Much is made of the fact that copyright attaches at the time expression is fixed in a tangible medium. To bring us (partially) in line with the Berne Convention, which convention the US joined in 1989, “formalities” of copyright protection — the requirement to give notice by putting the © symbol on the work and to indicate the date and owner, along with the requirement to register the work with the copyright office — were excised from the statute. What we may sometimes forget is that while protection may attach at fixation, there are still good and important reasons to register a work for copyright protection. One is that statutory damages, provided by 17 U.S.C. §504 (and that range generally between $750 and $30,000 for each infringement, and can be as low as $200 or as high as $150,000), can only be imposed where the work in question has been registered prior to the infringement (according to 17 U.S.C. §412).
Judge Duffey of the Northern District of Georgia reminds us (and plaintiffs) of this in granting defendant’s motion for summary judgment on the issue of damages where defendants had copied text directly from plaintiff’s website, but removed it one day before plaintiffs registered their copyright. In this case statutory damages were clearly unavailable to the plaintiffs. Section 412 still allows actual damages to be recovered, but here the Court said actual damages were not proven because the plaintiff provided evidence of defendant’s gross revenues but failed to attribute any of these to the infringing activity (though it is not clear to me that this is the correct reading of section 412 504 which could also be read to put the burden on the infringer to show which profits were not attributable to the infringement; this latter point is one I need to look into a little, and I’ll post a follow-up at a later date). The case is Atlanta Allergy and Asthma Clinic, PA v. Allergy & Asthma of Atlanta, LLC, and it was decided on January 19, 2010 (the case, as you might imagine from the named parties, primarily involves a trademark infringement claim).
I haven’t read the opinion, but it looks like the damages holding is pretty clearly wrong under 504(b), unless I’m missing something — “The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.”
That was my first impression, too, Bruce (and it is 504 that is relevant to this part of the discussion, not 412 as I originally said in my post – now edited), but it looks like things are not so clear, and in fact there is a split in the circuits on whether a plaintiff can simply say, “you infringed, here’s how much profit you made overall, now prove what isn’t due to infringement or give it to me.” The split comes as to how (whether?) a plaintiff has to show any connection between the infringing activity and the profits to shift the burden to the defendant to then get those profits excluded from the calculation. In 2008, the District Court for the Middle District of Florida described things this way:
“. . . Defendants rely on Ninth Circuit precedent, which requires plaintiffs to produce “sufficient non-speculative evidence to support a causal relationship between the infringement and the profits generated from such an infringement.” See Mackie v. Rieser, 296 F.3d 909, 915-16 (9th Cir. 2002); see also Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514, 522-23 (4th Cir. 2003) (plaintiff must demonstrate non-speculative evidence of a “conceivable connection” between the revenues and infringement); Univ. of Col. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366, 1375 (Fed. Cir. 1999) (plaintiff has burden to show a “connection” between sales and infringement). Under this line of cases, the plaintiff must show that the infringement itself — that is, the use of the plaintiff’s work — was causally linked to the gross revenue claimed. See id.
“By contrast, the Second Circuit requires only a “reasonable relationship” between the revenue and the infringing activity, such as the advertisement containing the infringing use. See On Davis, 246 F.3d at 160; see also Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 796 (8th Cir. 2003) (requiring a “nexus”); Taylor v. Meirick, 712 F.2d 1112, 1122 (7th Cir. 1983) (“It was not enough to show [defendant’s] gross revenues from the sale of everything he sold”). As explained by the Eighth Circuit, the question under this approach is “whether [the defendant] profited from the infringing commercial at all — for which [plaintiff] carried the burden of proof — rather than the extent that it profited from the infringement — for which [defendant] carried the burden of proof.” Andreas, 336 F.3d at 796.
“The Eleventh Circuit has not addressed the respective burdens on the parties under the statutory language of § 504(b). This Court places primary reliance on the plain language of the statute, which expressly contemplates a light burden for a plaintiff, who “is required to present proof only of the infringer’s gross revenue.” 17 U.S.C. § 504(b) (emphasis added). This burden is supported by the policy of the statute. A defendant’s profits are not awarded to compensate the plaintiff, but rather “to prevent the infringer from unfairly benefiting from a wrongful act.” H. R. REP. No. 94-1476 at 161 (1976). Consistent with this statutory scheme, it is appropriate to shift the burden of proof to the infringer, especially since information regarding profits is in the infringer’s possession.”
Thornton v. J Jargon Co., 580 F. Supp. 2d 1261 (M.D. Fl. 2008).
That seems to me to set out the difficulty in interpreting and applying the statute, but it’s an analysis that wasn’t offered in the Atlanta Allergy case I cited above.
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