Attorney Steve® Copyright Law Essentials - Willful infringement standard. Willful is reckless too?
If you are being sued (or pursued) for copyright infringement, you will likely get a demand letter from a copyright law firm informing you that you have "willfully infringed" their clients software. They might also point out that willfulness also includes being in "reckless disregard of the copyright owners rights." This is where clients start scratching their heads and going WHAT? What is the standard for willful infringement that may justify an award of $150,000 per infringed copyright work? This blog aims to provide you with some general guidance.
Willfulness may depend on your federal court jurisdiction!
Copyright law is a creature of federal law and the United States court system is broken up into 11 jurisdictions depending upon where you live. For more information about the various federal circuit courts watch our video.
Sample cases (survey of law)
What is “Willful” copyright infringement in the 9th Circuit? [For example, if case your case is heard in California, Washington, Oregon, Arizona, Utah, Montana, Idaho, or Hawaii]
Plaintiff Greg Young Publishing, Inc. ("Plaintiff') brought this copyright infringement action against Zazzle, the operator of an online service that allows designers to upload their designs to the Zazzle website and sell products on which those designs can be printed. Plaintiff alleged that some of the designs uploaded by third-parties and printed onto products by Zazzle infringed 35 different copyrighted works owned by Plaintiff. The case was tried on August 8-9, 2017.
Absent an affirmative finding of "willful" infringement, the Copyright Act limits statutory damages awards to a maximum of $30,000 per copyrighted work. To willfully infringe a copyright, the defendant must have had actual knowledge of the infringement or have acted with reckless disregard or willful blindness. Here, no reasonable jury could have found on the evidence presented at trial that Defendant Zazzle Inc. ("Zazzle") willfully infringed any copyrights. Although Plaintiff argued that Zazzle could have done more to detect and avoid potential infringement, as a matter of law, Zazzle's failure to take any of these particular steps is not a sufficient basis for a finding of willful infringement. Accordingly, the Court GRANTS Defendant's renewed motion for judgment as a matter of law on the question of willful infringement and reduces the judgment to 530,000 for each of the five images that exceeds the statutory limit for ordinary infringement.
- Willfulness Requires Actual Knowledge, Recklessness, or Willful Blindness
A copyright owner can only recover damages in excess of $30,000 per infringed work if the infringement was "willful." 17 U.S.C. § 504(c). "The copyright owner has the burden of proving willfulness." Friedman v. Live Nation Merch., Inc., 833 F.3d 1180, 1186 (9th Cir. 2016).
As set forth in a series of recent Ninth Circuit decisions in a variety of copyright contexts, "willful infringement does not require actual knowledge; a showing of recklessness or willful blindness is sufficient." See, e.g., Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 992 (9th Cir. 2017).
Pursuant to this standard, a copyright defendant may be liable for willful infringement if it fails to make any "attempt to check or inquire into" the copyright status of a design when it "has a general awareness" that the design might be unauthorized, Unicolors, Inc., 853 F.3d at 991-992, or if the defendant uses "an approval process that never explicitly asks about copyrights at all," Friedman, Inc., 833 F.3d at 1186, or if the defendant deliberately sells infringing products after receiving a cease-and-desist notice. Wash. Shoe Co., 704 F.3d at 674.
But in contrast to these cases, willful infringement does not exist as a matter of law where, as here, the defendant relies on a third party's representation that the third party can authorize the defendant to use the work and the defendant is aware of no facts to suspect infringement. Taylor Holland LLC v. MVMT Watches, Inc., No. 2:15-cv-03578-SVW-JC, 2016 U.S. Dist. LEXIS 187379, at *27 (C.D. Cal. Aug. 11, 2016). In Taylor Holland, this Court determined that willful infringement could not be shown as a matter of law where a third party supplied the defendant with a copyrighted photograph and falsely represented that she had the right to authorize the defendant to use the image. The Court recognized that a failure to act with "prudence" is "not the same as" "reckless disregard and willful blindness." Id. at *29 n.24.
And with respect to online service providers that host large volumes of user-uploaded content, receiving a takedown request for a specific unauthorized copy of a copyrighted work does not, without more, impute an objective suspicion that other instances of that same work exist on the service and are likewise unauthorized. Viacom Int'l, Inc. v. YouTube, Inc., 940 F. Supp. 2d 110, 116 (S.D.N.Y. 2013).
"[W]illful blindness is not the same as an affirmative duty to monitor [the service for other instances of infringement]." Absent a takedown notice from a copyright owner identifying specific infringing copy, the service provider cannot know whether every particular copy is authorized or not. (where defendant had "at most information that infringements were occurring with particular works, and occasional indications of promising areas to locate and remove them," but not the "specific locations of infringements," then "[t]here is no showing of willful blindness to specific infringements").
