Willful copyright infringement is criminalized by 17 U.S.C. § 506(a), which defines what conduct is prohibited, and 18 U.S.C. § 2319, which sets the punishment. Felony penalties attach when the violation consists of the reproduction or distribution of at least ten copies that are valued together at more than $2,500, or, under amendments enacted in 2005, when the violation involves distribution of a work being prepared for commercial distribution over a publicly-accessible computer network.
This Chapter provides an overview of copyright law, an analysis of the elements of copyright infringement, a review of the defenses to the crime, and a summary of the statutory penalties arising from convictions. Finally, this chapter explores some of the novel copyright infringement issues presented by new technologies. Forms providing sample indictments and jury instructions for criminal copyright infringement are provided in Appendix B.
Prosecutors may also wish to consult Nimmer on Copyright, a leading treatise on copyright law, with many of its sections being cited by courts as if they were black-letter law, including a chapter on criminal offenses. See Melville B. Nimmer & David Nimmer, Nimmer on Copyright (2005). Other major treatises and articles that may be instructive include William F. Patry, Copyright Law and Practice (1994 & Supps. 1995-2000); Patry on Copyright (West Publishing, forthcoming 2006); Sylvia Albert et al., Intellectual Property Crimes, 42 Am. Crim. L. Rev. 631 (2005); Michael Coblenz, Intellectual Property Crimes, 9 Alb. L.J. Sci. & Tech. 235 (1999).
Copyright law has two goals: to protect the rights of authors, and, thereby, to foster development of more creative works for the benefit of the public. The Constitution, in granting Congress the power to enact intellectual property laws, describes both these goals and the means to achieve it: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const., art. I, § 8, cl. 8. Maintaining an appropriate balance between protecting works and incentives for creators of works, on the one hand, and disseminating knowledge and information to the public, on the other, is a constant theme throughout the history of copyright law. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
The creator of an original work of expression, fixed in a tangible medium, is granted for a limited time a copyright, which is the exclusive right to copy, distribute, and make certain other uses of the work. Copyright law protects all "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102(a) (emphasis added). "Originality" in copyright law is a low threshold: the work need only have been independently created by the author, as opposed to copied from another, previous work, and it must possess only a minimal degree of creativity. See Section II.B.1.a. of this Chapter.
An important limitation of copyright is that it protects only the creative expression of an idea, but not the idea itself. See Section II.B.1.a. of this Chapter. Novel ideas, methods, and processes may enjoy protection under patent law (or other areas of law, such as trade secret protection), but are not copyrightable. For example, consider a microbiologist who invents a new technique for modifying particular genes in a cell, then writes an article for a magazine that describes the technique. The article may be protected by copyright as the author's original expression of his or her ideas regarding this new technique. The technique itself, however, would not be copyrightable, although it may be patentable.
Copyrights are also distinct from trademarks, which protect the exclusive use of certain names, pictures, and slogans in connection with goods or services. They are discussed in Chapter III of this Manual. Trademarks need not be original or creative. Moreover, many trademarks consist of short single words or short phrases that are ineligible for copyright protection. See Section II.B.1.a.ii. of this Chapter. Despite the differences between copyrights and trademarks, some items may be both copyrighted and trademarked, such as the image of Disney's Mickey Mouse.
The Constitution grants Congress the power to regulate copyright: "[t]o Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries," U.S. Const., art. I, § 8, cl. 8. Congress also derives authority to regulate some copyright-related issues from the Commerce Clause, U.S. Const. art. I, § 8, cl. 3.
Copyright protection is principally statutory. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429-31 (1984). Federal copyright statutes are found primarily in Title 17 of the U.S. Code, of which sections 101 through 1101 are called the "Copyright Act," and the penalties for criminal infringement are set forth in 18 U.S.C. § 2319.
A number of important copyright provisions that were originally devised by courts, such as the doctrines of fair use and first sale, are now codified in Title 17. E.g., 17 U.S.C. §§ 107, 109. And courts often interpret copyright law in light of new events and technological developments, which in turn creates significant judge-made law that might not otherwise be obvious from the statutes. E.g., Metro Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U. S. __, 125 S.Ct. 2764 (2005); Sony, 464 U.S. 417.
In applying the criminal copyright statutes, civil precedents are often helpful. The vast majority of copyright case law is civil, rather than criminal, and often civil cases provide the only judicial authority available in criminal prosecutions. See United States v. Wise, 550 F.2d 1180, 1189 n.14 (9th Cir. 1977) (noting "general principle in copyright law of looking to civil authority for guidance in criminal cases"); United States v. Manzer, 69 F.3d 222, 227 (8th Cir. 1995) (same); United States v. Cross, 816 F.2d 297, 303 (7th Cir. 1987) (same, with respect to jury instructions); Kelly v. L.L. Cool J., 145 F.R.D. 32, 39 (S.D.N.Y. 1992) (noting that conduct that does not support a civil action for infringement cannot constitute criminal infringement); 4 Nimmer on Copyright § 15.01.
But what makes a good civil case does not necessarily make a good criminal case. Civil and criminal copyright law sometimes differ sharply. For example, a defendant can be civilly liable for copyright infringement as a matter of strict liability, with no intent to copy. See Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F.Supp. 177 (S.D.N.Y. 1976) (finding infringement where composer "subconsciously" copied earlier song). By contrast, a criminal copyright defendant can be convicted only if he infringed willfully. See Section II.B.2. of this Chapter.
In addition to being primarily statutory, copyright law is also primarily a matter of federal law. For most of the history of the United States, state- and common-law copyright protections coexisted with federal copyright laws. See, e.g., Wheaton v. Peters, 33 U.S. 591, 597-98 (1834). But the Copyright Act of 1976 amended Title 17 to preempt state laws that provide rights "equivalent to" rights granted under federal copyright law. 17 U.S.C. § 301(a).
Despite this preemption, copyright law continues to be intertwined with state law in certain cases, such as those involving license agreements and other contracts governing ownership and use of copyrighted works. E.g., Storage Technology Corp. v. Custom Hardware Eng'g & Consulting, Inc., 421 F.3d 1307 (Fed. Cir. 2005). State copyright law also continues to apply to sound recordings recorded before 1972, because sound recordings were not protected by federal copyright law until 1972. Consequently, pre-1972 sound recordings may still be protected by state copyrights until 2067. See La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995); 17 U.S.C. § 301(c).
A work is protected by copyright law from the moment it is created, even if it is not registered. See 17 U.S.C. §§ 101-102(a), 408(a). Although registration with the Register of Copyrights is not a prerequisite to copyright protection, it generally is a prerequisite to civil enforcement and to some remedies. Registration is generally a prerequisite to a copyright holder's civil suit for infringement. See 17 U.S.C. § 411. If the work was registered only after infringement, the plaintiff may still collect actual damages for infringement committed prior to registration, but generally cannot collect statutory damages or attorneys' fees. See 17 U.S.C. § 412. The Department's position that registration is not a prerequisite to criminal enforcement, including CCIPS's recommendation that prosecutors obtain registration certificates before trial, is discussed in Section II.B.1. of this Chapter.
Works created in 1978 or later are protected by copyright for the life of the author plus 70 years. See 17 U.S.C. § 302(a). For a work with one or more joint authors, the life of the surviving author is used. § 302(b). Works made for hire (e.g., works made by or at the behest of a corporation) and anonymous works are protected for 95 years from the date of first publication, or 120 years from creation (whichever comes first). 17 U.S.C. § 302(c). Most pre-1978 works are protected for 95 years from the date that copyright was first secured (generally their date of publication). 17 U.S.C. § 304.
Copyrighted law grants copyright holders six exclusive rights to their works: (1) reproduction, (2) preparation of derivative works based upon the original copyrighted work, (3) public distribution, (4) public performance of certain types of works, (5) public display of certain types of works, and (6) performance of sound recordings by means of digital audio transmission. See 17 U.S.C. § 106(1)-(6); 17 U.S.C. § 101 (defining "sound recording" to exclude audiovisual works); 17 U.S.C. § 114(j)(5) (excluding transmission of audiovisual works from the definition of "digital audio transmission"); 17 U.S.C. § 114(d) (limitations including exemptions for certain broadcast transmissions, subscription transmissions, and licensed transmissions).
