How to Address Infringement

Download Our IP Cheat Sheet

Our IP Cheat Sheet covers the basics when it comes to protecting your intellectual property. If you have a hard time remembering the difference between a copyright and trademark, this sheet will explain how and when to use each appropriate notice. This sheet also explains how taking this preventive steps will help you when the worst happens and someone infringes your works.

DOWNLOAD

Ask An Attorney

Receive customize guidance from experienced intellectual property attorneys on your specific intellectual property issues. When needed, attorney referrals are also provided. If you have questions that haven’t been addressed in the ABCs of IP or in IP FAQs sections, please ask us and we will work our hardest to find the answers.

ASK

IP FAQ

Find answers to frequently asked questions about specific and complex intellectual property issues.  These answers provide general solutions that can be used in your everyday situations and dilemmas.

What should I do if I find that someone has stolen or misappropriated my work?

The first step to resolving the infringement would be to send a cease and desist letter to the infringer, with, ideally, a copy of your copyright registration for the work.  This type of letter acts to notify the infringer of your rights in and to the work and to demand that they stop marketing, selling and distributing the infringing work.  If the infringer ignores your letter and continues to use your work without authorization, the infringement can be seen, in most cases, as willful infringement, which will entitle you to higher damages, as set forth below.  Filing a DMCA Takedown Notice, if appropriate (i.e., if the image or work is posted on the internet) can be productive as well.  You may want to hire an attorney to help you draft a cease and desist letter, but essentially you want to inform the infringer in the letter that they are using your work without your authorization and to demand that they cease using the work immediately.

What if the infringer doesn’t respond to my cease and desist letter?

If an infringer ignores your cease and desist letter and continues to use your work without authorization, this may be considered to be willful infringement, which will entitle you to increased damages.  At this point, it may be wise to hire an intellectual property attorney to help you.  Another option is to post on social media or a blog regarding the infringement to notify others of the infringement.

Should I file a DMCA Takedown Notice?

While a DMCA Takedown Notice can be ideal in certain situations, say, when someone is using your image or an image of your work or design without any real commercial benefit through their use, it is not the end-all, be-all for the situation.  Sure, you can get the infringer to take down the image, but what about any profits the company obtained through sales of the infringing work?  On the other hand, filing a copyright infringement action can entitled you to damages under the U.S. Copyright Act and can also provide you with an injunction to stop the infringer from reposting the image or using your work in any way.  Having expectations that a DMCA Takedown Notice will cure the problem of infringement is unrealistic, especially since the infringer can repost the image somewhere else, and may be profiting from your work.

Can I hire an attorney on a contingency basis?

There are a good number of intellectual property attorneys who will take copyright infringement cases on contingency.  “Contingency” means that the attorney does not get paid unless you collect damages.  In most cases, the attorney will take approximately 1/3 of the amount you win in court.

What damages will I be entitled to if I win a lawsuit for copyright infringement?

The amount of damages a plaintiff is entitled to depends substantially on whether a copyright registration has been timely obtained.

If a copyright registration has been obtained either within three months of publication of the work or before any infringement begins, a plaintiff may be entitled to between $700 and $30,000 plus attorneys’ fees and costs. If the infringement is found to be willful, the damages go up to $150,000 plus attorneys’ fees and costs.

If a copyright registration has not been timely obtained, a copyright owner is entitled only to the infringer’s profits and the copyright owner’s losses. These amounts can be very difficult to prove, as the infringer is most likely not willing to provide you with accurate sales records of their profits, and, demonstrating losses to the copyright owner due to the infringement is a bit like trying to prove a negative. Essentially, the copyright owner must show that he lost money from failure to sell the original product or work as a direct result of the infringing product being on the market. Accordingly, statutory damages are ideal.

What about an “innocent infringer” defense?

As copyright infringement is a strict liability claim, there is no true defense to copyright infringement.  However, if a court determines that the infringer did not have any knowledge that the work was stolen or infringing, it has the discretion to lower statutory damages to $200.

If I sue someone for copyright infringement, does that mean I have to go to court and litigate the claim?

No.  Upwards of 80% of copyright lawsuits settle out of court.  Additionally, many infringers’ insurance companies get involved in the matter once a legal claim is filed, and most prefer to settle out of court.

