Attorney Steve® Copyright Law Essentials - The innocent infringement defense - [case law illustrating the point]
Introduction
Since 2004 our law firm has been handling a bulk of the copyright infringement cases in California, from the Northern District of California, Central District, Eastern, and Southern District, to non-litigation copyright fair use cases. The innocent infringement defense is a very important one to be aware of and look at closely when you are being sued for software piracy (ex. Hexagon, Dassaultes-Solidworks, Autodesk, Adobe, or other software publishers seeking to enforce their IP rights) and in STRIKE 3 HOLDINGS BitTorrent file-sharing cases where you often get a starting offer of $750 per infringement to settle your case. Another area of interest to our firm is photo infringement. In these types of cases if you had no reason to know of the infringement, perhaps it would be wise to raise the defense and seek a lower damages award as opposed to a jury finding of willful infringement. Here is some case law that may help illustrate this point.
Issue
When does the innocent infringement defense apply in copyright law?
Facts
A photographer sued a company that hosted images on its website. The website owner is very careful to avoid copyright infringement and tries to only use images that are in the public domain. Can the innocent infringement defense apply?
Conclusion
The innocent intent of the defendant is not a defense to liability for copyright infringement. (Buck v. Salle Realty Co, Shropshire v. Canning, Amini Innovation Corp. v. Mcferran Home Furnishings, Inc., Monge v. Maya Magazines, Inc.). Copyright is a strict liability offense.
However, the defendant's mental state is relevant to the remedies for copyright infringement. (17 U.S.C. § 504, Amini Innovation Corp. v. Mcferran Home Furnishings, Inc., Shropshire v. Canning)
Where the infringement was innocent, the court has the discretion to reduce the award of statutory damages to a sum of not less than $200 under 17 U.S.C. § 504(c)(2).
Under the Copyright Act, a copyright owner can prove infringement without proving that they suffered damages.
When they have not suffered any financial harm, they can elect statutory damages in place of actual damages.
However, where the infringement was innocent, the statutory damages may be reduced as a result of 17 U.S.C. § 504(c)(2). (Bell v. Wilmott Storage Servs., LLC)
Law
In Buck v. Salle Realty Co, 283 U.S. 191, 51 S.Ct. 410, 75 L.Ed. 971, 76 A.L.R. 1266 (1931), the United States Supreme Court held that intent to infringe is not essential under the Copyright Act (at 198-199):
"The defendant contends further that the acts of the hotel company were not a performance because no detailed choice of selections was given to it. In support of this contention, it is pointed out that the operator of a radio receiving set cannot render at will a performance of any composition, but must accept whatever program is transmitted during the broadcasting period. Intention to infringe is not essential under the act. Compare Hein v. Harris (C. C.) 175 F. 875, affirmed (C. C. A.) 183 F. 107; Stern v. Jerome H. Remick & Co. (C. C.) 175 F. 282; Haas v. Leo Feist, Inc. (D. C.) 234 F. 105; M. Witmark & Sons v. Calloway (D. C.) 22 F.(2d) 412, 414. And knowledge of the particular selection to be played or received is immaterial. One who hires an orchestra for a public performance for profit is not relieved from a charge of infringement merely because he does not select the particular program to be played. Similarly, when he tunes in on a broadcasting station, for his own commercial purposes, he necessarily assumes the risk that in so doing he may infringe the performing rights of another. Compare Harms v. Cohen (D. C.) 279 F. 276, 278; M. Witmark & Sons v. Pastime Amusement Co. (D. C.) 298 F. 470, 475, affirmed (C. C. A.) 2 F.(2d) 1020; M. Witmark & Sons v. Calloway (D. C.) 22 F.(2d) 412, 413. It may be that proper control over broadcasting programs would automatically secure to the copyright owner sufficient protection from unauthorized public performances by use of a radio receiving set,5 and that this might justify legislation denying relief against those who in using the receiving set innocently invade the copyright,6 but the existing statute makes no such exception."