The exclusive rights set forth in 17 U.S.C. § 106 are subject to a number of exceptions and limitations in§§ 107-122, such as the right to make limited or "fair use" of a work, to resell one's personal copy of a work, and to reproduce computer software that one owns as an essential step in using it, or to make an archival copy. Those exceptions are addressed throughout this Chapter.
Exercising one of the exclusive rights under § 106 without the copyright holder's authorization or other legal authority is infringement. 17 U.S.C. § 501. But not every unlicensed use constitutes an infringement. "An unlicensed use of the copyright is not an infringement unless it conflicts with one of the specific exclusive rights conferred by the copyright statute." Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 447 (1984) (citation omitted); see also Benjamin Kaplan, An Unhurried View of Copyright 57 (1967) ("The fundamental [is] that 'use' is not the same thing as 'infringement,' that use short of infringement is to be encouraged ....").
Not every infringement is a criminal offense. Criminal copyright penalties have always been the exception rather than the rule. Although criminal copyright law has greatly expanded the scope of the conduct it penalizes over the past century, criminal sanctions continue to apply only to certain types of infringement—generally when the infringement is particularly serious, the infringer knows the infringement is wrong, or the type of case renders civil enforcement by individual copyright owners especially difficult.
Copyright infringement is a crime if the defendant acted willfully and either (1) for commercial advantage or private financial gain, (2) by reproducing or distributing infringing copies of works with a total retail value of over $1,000 over a 180-day period, or (3) by distributing a "work being prepared for commercial distribution" by making it available on a publicly-accessible computer network. 17 U.S.C. § 506(a)(1). Copyright infringement is a felony only if the infringement involved reproduction or distribution of at least 10 copies of copyrighted works worth more than $2,500 in a 180-day period, or involved distribution of a "work being prepared for commercial distribution" over a publicly-accessible computer network. See id.; 18 U.S.C. § 2319.
There are three essential copyright crimes:
The common factors are that (1) there must be a copyright, (2) there must be an infringement, and (3) the infringement must be willful. Some courts also require that the government prove an extra element, that the infringing items at issue were not permissible "first sales," but other courts hold first sale to be an affirmative defense. See Section II.C.4. of this Chapter.
Determining the elements to prove a felony (versus a misdemeanor) is slightly more involved. For-profit infringement, § 506(a)(1)(A), is a five-year felony if:
Non-profit infringement, § 506(a)(1)(B), is a three-year felony if:
Pre-release infringement over a publicly-accessible computer network, 17 U.S.C. § 506(a)(1)(C), is always a felony, but the penalties increase if it is done for commercial advantage or private financial gain. 18 U.S.C. § 2319(d)(1),(2).
In other words, there are four essential elements to a charge of felony copyright infringement:
Repeat felonies garner increased penalties. See 18 U.S.C. § 2319(b)(2), (c)(2), (d)(3)-(4).
Amendments to the criminal copyright statutes in 1997 and 2005 significantly changed the elements of felony copyright infringement. See No Electronic Theft Act (NET) Act, Pub. L. No. 105-147, 111 Stat. 2678 (1997); Family Entertainment and Copyright Act of 2005 (FECA), Pub. L. No. 109-9 § 103, 119 Stat. 218, 220-21 (2005). Cases predating these statutes should not necessarily be relied upon for delineating the elements of current copyright offenses, but they remain useful in interpreting the current law's elements.
Under 17 U.S.C. § 506(a), the initial element of criminal copyright infringement is that a valid copyright exists in the work or works in question. While on its face this element may appear the simplest to prove, a number of issues can add considerable complexity.
Copyright law protects all "original works of authorship fixed in any tangible medium of expression...." 17 U.S.C. § 102(a) (emphasis added).
The subject matter of copyright is defined by two requirements, originality and fixation: a work must be an original, creative expression of an idea or concept, and it must be recorded in tangible form. Thus copyright law protects a novel or poem written on paper or typed in a computer, a song recorded in a studio or written on sheet music, a sculpture modeled in clay or bronze, or a computer program on a PC's hard disk.
For copyright purposes, "original" has two requirements. First, the work must have been independently created by the author, as opposed to copied from another, previous work. A work can be original even if it closely resembles another work, "so long as the similarity is fortuitous, not the result of copying." Feist v. Rural Telephone Co., 499 U.S. 340, 345-46 (citing Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936) (noting that identical poems created by different poets ignorant of one another would both be original and copyrightable)). In practice, the odds against an artist or author or musician creating a new work identical to an existing one, without knowing of the earlier work, are remote, and in cases involving suspiciously-similar works, where the later artist had access or opportunity to learn of the earlier work, courts have found the subsequent work infringing rather than original. See, e.g., Bright Tunes v. Harrisongs Music, 420 F.Supp. 177 (S.D.N.Y. 1976). Second, the work must also possess "at least some minimal degree of creativity." Feist, 499 U.S. at 345. The amount of creativity required for originality is extremely low; "a slight amount" of "creative spark" is all that is necessary, "no matter how crude, humble or obvious." Id. (citing 1 Nimmer on Copyright §§ 2.01[A], [B] (1990)). What qualifies as "original" for copyright purposes may not be considered "original" by, for example, those assessing the item's artistic, literary, or academic merit. Nor should "originality" be confused with "novelty," which is the touchstone of patent law, not copyright. See Chapter VII of this Manual.
A work must also be "fixed," meaning it is recorded in some tangible medium by the author. So a song that is composed onto sheet music or recorded to tape is fixed and thus copyrightable, but a live performance of the song that is not recorded by the performer (or someone authorized by the performer) would not be fixed, and thus not copyrightable, although the performance might still enjoy protection under other laws. See the discussion of 18 U.S.C. § 2319A in Section II.F. of this Manual.
Short single words, short phrases, and familiar symbols and designs cannot be copyrighted. 37 C.F.R. § 202.1(a) (2004). They may, however, be trademarked and thus protected under 18 U.S.C. § 2320; see Chapter III of this Manual.
An important limitation of copyright is that it protects only the creative expression of an idea—but not the idea itself. 17 U.S.C. § 102(b) ("In no case does copyright protection ... extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery ...."); see also Feist, 499 U.S. at 344-45 (1991); Whelan Assoc. v. Jaslow Dental Lab., 797 F.2d 1222 (3d Cir. 1986). Novel ideas, methods, and processes may enjoy protection under patent or trade secret law, but are not copyrightable. See Chapters IV and VII of this Manual. For example, consider a new technique for modifying genes in a cell, which is described in a magazine article. Although the article might be copyrightable—as an original expression of the author's ideas about this new technique—the technique itself would not. The technique might, however, be patentable.
The notion of having a valid copyright is easily confused with the issue of whether the work is registered with the Copyright Office, or with possession of a valid copyright certificate issued by the Copyright Office. Throughout much of U.S. history, copyright protection was predicated on certain formal requirements, such as the need to register published works with the Copyright Office, deposit copies with the Library of Congress, and mark copies of the work with a copyright notice. However, major revisions to copyright law in the 1970s and 1980s now protect a copyrightable work regardless of whether these formalities have been observed. See La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1198-1205 (10th Cir. 2005). For a work created on or after January 1, 1978, copyright subsists from the moment an original work of authorship is created by "fix[ing it] in any tangible medium of expression." 17 U.S.C. § 102(a); see also id. § 302(a). That is, a work is copyrighted the moment it is created, regardless of whether it has been registered or bears a copyright notice.
A copyright is the author's legal entitlement to the exclusive rights granted under 17 U.S.C. § 106. Neither a copyright registration nor a registration certificate is equivalent to a copyright. A registration certificate signifies the Copyright Office's decision to register the work, which is a limited administrative decision that the work is copyrightable and that the application is proper. See 17 U.S.C. § 408(a). That decision to register and the certificate of registration can, however, have legal significance at trial. See Sections II.B.1.d.-e. of this Chapter.
