To establish infringement of copyright, plaintiff must prove:
- plaintiff's ownership of a valid copyright and
- defendant's copying of original elements of the copyrighted work.
Incidentally, with regard to Infringement Element 1 (plaintiff's copyright ownership)....
the copyright registration certificate, if made within 5 years after the first publication of the copyrighted work, provides prima facie evidence (i.e. evidence that is sufficient unless rebutted) with respect to plaintiff's copyright ownership. The burden then shifts to the defendant to demonstrate why the copyright is not valid.
What constitutes copying?
Plaintiff can establish copying by demonstrating that
- defendant had access to the alleged infringed work prior to creation of the defendant's work, and
- the two works are substantially similar in both idea and expression of that idea.
In the many federal circuits, once the plaintiff demonstrates access and substantial similarity, the burden shifts to the defendant to prove that the latter's work was not copied but independently created.
What is "substantial similarity"?
The substantial similarity test is a factual one to be determined by the trier of fact (i.e., the judge or jury).
In determining whether the plaintiff has proved substantial similarity, the federal courts have adopted a 2-prong test.
The first, or Extrinsic Test involves the determination as to whether there is a substantial similarity as to the general ideas contained in the 2 works involved. The criteria set forth by at least one court for the Extrinsic Test included the type of artwork involved, the materials used, the subject matter and the setting for the subject.
If a substantial similarity of ideas is found, then the trier of fact must apply the second or Intrinsic Test.
This test involves the application of the ordinary observer test, which is whether the average reasonable person, on examining the 2 works, could detect without any aid, suggestion, or critical analysis that there is substantial similarity in the expressions of the ideas in the 2 works so as to constitute infringement.
In assessing the amount of proof required to show access and substantial similarity, some courts have adopted the "inverse ratio rule".
Under this rule, when the level of proof of similarity between plaintiff's work and defendant's work is very high, the degree of access required to be shown may be relatively low.
For example, if clear and convincing evidence of access is presented, the level of proof required to show substantial similarity may be lower than when access is shown merely by a preponderance of the evidence.
What are the penalties for infingement?
The court can order an infringer to disgorge all of the wrongful profit received by them. This is true even from those infringers whose participation in the sales chain of unlawful goods was unintentional, as no intent is required to infringe a copyright.
The liability is joint and severable among all infringers.
The plaintiff is required only to prove up the defendant's gross sales. It is then incumbent upon the defendant to prove what costs were incurred in connection with those gross sales.
In addition, the owner of a copyright is permitted to obtain an award of the owner's actual damages suffered to the extent those damages are not compensated for through the recovery of infringer's profits. These damages can include diminution in the market value of the work.
The plaintiff may also elect to seek statutory damages as prescribed in the Copyright Act, which can be as much as $150,000 per infringed work.
Finally, a plaintiff in an infringement action may, in addition to obtaining monetary damages for an infringement, obtain temporary and final injunctive relief to prevent or restrain infringement of a copyright.
Additionally, at any time during an infringement action the plaintiff may seek to have the court order the impounding of all infringing articles claimed to have been made or used in violation of the owner's exclusive rights.
Included in the articles affected are all copies, or all other articles which can reproduce the copies. As part of the final judgement the court may order the infringing articles destroyed or otherwise disposed of.