Tag Archives: Statutory damages

In the maw of the beasts – Copyright in Cambridge, this Wednesday

Wasserstein Hall

Wasserstein Hall. of course.

On Wednesday, June 25, 2014, I will be participating in the statutory damages segment of the “Second Green Paper Roundtable” in Cambridge, Massachusetts.

What is he talking about?  It’s hard to explain, really.  Give the PTO credit for not being hung up on slick marketing and stuff.  Here’s the thing:

Green Paper on Copyright Policy, Creativity and Innovation in the Digital Economy

In July 2013, the Department of Commerce’s Internet Policy Task Force (Task Force), led by the United States Patent and Trademark Office (USPTO) and National Telecommunications and Information Administration (NTIA), issued a green paper on Copyright Policy, Creativity and Innovation in the Digital Economy (Green Paper).  The Green Paper calls for new public input on critical policy issues that are central to our nation’s economic growth, cultural development and job creation. It is intended to serve as a reference for stakeholders, a blueprint for further action, and as a contribution to global copyright debates.

Information about the Task Force’s ongoing outreach efforts on the topics identified for further work in the Green Paper is found below.

So the short answer:  It’s the PTO, the Commerce Department, the always-popular NTIA, and Harvard Law School — unbearable lightness, no?

Then, kind of above that — maybe it’s posted blog-style, in reverse chronological order? — there’s this:

The Agenda and Webcast Link for the Second Green Paper Roundtable, June 25, 2014, Cambridge, MA are now available.
To submit comments during the webcast go to http://cyber.law.harvard.edu/questions/USPTO
That’s my part.  Sitting at a table and talking.  It’s even in the Federal Register, every bit as colorful.  If you drill down on that one, however, you’ll see Supplementary Information, which I for one found helpful:
SUPPLEMENTARY INFORMATION: In the Task Force’s Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper), released on July 31, 2013, and in its later Request for Comments issued on October 3, 2013, the Task Force stated its intention to convene roundtables on certain copyright topics, namely: the legal framework for the creation of remixes, the relevance and scope of the first sale doctrine in the digital environment, and the appropriate calibration of statutory damages in the contexts of individual file sharers and of secondary liability for large-scale infringement. On April 16, 2014, the Task Force announced its plans to hold four roundtables in Nashville, Tennessee on May 21, 2014; Cambridge, Massachusetts on June 25, 2014; Los Angeles, California on July 29, 2014; and Berkeley, California on July 30, 2014.
If you will be in the neighborhood (Wasserstein Hall at Harvard Law School), so will I.  Well, even if you won’t.

“A crippling but necessary deterrent”

Originally posted 2012-07-24 21:10:22. Republished by Blog Post Promoter

Bella No More

Last week, on July 19th, the Southern District of New York put the pedal to the Lanham Act metal in in Coach v. Allen.  It’s a summary judgment imposing molto statutory damages — $44 million — for trademark counterfeiting in the Southern District of New York.  And it’s not a default judgment.  No, it’s even (for the defendants) worse.

The decision is a judicial catalog of, unsurprisingly, picture-perfect anticounterfeiting investigatory and legal enforcement techniques employed on behalf of Coach by Gibney Anthony & Flaherty, led by my former partners Brian Brokate and John Macaluso, against a chronic counterfeiter who, as  you will see, really just does not get it.

They call him “Tall Man”

The court does not say so, but this defendant evidently goes by the nickname “Cleopatra.”  Yes, “queen of denial” — because like a lot of these cases, there’s something pretty pathetic about the defense here.  The defendants not only sold outright fake Coach stuff brazenly over the Internet but proceeded to “represent themselves” in this action, and to do so, evidently, quite stupidly.  Something other than hilarity ensues:

This is an action for counterfeiting and trademark infringement involving defendants Linda Allen and Courtney L. Allen (hereinafter collectively referred to as “Defendants”), who allegedly counterfeited and so infringed on seventeen Coach federally registered trademarks on eleven types of goods for a total of twenty-two separate infringements.

Defendant Linda Allen is an admitted counterfeiter who has previously been sued for trademark infringement. During the course of this case, Defendants proclaimed their innocence despite emails, letters, website registrations and testimony evidencing their infringing activities. Defendants refused to respond meaningfully to legitimate requests to produce documents that detail such illegal sales. Only through subpoenas to the third parties did Coach discover any meaningful information about Defendants’ illegal activities, and it may just be the tip of the iceberg.