The Family Entertainment and Copyright Act of 2005 created a new procedure, known as "preregistration," intended to address some problems with works that are pirated before their lawful publication or official release by the copyright owner. See Pub. L. No. 109-9 § 104, 119 Stat. 218, 221-22 (Apr. 27, 2005); 17 U.S.C. §§ 408(f) (setting forth basic rules for preregistration), 411(a) (preregistration or registration necessary to institute infringement action in most cases); 37 C.F.R. § 202.16 (Copyright Office rules for preregistration); see also Copyright Office Preregistration web page, available at http://www.copyright.gov/prereg/. Preregistration is available for certain types of work judged by the Copyright Office to be especially vulnerable to piracy before their lawful release or publication. See 37 C.F.R. § 202.16. These include movies, musical compositions and sound recordings, computer software and videogames, literary works, and "advertising and marketing photographs." Id. A copyright owner can preregister these types of works if they are unpublished, but "being prepared for commercial distribution," meaning that the copyright owner has a reasonable expectation that the work will be commercially distributed to the public, and the work, if not finished, has at least been commenced. Id. § 202.16(b)(2). Upon submission of an application and fee, the Copyright Office will undertake a limited review of the work, and if approved, it will preregister the work and issue a certificate, much as in the case of copyright registration. Id. § 202.16(c).
But preregistration is not a complete substitute for registration. Although preregistration allows an "action for infringement" to be "instituted" under 17 U.S.C. § 411(a), preregistration, unlike registration, involves only a cursory review by the Copyright Office and consequently preregistration will not serve as prima facie evidence of the validity or ownership of a copyright. 37 C.F.R. § 202.16(c)(6), (7), (13). See Sections II.B.1.d.-e. of this Chapter.
Section 411 of Title 17 provides that "no action for infringement of the copyright of any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." Because either registration or the "preregistration" process satisfies § 411(a), the term "registration" is used below to refer to both registration and preregistration, except as otherwise noted. The term "pre-registration," including a hyphen, is used to refer to events occurring before registration. Also, § 411 applies only to "United States works," meaning works first published domestically, or works created by U.S. nationals or "habitual residents." See 17 U.S.C. §§ 101, 411(a). Thus, registration is not required for civil or criminal cases involving foreign works.
The Department contends that the registration/preregistration requirement in § 411 applies only to civil lawsuits, not criminal prosecutions. Section 411 refers only to "actions," a term used elsewhere in the Copyright Act to refer to civil actions, not criminal prosecutions. See, e.g., 17 U.S.C. § 507 (using the term "civil action" in contrast to the term "criminal proceedings") and does not explicitly refer to criminal prosecutions. Cf. United States v. Cleveland, 281 F. 249,253 (S.D. Ala. 1922) (holding statutory provision governing "action" not applicable to criminal case because "action" is not ordinarily used to describe criminal prosecution). But see United States v. Backer, 134 F.2d 533, 535-36 (2d Cir. 1943) (interpreting substantially identical language in the 1909 Copyright Act to require registration as a precondition to any action for infringement, whether civil or criminal because "action" includes both criminal and civil actions in other contexts); 4 Nimmer on Copyright § 15.01[A][2](citing Backer); see also Mason v. United States, 1 F.2d 279 (7th Cir. 1924) (non-copyright case); Singleton v. United States, 290 F. 130 (4th Cir. 1923) (non-copyright case).
The criminal copyright provisions are silent on the issue of registration. Section 507 of Title 17, which sets forth the statutes of limitation for both criminal and civil cases, is entitled "Limitations on Actions," although § 507(a) refers to "Criminal Proceedings," not "actions."
The Department's position is supported by legislative history and dicta from the Supreme Court. Although the Copyright Act's legislative history is largely silent on the question, the Senate Judiciary Committee observed in 1988 that "registration is not a statutory precondition for criminal enforcement of copyright." S. Rep. No. 100-352 (1988), reprinted in 1988 U.S.C.C.A.N. 3706, 3743 (emphasis added). Although this isolated legislative statement came long after the registration requirement was first imposed, the legislative history appears to contain no other statements that are directly contrary. Instead, other legislative statements are at best inconclusive. See, e.g., 151 Cong. Rec. S450-01, 494 (daily ed. Jan. 25, 2005) (statement of Sen. Hatch) (stating that the Family Entertainment and Copyright Act "will create a pre-registration system that will permit criminal penalties and statutory-damage awards [and] also provide a tool for law enforcement officials.") Moreover, that registration is not required for criminal prosecution seems to be the position of at least some past members of the Supreme Court. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 493 n.44 (1984) (Blackmun, J., dissenting on other grounds; Powell, J., Marshall, J., and Rehnquist, J. joining).
The Department's position is also supported by public policy. Admittedly, requiring registration before a civil suit encourages authors to register their works. But that incentive is attenuated in criminal cases because prosecutions are brought by the government, which has no power to register works on behalf of authors. See 17 U.S.C. §§ 106, 408. Moreover, criminal copyright prosecutions protect the public interest in preventing infringement. And infringement of an unregistered copyrighted work is infringement nonetheless. See 17 U.S.C. § 408(a) ("[R]egistration is not a condition of copyright protection."); id. § 501 ("Anyone who violates any of the exclusive rights of the copyright owner ... is an infringer of copyright"); id. § 506(a)(1) ("Any person who willfully infringes a copyright shall be punished ....") (emphasis added). Making registration a prerequisite to criminal prosecution could impede criminal prosecution for the public benefit due to a victim's delay or neglect in completing a ministerial task intended primarily to promote administrative efficiency. Cf. Nadel & Sons Toy Corp. v. William Shaland Corp., 657 F.Supp. 133, 136 (S.D.N.Y. 1987) ("Registration of a copyright is essentially ministerial in nature ....") (citation omitted); Douglas Y'Barbo, On Section 411 of the Copyright Code and Determining the Proper Scope of a Copyright Registration, 34 San Diego L. Rev. 343, 353 (1997) ("The purpose of section 411(a) is essentially to facilitate judicial resolution of the ownership issue ....").
As a practical matter, however, the Department generally recommends that prosecutors introduce certificates of registration at trial. Certificates of registration are the simplest way to prove a copyright's validity and ownership. Even assuming registration is not required, without it prosecutors will have to prove these elements "from scratch" through testimony and other evidence. See Section II.B.1.e. of this Chapter. Prosecutors should therefore ensure, to the extent possible, that any copyrights on which a prosecution is sought are registered or "preregistered" before the prosecution is commenced. If registration is needed for pending litigation, it can often be expedited for completion within a week. See U.S. Copyright Office, Information Circular 10, "Special Handling," available at http://www.copyright.gov/circs/circ10.html.
This is not to say, however, that copyright registrations are needed earlier than trial. The government can obtain search warrants, grand jury subpoenas, and even indictments before it has certificates of registration in hand, if only because search warrants and grand jury proceedings are based on findings of probable cause.
Although a lack of registration (which may be a mere oversight, or a conscious choice to delay registration until a work is ready for publication) should not bar a criminal prosecution, the circumstances surrounding the absence of registration may militate against the choice to prosecute. A copyright-holder's refusal to register his copyright even when necessary for trial may indicate—or be interpreted—as the victim's intent to allow others to copy the work. The Copyright Office's refusal to register a work may indicate a weak claim of copyrightability or ownership.
If a court requires registration as a prerequisite to a criminal prosecution for infringement, a number of other questions arise, which are discussed below.
If a court requires registration, one question prosecutors may face is whether criminal charges may be based on infringement committed prior to registration. While Title 17 clearly allows for civil infringement actions (and recovery of damages) based on pre-registration infringement, and nothing in the statute indicates a contrary intent with respect to criminal prosecutions, in the only reported criminal case on point a district court held held that a criminal copyright prosecution cannot be based on pre-registration infringement. See United States v. Gallo, 599 F.Supp. 241, 245 n.1 (W.D.N.Y. 1984) (holding, however, that "[e]vidence as to activities involving PENGO before the registration date could perhaps be relevant to other matters, but not to show copyright infringement or wrongful distribution of PENGO"). The Gallo court assumed that "there can be no infringement" until the work in question has been registered—a conclusion that was almost certainly wrong. See Montgomery v. Noa, 168 F.3d 1282, 1288 (11th Cir. 1999) (noting that "after 1977, copyright automatically inheres in the work at the moment it is created without regard to whether it is ever registered"); 17 U.S.C. § 302 (1988) (providing copyright protection at the time the work is created); 17 U.S.C. §§ 411-412 (providing registration as prerequisite to initiation of lawsuit and certain types of damages); 2 Nimmer on Copyright § 7.16[A][1]; 4 Nimmer on Copyright § 15.01[A][2], at 15-4 & n.24 (characterizing Gallo as "erroneously assuming that registration is a condition precedent to obtaining copyright rather than to bringing an infringement action"). Moreover, the Gallo court's ruling contrasts sharply with well-settled civil precedents holding that an infringement action may be based on conduct that predates the victim's copyright registration. See, e.g., Chuck Blore & Don Richman Inc. v. 20/20 Advertising Inc., 674 F.Supp. 671 (D. Minn. 1987); 2 Nimmer on Copyright § 7.16[B][1][a], at 7-153; Washingtonian Pub. Co. v. Pearson, 306 U.S. 30, 39 (1939).
