Goodell DeVries partner Jim Astrachan published this article in the Drake Law Review. Full text is available here.

ABSTRACT

In many cases of copyright infringement, the plaintiff is only able to afford to bring an action for infringement if they are entitled to ask the court to award statutory damages and attorney’s fees should they prevail in establishing infringement. While there might be a connection between the amount of statutory damages a court may award, in its discretion, the profits of the infringer and the actual damages, if any, suffered by a copyright owner, 17 U.S.C. § 504(c) allows a court to award between $750 and $150,000 for each work infringed.¹ The statute does not require the plaintiff to establish what actual damages they may have suffered from the infringement or what profits the defendant reaped.²

Section 412 requires, however, that for a plaintiff to be entitled to statutory damages and attorney’s fees, it must register the infringed work with the United States Copyright Office before the infringement occurred, or in the case of a newly published work, within three months after first publication.³

Courts do not always apply a bright-line test to determine a plaintiff’s entitlement to statutory damages and attorney’s fees based on when the infringement occurred, relative to the time of registration. Some courts have even developed theories that circumvent the requirements of section 412. Application of these theories, while not widely accepted, serves to prolong litigation and results in increased costs.

Most courts that have considered a plaintiff’s entitlement to statutory damages and attorney’s fees in compliance with section 412 have adopted a bright-line test that when infringement occurs prior to registration, statutory damages and attorney’s fees cannot be recovered for acts of infringement of that work after registration.⁴ Other courts, however, have examined the duration between the first and subsequent acts of infringement, or the nature of the infringement of the right enumerated by section 106(a) and have considered these acts to be separate acts of infringement, entitling a plaintiff to these extraordinary remedies — even though infringement began prior to registration and a reading of sections 504, 505, and 412 would appear to block such an award.⁵

Courts faced with a motion to dismiss claims for these remedies where it is alleged that infringement began prior to registration, regardless of what occurred regarding the same work after registration, should act in a consistent manner where certain key facts are alleged or established. Failure to foreclose availability of statutory damages and attorney’s fees remedies seem to prolong litigation that might otherwise settle quickly if these remedies were not available in cases where profits have yet to be earned and damage to the work has not occurred.

This Article examines both sides of this issue, as well as the legislative history of section 412,⁶ and concludes there should be no judicial discretion as to the availability of these remedies. If the work was infringed by a defendant prior to registration, and after, the plaintiff is not entitled to recover statutory damages and attorney’s fees.

NOTES

¹ 17 U.S.C. § 504(c).
² Id. § 505.
³ Id. § 412.
⁴ See, e.g., Bouchat v. Bon-Ton Dep’t Stores, Inc., 506 F.3d 315 (4th Cir. 2007).
⁵ See, e.g., Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 701 (9th Cir. 2008); Troll Co. v. Uneeda Doll Co., 483 F.3d 150, 158 (2d Cir. 2007).
⁶ Infra Part VII.