Can I change someone else’s work 30% to make it my own, and to avoid copyright infringement?

No! This is a very prevalent, and dangerous, myth that has been propounded throughout the art industry and artistic community. There is NO magical percentage of change that you can make to someone else’s work that will make it your own. No amount of color or size changes will allow you to steal someone else’s work.

The standard under U.S. copyright laws for copyright infringement is whether the original work and the “copied” work are substantially similar. Under case law (that would bore you to death, no doubt), it has been broadly accepted that a copyright infringement claimant must show that the works are “substantially similar”.

How can I lawfully use someone else’s work?

Many attorneys would recommend that you obtain a license from the owner of the work or copyright to use the work.  If that is not possible, there are very limited exceptions to infringement of a work, called “fair use”.

Can I copyright my photograph of someone else’s work?

In many cases, the photograph of another person’s work will be seen as a derivative work (of the original work) and therefore owned by the original author.  However, if the photograph consists of more than just a simple image of the other person’s work, it may be determined to be transformative.  For example, a photograph taken at a certain angle of a wall covered in various artists’ graffiti, without any focus on one particular piece of graffiti, can be transformative work.

So what is “fair use”?

The “Fair Use” Doctrine carves out certain exceptions to a copyright owner’s exclusive rights granted by U.S. copyright laws. “Fair use” allows third parties to use copyright-protected materials without first obtaining permission to do so under certain circumstances. The “Fair Use” Doctrine applies in situations where the materials are being used for:

1. commentary or critique (such as use of a photograph of a painting for a gallery event review or an excerpt of a book for a book review),
2. educational purposes (such as the use of a poem to teach or instruct students),
3. news reporting (such as use of the president’s speech to report news),
4. works of parodies or transformative use (such as the “Food Chain Barbie” work),
5. search engine use (such as thumbnails of images on Google®),
6. library archival or scholarship use (such as digitizing library materials),
7. research (such as using clips of copyrighted materials in a thesis paper)

The court systems examine four factors in determining whether a fair use defense is appropriate in a case. The four factors are:

1. The purpose and character of the use (i.e., was the nature of the use commercial or educational?),
2. The nature of the copyrighted work (such as whether the work is a short news article or a full musical performance),
3. The amount and substantiality of the portion of the work used in relation to the original work as a whole, and
4. The effect of the third party use on the potential market for the work or upon the value of the original work.

Unfortunately, there is no cut and dry rule about whether fair use can be used as a defense in the appropriation of someone’s work. But these seven exceptions and four factors provide some insight into the “fair use” exception.

So, how did Andy Warhol get away with using the Campbell’s Soup can?

In short, Campbell’s Soup found Andy Warhol’s use of their soup can to be amusing- to put it simply, things weren’t as litigious as they are now.  Only after Andy Warhol’s estate began licensing the image of Andy Warhol’s depiction of the Campbell’s Soup can to third parties did the parties enter into a legal agreement for the use of the Campbell’s soup can and logo.

What works are in the public domain?

For the most part, works published before 1923 are in the public domain. However, there are some exceptions to this general rule, such as works that were not published in the United States before 1923. Once again, the U.S. Copyright Act of 1976 proves to be confusing! Some well-established works in the public domain are:

• Any works created by a governmental employee in the scope and performance of his job in a governmental agency.

• Judicial decisions, legislative enactments and other governmental official documents.

• Any works that have been “dedicated to the public” or that are under “open license” or “Creative Commons” license.

If I give credit or attribution to the original author of the work, does that protect me against a copyright infringement claim?

No. Crediting the original author of a work does not insulate your use of that work from a claim of copyright infringement. The best-and only legal-way to use someone else’s work is to ask permission to do so.

Can I use the name or logo of a company or entity in my work?

Generally, no.  This type of situation comes up when an individual or company uses a third party logo or name, such as “I love NY” or “Pittsburgh Steelers”.  In most cases, unless it is a fair use (read: commercial use of a work in a transformative manner or as a parody of the work), you must obtain a license to use a name or logo on products that you are selling commercially.

© 2015 Copyright Collaborative