Here, as in Taylor Holland and in Evergreen, there is insufficient evidence as a matter of law to support a finding that Zazzle willfully infringed the copyrights at issue. To the contrary, the undisputed trial evidence refutes any such suggestion because Zazzle:
(1) adopted a policy against copyright infringement,
(2) required its users to contractually warrant that each design's use was authorized,
(3) employed a large team to help enforce its policy,
(4) responded to every one of Plaintiff's takedown requests,
(5) made an effort to try to locate and remove additional infringements from Plaintiff's catalogue.
Plaintiff argues that its non-exclusive willfulness factors—taken from the jury instructions—support a finding of willfulness by the jury. Zazzle does not dispute the instructions themselves. Zazzle argues that Plaintiff did not produce the requisite evidence during trial to meet those factors. Under Ninth Circuit law, simply selling copyrighted works is not enough to find willfulness, contrary to Plaintiff's assertion. The instruction included whether defendant "did anything to determine if the product was infringing, apart from relying upon the representations of the product's supplier." Plaintiff never addressed the undisputed testimony that Zazzle would reach out for additional information where it doubted the uploaders had the relevant. The instruction included whether defendant "had any procedures or policies to prevent the sale of infringing goods."
Plaintiff acknowledges that there were policies in place, even though the policies may not have flagged every new instance of copyright infringement on the platform. Even in the light most favorable to Plaintiff, Zazzle's conduct was not "so unreasonable as to constitute reckless disregard." Island Software & Computer Serv., 413 F.3d at 264.
Drawing reasonable inferences in Planitiff's favor, Zazzle's conduct cannot be considered reckless or willfully blind. Whenever Plaintiff gave Zazzle notice of infringement, Zazzle responded. Planitiff's closing arguments acknowledged Zazzle had a working anti-infringement system. ("[GYPI is] asking you to get Zazzle to do a better job."). While that system admittedly could not address future infringement, it did have the ability to remove infringing material upon receipt of a takedown notice. And the Ninth Circuit does not set the willfulness bar so low that it requires active monitoring for infringement in the online platform context.
Even in the light most favorable to Planitiff, the undisputed facts do not show recklessness. Zazzle indisputably reviewed product orders and employed dozens of people to combat infringement. Nor was there evidence to support "willful blindness." Plaintiff elicited no testimony that Zazzle "believed that there is a high probability" of infringement of Plaintiff's copyrights, and Plaintiff showed no "deliberate actions" by Zazzle "to avoid learning" about infringement. Glob.-Tech Appliances, Inc., 563 U.S. at 769-70. Both elements are required; Plaintiff showed neither at trial.
No caselaw supports a willfulness standard so low that a company with an active anti-infringement policy that took action against any alleged infringement—albeit upon receiving notice—is deemed to have acted recklessly or been willfully blind. This Court enters judgment as a matter of law that any infringement found by the jury was not "willful."
Greg Young Publ'g, Inc. v. Zazzle, Inc., No. 2:16-CV-04587-SVW-KS, 2017 U.S. Dist. LEXIS 180285, at *8 (C.D. Cal. Oct. 27, 2017)
Attorney Steve® explains Willful Copyright Infringement in this video
EXAMPLE #2 - Massachusetts – First Circuit Court [If EULA choice of law provision applies for example]
The Copyright Act of 1976 gives a copyright owner the exclusive right to publicly perform, or authorize others to publicly perform, the copyrighted work. 17 U.S.C. § 106(4). To establish a case of copyright infringement, "a plaintiff must demonstrate
(1) originality and authorship of the work involved;
(2) compliance with all formalities required to secure a copyright under the Act;
(3) plaintiff's ownership of the copyright in question;
(4) public performance of the work;
(5) lack of authorization for the performer to perform the work." Polygram Int'l Pub., Inc. v. Nevada/TIG, Inc., 855 F. Supp. 1314, 1320 (D. Mass. 1994).
Plaintiffs assert that Defendants' infringement was willful. An infringement is willful when a "defendant had knowledge that his actions constituted copyright infringement or acted with reckless disregard for the copyright holder's rights." Sony BMG Music Entm't v. Tenenbaum, 660 F.3d 487, 507 (1st Cir. 2011).
