Copyright Litigation – Infringement vs. Transformative Use!
From lawsuit against Internet Archive:
"Books have long been essential to our society. Fiction and non-fiction alike, they transport us to new worlds, broaden our horizons, provide us with perspective, reflect the ever-growing knowledge of humanity in every field, spark our imaginations and deepen our understanding of the world. Yet, books are not self-generating. They are the product of training and study, talent and grit, perseverance and creativity, investment and risk, and untold hours of work."
So say you have written an amazing book or eBook. You give it to one of your friends to review or edit, and then one of their kids picks up the book, likes it, and basically steals most of the content but also tries to make it his own book. You find out the copyright thief sells the book online and so you send the online service provider (ex. Amazon or eBay or Branes & Nobel) a DMCA “take down” notice. They take down the book, but it has already been sold and distributed. You then file a federal copyright lawsuit (let's assume you had previously registered your copyright in the ebook) seeking monetary damages. The Defendant files a motion to dismiss or an answer claiming the defense that they only stole a little bit of your book and basically transformed your work into a new work. How does a case like this get analyzed? This blog seek to shed some light on this interesting, but all too common copyright law issue.
Is your book copyright federally registered?
In order to file a federal copyright lawsuit, the Plaintiff must be the holder and owner of the Copyrights in question. For example, in Jim Marshall Photography, LLC v. John Varvatos of California, No. C-11-06702 DMR, 2013 WL 3339048, at *5 (N.D. Cal. June 28, 2013) the Northern District Court held (covers San Francisco / Silicon Valley / Santa Clara / Palo Alto area):
“A plaintiff may not bring an action for infringement unless he or she has preregistered or registered the work with the U.S. Copyright Office. 17 U.S.C. § 411(a); see also17 U.S.C. § 408(a) (providing that “the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim”). A copyright registration certificate made before or within five years after first publication of the work establishes prima facie evidence of the validity of a copyright and of the facts in the certificate. 17 U.S.C. § 410(c). However, the presumption is rebuttable, and does not definitively resolve the question of ownership of the copyright……Defendants argue that Plaintiff is unable to maintain its infringement action as to five images because the copyright registrations for those images do not list Marshall as the copyright claimant. In other words, the registrations are not in Marshall's name, and therefore Marshall should not receive the benefit of a presumption of legal ownership conferred through a valid copyright registration.”
17 U.S.C. 411(a) states:
(a) Except for an action brought for a violation of the rights of the author under section 106A (a), and subject to the provisions of subsection (b),  no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.
As such, before filing a copyright lawsuit in California or Arizona, we would look to verify ownership and registration.
The DMCA takedown notice
In our example above, you would want to stop the infringer from trying to capitalize off your book by selling it online. This is where a good internet lawyer comes in to help you with a DMCA cease and desist takedown notice to the online service provider where the book is being sold. This may be on more than one website. The DMCA notice is to signal that you believe, in good faith, that someone is infringing your copyrighted works, in this case your eBooks, and that you demand they take it down. If successful, this will temporarily stop the infringer, but it will not be the ticket to lost profits of the Defendant. You will have to take this one step further and either negotiate a settlement or else file a federal lawsuit seeking the infringers profits and alleging willful copyright infringement if applicable.
What is the test for Copyright infringement in California?
In Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990) the 9th Circuit federal court held:
“Copyright law protects an author's expression; facts and ideas within a work are not protected….to establish a successful copyright infringement claim, Shaw must show that he owns the copyright and that defendant copied protected elements of the work. Because, in most cases, direct evidence of copying is not available, a plaintiff may establish copying by showing that the infringer had access to the work and that the two works are substantially similar. The defendants conceded Shaw's ownership of the original Equalizer script and their access to the script for purposes of the summary judgment motion. As a result, the only issue before the district court on the copyright claim was whether defendants' version of the Equalizer is substantially similar to Shaw's original script. Any test for substantial similarity is necessarily imprecise: “Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about and at times might consist of only its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,' to which, apart from their expression, his property is never extended.”
The question of whether not the newly created book by the infringer is “substantially similar” to the eBook created by the holder of the registered copyright is not always an easy question, and this is something that can lead to litigation.
What is the “transformative use” defense?
In the above example, the copyright “infringer” might argue that he only took “bits and pieces” of the story line or only took one character, and that their work is thus transformative, or they may argue it is a parody protected by the first amendment. The Courts do recognize the concept of “transformative uses” that take alleged copyright infringement out of the realm of traditional infringement analysis, because the Defendant is arguing they worked up something new and original.
One of the landmark copyright cases of all time discusses the “fair use defense” is Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79, 114 S. Ct. 1164, 1171, 127 L. Ed. 2d 500 (1994). In this case, the United States Supreme Court held:
“The first factor in a fair use enquiry is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes…..the central purpose of this investigation is to see, in Justice Story's words, whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative…. the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Again, these are the types of issues and defenses that get litigated on a daily basis in Courts across the Country, and something to be aware of in your federal copyright infringement case involving your book, photo, or artwork. This issue can also arise in right of publicity litigation.
Recovering the Defendants Profits
Section 101(b), 17 U.S.C., provides that a copyright infringer shall be liable as follows – Damages and profits; amount; other remedies: “To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only, and the defendant shall be required to prove every element of cost which he claims. Thus, a court in making an award for infringement must determine both actual damages suffered by a plaintiff and profits from the infringement made by defendant……..there is agreement that a successful plaintiff is entitled to at least the greater of damages or profits…..in order to accurately determine profits, a defendant may be required to make an accounting. See Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172-73 (9th Cir. 1977).
Lost profits is an important aspect of a copyright infringement case and a skilled and experienced intellectual property lawyer can help you examine this issue.
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