Remedies for Web Site Copyright Infringement

by Richard Keyt

November 9, 2002

You spend a great time of time, effort and money to create a website. The site looks terrific. Your traffic started slowly, but is growing each month. Your investment in the net is paying off. It's a success!

Suddenly you get an email from a customer who says that he saw text and graphics from your website on another website. After investigating you confirm that another website has in fact copied portions of your website and is displaying it to the world. Needless to say, if the above copyright violation scenario happened to you or me, we would both be fit to be tied.

Copyright Infringement is Alive & Well on the Net

Unfortunately, copyright infringement is alive and well on the internet today. Recently I have been involved with the following all too common situations:

	A website in a foreign country copied my client's pictures of its products and product descriptions and used the copied text and graphics to sell the same products in direct competition with my client. The infringer even copied and used the same internal product numbering devised by my client.
	A medical practice group inadvertently failed to renew its domain name, which was acquired by a company in the United Kingdom. The new domain name owner copied the doctors' entire website verbatim and put it on the doctors' former domain name. Patients who visited what they thought was their doctors' website saw the familiar website including pictures of the doctors, but were surprised and shocked to see that the bottom of each page contained links to porn sites.
	A parts supplier who spent a lot of time and money to photograph 2,000 plus parts found that many of his photographs were copied and displayed on a competitor's website.
	In doing a routine check of a client's website for copyright infringement, I discovered another website that copied lengthy portions of informational text from my client's website.

Most of the time, the primary desired relief is stopping the infringement. The good news is that if you are willing to enforce your rights and pay your lawyer to take action against the infringer, stopping the infringement is relatively easy.

Sometimes the copyright owner also wants to obtain money damages and/or a temporary injunction, a permanent injunction or the seizure of the infringing material. These latter objectives probably cannot be obtained without filing a lawsuit for copyright infringement.

Your chances of obtaining money damages are greatly enhanced if you registered your copyright with the United States Copyright Office before the infringement occurred. However, if the ISP hosting the website and the infringer are outside the United States, obtaining the desired relief may not be possible or it may be very expensive and require the services of an attorney licensed in the country where the infringer is located.

Before taking action, you must determine your goal. Do you simply want the infringement to stop or must you obtain damages and/or an injunction? A cease and desist letter from your lawyer to the infringer and the ISP hosting the website may cause one or both of them to delete the infringing material from the infringer's website. If the cease and desist letter does not have the desired effect, then your choices may be to either forget about it or file a lawsuit.

Registered Copyrights

The first thing you should do if you suspect that somebody has infringed your copyrights is to confirm that you registered your copyright with the U.S. Copyright Office. The evidence of registration is a Certificate of Registration from the Copyright Office that states the effective date of the registration, the name of the work registered and the owner of the copyright. Make a copy of the certificate for your lawyer.

You should also confirm exactly what content was registered when you filed the application for registration. U.S. copyright law requires that when a published work is registered, the application for registration must contain two deposits of the best available edition of the work. In general, the deposits for a website registration would be either five representative pages of the website or the entire website in hard copies of each page or on a CD or some other electronic format.

Your deposit can be very important. If the deposit was the entire copyrightable content of your website on the date of the application, you have excellent evidence to prove exactly what you registered and that the infringer copied your content. If your deposit was less than the entire contents of your website, and the infringer's copied content is not contained in the deposit material, your proof of content infringed is not quite so cut and dried. If needed for litigation purposes, it is possible to obtain certified copies of deposits from the Copyright Office. However, it is possible that the Copyright Office may lose all or a portion of your deposits, which is why you must keep a copy of your deposit in a safe place.

Practical Copyright Registration Advice

When you submit your copyright registration application, I recommend that you deposit the entire copyrightable contents of your website with the Copyright Office. Keep at least one copy of the deposit for your records and give one copy to your lawyer. You may need your copy of the deposit as evidence of what you submitted to the Copyright Office if you have to litigate.

Advantage of Registered Copyrights

It is extremely important to register your copyright before an infringement so that you can get attorneys' fees and statutory damages from an infringer. Many times it is difficult or impossible to prove substantial monetary damages when content on a website is infringed. The advantage of having the right to claim statutory damages is that there is no need to prove lost profits or the infringer's profits because the court has the discretion to award statutory damages to the infringer of up to $30,000 for each copyrighted work infringed. If the infringement was willful, the court can award statutory damages up to $150,000.

A copyright owner who does not have the ability to obtain attorneys' fees and statutory damages lacks two very powerful weapons that frequently make it more difficult and costly to achieve the desired results when dealing with a website infringer. For a dramatic real-life difference a registered website copyright made, see "Benefits of Web Site Copyright Registration."

Unregistered Copyrights

If you do not register your copyright before the infringement occured, you have rights against an infringer such as the right to obtain damages for your lost profits, the infringer's profits and an injunction, but you cannot obtain statutory damages or attorneys' fees.

If you did not register the copyright to your website before the infringement, you should do so immediately. The reasons to register the copyright are:

If it becomes necessary to file a lawsuit for copyright infringement, you cannot do so unless you first obtain a Certificate of Registration for the work or a denial of Registration from the Copyright Office. A pending application is not sufficient to sue for copyright infringement. Currently it takes at least four months from the date the application is received until the Copyright Office issues the Certificate of Registration. Your lawsuit can be substantially delayed if you have to wait for the Certificate.
Registering your copyright gives you the added benefits of attorneys' fees and statutory damages if there is future infringement.
The cost to register your copyright is nominal. KEYTLaw charges $300 plus the $30 filing fee and the cost of an overnight delivery service.