In Monge v. Maya Magazines, Inc., 688 F.3d 1164, 2012 Copr.L.Dec. P 30300, 103 U.S.P.Q.2d 1907, 40 Media L. Rep. 2209, 12 Cal. Daily Op. Serv. 9240, 2012 Daily Journal D.A.R. 11,250, the United States Court of Appeals for the Ninth Circuit more recently stated that the innocent intent of the defendant is not a defense to liability for copyright infringement (at 1170):
The fair use doctrine has been called “the most troublesome in the whole law of copyright.” Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir.1939) (per curiam). This affirmative defense presumes that unauthorized copying has occurred, and is instead aimed at whether the defendant's use was fair. As with all affirmative defenses, Maya as the defendant bears the burden of proof. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 561, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). Despite its claim that it purchased the photos in good faith, “the innocent intent of the defendant constitutes no defense to liability.” 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.08[B][1] (Matthew Bender rev. ed.2011) (footnote omitted).
However, as explained by the United States District Court for the Central District of California in the unreported decision of Amini Innovation Corp. v. Mcferran Home Furnishings, Inc., CV 13-6496 RSWL (SSx) (C.D. Cal. 2014), the defendant's mental state is relevant to the remedies for copyright infringement. 17 U.S.C. § 504(c)(2) limits the availability of statutory damages for innocent infringement (at 6-7):
Plaintiff first seeks to strike Defendants' second affirmative defense of innocent intent. Mot. 6:11-28.
Plaintiff is correct in contending that "the innocent intent of the defendant constitutes no defense to liability" for copyright infringement. Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1171 (9th Cir. 2012) (quoting 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13:08[B][1] (Matthew Bender rev. ed. 2011)). However, "Defendant's mental state . . . is relevant to the issue of remedies." Shropshire v. Canning, 809 F. Supp. 2d 1139, 1147 n.2 (N.D. Cal. 2011). Indeed, under the Copyright Act:
In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.
17 U.S.C. § 504(c)(2).
In other words, the Defendants are clearly correct in that innocent intent serves as an affirmative defense as to the availability of statutory damages.
The full text of 17 U.S.C. § 504(c)(2) states:
(2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was:
(i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords; or
(ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit activities of a public broadcasting entity (as defined in section 118(f)) infringed by performing a published nondramatic literary work or by reproducing a transmission program embodying a performance of such a work.
In Shropshire v. Canning, 809 F. Supp. 2d 1139, 100 U.S.P.Q.2d 1307 (N.D. Cal. 2011), the United States District Court for the Northern District of California reiterated that liability for direct copyright infringement does not require intent or any particular state of mind (at 1146-1147):
Here, as in Conus, Defendant's intent has no bearing on whether Plaintiff has stated a viable claim for relief under the Copyright Act. Thus, even if true, Defendant's protest that he did not know that YouTube's servers were in California and simply tried to upload his video only to youtube.ca, YouTube's Canadian web address, is of no moment to the issue of liability. Id. at 584 (“[defendant] contends that any allegedly infringing activity in the United States was unintended and unavoidable. [809 F.Supp.2d 1147]
Even if true, however, this is no defense against an infringement of copyright. Direct infringement does not require intent or any particular state of mind. See 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.08 (1996) (‘in actions for statutory copyright infringement, the innocent intent of the defendant will not constitute a defense to a finding of liability)).” 2
However, the Court noted in a footnote that mental state is relevant to remedies, citing 17 U.S.C. § 504(c)(2) (at FN 2):
- Defendant's mental state, however, is relevant to the issue of remedies. Section 504 of the Copyright Act provides that remedies for copyright infringement may include actual damages or profits and statutory damages. See 17 U.S.C. § 504. For example, statutory damages of up to $150,000 are available in cases in which the court determines “that infringement was committed willfully.” Id. at § 504(c)(2). On other hand, “[in] a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.” Id.
In Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021), the United States Court of Appeals for the Ninth Circuit explained that, under the Copyright Act, a copyright owner can prove infringement without proving that they suffered damages. When they have not suffered any financial harm, they can elect statutory damages in place of actual damages. However, where the infringement was innocent, the statutory damages may be reduced as a result of 17 U.S.C. § 504(c)(2) (at 1080-1081):
Yet nowhere in the Act's numerous and detailed provisions is there any exception for the de minimis use of a concededly infringing work, i.e., for a "technical violation."
