By Robert Cantrell and Jose Jimenez
Business owners that are in the practice of using their own photographs and artwork in their advertising or as part of their product offering should routinely protect their creative works by securing copyright registrations. Although, works that are created and published are automatically protected by copyright law, damages and attorney’s fees cannot be sought until the creator/author secures a registration or at least a pending copyright application with the Copyright Office. Our advice is to register early as many works as possible to maximize damages. Currently the filing fee is about $65, and the process can take as little as two months if the copyright examiner had no objections.
Infringement or Enforcement –Federal Court or Copyright Claims Board (CCB)?
Damages for infringed copyrighted works can run upwards $15K per work however it is capped at $30K unless you go to Federal Court to prove actual damages.
Federal Court – Once you file and serve your complaint, the risk becomes that you are tied up in until the judge or defendant let you out. Damages can be higher and you can win attorney’s fees as well by proving willfulness. This option can take up to 2 years and cost upwards of $100K in attorney fees.
CCB – Under the CASE Act of 2019 (launched in June 2022), a CR owner can adjudicate CR claims under $5K (small claims track) or can seek actual damages or statutory damages— capped at $30K for all ($15K per work).
- Advantages of CCB Option– faster and cheaper than federal court for both parties and you are not required to have a lawyer, but it is advisable as it is treated a lot like a mini-trial with some discovery and pre/post discovery conferences and potential hearing with the judge. The proceeding is fast and can be completed virtually via Web conferencing. It may take up to 90 days to serve the opposing party.
- Disadvantages of CCB Option- defendant/respondent can opt out of process and then you are forced to go to Federal Court (however they may choose to stay in once they see your complaint). Plaintiffs cannot allege willfulness and the decision is appealable in rare cases. These cases, like district court, do not have precedential value outside the parties involved. Respondents have 60 days to answer once served.
Caution: A CCB officer still has a lot of discretion on how much to award in damages so you have to plead sufficient facts and provide proof of infringement while knowing that the defendant can still plead affirmative defenses (fair use, unclean hands, etc..).
****Declaratory Judgment – can be used by any party to declare their use as non-infringing by the CCB—a cheaper way to find out without spending a lot of money and being sued.
Settlement – may be a faster and cheaper path for a plaintiff to reach a settlement and secure a licensee of their works by using the CCB filing as leverage.
Note: A plaintiff in a CCB filing does not have to be an expert on CR case law (as you would in a Federal Court filing) as the CCB officer is knowledgeable, but it does help. CCB will give you a chance to correct your initial filing if it’s incorrect (60 days) but may dismiss it afterwards if the complaint is still incorrect. You can still file it again so you are not prejudiced by an early dismissal. Generally, CCB decisions are not published but can be found on the “dockets.CCB.gov” website.
Feel free to give our Intellectual Property team a call at (321) 428-2826 should you have any questions; we are always at your service.
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*This post is purely informational and does not constitute legal advice. Please contact our team to discuss your personal needs or to book a Consultation.