Given the Gallo's court's confusing statement, the lack of other relevant criminal case law, and the general principle of applying civil copyright law in criminal copyright cases, the authorities cited above support the Department's position that even if a court requires registration as a prerequisite to prosecution, defendants can still be held criminally liable for pre-registration acts of infringement.
Infringement before registration often involves infringement before lawful publication. Cf. Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987) (biographer included plaintiff's unregistered and unpublished letters in biography of plaintiff, after which plaintiff registered letters and sued). A typical case for prosecutors might involve pre-release piracy, where the defendant obtains and distributes on the Internet a copy of a new movie before it has been released in theaters, or a new video game before it has been legitimately distributed to the public. See, e.g., United States v. Gonzalez (S.D.N.Y. 2004) (criminal conviction for posting advance copy of movie "The Hulk" on the Internet) (press release available at http://www.usdoj.gov/criminal/cybercrime/gonzalezPlea.htm).
Although an unpublished work is protected by copyright, a plaintiff in a civil case may not recover attorneys fees or statutory damages for "any infringement of copyright in an unpublished work commenced before the effective date of its registration." 17 U.S.C. § 412(1). Given that civil penalties are limited in such cases, a criminal defendant might argue that criminal penalties for infringement of an unpublished work before registration should similarly be foreclosed. To date, no court appears to have addressed such an argument.
The preregistration procedure available under the Family Entertainment and Copyright Act was designed to address the piracy of certain types of unpublished works, but unfortunately does not resolve whether registration or preregistration of unpublished works is a prerequisite to criminal prosecution for infringement of such works. Nevertheless, the preregistration procedures provides a relatively quick and simple way for a copyright-holder in an unpublished work to satisfy 17 U.S.C. § 411(a). Therefore, prosecutors handling a case involving infringement of unpublished and unregistered works should consider whether preregistration is an option.
Should a court hold that registration is a prerequisite to criminal prosecution, the question might arise whether the registration of one version of a work satisfied § 411 if the infringement involved a different, unregistered edition of the work. For instance, computer software is frequently revised and republished in new versions, some registered, some not. If the victim registered version 1.0 but not version 1.5, can the government still pursue a criminal case for infringement of version 1.5? Or, if the circumstances are reversed and the victim registered version 1.5 but not 1.0, can a case be brought for infringement of version 1.0?
Although there is no reported criminal case law on the issue, civil authority suggests that registering a different version of a work will often satisfy § 411. This is especially true if a later version was registered, but earlier versions had not, which is sometimes referred to as a "backward-looking" registration. In those cases, courts generally have allowed a case to proceed based on infringement of the earlier (though unregistered) version. See Murray Hill Publ'ns v. ABC Commc'ns, 264 F.3d 622, 650 (6th Cir. 2001); Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998).
On the other hand, if an early version had been registered, but subsequent versions were not ("forward-looking" registration), courts have been less consistent about whether to allow claims for infringement of the later, unregistered versions. Compare Montgomery v. Noga, 168 F.3d 1282, 1292-93 & n.17 (11th Cir. 1999); Liu v. Price Waterhouse LLP, 182 F.Supp.2d 666, 675 (N.D. Ill. 2001) ("No registration is necessary for a derivative work, so long as the underlying original work is registered"); Central Point Software, Inc. v. Nugent, 903 F.Supp. 1057, 1060 & n.5 (E.D. Tex. 1995) (allowing infringement claim where plaintiffs registered copyrights in earlier versions of software and defendants copied subsequent versions derived from registered works); and Video Pipeline v. Buena Vista Home Entertainment, 275 F.Supp.2d 543, 556 (D.N.J. 2003) (holding court had jurisdiction over infringement counterclaim where infringement of unregistered derivative work also infringed element of original, registered work) with Johnson v. Gordon, 409 F.3d 12, 20 (1st Cir. 2005) (holding claims based on "new elements" present in later, unregistered, "long version" of song could not proceed); Well-Made Toy Mfg. Corp. v. Goffa, 354 F.3d 112 (2d Cir. 2003) (holding registration for earlier, 20" version of doll did not grant jurisdiction for claim of infringement of later, 48" version).
If there is a consistent rule for "forward-looking" registration cases, it appears to be that courts will likely allow an action for infringement of a later, unregistered work that incorporates significant portions of an earlier, registered work if the same entity owns both copyrights and the defendant infringed elements that were present in the old registered version as well as the newer one. See 2 Nimmer on Copyright § 7.16[B][2]; see also Montgomery, 168 F.2d at 1292.
At trial, the government typically proves the existence of a valid copyright by introducing a certificate of registration. The certificate's probative value depends on whether the work was registered earlier or later than five years after the work was published. A certificate of registration "made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright." 17 U.S.C. § 410(c) (emphasis added); see also United States v. Taxe, 540 F.2d 961, 966 (9th Cir. 1976); United States v. Moore, 604 F.2d 1228, 1234 (9th Cir. 1979). Once the certificate of registration is introduced by the government and accepted as authentic by the court, the burden shifts to the defendant to prove that the copyright is not valid or that the registration was obtained fraudulently, see, e.g., Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476, 1487 (10th Cir. 1993), after which the prosecutor may rebut with evidence showing that the certificate is genuine, the registration was properly obtained, or otherwise that the copyright is valid. If the work was registered more than five years after its first publication, the certificate's probative value is left to the court's discretion. See 17 U.S.C. § 410(c); Religious Tech. Ctr. v. Netcom On-Line Comm. Servs., Inc., 923 F.Supp. 1231, 1241 (N.D. Cal. 1995); Koontz v. Jaffarian, 617 F.Supp. 1108, 1111-12 (E.D. Va. 1985), aff'd, 787 F.2d 906 (4th Cir. 1986).
Certificates of registration should be obtained from the victim. The Copyright Office has an online database of certifications and can provide certified copies. Seehttp://www.copyright.gov/records/; U.S. Copyright Office, Information Circular No. 6, "Obtaining Access to and Copies of Copyright Office Records and Deposits," available athttp://www.copyright.gov/circs/circ6.html. But copyright owners may be able to respond faster, since they should have retained their registration certificates in the ordinary course of their business.
Although producing a copyright certificate is the preferred method of proving validity and ownership of a valid copyright, it is not the only way to do so. The parties can stipulate to the copyrights' validity. E.g., United States v. Sherman, 576 F.2d 292, 296 (10th Cir. 1978). Courts may also take judicial notice of a work's copyright registration. Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005). See also United States v. Hux, 940 F.2d 314, 318 (8th Cir. 1991) (allowing introduction of copyright certificates the morning of trial, but noting other evidence previously given to defense provided ample basis for plaintiff to establish, and defendant to challenge, existence of copyright), overruled on other grounds by United States v. Davis, 978 F.2d 415 (8th Cir. 1992); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1208 (10th Cir. 2005); see also United States v. Backer, 134 F.2d 533, 535-36 (2d Cir. 1943) (allowing civil proceeding where Copyright Office had provided plaintiff with certificate due to error; technical irregularities in the registration process should not invalidate an otherwise proper registration). For instance, the government could introduce testimony regarding the copyright owner's creation and fixation of the work, evidence that the work is original, and that it was not a work for hire created for someone else.
Prosecutors should confirm that the copyright in any work did not lapse for failure to include a copyright notice when the work was first published. The effect of publishing a copyrighted work without a copyright notice depends on whether the work was first published before or after March 1, 1989. For works published on or after March 1, 1989, their publication without a copyright notice is of no moment. See Berne Convention Implementation Act of 1988 ("BCIA"), Pub. L. No. 100-568, 102 Stat. 2853 (enacted October 31, 1988). For works published before March 1, 1989, however, initial publication without a copyright notice would have extinguished their copyright and consigned them to the public domain. See 17 U.S.C. §§ 10, 19 et seq. (1909 Act); 17 U.S.C. § 405(a)(2) (1976 Act). Their loss of copyright protection would persist to the present day, and thus preclude criminal prosecution for their infringement today. See 2 Nimmer on Copyright §§ 7.02[C][1]-[3], at 7-16 to 7-17.