Cease & Desist Letter

Once you have the copyright registration of your work resolved, the next step in pursuing an infringer is to send the infringer a cease and desist letter. The purposes of the letter are to:

Notify the infringer that you claim the copyrights to your work.
Demand that the infringer cease and desist from infringing your copyrights.
Demand that the infringer pay you for your lost profits.
Demand that the infringer give you an accounting of all profits derived from the infringed work.
Demand that the infringer pay you for the profits derived by the infringer from the work.
Notify the infringer that the infringer may be liable for your attorneys' fees and statutory damages (only if you have a copyright registered before the infringement).
Notify the infringer that you intend to send a notice of your claims to the ISP that hosts the infringing website and demand that the ISP take down the infringing content.
Give the infringer a deadline to resolve the dispute to your satisfaction.
Notify the infringer that you intend to take legal action if the dispute is not resolved to your satisfaction by the deadline.

In general, you should not make statements in the cease and desist letter that you are not willing to back up with action. Keep in mind that the best strategy to obtain your desired results includes convincing the infringer that you will do what you say you will do. If the infringer believes that you will not file a lawsuit, there is a high probability that the infringer will not meet your demands.

Possible Adverse Consequences of a Cease & Desist Letter

If you send a cease and desist letter to an infringer, there is a risk that the infringer may file a lawsuit in the infringer's jurisdiction naming you as a defendant and seeking a declaratory judgment that your copyright is invalid. One recent court decision found that the sending of a single cease and desist letter into the state was enough to subject the defendant to personal jurisdiction in that state.

The Digital Millennium Copyright Act

If your copyrighted work is displayed illegally on a website, you may be able to take advantage of the Digital Millennium Copyright Act of 1998 (the "DMCA"), codified at 17 U.S.C. § 512, to convince the ISP to delete the infringing material from the ISP's servers or to prevent it from being accessed. The DMCA contains a procedure that grants "service providers" immunity from copyright infringement liability under certain circumstances when the infringement is caused by the service providers' users. Service providers include "a provider of online services or network access, or the operator of facilities therefor."

Most ISPs probably do not want the potential liability that could result from having infringing content on their servers. The Digital Millennium Copyright Act provides that an ISP may be able to avoid copyright infringement liability arising from infringing content on a website hosted by the ISP for a customer if the ISP follows the procedures set forth in the DMCA. One way to get your copyrighted content off the internet is to notify the ISP that it has infringing content on its servers.

The copyright owner may notify the website's host ISP of copyright infringement and demand that the ISP remove the infringing material from the internet and its servers. Under the notice and takedown procedure, a copyright owner must give a proper notice to the service provider’s designated agent. If, upon receiving a proper notice, the service provider promptly removes or blocks access to the allegedly infringing material identified in the notice and if certain applicable requirements of the DMCA have been satisfied, the service provider will be exempt from monetary liability arising from the infringement. The service provider is also protected from any liability to any person for claims based on its having taken down the material.

The notice to the service provider of infringement must be given to the service provider's designated agent and must contain the following information:

A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive copyright that is allegedly infringed.
Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
A statement that the information in the notice is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

On receiving a proper notice of alleged copyright infringement, most ISPs will promptly remove or block access to the infringing material. Be sure to follow up with the ISP to make sure it complies with its obligations after receiving the notice.

For more information about the Digital Millennium Copyright Act, see my article entitled "Web Site Owners: How to Protect Yourself from Claims of Copyright Infringement for Users' Conduct."

The Copyright Infringement Case

If you cannot negotiate a satisfactory settlement, your last resort to obtain the relief from copyright infringement that you seek may require that you sue the infringer, contributory infringers and vicarious infringers for copyright infringement. Copyright infringement lawsuits must be filed in federal district courts.

Although copyright litigation can be very expensive, a copyright owner who has a good case may win damages equal to lost profits plus profits derived by the infringer from the copyrighted material and an injunction. prohibiting future infringement. For copyrights registered before the infringement, the court may award statutory damages up to $150,000 per infringement. Subject to the approval of the court, copyright plaintiffs may also obtain the powerful strategic weapons of: (i) a temporary restraining order that prohibits the infringer from infringing the copyrighted work, and (ii) a court order authorizing the U.S. marshal to seize the allegedly infringing material.

Litigation may be the only way to obtain significant money damages from the defendant. If your damages are substantial and/or the infringer's profits are substantial and you want to collect, you may have to litigate. One very important reason to litigate is simply to win so you can use the victory to deter potential future infringers. Your next cease and desist letter may have a lot more weight if a copy of your money judgment and permanent injunction from you prior infringement lawsuit is enclosed.

In closing, if you have a valid copyright, especially if it was registered before the infringement, you have several options to stop the infringement and possibly obtain money from the infringer. Your chances of achieving your objective depend of course on the facts, but will also be improved significantly if you take aggressive action against the defender and by your actions convince the infringer that you will pursue your legal rights without delay until you are victorious.

If you believe your copyrighted work has been infringed, you should immediately contact a copyright lawyer to investigate your case, to advise you on your options and to implement your plan of attack.

About the Author

Richard Keyt is a business and contracts attorney licensed to practice law in Arizona. Rick can be reached by telephone at 602-906-4953, ext. 101, email at rickkeyt@keytlaw.com and fax at 602-297-6890. Rick's internet, e-commerce and domain name law web site is KEYTLaw, located at www.keytlaw.com. Communicating with Richard Keyt via email, telephone or otherwise does not cause you to become a client of Rick's or of KEYTLaw, LLC, or cause your communications to be confidential or subject to the attorney client privilege.

This page was last modified on July 22, 2007.

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