Posts Tagged: "statutory damages"

On October 22, the U.S. House of Representatives passed, by a vote of 410-6, the Copyright Alternative in Small-Claims Enforcement Act (the “CASE Act”). The Act proposes to set up what is in essence a voluntary administrative procedure conducted in the U.S. Copyright Office whereby artists and other copyright holders can protect their copyrights without the cost, expense and difficulty associated with filing a full-blown copyright infringement litigation in federal court. Based on the vote in the House, the CASE Act appears to enjoy widespread, bipartisan support in Congress—a rarity these days, to be sure. The appeal is simple: give individual artists and small companies an affordable mechanism to enforce their rights in their creative works. But although the political appeal of the CASE Act is obvious, the practical reality of the CASE Act is something entirely different. Indeed, there are three gaping holes in the CASE Act which may cause the small claims process it sets forth to have only very narrow appeal and to be an effective dispute resolution mechanism in only a narrow subset of cases.

U.S. District Judge Jon McCalla of the Western District of Tennessee recently issued an order denying motions made by interactive streaming music provider Spotify to dismiss a case including copyright infringement claims brought by independent music publisher and copyright administration company Bluewater Music Corporation. Judge McCalla’s order determined Bluewater has standing for all 2,142 music compositions it has asserted based on ownership or an exclusive license of the works. Given Bluewater is seeking the maximum statutory damages of $150,000 per infringed work, Judge McCalla’s order allows Bluewater to continue pursuing a maximum damages award of $321.3 million.

British luxury fashion brand Burberry filed a complaint alleging trademark infringement and dilution against American retailer Target Corporation in the Southern District of New York. At issue in the case is the sale of scarves and other fashion items in Target stores which include a pattern closely resembling the iconic Burberry check trademark.

Artist Matt Furie, the creator of the Pepe the Frog anthropomorphic frog character that has gained notoriety for its use in Internet memes, filed a complaint for copyright infringement in the Central District of California. The suit targets a pair of companies managed by far-right conservative radio show host Alex Jones over the use of the Pepe character over the sale of a poster including a likeness of Pepe alongside political figures from the alt-right and the 2016 presidential campaign of Donald Trump.

Looking at the types of damages being awarded in trademark cases and how they’re being awarded, it’s highly likely that most damages awarded in these cases might never be recovered. “You can see it as two separate worlds of trademark cases,” Howard said. “There are cases in which a defendant doesn’t show up and it goes straight to default judgment, and then there’s everything else.” $4.6 billion dollars, or 84.6 percent of all damages awarded in district court trademark cases going back to 2009, have been awarded on default judgment.

On October 5, 2016, a jury in Tiffany and Co. v. Costco Wholesale Corp. – litigated before Judge Swain of the Southern District Court of New York – awarded Tiffany & Co. (Tiffany) $8.25 million in punitive damages for willful and bad faith infringement of their trademark by defendant Costco Wholesale Corp. (Costco). This award, in combination with an earlier award of $5.5 million in profits and statutory damages, brings the total damages owed by Costco to $13.75 million. The case is particularly notable for several reasons, but specifically because punitive damages were awarded.

On November 1st, the U.S. Court of Appeals for the Eighth Circuit (8th Cir.) issued a decision in a case brought by motion picture entertainment company Warner Bros. and appealed by a group of defendants who licensed images culled from publicity material for some of Warner’s most famous entertainment properties. A panel from the 8th Cir. found in favor of Warner Bros. and affirmed an earlier verdict, which has helped to define whether publicity material for films and animated shows are available in the public domain. This decision is the second time that 8th Cir. has issued a judgment in this case.

There were no topics ruled out of bounds for this 30 minute interview, not even the Supreme Court’s recent decision to accept cert. in Cuozzo, although as an attorney myself I know better than to ask questions that would have certainly provoked a polite “no comment” response in the face of ongoing litigation. Nevertheless, our conversation was wide ranging. We discussed the release of the Copyright White paper, which among other things recommends expanding eligibility for statutory damages in copyright infringement actions. We also discussed Lee’s recent visit to the Consumer Electronics Show (CES), the power outage that brought down USPTO electronic filing systems, the Office’s patent quality initiative, the new patent classification system, the Patent Trial and Appeal Board (PTAB) and more.

Earlier today the U.S. Department of Commerce issued a report titled White Paper on Remixes, First Sale, and Statutory Damages, which recommends amendments to U.S. copyright law that would provide more guidance and greater flexibility to courts in awarding statutory damages. However, the Task Force has found insufficient evidence to show that there is a change in circumstance in the markets or technology that requires action on amending the first sale doctrine.