Friday, November 04, 2005

Statutory Damages

A recent decision from a federal court in Arizona, Coogan v. Avnet, Inc., 2005 WL 2789311 (D. Az. October 24, 2005), raises the pesky issue of multiple awards of statutory damages. Here's what the statute says:

(c) Statutory Damages. -
(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.

Unlike the 1909 Act, which permitted awards based on the number of infringing copies, the 1976 Act bases awards on the number of works, a fundamental shift: if a novel is infringed by selling 5 million copies, there is only one award (although here most likely actual damages would be sought).

It is the final sentence of Section 504(c)(1) that is of interest: "For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work." This provision is intended to further the fundamental shift from infringing copy to work: without the final sentence, one could multiply the number of awards, say in the case of an encyclopedia, by basing the award on each entry, or, for works that are frequently updated, by claiming infringement of each revision.

In the litigation, the question of a per track or per CD award was also raised, and there are many permutations, such as: (1) each track is owned by plaintiff who also owns the CD; (2) some tracks are owned by different parties from the owner of copyright in the CD; (3) the underlying musical composition is owned by a different party; (4) the underlying musical composition is owned by the same party as owns the sound recording. Careful scrutiny of Judge Rakoff's laconic opinions is necessary to sort these permutations out.

Questions also arise due to the lack of a definition of the term "work" in Section 504(c)(1), an omission that occurred probably because Congress thought such a definition unnecessary, especially in light of the final sentence. In Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990), the court created the "live their own copyright life" approach as a way to separate out claims on what were clearly derivative versions of Mickey and Minnie Mouse. Characters as characters aren't registrable.

Other issues will arise with a TV series: is every season of "Curb Your Enthusiasm" a single work or is each show the work? One thing is clear from the legislative history and that is that how a work is registered is not determinative of the number of awards. This is so because one can get multiple derivative work registrations. But what if one avails oneself of the ability to register on a single form a large collection of photographs as a group? Is this collection a "compilation" for Section 504(c)(1) purposes, or is it merely administrative convenience? That was the issue in Coogan.

The conditions for group registration of photographs are spelled out in Copyright Office instructions linked here. The issue of registration for photographs was a hot one in 1993 and 1994 during the debates on the Copyright Reform Act of 1993. Thereafter, the Copyright Office worked together with photographers to solve the very difficult issues raised by the fact of photographers taking so many pictures a year.

The photographs in Coogan involved a single photographer, a single subject, and a single location (the CEO of a company), something the court seemed to find dispositive, but I don't. Unlike Powell, where there was a single work that was then varied, each photograph in Coogan should be regarded as a separate work (a new way to look at the subject); the fact of a single registration was for administrative purposes, not because the photographs were regarded as a collection. This is not to say there cannot be cases where a single award for a group of photographs is not appropriate, merely that Coogan is not such a case. Coogan undermines the Office's laudable efforts, achieved after much work.


Anonymous said...

Court have been all over the board on this issue although many of the cases have involved situations where the photographs were registered in conjunction with catalogs, magazines, and books and thus the compilation issue was genuinely at issue. Interestingly enough, there are dispositive opinions at the appellate level in the First and Fourth Circuits but none in the Second and Ninth Circuits. You raise a very good point regarding the legislative and administrative intent that underly the registration of published photographs as groups and unpublished photographs as collections, i.e., to give photographers a cost effective means of registering a large number of individual works. Court that have addressed this issue seem to have focused on the nature of the work and to have largely ignored the intent of the U.S. Copyright Office when promulgating the relevant provisions in the registration rules.

William Patry said...


The catalog cases or other compilations consisting of literary material and pictorial works like photographs present, I think, a good illustration of hopw Section 504(c)(1) is supposed to work. What makes Coogan interesting for me is that there was no compilation, but a group registration. The court fixated on that, I think erroneously, bot from the purpose for the regulation and the Register of Copyright Office's 1965 Report which says (page 136): "Note that the criterion here is the number of distinct 'works' infringed, and not the number of copyrights, exclusive rights, owners, or registrations." Coogan ran afoul of that, I believe.

There is a further tweak, though, that involves the derivative, nor compilation part of the provision, and that is what constitutes a derivative photograph? I it every subsequent photograph of the same subject at the same (or maybe even a later) time, or is each photograph a one-off?

Anonymous said...

With a limited exception, I would say that each photograph stands as its own work. When multiple works of the same subject are taken, the "derivation" is from the subject matter and not from a prior work. One way to analogize this might be to compare a poet who writes ten poems based on his response to the same sunset to a poet who writes one poem and later writes nine more based on the original poem. The ten poems in the first case are not derivative works whereas the nine in the second case would be. The limited exception I would make in the case of photographs would be when a photographer has a camera on a tripod and takes several exposures of a static subject (i.e., in camera duplicates_.

William Patry said...

I agree with Anonymous' analysis, and that's why I think Coogan is incorrectly decided and a good subject for discussion since it teases out an interesting point.