As noted in the following Section, copyright notice on an infringed work may be useful in proving a defendant's willfulness.
To establish criminal intent, the government must prove that the defendant infringed the copyright willfully. See 17 U.S.C. § 506(a) ("Any person who willfully infringes a copyright shall be punished ....") (emphasis added). "[E]vidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement." 17 U.S.C. § 506(a)(2). This was intended to require proof of more than general intent and to ensure that, for instance, "an educator who in good faith believes that he or she is engaging in a fair use of copyrighted material could not be prosecuted under the bill." 143 Cong. Rec. 26,420-21 (1997).
The Supreme Court has recognized that "willful . . . is a word of many meanings, its construction often being influenced by its context." Spies v. United States, 317 U.S. 492, 497 (1943). This was reflected in Congressional debate over the NET Act amendments to the Copyright Act. Senator Hatch, the Chairman of the Senate Judiciary Committee, advocated that in copyright crimes "'willful' ought to mean the intent to violate a known legal duty," 143 Cong. Rec. 26,420 (1997), because a lower mens rea could cause "the net" of criminal sanctions "[to] be cast too widely." Id. Senator Hatch cited several cases in which the Supreme Court had construed "willfulness" in this fashion when the substantive law was complex, such as Cheek v. United States, 498 U.S. 192 (1991), in which the Court held that the general principle that "ignorance of the law or a mistake of law is no defense to criminal prosecution," must yield given the complexity of federal criminal tax statutes. In other words, the defendant's good-faith misunderstanding of the legal duties imposed on him by the tax laws would negate a finding of willfulness. Id. at 199. This reasoning has been applied in other contexts as well. E.g., Ratzlaf v. United States, 510 U.S. 135 (1994) (failure to report cash transactions in excess of $10,000).
A lower standard for "willfulness" was advanced by Representatives Goodlatte and Coble, who introduced and sponsored the bill in the House. They rejected the notion that defendant must be familiar with the copyright code and what constitutes infringement. Rather than require "knowledge" of a legal duty not to infringe, they interpreted willfulness to require only that a defendant have "reckless disregard" for copyrights:
The Government should not be required to prove that the defendant was familiar with the criminal copyright statute or violated it intentionally. Particularly in cases of clear infringement, the willfulness standard should be satisfied if there is adequate proof that the defendant acted with reckless disregard of the rights of the copyright holder. In such circumstances, a proclaimed ignorance of the law should not allow the infringer to escape conviction.143 Cong. Rec. 24,325 (1997).
Aside from clarifying that evidence of infringement, by itself, does not prove willfulness, see supra, Congress has left the term's definition to the courts. See 143 Cong. Rec. 26,422 (remarks of Sen. Leahy) ("This clarification does not change the current interpretation of the word 'willful' as developed by case law and as applied by [the Department of Justice], nor does it change the definition of 'willful' as it is used elsewhere in the Copyright Act."); H.R. Rep. No. 102-997, at 4-5, reprinted in 1992 U.S.C.C.A.N. 3569, 3572-73 (discussion of Copyright Felony Act, Pub. L. No. 102-561, 106 Stat. 4233 (1992)).
Most courts that have interpreted "willfulness" in criminal copyright cases have adopted the more stringent standard advocated by Senator Hatch: the intentional violation of a known legal duty. See 4 Nimmer on Copyright § 15.01[A][2], at 15-6 to 15-7; United States v. Cross 816 F.2d 297, 300-01 (7th Cir. 1987) (approving without comment a jury instruction that an act is willful when it is committed "voluntarily, with knowledge that it was prohibited by law, and with the purpose of violating the law, and not by mistake, accident or in good faith," and affirming conviction because the record amply demonstrated that the defendant "knowingly and voluntarily violated the copyright laws"); United States v. Moran, 757 F.Supp. 1046, 1049 (D. Neb. 1991) (holding that willful infringement means a "'voluntary, intentional violation of a known legal duty'") (quoting Cheek v. United States, 498 U.S. 192, 200 (1991)); see also United States v. Sherman, 576 F.2d 292, 297 (10th Cir. 1978) (upholding jury's verdict because jury "apparently either disbelieved the genuineness of this contract [which defendants claimed had licensed their conduct], or believed that defendants were not innocent of knowledge that the tapes provided were copies from the original artists' records", and noting that "willfulness" required proof of specific intent, but without clarifying whether that required proof that the defendants knew their conduct was unlawful, or merely knowledge that they were selling copies). Cf. United States v. Heilman, 614 F.2d 1133, 1138 (7th Cir. 1980) (holding that the government had proved willfulness because the defendant "chose to persist in conduct which he knew had 'a high likelihood of being held by a court of competent jurisdiction to be a violation of a criminal statute'") (quoting trial court).
A minority of courts in criminal copyright cases have apparently applied "willfulness" to set a lower bar for prosecution. United States v. Backer, 134 F.2d 533, 535 (2d Cir. 1943) is frequently cited as applying the lower standard, that of merely having the intent to carry out the activities of infringement without knowledge that they constituted infringement. In that case, the defendant had arranged for a manufacturer to duplicate a copyrighted figurine as closely as possible without, in the defendant's words, "copyright trouble." Id. at 535. The Second Circuit found the evidence sufficient to support willful infringement, noting there could not "be any fair doubt that the appellant deliberately had the copies made and deliberately sold them for profit." Id. Some commentators have characterized Backer as representing a circuit split. E.g., 4 Nimmer on Copyright § 15.01[A][2] at 15-6; Mary Jane Saunders, Criminal Copyright Infringement and the Copyright Felony Act, 71 Denv. U. L. Rev. 671, 688 (1994); Sylvia N. Albert et al., Intellectual Property Crimes, 42 Am. Crim. L. Rev. 631, 656-57 (2005).
It is not clear, however, that Backer represents a circuit split. The case can also be read as holding the defendant's mention of "copyright trouble" to be sufficient evidence of his knowledge of a legal duty not to infringe. Moreover, more recent civil copyright cases suggest that the Second Circuit interprets willfulness to require either actual knowledge that the infringement violated the law, or perhaps "constructive knowledge" shown by reckless disregard for whether the conduct violated copyright. Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1382 (2d Cir. 1993) (holding standard for willfulness to be "whether the defendant had knowledge that its conduct represented infringement or perhaps recklessly disregarded the possibility"); Fitzgerald Publ'g Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1115 (2d Cir. 1986) (same); Lydia Pallas Loren, Digitization, Commodification, Criminalization: The Evolution of Criminal Copyright Infringement and The Importance of the Willfulness Requirement, 77 Wash. U. L.Q. 835, 879 (1999) (arguing that the Second Circuit is actually not in disagreement with other circuits). This approach is consistent the Seventh Circuit's ruling in United States v. Heilman, a criminal copyright case holding that the government proved willfulness because the defendant "chose to persist in conduct which he knew had a high likelihood of being held by a court of competent jurisdiction to be a violation of a criminal statute." 614 F.2d at 1138 (citation and internal quotation marks omitted); see also 2 Paul Goldstein, Copyright § 11.4.1, at 11:51-11:52 (2d ed. Supp. 1999) (stating that the government must "prove that the defendant knew that his acts constituted copyright infringement or, at least, knew that there was a high probability that his acts constituted copyright infringement.").
The majority rule in criminal copyright cases for a higher standard of willfulness is also consistent with civil copyright cases, which likewise hold that willfulness is not just an intent to copy, but rather an intent to infringe. 4 Nimmer on Copyright § 14.04[B][3][a]; e.g., Twin Peaks Prods., Inc., 996 F.2d at 1382; Danjaq, L.L.C. v. Sony Corp., 263 F.3d 942, 959 (9th Cir. 2001); RSO Records, Inc. v. Peri, 596 F.Supp. 849, 859 (S.D.N.Y. 1984) (holding, in civil action, that defendant's earlier guilty plea to two counts of criminal copyright infringement sufficed to show he knew similar conduct was unlawful). The issue arises in civil cases when plaintiffs attempt to recover increased statutory damages, which are available only for willful infringement. 17 U.S.C. § 504(c). Congress's use of the term "willfulness" in closely proximate sections 504 and 506 of the Copyright Act suggests that the term should be interpreted similarly in both criminal and civil cases.