There is no genuine issue of material fact that counterfeit and infringing Coach merchandise was being offered for sale and sold on BellaFashions.net (the “Website”) and that defendants Linda Allen and Courtney L. Allen personally engaged in the conduct that forms the basis of this action.

Defendants are pro se. Their opposition to the motion was originally due on May 29, 2012. Defendants missed the deadline. However, on June 5, 2012, they faxed unsworn letters to the Court containing general denials of affiliation with the Website and a reliance on the disclaimers. . . . Defendants presented no admissible evidence in opposition to the summary judgment motion.

IP Enforcement Attorney John Macaluso

John Macaluso: Bane of counterfeiters

This can’t go well for defendants, and it doesn’t.  I mean, they’re not even trying:

In March, 2011, Coach discovered the website BellaFashions.net which was being used to promote and offer for sale handbags, duffle bags, wristlets, wallets, scarves, hats, umbrellas, shoes, key chains and sunglasses. The products distributed on the Website were explicitly identified as Coach handbags and accessories.  . . .

The Website was registered to “Linda Allen, [XYZ] Cold Spring Road, Syosset, NY 11791. The administrative contact was listed as “Allen, Linda” at the same address indicated above with the following contact information: frog[XYZ]@aol.com and phone number (516) 921-[ABCD}.  "[XYZ] Cold Spring Road, Syosset, NY 11791″ is the home address of defendants Linda Allen and Courtney L. Allen.  Frog[XYZ]@aol.com is the current e-mail address of defendant Linda Allen.  (516) 921-[EFGH] is the fax number for the Defendants’ home office.

You know … “It’s sure quiet out here.  Almost too quiet!

Well, the truth is, sometimes cases like this can be the most frustrating, especially where there’s pro se representation — the less rational, the harder it can be, depending on the judge, to pin these folks down.  Believe me.

Here, however, Judge Colleen McMahon keeps her eyes on the ball, and methodically demonstrates why Coach is entitled to the full boat:  Maximum statutory damages of $2,000,000 for each and every trademark infringed; of which, you will recall, there were two-and-twenty.  The court readily finds willfulness here, including by dint of this beauty:

Defendant Linda Allen produced a redacted copy of the sales confirmation sent to Coach’s agent hiding the fact that the logo for her former business was prominently displayed on it, which directly links her to the Website. Additionally, Defendant Courtney L. Allen made misrepresentations in her deposition when she indicated that she had never sold Coach products through eBay.com.  However, records subpoenaed from eBay, Inc. indicate that she sold Coach items from her account.

Clever rouses, eh!  The court notes also an earlier, essentially identical judgment entered against defendant Linda Allen, and then drops the hammer on the two of them:

Linda Allen plainly requires substantial deterrence because she has not been deterred by prior judgments. She persists in her contumacious behavior. This award may be crippling, but it is plainly needed to prevent Allen from going back once again into the business of counterfeiting. There is no allegation that Courtney L. Allen has been involved in the prior instances of counterfeiting – there has never been a judgment entered against her. However, the evidence against her establishes willfulness, so it is perfectly appropriate to award maximum statutory damages against her.

Because Defendants have clearly acted in bad faith by distributing counterfeit versions of Coach’s merchandise, I grant the request that Coach receive the maximum amount of statutory damages for willful infringement for twenty-two separate acts of infringement.

Yep:  “Infinity dollars” —  that’s what what $44 million sounds like to me.  But note that the court never actually says the number, but instead pulls a yeasty, fresh-baked “maximum amount of statutory damages” formulation out of the oven for full effect.

Effect noted.  Unlike in the idiotic made-up-infinity-IP-damages scenario, here an award of infinity dollars against real crooks doing real counterfeiting,  doing it spectacularly openly and uber-stupidly — and litigating as if it’s all a big joke — probably makes some  sense.

If not here, where?  Certainly here, if anywhere.  Maybe $10 million wouldn’t have gotten their attention — would it get yours? Who knows.  But $44 million, and the magic words “maximum amount” — now that’s a conversation starter!  Or a counterfeiting-career ender.

You’d think.  Maybe this time, someone will!

Sarah Palin copyright kerfuffle

Sarah Palin Copyright Facebook Firemen Bit

Oh, this? Fair use, baby (by me).

