty, 2006).

13 The infringement referred to here is per occurrence of infringement, not a calculus of how many reproductions by one infringer of a work. See Sony Computer Entertainment America, Inc. v. Filipiak, 406 F. Supp. 2d 1068 (N.D. CA. 2005).

Steven Gibson is one of the top business and intellectual property lawyers practicing in Las Vegas. Not only is Mr. Gibson one of the most experienced attorneys in Nevada practicing in intellectual property and business areas, Mr. Gibson’s practice in Tokyo with one of the nation’s largest law firms, as well as in Chicago with a major, international Chicago-based law firm, has given him a level of experience few lawyers in Las Vegas can claim. With Twenty years as an lawyer, including Ten years of Nevada practice, Mr. Gibson has some of Nevada’s largest companies as clients, including large media companies, gaming and casino companies, and software and development companies, as well as client companies in an array of industries across the United States and worldwide.

Jodi Donetta “J.D.” Lowry practices in the areas of intellectual property, commercial litigation, and health law. The focus of her practice is copyright and trademark law, and she has a strong interest in intellectual property torts related to blogs, social networking websites, and other new media. She has presented seminars and published in the fields of copyright law, plaintiff litigation in federal courts, and medical malpractice. Before entering law practice in 1999, Miss Lowry was the assistant editor of the Journal of College Science Teaching and the copyright officer of the National Science Teachers Association.

www.gibson-lowry.com

Stay tuned for Part 2 on Monday, March 9^th.

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