When advising artists, authors and song writers about ways to protect their interests in their creative works, I encourage them to file for copyright registration. But even if you follow all of the rules and register your copyright, you may still come up short when it comes time to enforce against infringers.
While the exclusive rights associated with copyright ownership attach as soon as the work is fixed so that others can perceive it, registration with the Copyright Office is necessary in order to enforce those rights in court. Additionally, registration offers some other benefits to the copyright owner, namely the opportunity to ask for statutory damages and attorney fees.
As a copyright owner, you want to be in a strong bargaining position when confronting an infringer. Being able to threaten to seek statutory damages and attorney fees can be a big stick. However, even when you appear to have a clear-cut case of infringement, there will be hurdles that you must surmount if you are to achieve meaningful relief. A recent case decided by the U.S. Court of Appeals for the Second Circuit illustrates well what problems a copyright holder may face.
The facts are that songwriters, Bryant and Bernfeld (“B&B”), wrote and produced two albums of songs, each containing 10 songs. B&B registered with the Copyright Office not only the two albums but also each of the songs individually. They entered into an agreement with Media Right Productions (“Media”) authorizing Media to market the albums, but not to make copies of them. If Media needed more albums, B&B would give them the copies. Media, in turn, contracted with Orchard Enterprises (“Orchard”), a music wholesaler, to sell the music.
Over the course of time, Orchard started to sell copies of the albums and individual songs in digital format. The actual sales were very modest generating only a few hundred dollars. Eventually, B&B learned of this development and sued both Media and Orchard for copying and selling the works without permission. Clear copyright infringement, right?
The Copyright Act allows a judge to award statutory damages between $750 and $30,000 for all infringements with respect to any one work. Because B&B had registered their works with the Copyright Office before any infringement took place, they were eligible to seek statutory damages. Given that the actual damages would have been meager, seeking statutory damages was the way to go. But what constituted a “work” in this case to calculate damages—the two albums or the twenty songs?
The Second Circuit concluded that because the plaintiffs had issued their works as two albums, in other words as a “compilation” work, rather than as individual songs, they could receive statutory damages only for infringement of the two albums. The Court was not persuaded by B&B’s argument that in the digital age it was easier for infringers to make parts of albums separately available.
Other examples of situations where plaintiffs were limited to one statutory damage award are: computer generated clip art issued in one package; and photographs of plant seedlings included in a catalog.
As this case study shows, it is hard to anticipate how best to protect artistic works from copyright infringement. Also, choosing to release each work independently may not be feasible given that the real value of each work exists only in being part of a collection. Faced with such a dilemma, your enforcement options could be limited, even with the best set of facts.