I was quoted at length by my friend and client Bill Jacobson at Legal Insurrection about this.  So there’s not so much more else to know.

But of course, there is.  If you want the nickel tour of copyright statutory damages, I recommend this bit that I wrote.  If you want the three-hour tour (the three-hour tour), in which I discuss the policy implications of the somewhat broader topic at greater length, then click here.

(I think a lot of statutory damages in copyright — which sometimes helps.  And not just about one side of it!)

See?  One-stop shopping.

And in terms of the actual kerfuffle here?  What about the statutory damages threat there?

Puh-lease!

 

Best of 2012: Little claims, big idea?

Originally posted September 12, 2012.

A major theme around here is the proposition that copyright law encourages litigation of even the most tenuous plaintiffs’ claims, mainly because of the rules regarding fee-shifting for “prevailing” parties.  Similarly there are claims that are not so tenuous, on the merits, but are nonetheless still economically trivial.  The creators of such works are entitled to protection, of course, but providing that protection should not be a source of windfall fees for lawyers.

Evidently the Copyright Office has been thinking some thoughts along these lines, as reported by the Fashion Cloture blog:

The U.S. Copyright Office recently issued a second request for public comments regarding the adjudication of small copyright claims. The Copyright Office’s notice is important for the fashion industry, since there is currently copyright protection for certain aspects of fashion (such as fabric prints and jewelry).

At the request of Congress, the Copyright Office is currently conducting a study on the current legal system for small copyright claims. The Copyright Office published its first request for comments in October 2011, and the Office recently issued a second request to gather further input as to how a small claims system might be structured. The Copyright Office is particularly interested in comments that address the appropriate tribunal/court to handle small copyright claims, whether the small claims process should be voluntary or mandatory, and the roles of mediation and arbitration. Comments must be received by September 26, 2012.

Sounds like something worth looking into, and talking to the Copyright people about.  (One hopes they listen better than the trademark people.)  To put in your two cents, click here.

UPDATE:  Remember Jammie Thomas?

Appeals court sides with RIAA, Jammie Thomas owes $222,000 – The U.S. Court of Appeals for the Eighth Circuit vacates a lower court’s decision and rules that Thomas-Rasset, an admitted music pirate, must pay the top four labels $222,000. . . .

We conclude that the recording companies are entitled to the remedies that they seek on appeal. The judgment of the district court is vacated, and the case is remanded with directions to enter a judgment for damages in the amount of $222,000, and to include an injunction that precludes Thomas-Rasset from making any of the plaintiffs’ recordings available for distribution to the public through an online media distribution system.

I’m not saying that illegal music downloading is trivial.  It is and it isn’t.  And I’m not saying the Constitution really has all that much to say about copyright damages for music downloading.  But as I’ve said before in connection with this case, and others… something is out of whack here.

Little claims, big idea?

A major theme around here is the proposition that copyright law encourages litigation of even the most tenuous plaintiffs’ claims, mainly because of the rules regarding fee-shifting for “prevailing” parties.  Similarly there are claims that are not so tenuous, on the merits, but are nonetheless still economically trivial.  The creators of such works are entitled to protection, of course, but providing that protection should not be a source of windfall fees for lawyers.

Evidently the Copyright Office has been thinking some thoughts along these lines, as reported by the Fashion Cloture blog:

The U.S. Copyright Office recently issued a second request for public comments regarding the adjudication of small copyright claims. The Copyright Office’s notice is important for the fashion industry, since there is currently copyright protection for certain aspects of fashion (such as fabric prints and jewelry).

At the request of Congress, the Copyright Office is currently conducting a study on the current legal system for small copyright claims. The Copyright Office published its first request for comments in October 2011, and the Office recently issued a second request to gather further input as to how a small claims system might be structured. The Copyright Office is particularly interested in comments that address the appropriate tribunal/court to handle small copyright claims, whether the small claims process should be voluntary or mandatory, and the roles of mediation and arbitration. Comments must be received by September 26, 2012.

Sounds like something worth looking into, and talking to the Copyright people about.  (One hopes they listen better than the trademark people.)  To put in your two cents, click here.

UPDATE:  Remember Jammie Thomas?