The Act defines a copyright infringer as "[a]nyone who violates any of the exclusive rights of the copyright owner." Id. § 501(a) (emphasis added).
A prima facie case of infringement thus requires only that a plaintiff demonstrate ownership of the copyright at issue, a violation of an exclusive right set forth in copyright, and causation by the defendant. Giganews, 847 F.3d at 666. Tellingly, a plaintiff need not prove damages. See id. Instead, the Act provides that a plaintiff may elect statutory damages in place of actual damages, thus providing causes of action for infringement even when the infringement has not actually worked any financial harm to the copyright holder. 17 U.S.C. § 504(c).
Similarly, the Act also provides that the right "to reproduce the copyrighted work in copies or phonorecords" is an exclusive right of the copyright's owner, as much as any other. Id. § 106(1). A "technical violation" defense, at least as potentially articulated in Knickerbocker, is plainly in tension with this right because it suggests that making a single copy is somehow not enough to show a violation absent some further material use or action. But, crucially, the Act is agnostic as to the use of the copy once it is made; the unlicensed copying itself is the violation. Thus, the Act "itself takes account of [remedies]" for copyright holders even where the infringing use is minor. Petrella, 572 U.S. at 677, 134 S.Ct. 1962. And the Act itself answers the district court's concerns here about mere, "technical" violations of an exclusive right, "leav[ing] ‘little place' " for a defense based on the de minimis use of a concededly infringing work resorted to by the district court. See id. at 685, 134 S.Ct. 1962. This conclusion is further strengthened by the recent enactment of the Copyright Alternative in Small-Claims Enforcement ("CASE") Act, which establishes a Copyright Claims Board within the Copyright Office to create a cost-effective administrative venue for litigating "small claims" of copyright infringement as an alternative to federal courts. See 17 U.S.C. §§ 1501 – 11.
However, our holding does not mean that an infringer's innocent intent and technical use of the infringing work are irrelevant. The Act also accounts for the culpability of the infringer, distinguishing willful from innocent infringement by limiting the statutory damages that can be imposed against the latter. See Id. § 504(c)(2); Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 991 (9th Cir. 2017).
Thus, any concern that the de minimis doctrine is needed to protect "accidental" or unwitting infringement, a concern that appears to be shared by the district court, is also addressed by the Act, which provides that where an "infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright," the court may reduce statutory damages to as little as $200. 17 U.S.C. § 504(c)(2).
Contact a California Copyright Law Firm
We have offices in San Francisco, San Diego, Santa Monica, and Newport Beach. We handle a wide variety of copyright infringement claims from Strike 3 Holdings Defense to illegal interception and broadcast of TV signals, fair use opinions, jewelry, and fashion infringement (sometimes raising issues of trademark, trade dress, counterfeits, and false designation of origin), YouTube video law, and other cases. Since 2004 we have been proudly serving companies both large and small and photographers and content creators in enforcing and protecting their legal rights, whether on the Plaintiff or Defendant side of the aisle. We know copyright firms like few IP firms do. This is our legal niche area. We have appeared in over 300 federal court copyright cases making us one of the top 15 copyright firms in the United States at least in terms of the number of cases handled.
Call us at (877) 276-5084 for more information or fill out our contact form.
Legal Authorities
Buck v. Salle Realty Co, 283 U.S. 191, 51 S.Ct. 410, 75 L.Ed. 971, 76 A.L.R. 1266 (1931)
Monge v. Maya Magazines, Inc., 688 F.3d 1164, 2012 Copr.L.Dec. P 30300, 103 U.S.P.Q.2d 1907, 40 Media L. Rep. 2209, 12 Cal. Daily Op. Serv. 9240, 2012 Daily Journal D.A.R. 11,250
Amini Innovation Corp. v. Mcferran Home Furnishings, Inc., CV 13-6496 RSWL (SSx) (C.D. Cal. 2014)
Shropshire v. Canning, 809 F. Supp. 2d 1139, 100 U.S.P.Q.2d 1307 (N.D. Cal. 2011)
Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021)