Courts have found willful infringement where a defendant refuses to obtain a license for public performance of songs despite repeated warnings that a failure to do so creates the risk of copyright infringement. See, e.g., Broadcast Music, Inc. v. C.B.G., Inc., No. 11-cv-40142-FDS, 2013 U.S. Dist. LEXIS 163010 2013 WL 6074121, at *4 (D. Mass. Nov. 15, 2014) ("It is clear that Defendants willfully infringed by continually refusing to obtain a license despite BMI's many calls and letters warning about the risk of infringement and offering to enter into a licensing agreement with Defendants."); Broad. Music, Inc. v. McDade & Sons, Inc., 928 F. Supp. 2d 1120, 1134 (D. Ariz. 2013) ("The record reflects that Defendants' infringements were knowing and willful. . . . [Plaintiff] repeatedly notified Defendants of the need to enter into a blanket license agreement, but Defendants declined to do so."); Emi Mills Music, Inc. v. Empress Hotel, Inc., 470 F. Supp. 2d 67, 73 (D.P.R. 2006) (finding infringement "deliberate and willful" where defendants did not obtain a license for performance of music at their hotel despite repeated contact from plaintiff about necessity of license).
In the instant case, Plaintiffs contacted Defendants over twenty times by phone, mail, and email to explain the infringement and requirement to get a blanket license. The undersigned finds that Defendants willfully infringed by refusing to obtain a license in spite of these numerous communications and will recommend that damages be awarded accordingly.
Broad. Music, Inc. v. 11 Exch. St. LLC, No. 4:19-cv-40136-DHH, 2020 U.S. Dist. LEXIS 234198, at *5-7 (D. Mass. Oct. 13, 2020)
The Pope Case
Under the Copyright Act, "a court can award statutory damages of not less than $750 or more than $30,000, 'as the court considers just,' for all infringements with respect to one work[.]" Bryant v. Media Right Prods., Inc., 603 F.3d 135, 139 (2d Cir. 2010) (quoting 17 U.S.C. § 504(c)(1)).
Moreover, "[i]f the copyright holder proves that infringement was willful, the court may increase the award to no more than $150,000." (per infringed work). Even under such circumstances, however, "[t]here must be some basis, such as . . . sufficient affidavits, [to support] the court's judgment." Curet-Velàzquez v. ACEMLA De P.R., Inc., 656 F.3d 47, 58 (1st Cir. 2011).
Furthermore, even where infringement is found to be willful, "it is still within the fact-finder's discretion to award less than the maximum" of $150,000 "all the way down to the statutory minimum of $750." Fitzgerald v. CBS Broad., Inc., 491 F. Supp. 2d 177, 190 (D. Mass. 2007) (internal citation omitted).
When determining the amount of statutory damages to award for copyright infringement, the court may consider such factors as:
"[any] expenses saved and profits reaped by the defendant in connection with the infringement
[any] revenues lost by the plaintiff as a result of the defendant's conduct, and the state of mind of the infringer," such as whether his infringement was willful or innocent. Curet-Velazquez, 656 F.3d at 58 (quotations and citation omitted).
"Infringement is willful when the infringer knew or should have known that [his] action was copyright infringement." Fitzgerald, 491 F. Supp. 2d at 190. See also Homeowner Options for Mass. Elders, Inc. v. Brookline Bancorp, Inc., 754 F. Supp. 2d 201, 209 (D. Mass. 2010) ("An infringement is willful if the defendants knew or should have known that their conduct constituted copyright infringement, or acted in reckless disregard of the copyright holder's rights").
"[T]he willfulness of the defendants may be inferred from their failure to appear and defend this action." Merch. Media, LLC v. H.S.M. Int'l, No. 05-CV-2817, 2006 U.S. Dist. LEXIS 99799, 2006 WL 3479022, at *5 (S.D.N.Y. Nov. 30, 2006).
In addition to the factors listed above, the court may consider the number of infringements, and the extent to which statutory damages would deter future unlawful conduct by the infringer or third parties. See Bryant, 603 F.3d at 144 (describing factors that court will consider in awarding statutory damages); Venegas-Hernandez v. Sonolux Records, 370 F.3d 183, 195 (1st Cir. 2004) (same).
It also may consider the defendant's lack of cooperation and failure to participate in the litigation. See Curet-Velazquez, 656 F.3d at 59 (district court properly took defendants' lack of cooperation into account in awarding statutory damages for copyright infringement).
Ultimately, however, "the court's discretion and sense of justice are controlling in its award of statutory damages" as long as the court adheres to the limits set forth by Congress. Curet-Velazquez, 656 F.3d at 58 (quoting Markham v. A.E. Borden Co., 221 F.2d 586, 587 (1st Cir. 1955)) (internal quotations and punctuation omitted).
"In cases where an amount greater than the specified minimum is sought, the determination of whether to conduct a hearing, or instead to find that the record before the court is sufficient to adequately inform its analysis, rests with the discretion of the court." Disney Enters., Inc. v. Merchant, (N.D.N.Y. April 10, 2007) (citing Ortiz-Gonzalez v. Fonovisa, 277 F.3d 59, 63-64 (1st Cir. 2002)); see also Morley Music Co. v. Dick Stacey's Plaza Motel, Inc., 725 F.2d 1, 3 (1st Cir. 1983)
("Although there need not be the kind of hearing required if factual damages were the issue, . . . there must, we think, be either some hearing or sufficient affidavits to give the trial judge an adequate reference base for his judgment."). This court finds that the evidence put forth in the plaintiff's affidavits and verified complaint and exhibits thereto provide a sufficient basis for this court to issue a finding of statutory damages.