Appeals court sides with RIAA, Jammie Thomas owes $222,000 – The U.S. Court of Appeals for the Eighth Circuit vacates a lower court’s decision and rules that Thomas-Rasset, an admitted music pirate, must pay the top four labels $222,000. . . .

We conclude that the recording companies are entitled to the remedies that they seek on appeal. The judgment of the district court is vacated, and the case is remanded with directions to enter a judgment for damages in the amount of $222,000, and to include an injunction that precludes Thomas-Rasset from making any of the plaintiffs’ recordings available for distribution to the public through an online media distribution system.

I’m not saying that illegal music downloading is trivial.  It is and it isn’t.  And I’m not saying the Constitution really has all that much to say about copyright damages for music downloading.  But as I’ve said before in connection with this case, and others… something is out of whack here.

Money for nothing

Manhattan view, June 2011 - 12

Random picture

Dead horse?  You’d think so.  Copyright statutory damages, that is.  We’ve been there, and done that, right?

Not according to Larry Zerner, who says the calls are still coming in:

Because my firm will sometimes handle copyright infringement cases on a contingency fee basis, I often get phone calls that go something like this.

Caller: I would like to sue someone for copyright infringement.

Me: Okay.  What did they do?

Caller: They took a picture of mine and put it on their website.

Me: Are you a professional photographer?

Caller: No.  But I registered the photograph with the Copyright Office. So now they owe me $150,000.  Right? . . . Right?

This seems to be where the confusion comes in.

Well, see, that just means people aren’t reading the right blogs before picking up the phone!  More:

[M]any people assume that I will jump at the chance to represent them on a contingency fee basis, because I will certainly be able to get a jury to award damages of $150,000 The problem is that they are not looking at the case realistically.  Reader, ask yourself this question. If you were on a jury and had to decide statutory damages on a case where the sole infringement was that a photograph was put up on a website, are you going to give that photographer $150,000.  Probably not.

He’s right, of course.  Except when he’s wrong.  But, no, he’s right.

Suing bloggers for dollars

Originally posted 2010-07-23 10:58:24. Republished by Blog Post Promoter

Interior of rotunda, New York Supreme Court, New York CountyGlenn Reynolds links to a an article in Wired about a newspaper “chain”‘s — actually, lawyer Steve Gibson’s — “new business model”:  Suing bloggers who post newspaper articles, evidently more or less intact ones, on their sites.  Glenn says suing bloggers “seems like a poor business plan” — mainly, of course, because most bloggers are broke, or pretty close to it.

The article also explains why these one-off claims by outfits such as the Las Vegas Review-Journal are unlikely, in the long run, to pay off.  One reason is that at least the music industry, through the Recording Industry Association of America, is theoretically going for some degree of bulk in its litigation trawling against unlawful file sharing.  And we did say “theoretically”:  Remember, in 2008 the RIAA managed to spend about $16 million on legal fees to reel in a whopping $391,000.  As the article says, “You’d have to go after a lot of people for a relatively small amount of money,” says Jonathan Band, a Washington, D.C. copyright lawyer. “That is a riskier proposition.”

So, yes, it is hard to comprehend the return on investment here.

There are other reasons this doesn’t seem to make sense.  “Defendants might be less willing to settle a lawsuit stemming from their posting of a single news article, despite the Copyright Act’s whopping damages,” says the article.  But no, not quite on the “whopping damages” stuff.  Contrary to myth — and to the threats routinely uttered by copyright plaintiff attorneys — statutory damages are not meant to be a windfall, as I explain at some length here.  Now it is true that some juries think intellectual property infringement damages are a jackpot unrelated to actual harm — usually because judges don’t instruct them properly.  But other judges in high profile cases are refusing to be part of the copyright shakedown.  Thus in the recent Tannenbaum copyright case, the District Judge reduced the jury’s damages award of $675,000 for infringement of 30 songs to $67,500, ruling that the amount awarded was unconstitutional under the Due Process clause.

Still, $67,500 is a lot of money, a lot, and still pretty darned distant from any plausible quantum of loss to the copyright owner.   Read More…

IP piggies

Originally posted 2008-01-30 20:27:13. Republished by Blog Post Promoter

Ars Technica:

Not content with the current (and already massive) statutory damages allowed under copyright law, the RIAA is pushing to expand the provision. The issue is compilations, which now are treated as a single work. In the RIAA’s perfect world, each copied track would count as a separate act of infringement, meaning that a copying a ten-song CD evenpig_2_md.gif one time could end up costing a defendant $1.5 million if done willfully. Sound fair? Proportional? Necessary? Not really, but that doesn’t mean it won’t become law.