Given that willfulness requires an intent to infringe, or at least constructive knowledge of infringement plus a reckless disregard of the victim's rights, a finding of willfulness may be precluded if the defendant acted with a good-faith belief that he was not infringing. See Section II.B.2.b. of this Chapter.
"Willfulness is rarely provable by direct evidence, and most often can be proven only by inference from the evidence introduced." United States v. Sherman, 576 F.2d at 297. Certain types of evidence in criminal copyright cases have been found particularly relevant to determine the defendant's intent:
Conversely, other factors may be relevant to finding an absence of "willfulness":
Possible alternative charges that require lower mens rea standards are discussed in Section II.F. of this Chapter.
The next element is that the defendant infringed a copyright. See 17 U.S.C. § 506(a). "Infringement" refers to the violation of one or more of the exclusive rights granted to a copyright owner at 17 U.S.C. § 106. Infringement is implicitly defined in 17 U.S.C. § 501(a):
Anyone who violates any of the exclusive rights of the copyright owner as provided by [17 U.S.C. §§ 106-122] or of the author as provided by [17 U.S.C. § 106A], or who imports copies or phonorecords into the United States in violation of [17 U.S.C. § 602], is an infringer of the copyright.
Consequently, infringement may include more than violation of the rights enumerated in § 106 (and also include violations of the rights to exclude imports under § 602, or the rights of certain authors to attribution and integrity defined in § 106A), and at the same time, may not extend to all violations of the rights in § 106 (because the rights enumerated in § 106 are "subject to [the limitations of] §§ 107 through 122"). See § 106. For purposes of criminal enforcement, the relevant types of infringement are those enumerated in § 106. (An author's rights to attribution and integrity under § 106A(a) are not enforceable criminally. See 18 U.S.C. § 506(f).)
Section 106 of Title 17 sets out the copyright owner's exclusive rights. These rights consist of the rights "to do and to authorize" the following:
Sections 107 through 122 limit these rights, the most notable limitations being, for criminal enforcement purposes, the public's right to fair use, the first sale doctrine, limitations on rental of software and musical sound recordings, and exceptions for installing and backing up software, all of which are discussed in detail in Section II.C. of this Chapter.
Felony penalties apply only to infringement of the reproduction or distribution rights. See 17 U.S.C. § 506(a). Specifically, felony penalties apply only if the infringement involved either "reproduction and distribution" of a minimum number and value of works, see 17 U.S.C. § 506(a)(1)(A) (numbered § 506(a)(1) before the Apr. 27, 2005 amendments) and 18 U.S.C. § 2319(b)(1); 17 U.S.C. § 506(a)(1)(B) (numbered § 506(a)(2) before the Apr. 27, 2005 amendments) and 18 U.S.C. § 2319(c)(1), or if the infringement involved "distribution of a work being prepared for commercial distribution," by making it available on a publicly-accessible computer network. See 17 U.S.C. § 506(a)(1)(C) (enacted Apr. 27, 2005), 18 U.S.C. § 2319(d)(1). See Section II.B.4.c. of this Chapter.
Misdemeanor penalties apply to infringement by reproduction or distribution that meet a lower numeric and monetary threshold—one or more copies of one or more copyrighted works, having a total retail value of more than $1,000. See 17 U.S.C. § 506(a)(1)(B), 18 U.S.C. § 2319(c)(3). Misdemeanor penalties also cover willful infringement of any of the exclusive rights under § 106, if committed for commercial advantage or private financial gain. See 17 U.S.C. § 506(a)(1)(A), 18 U.S.C. § 2319(b)(3), and the discussion in Section II.B.4. of this Chapter.
Criminal prosecutions mainly focus on reproduction and distribution, because these are generally the most serious infringements and they incur the most significant penalties. This is not to say, however, that the Department would not or could not investigate and prosecute copyright misdemeanors for a profit-motivated public performance, public display, or derivative work.
Felony penalties are provided for willful infringement committed "by the reproduction or distribution" of ten or more copies (or phonorecords) of one or more copyrighted works, with a total retail value of $2,500 or more. There are actually two separate combinations of statutory provisions that provide felony penalties for this type of conduct.
Infringement committed with or without the purpose of commercial advantage or private financial gain can fall under 17 U.S.C. § 506(a)(1)(B) (numbered § 506(a)(2) before the Apr. 27, 2005 amendments), if the willful infringement was committed "by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1000." For these offenses, 18 U.S.C. § 2319(c)(1) provides felony penalties "if the offense consists of the reproduction or distribution of 10 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of $2,500 or more." The statutory maximum penalty is 3 years' imprisonment, 6 for repeat offenders. See § 2319(c).
Infringement committed for commercial advantage or private financial gain can also fall under 17 U.S.C. § 506(a)(1)(A) (numbered § 506(a)(1) before the Apr. 27, 2005 amendments), which is a felony if the offense "consists of the reproduction or distribution, including by electronic means, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, which have a total retail value of more than $2,500." 18 U.S.C. § 2319(b)(1).The statutory maximum penalty is 5 years' imprisonment, 10 for repeat offenders.
There is a slight variation in language between the twoprovisions that set forth a $2,500 felony threshold: 18 U.S.C. § 2319(c)(1) requires a total retail value of "$2,500 or more," whereas § 2319(b)(1) requires "more than $2,500." It is unclear whether this variation was intentional.
In addition to the felony penalties discussed in the prior paragraphs, there are also felony penalties in 17 U.S.C. § 506(a)(1)(C) (enacted Apr. 27, 2005) for distribution over a computer network accessible by the public. See Section II.B.3.b. of this Chapter.
The reproduction and distribution rights are set forth in 17 U.S.C. § 106(1) (exclusive right "to reproduce the copyrighted work in copies or phonorecords") and § 106(3) (exclusive right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending").
Definition of Copies and Phonorecords
The term "copies" is often used to refer generically to any material object in which a copyrighted work has been fixed. However, the Copyright Act reserves the term "copies" only for works other than sound recordings. "Copies" are defined as "material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 101. "Phonorecords" are what we think of as copies of sound recordings, and are defined as "material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Id. Thus, examples of a "phonorecord" would include an audio tape or CD, or an MP3 file. Examples of "copies" would include a book, a painting, a piece of sheet music, or a sculpture. A software program on disc or in a file on a computer, or a movie on DVD or videotape, would also be "copies," even though these objects might also include an audio sound track.
Somewhat confusingly, the terms "copy" and "phonorecord" can also refer to the original object in which the copyrighted work was fixed, such as a handwritten manuscript, or original studio tapes for a sound recording.
"Stealing"
Infringement is often referred to as a form of theft. For example, 18 U.S.C. § 2319 is located in a chapter of the criminal code entitled, "Stolen Property." Yet infringement is distinct from common-law theft, and requires no showing that the defendant "stole" or deprived another person of a physical copy of a work. Making additional copies of a book, movie, or other work may constitute infringement, even if the defendant obtained his original source for additional copies lawfully. Likewise, although publicly distributing copies that were stolen from the copyright owner could constitute infringement, it is not always necessary to show that copies were "stolen" in order to show infringing distribution.
Reproduction encompasses a wide array of conduct, ranging from a novelist's plagiarizing substantial portions of someone else's book or a musician's sampling several notes from a previously-recorded song, to using a computer to rip an audio track into MP3 format or making a bit-for-bit copy of a movie on DVD. In most criminal cases, infringing reproduction involves the production of exact, or nearly-exact, duplicates through digital means, as with computer programs and movies on DVD. Copying need not be so blatant or literal to qualify as infringement, but criminal cases rarely involve defendants who have copied only a small portion of a copyrighted work. Disputes over whether one song sounds too alike another, or whether a movie screenplay copies dialogue or characters from an earlier screenplay, are generally best left to civil lawsuits. Nevertheless, some cases of less-than-wholesale, verbatim copying of an entire work may deserve criminal prosecution.
