Copyright Complaint Based on Post-Infringement Registration Bars Attorney Fees

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Copyright infringement claims can often be reduced to a formula. In instances where the copyright infringement is less obvious and direct, a copyright owner asserts both a valid copyright registration and a theory of how access occurred and then conjectures that because of the substantial similarity between the two works, it may be concluded that defendant’s work infringes. Such a formula is the basis of a copyright complaint filed this week in the Eastern District of New York by a fine art book designer against Urban Outfitters and its subsidiary, Anthropologie. The copyright registration upon which the case relies was effective February 13, 2009, well after the date of alleged infringement. That’s a problem because the Copyright Statute explicitly prohibits the plaintiff from recovering attorney’s fees or statutory damages when the copyright registration is obtained after infringement.

Here are the facts: Purgatory Pie Press attended the fall 2008 Artists Book Fair in New York. Visiting their booth, an Urban Outfitter representative signed the guest book with effusive praise. According to the complaint, the Urban Outfitter representative was “observed surreptitiously taking pictures using small digital cameras and mobile telephone cameras.” But there is no clarity as to whether the surreptitiously taken pictures were of the disputed work.

The complaint includes a blend of claims, not just copyright. Other claims include unfair competition as well as trademark dilution, which is particularly interesting as there is no assertion that the work at issue rises to the level of a trademark.

The prayer for relief includes a demand for attorney’s fees and damages in the amount of $150,000 (the upper statutory damage limit.) This will be hard for the Plaintiff to obtain given that their post-infringement registration bars both attorney’s fees and statutory damages.

This is a complaint by an angry artist who obviously feels ripped off and is seeking orderly revenge. Unfortunately, there is little likelihood of getting more than an injunction and perhaps some modest, actual monetary damages given the late filing of the copyright application and the absence of the image at issue having been used as a trademark. It is a complaint that expresses the emotion, but fails to have many teeth.

Practice tip: Register those copyrights early and often. Having a registration in hand before an infringement occurs empowers the complaint, making it more fierce. The Copyright Statute favors the proactive.

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