Page 126 - Intellectual Property Disputes

the court finds that the use of the counterfeit mark was willful, the plaintiff may elect, prior to the court
rendering final judgment, to recover not more than $1 million per counterfeit mark per type of goods or
services sold, offered for sale, or distributed, as the court considers just. fn 73 A counterfeit mark is
defined as

a counterfeit of a mark that is registered on the principal register in the U.S. Patent and
Trademark Office for such goods or services sold, offered for sale, or distributed and that is in
use, whether or not the person against whom relief is sought knew such mark was so registered;
or (ii) a spurious designation that is identical with, or substantially indistinguishable from a
designation as to which the remedies . . . are made available . . . fn 74

With respect to domain names, the plaintiff may elect, prior to the court’s entry of final judgment, to
recover in lieu of actual damages or profits, an award of statutory damages in the amount of not less than
$1,000 and not more than $100,000 per domain name, as the court considers just. fn 75

Statutory Damages for Copyrights

The Copyright Act allows the plaintiff to obtain statutory damages if the copyright owner is unable to
prove its actual damages or the defendant’s profits. The statutory amount of damages is to be in a sum of
not less than $750 or more than $30,000 as the court considers just . . . In a case in which the copyright
owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the
court, in its discretion, may increase the award of statutory damages to a sum of not more than $150,000.
In a case in which the infringer sustains the burden of proving, and the court finds that such infringer
was not aware and had no reason to believe that his or her acts constituted an infringement, the court, in
its discretion, may reduce the award of statutory damages to a sum of not less than $200. fn 76

Several copyright court decisions have revolved around the issue of statutory damages. In Bryant v.
Media Right Productions, Inc., fn 77 the Federal Circuit addressed the definition of a work in copyright
infringement when calculating statutory damages. In the case, which involved 2 albums containing 10
songs each, the district court ruled each album was a compilation and, therefore, the plaintiff was
entitled to only 1 award of statutory damages per album. Under this decision, including consideration of
the defendant’s proof of innocence, the court awarded $2,400 in statutory damages. The plaintiffs
appealed, arguing that each song was a work because each song has "independent economic value," and
the proper calculation of statutory damages was for all 20 songs on the 2 albums. The Federal Circuit
affirmed the district court’s opinion and found that a copyright owner was only entitled to statutory
damages based on 1 infringing use for an album or compilation, regardless of the fact that each of the
individual songs may have been registered as an individual copyright. The Federal Circuit has never
adopted the independent economic value test (from the First Circuit, Gamma Audio & Video, Inc. fn 78 )

fn 73 15 USC 1117(c)(2).

fn 74 15 USC 1116(d).

fn 75 15 USC 1117(d).

fn 76 17 USC 504.

fn 77 Bryant v. Media Right Prods., 603 F.3d 135 (2d Cir. 2010). The copyrights at issue are 20 songs contained on 2 albums.

fn 78 Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106 (1st Cir. 1993).

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