Proof of Infringement by Reproduction
The best evidence of infringement by reproduction is direct evidence that the defendant copied the victim's work, including (for example) eyewitness testimony, or even computer logs indicating the copying of particular discs or files. Typically, criminal copyright cases will involve complete, verbatim copying of many copyrighted works, and defendants are generally unlikely to challenge this issue credibly. In fact, defendants often even advertise or otherwise mark the infringing copies as being copies. However, when the copies alleged to be infringing are not essentially identical to the original work, prosecutors may need to prove infringement in greater depth.
Direct evidence of copying is best, but circumstantial evidence may suffice. The circumstantial test is whether (1) the defendant had access to the copyrighted work and (2) that defendant's work is "substantially" or "probatively" similar to the copyrighted material. See Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir. 2005); Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548, 562 (3d Cir. 2002); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 532 (5th Cir. 1994).
The test of "substantial" or "probative similarity" is whether, considering the two works as a whole, including both the copyrightable elements and the uncopyrightable ones (such as basic ideas or public-domain expressions that are not eligible for copyright), a reasonable person would conclude that the defendant had actually copied the work from the original. See Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 370 n.9 (5th Cir. 2004); McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 318-19 (9th Cir. 1987), disagreed with on other grounds, Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994); Atari, Inc. v. North American Philips Consumer Elec. Corp., 672 F.2d 607, 614 (7th Cir. 1982). This standard focuses on the works' similarities rather than their differences. Thus, "[i]t is enough that substantial parts [of a copyrighted work] were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate." United States v. O'Reilly, 794 F.2d 613, 615 (11th Cir. 1986) (affirming conviction for infringement of copyright in video games where approximately 70% of defendant's code was identical to copyrighted original) (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) (L. Hand, J.)).
Note that this test is designed to determine whether copying occurred, not necessarily whether that copying constituted infringement. If the court determines that actual copying has occurred, only then does it assess whether the copying was substantial enough to constitute infringement. Unfortunately, many courts also refer to this test as one of "substantial similarity," which can lead to confusion. See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164-65 (9th Cir. 1977) (referring to the test of whether copying occurred as an "extrinsic" test of substantial similarity, while calling the test of whether infringement occurred, i.e., whether copyrightable elements were copied, an "intrinsic" test of substantial similarity). To avoid this confusion, many courts prefer to use the term "probative" similarities to show "actual copying," and "substantial similarity" to show "actionable copying." See Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 370 (5th Cir. 2004); Dam Things from Denmark, 290 F.3d at 562 & n. 19.
If the copyrighted work and the defendant's work are "strikingly similar," the first element of access may be assumed without proof (at least in civil copyright cases), especially when the copyrighted work was widely available. See, e.g., Playboy Enters. v. Frena, 839 F.Supp. 1552, 1556 (M.D. Fla. 1993) (holding proof of access unnecessary when defendant made "essentially exact" copies of copyrighted photos that appeared in nationally-circulated magazine).
In practice, the government demonstrates "substantial" or "probative" similarity, as well as infringement, by comparing the suspect copy side-by-side against an authentic original. Although it is generally better to compare against the original maintained on file at the Register of Copyrights, it is not absolutely necessary—an authenticated duplicate of the original work will suffice. See O'Reilly, 794 F.2d at 615; United States v. Shabazz, 724 F.2d 1536, 1539 (11th Cir. 1984). Victims may assist the government with these comparisons. See Chapter X of this Manual; cf. United States v. Sherman, 576 F.2d 292, 295 (10th Cir. 1978) (mentioning that suspected pirated tapes were checked by record company before search warrant issued).
Statutory Exceptions for Reproduction
As noted above, copyright owners' rights are limited in 17 U.S.C. §§ 107-122. Several of these provisions particularly limit the reproduction right, including § 107 ("fair use"), § 108 (certain copying by libraries and archives), § 115 (compulsory license for making phonorecords of musical works), and § 117 (certain limited copying of software). See Section II.C. of this Chapter.
Section 106(3) of Title 17 grants copyright owners the exclusive right "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." 17 U.S.C. § 106(3). The distribution right is implicated by a wide variety of conduct, including the sale of books at a bookstore, used CDs at a garage sale, and pirated DVDs at a flea market; the lending of books by a library; and transferring pirated software to users from "warez" websites on the Internet. Distribution is not limited to sales, but also includes other transfers of ownership such as gifts or barter. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 299 (3d Cir. 1991) (citing H.R. Rep. No. 94-1476, reprinted in 1976 U.S.C.C.A.N. 5659, 5675-76 and 17 U.S.C.A. § 106 (West 1997) (historical note)).
"To the Public"
Although often referred to merely as "distribution," the right protected by § 106 is the right to distribute copies or phonorecords of the work "to the public." § 106(3) (emphasis added). Giving a single copy of a work to a family member or close friend may not qualify as a "distribution" for copyright purposes, although courts have found under some circumstances that even the giving of a single copy to one person may constitute "distribution to the public." Ford Motor Co., 930 F.2d at 299-300.
The Copyright Act does not expressly define "distribution" or "public," except through definitions of other closely-related terms. The term "publication" is defined in § 101, and is often used interchangeably with distribution, and courts have noted that the two terms are "for all practical purposes synonymous." Ford Motor Co., 930 F.2d at 299; see also Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 552 (1985); 2 Nimmer on Copyright § 8.11[A], at 8-148 to 8-149. Section 101 also defines the term "publicly," with respect to performances and display of works, as referring to "place[s] open to the public or any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered." "Distribution" is not limited to sales, but also includes other transfer of ownership such as gifts or barter. Ford Motor Co., 930 F.2d at 299 (citing H.Rep. 94-1476, 94th Cong., 2d Sess. 62, reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5675-76).
For cases discussing whether distribution "to the public" in several contexts, see Section II.B.3.c.ii. of this Chapter.
Importation
Infringing articles are often manufactured overseas and then shipped into the United States for distribution. Under 17 U.S.C. § 602, importation of infringing copies into the United States without permission of the copyright owner generally constitutes infringement of the distribution right. Although § 602 specifies that unauthorized importation is "actionable under § 501," it does not mention criminal actions under § 506. In cases involving importation, prosecutors may also consider charging the defendant with bringing goods into the United States by false statements, 18 U.S.C. § 542, or with smuggling goods, 18 U.S.C. § 545.
Making Works Available Without Transferring Them
It is unclear whether a defendant who merely makes copyrighted material available to others has infringed the distribution right without any evidence of an actual transfer of infringing works. This question might arise if a defendant on a peer-to-peer file-sharing network made copyrighted movies, music, or software available to the public by placing them in a shared area of his networked desktop computer, but his computer contained no records of whether or how many times these files were downloaded by others. If there is no evidence that the copyrighted works the defendant "made available" were actually transferred to another computer (or indeed, if there is evidence that no such transfers actually occurred, despite the defendant's having made the files available), has the defendant nevertheless infringed the distribution right in the works?
Several civil cases addressing online infringement state, or at least suggest, that the distribution right is infringed at the point when the defendant makes a file publicly available. See A&M Records v. Napster, 239 F.3d 1004, 1014 (9th Cir. 2001) (noting that "Napster users who upload file names to the search index for others to copy violate plaintiffs' distribution rights. Napster users who download files containing copyrighted music violate plaintiffs' reproduction rights."); Playboy Enters. v. Chuckleberry Publ'g, Inc., 939 F.Supp. 1032, 1039 (S.D.N.Y. 1996) (uploading content on Internet and inviting users to download it violates exclusive publication right); Playboy Enters. v. Russ Hardenburgh, Inc., 982 F.Supp. 503, 513 (N.D. Ohio 1997) ("Defendants disseminated unlawful copies of PEI photographs to the public by adopting a policy in which RNE employees moved those copies to the generally available files instead of discarding them."); Getaped.Com, Inc. v. Cangemi, 188 F.Supp.2d 398, 402 (S.D.N.Y. 2002) (holding that material on website was published when it was placed on website and available for viewing or downloading).
A case frequently cited for the proposition that "making available" violates the distribution right is Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th Cir. 1997). At issue in Hotaling was whether a church library open to the public had distributed the plaintiff's work by having it in its collection and listing it in its card catalog, even though no evidence indicated that the work had actually been borrowed or viewed by library patrons. The defendant argued that holding the work in its collection constituted a mere offer to distribute, at most, not an actual distribution. The court sided with the plaintiffs:
When a public library adds a work to its collection, lists the work in its index or catalog system, and makes the work available to the borrowing or browsing public, it has completed all the steps necessary for distribution to the public. At that point, members of the public can visit the library and use the work. Were this not to be considered distribution within the meaning of § 106(3), a copyright holder would be prejudiced by a library that does not keep records of public use, and the library would unjustly profit by its own omission.