Pope claims $50,000 in statutory damages on the basis of the defendant's willful infringement of his copyright and the losses Pope suffered as a result of the unauthorized views of his motion picture/video on the internet. This court finds that plaintiff has put forth sufficient evidence that the defendant's copyright infringement was willful.
Pope alleged that he and Lewis had a verbal agreement "to protect" the film; that as part of that agreement, Lewis was only to do with the film what Pope instructed (Id.); that Pope did not instruct Lewis to post the film on YouTube that Pope, through Mr. Swafford-Donald, informed Lewis to take the film down from YouTube; and that Lewis did not do so (Id. ¶ 25). Lewis initially appeared in this action, so he clearly was aware of Pope's claims.
These facts, along with Lewis' default in this matter, are sufficient for a finding of willfulness. See Disney Enters. (willfulness found where defendant defaulted and defendant knew or reasonably should have known that he was participating in the distribution of a pirated copy of the motion picture because the home video release date for the motion picture at issue had not yet occurred and thus no authorized copies of that copyrighted work were available to the public); see also Merch. Media, 2006 U.S. Dist. LEXIS 99799, 2006 WL 3479022, at *5 (willfulness found where defendant continued to sell infringing items in the face of two cease-and-desist letters from plaintiffs and defendant failed to appear and defend action); Broad. Music, Inc. v. C.B.G., Inc., No. 11-CV-40142, 2013 U.S. Dist. LEXIS 163010, 2013 WL 6074121, at *4-5 (D. Mass. Nov. 15, 2013) (finding willfulness where defendant continually refused to obtain a license to play copyrighted songs despite many calls and letters by the plaintiff warning about the risk of infringement and offering to enter into a licensing agreement with defendants); Sixx Gunner Music v. The Quest, Inc., 777 F. Supp. 2d 272, 274 (D. Mass. 2011) (finding inference of willfulness where defendant received multiple notifications that it was illegally using copyrighted music).
Pope has also provided evidence that the motion picture/video was viewed 56 times on YouTube (Compl. Ex. b), and that at some point in time, the purchase price of the film ranged from $39.99 to $295.00 and the rental price was $75.00. (Compl. Ex. a). Given these factsand statutory damage awards in other cases, this court concludes that $5,000 is reasonable and necessary as a statutory damage award in this case, and will have the requisite deterrent effect on the defendant. See Disney Enters., 2007 U.S. Dist. LEXIS 26400, 2007 WL 1101110 at *6 (statutory damages award of $6,000 appropriate where there was a finding of willful infringement and defendant distributed to others, without authorization, copies of copyrighted motion pictures by using a peer-to-peer network on the internet); Sony Pictures Home Entm't Inc. v. Chetney, No. 5:06-CV-227, 2007 U.S. Dist. LEXIS 13314, 2007 WL 655772, at *3 (N.D.N.Y. Feb. 26, 2007) (same).
See Pope v. Lewis, No. 14-14373-ADB, 2017 U.S. Dist. LEXIS 148162, at *9 (D. Mass. Aug. 24, 2017)
Defendants deny that the infringement was willful because they never acknowledged the validity of plaintiff's intellectual property. Infringement is willful if the defendants knew or should have known that their conduct constituted copyright infringement, or acted in reckless disregard of the copyright holder's rights. Fitzgerald v. CBS Broad., Inc., 491 F. Supp. 2d 177, 190-91 (D. Mass. 2007).
The Court finds willful copyright infringement here not only based upon defendants' continued use of the copyrighted materials after the license was terminated but also because defendants continued to use the copyrighted materials even after the Complaint in this case was filed and they had clear notice that their conduct might constitute infringement. See Columbia Pictures Tel. v. Krypton Broad. of Birmingham, 106 F.3d 284, 293-94 (9th Cir. 1997).
Homeowner Options for Mass. Elders, Inc. v. Brookline Bancorp, Inc., 789 F. Supp. 2d 242, 244-45 (D. Mass. 2011)
Contact a Federal Copyright Infringement Law Firm
When faced with allegations of willful copyright infringement when dealing with software, art work, photographs, drone videos, jewelry, architectural plans, fashion designs, music and other copyrighted content, it is important to have experienced legal counsel at your side. These issues are CRITICAL to your success. Vondran Legal® has helped several thousand clients since our firm was started in 2004.
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