The change to statutory damages is contained in the PRO-IP Act that is currently up for consideration in Congress. We’ve reported on the bill before, noting that Google’s top copyright lawyer (and the man who wrote a seven-volume treatise on the subject of copyright law), William Patry, called the bill the most “outrageously gluttonous IP bill ever introduced in the US.”

Out. Of. Control.

Should we be doing something?

Massive Attack: Analyzing mass copyright infringement campaigns

Lake George -- Bolton, New YorkI am about to give my presentation on a panel at the annual meeting of the Copyright Society of the USA at the Sagamore resort in lovely Bolton’s Landing, New York bearing this title.

Here is the outline of my presentation.  Who knows where it’s really going to go.

  • Let us not be motivated to criticism by lawyer resentment over those who know how to make real money
    • Especially when it is other lawyers
  • Bloggers understand or are charged to understand that copyright infringement is still copyright infringement even if (a) one is a blogger and (b) one is publishing on the Internet
  • Overreaching in both the trademark and copyright areas has created a situation that was only waiting for a judicial and public backlash
    • Judicial – trademark – slower in coming but increased skepticism regarding the fallacious doctrine of IIC and use of trademarks in anticompetitive, anti-consumer claims
    • Cultural – copyright – well known.  There is little or no respect or effect on behavior among the broader population for legal rules concerning downloading of copyright-protected content
    • Judicial – copyright
      • new rulings expanding or at least going to the furthest known bounds of fair use – Righthaven v. Jama (“CIO Case”)
      • increased judicial focus, including in cases discussed in the last panel on recent developments in copyright, on the market-loss prong of fair use analysis
      • arguably a change in what had been a fairly warm reception in the courts to copyright claims
    • This brings us to the issue of mass enforcement a la RIAA and MPAA

Statutory damages in copyright, and the Tenenbaum case

Originally posted 2009-03-18 19:50:47. Republished by Blog Post Promoter

Statutory Damages and the Tenenbaum Litigation:  Doug Lichtman out at UCLA sends this along:

Joel Tenenbaum looks a lot like every other defendant who has been accused by the music industry of illegally sharing copyrighted work online, but with one key difference: his defense attorney is Harvard Law School Professor Charlie Nesson, and Nesson is out to turn his case into a public referendum not only on the music industry’s efforts to enforce copyright through these direct-infringer suits, but also on the copyright rules that make the industry litigation possible.  In this program, we engage Nesson’s key arguments, focusing especially on Nesson’s claim that copyright law’s statutory damages regime runs afoul of constitutional protections against excessive and/or arbitrary civil damages awards.

lichtman-nesson-marks

He’s got a cast of stars knocking heads on this one, does Doug.   Actually Nesson does, too.  And as for Nesson’s “public referendum,” unlike some people I’m not sure what difference a “referendum” is going to make as long as Congress gives the copyright lobby 95% of everything it asks for.

Ron Coleman
Yeah.  And all they do before they submit their wish list, after all, is mark it up anyway so they can humbly acknowledge things like, “Hey, look, we wanted a presumptive penalty of preliminary defenestration for right-clicking without a license — we didn’t get that, now, did we?”

I digress.

But then I’ve never been much of a populist.  As for the elitist who writes this blog and counsels these clients, I’ll agree that the “soft IP statutory damages and fees regime,” if you will (i.e., statutory damages under the Copyright Act and the Lanham Act) is a mess.  It virtually never penalizes those who bring meritless claims, its incentives are largely irrelevant in benefiting the putative beneficiaries of  (actual creators and innovators) and it skews outcomes preposterously because virtually no defendant can afford the risk of losing, regardless of the merits of his defenses.

Now, that’s not counting. statutory damages for trademark counterfeiting, which I think work great.  Unless you think collecting damages is important.

See, with all those opinions in the head of just one blogger’s rapidly balding noodle, who needs referenda?  Anyway, click the link for more of them, and maybe even better-baked ones, too.  I will!  I at least want to see what “every . . . defendant who has been accused by the music industry of illegally sharing copyrighted work online” looks like.  Don’t I?