Id. at 203. At least one court considering Hotaling focused on the opinion's concern with potential prejudice from a library that kept no records, and suggested that the same logic might apply in online cases where no records are kept. In Arista Records, Inc. v. MP3Board, Inc., No. 00CIV.4660(SHS), 2002 WL 1997918, at *4 (S.D.N.Y. Aug. 29, 2002) (citing Hotaling, 118 F.3d at 204), the court considered that "a copyright holder may not be required to prove particular instances of use by the public when the proof is impossible to produce because the infringer has not kept records of public use," but declined to find that an actual distribution had occurred based on the facts before it (in which investigators for the record industry had determined that hyperlinks on the defendant's website pointed to infringing audio files). Id.
Only one criminal decision has addressed this question, albeit in the context of deciding whether state court charges were preempted by federal copyright law: "Posting software on a bulletin board where others can access and download it is distribution ..... which is governed by the [federal] copyright laws." State v. Perry, 697 N.E.2d 624, 628 (Ohio 1998).
The Copyright Office states that U.S. copyright law includes a "making available" right that covers making files available on the Internet. See U.S. Copyright Office, DMCA Section 104 Report , at 93-95 (August 2001). This, however, does little to resolve the issue for criminal cases, because the Copyright Office characterizes this "making available right" as resulting from a combination of the distribution, reproduction, public display, and public performance rights. Id. at 94. Because the felony copyright provisions apply only to infringement of the distribution and reproduction rights, it is unclear whether "making available" (as the Copyright Office interprets it) can support a felony charge.
Moreover, a number of federal courts have held that no distribution occurs unless and until an infringing copy is actually disseminated. See Obolensky v. G.P. Putnam's Sons, 628 F.Supp. 1552, 1555 (S.D.N.Y.) (directing verdict for defendants after jury trial because the right to distribute is not violated "where the defendant offers to sell copyrighted materials but does not consummate a sale" or "where there is copying, but no sale of the material copied"), aff'd, 795 F.2d 1005 (2d Cir. 1986); accord Paramount Pictures Corp. v. Labus, No. 89-C-797-C, 1990 WL 120642, at *4 (W.D. Wis. Mar. 23, 1990), aff'd, 334 F.3d 643 (7th Cir. 2003) (not discussing point); National Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426, 430 (8th Cir. 1993) (holding that distribution requires the transfer of an actual copy, as § 106(3) grants the copyright owner the "exclusive right publicly to sell, give away, rent or lend any material embodiment of his work") (quoting 2 Nimmer on Copyright § 8.11[A], at 8-123 (emphasis added by National Car Rental)); cf. In re: Aimster Copyright Litig., 252 F.Supp.2d 634, 643 (N.D. Ill. 2002) (noting, without analysis, that a peer-to-peer user "with copyrighted music files on his harddrive available for download can [once another user searches for and locates a file on the first user's computer] thereafter become an unauthorized distributor of that copyrighted music as soon as another Aimster user initiates a transfer of that file."). The leading copyright treatise also supports this view. See 2 Nimmer on Copyright § 8.11[A] at 8-149 ("Infringement of [the right to distribute] requires an actual dissemination of either copies or phonorecords.").
To date, the only case to squarely address "making available" in the context of peer-to-peer networks and the new "making available" offense in 17 U.S.C. § 506(a)(1)(C) is In re Napster, Inc. Copyright Litig., 377 F.Supp.2d 796 (N.D. Cal. 2005). In that opinion, the court considered the plaintiffs' motion for summary judgment on their claims that Napster had directly infringed the plaintiffs' copyrights by creating and maintaining an indexing system that allowed users to upload and download infringing music files. Id. at 802. The key question was "whether the Copyright Act requires proof of the actual dissemination of a copy or phonorecord in order to establish the unlawful distribution of a copyrighted work in violation of 17 U.S.C. § 160(3)." Id. The court concluded that distribution did not include the mere offer to distribute a copyrighted work, given the plain meaning and legislative history of the terms "distribution" and "publication." See id. at 803-04. The court concluded that "to the extent Hotaling suggests that a mere offer to distribute a copyrighted work gives rise to liability under section 106(3), that view is contrary to the weight of [the] above-cited authorities." Id. at 803 (citations omitted). Finally, the court rejected the argument that the "making available" language in the new offense at 17 U.S.C. § 506(a)(1)(C), discussed in Section II.B.3.c.ii. of this Chapter, evinced Congress's intent that "making available" was a type of distribution, concluding that § 506(a)(1)(C) made willful copyright infringement and "making available" two separate elements. Napster, 377 F.Supp.2d at 805.
Given this backdrop, courts deciding criminal cases would likely require proof of actual dissemination of copies, as opposed to evidence that the defendant merely "made [infringing works] available," if only to satisfy the rule of lenity. See United States v. Wiltberger, 18 U.S. 76, 95 (1820); Dowling v. United States, 473 U.S. 207, 213, 228-29 (1985) (applying rule of lenity to construe stolen property laws narrowly in light of copyright law). Moreover, courts might consider Congress's choice not to punish attempts in § 506 as further evidence that distribution, in criminal cases, requires an actual transfer of an infringing copy to the public.
Some of the civil cases in which proof of actual dissemination has not been required suggest an alternative rule—that where, due to the defendant's actions, no records exist of actual transfers, the court may infer or presume that actual dissemination took place. See Hotaling, 118 F.3d 199; Arista Records, 2002 WL 1997918. That rule, however, might not be adopted in criminal cases, in which infringing distribution must be proven beyond a reasonable doubt.
As a practical matter, evidence of actual infringing transfers strengthens other aspects of the case. Even if a theory of distribution without dissemination were accepted by the court, a jury might nevertheless reject it—either in sympathy toward a defendant who ostensibly copied nothing, or by concluding that the defendant could not have understood that his conduct constituted infringement sufficiently to establish willful behavior. See the discussion of willfulness in Section II.B.2. of this Chapter.
When proving that the defendant actually distributed infringing copies, distributions to law enforcement officers or to agents working for the victim should suffice, as a matter of law. See Gamma Audio & Video v. Ean-Chea, No. 91-11615-2, 1992 WL 168186 at *3 n.5 (D. Mass. July 3, 1992), rev'd in part on other grounds, 11 F.3d 1106 (1st Cir. 1993); Paramount v. Labus, 1990 WL 120642 at *5.
The government need not prove an actual dissemination if the charge is conspiracy to violate the criminal copyright laws by means of distribution. Conspiracy is an inchoate crime, so the government need not prove that the underlying crime of distribution was completed.
First Sale
Under 17 U.S.C. § 109, it is not an infringement for the owner of a particular, lawfully-acquired copy or phonorecord of a work to sell or otherwise dispose of that copy. This exception is often referred to as the "first sale" doctrine. So, for example, a person who purchases a book at a bookstore may later resell the book at a yard sale or donate it to a library, without the copyright-holder's permission. Although first sale is treated as a defense in civil cases, some criminal copyright cases have held that the government must plead and prove the absence of a first sale as an element of the offense. See Section II.C.4.c. of this Chapter.
The final element for felony offenses under 17 U.S.C. § 506(a)(1)(A) and (B) (numbered § 506(a)(1),(2) before the Apr. 27, 2005 amendments) is that the infringement consisted of the "reproduction or distribution, including by electronic means, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, which have a total retail value of more than $2,500." 18 U.S.C. § 2319(b)(1); see also 18 U.S.C. § 2319(c)(1) (alternative felony provision, applying when value is "$2,500 or more"). For definition of "copies" and "phonorecords," see Section II.B.3.a. of this Chapter (discussing 17 U.S.C. § 101).
Congress reserved felony penalties for those who copy or distribute a minimum of 10 copies to exclude from felony prosecution low-level infringement such as "children making copies for friends as well as other incidental copying of copyrighted works having a relatively low retail value," and also to avoid having the criminal provisions used as a "tool of harassment" in business disputes involving issues such as reverse eng