How JustAnswer Works:

  • Ask an Expert
    Experts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional Answer
    Via email, text message, or notification as you wait on our site.
    Ask follow up questions if you need to.
  • 100% Satisfaction Guarantee
    Rate the answer you receive.

Ask socrateaser Your Own Question

socrateaser
socrateaser, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 33504
Experience:  Retired (mostly)
Type Your Intellectual Property Law Question Here...
socrateaser is online now
A new question is answered every 9 seconds

I created a painting in y2000 and published multiple copies

Resolved Question:

I created a painting in y2000 and published multiple copies of it for sale at the same time. I registered the image this year on April 22. Subsequent to that date I discovered there was illegal use of the image on the internet by various websites, dating back to 2007.

Am I entitled to statutory damages and attorneys fees from these websites that have posted the image (and in one case continues to post it after being notified to take it down)?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Robert McEwen, Esq. replied 1 year ago.

RobertMcEwenEsq : Thank you for using JustAnswer. I am researching your issue and will respond shortly.
RobertMcEwenEsq : I'm sorry to hear about your situation. Registration is retroactive back to the date of publication ONLY for up to 90 days. That means that you cannot sue for infringement and collect damages caused before you registered your copyright UNLESS the registration is within 90 days of the first publication.
RobertMcEwenEsq : You can sue for damages that occur past the date of publication (such as if the website is still active)
RobertMcEwenEsq : But for the publication occurring in the past, I'm afraid you cannot pursue damages, but only injunction.
RobertMcEwenEsq : I know this is probably not what you wanted to hear, but it is the law. I hope that clears things up anyway. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, XXXXX XXXXX luck to you!
Customer: You can sue for damages that occur past the date of publication (such as if the website is still active)
Customer: You said "you can sue for damages that occur past the date of publication."
RobertMcEwenEsq : That is correct.
RobertMcEwenEsq : You can't sue for damages that occurred before you regsitered.
RobertMcEwenEsq : *registered
RobertMcEwenEsq : But you can sue for damages after registration.
RobertMcEwenEsq : So if there is a continuing infringement or new infringements, you can sue for damages for those.
Customer: Since we registered the artwork April 22 and we have verified the infringing use subsequent to that date are these violators subject to statutory damages and legal fees? I didn't understand your answer.
RobertMcEwenEsq : You mention that it occurred back to 2007. You cannot sue for infringement that occurred before the date of registration. But you can send a cease and desist letter, and sue for continued infringement that occurs AFTER the date of registration.
RobertMcEwenEsq : So, for instance, if they had taken it down before your registration, you would have no recourse.
RobertMcEwenEsq : You could not sue in that instance.
RobertMcEwenEsq : But if it is still active AFTER you register, you can sue.
RobertMcEwenEsq : Again, you should send a cease and desist letter, and if they continue, only sue after that because you can show that they continued to publish after knowledge, etc...
RobertMcEwenEsq : I'm sorry?
RobertMcEwenEsq : Why did you feel this was bad service? Did I not answer your question?
RobertMcEwenEsq : Or was there something that I was unclear about?
RobertMcEwenEsq : Please let me know why you feel that this was bad service... I believe that I answered your question, but if there was something that I was unclear about, please let me know.
RobertMcEwenEsq : Are you there? Please note that I am still here, awaiting your response.
RobertMcEwenEsq : Should I continue to await your response, or may I assist the other customers that are waiting?
Customer: please opt out i need another Expert
RobertMcEwenEsq : I'm sorry that you feel this way and did not give me the chance to explain any misunderstanding that you have regarding this. I will opt out to allow someone else to assist you further.
Expert:  socrateaser replied 1 year ago.
Hello,

Different contributor here. How may I assist you today?
Customer: replied 1 year ago.
I created a painting in y2000 and published multiple copies of it for sale at the same time. I registered the image on April 22, 2013. After that date I discovered there was illegal use of the image on the internet by various websites, some dating back to 2007.

Am I entitled to statutory damages and attorneys fees from these websites and bloggers that have posted the image (and in one case continues to post it after being notified to take it down)?

What are my legal rights to this image subsequent to my application for registration date of April 22 2013? Am I entitled to statutory damages against infringers on or after this date?
Expert:  socrateaser replied 1 year ago.
Am I entitled to statutory damages and attorneys fees from these websites and bloggers that have posted the image (and in one case continues to post it after being notified to take it down)?

A: In DEREK ANDREW, INC. v. POOF APPAREL CORP., 528 F.3d 696 (2008), the 9th Circuit Court of Appeals ruled that where there is are continuous and ongoing acts of copyright infringement occurring more than three months (n.b., not 90 days) before the effective date of registration of a copyright, the plaintiff/copyright owner cannot be awarded statutory infringement damages, because they are barred by 17 U.S.C. 412(2). The plaintiff, however can receive actual damages, to the extent that such damages may be proved. The same ruling has been made in some, but not all U.S. Circuits. New Mexico is located in the 10th Circuit, and thus far, no ruling on this issue has been issued. So, as a matter of law, the issue is not yet decided for you -- though the consensus of the courts is certainly that your claim would be barred, to the extent that you cannot demonstrate a new act of infringement occurring within three months of the date of registration.

Concerning the issue of your providing notice of a removal demand, pursuant to the Copyright Act, this is actually an issue of first impression for a federal court. No one has ever considered the issue. And, I can see, at least a colorable argument that once an infringing party is notified of the infringement and a demand to cease and desist takes place, then further infringement may be new infringement -- because the infringing party now knows that there is an infringement, and so is willfully violating the copyright owner's rights.

However, once again, this issue has not yet been considered, so there's no certainty in the outcome -- though I think the argument is a good one.

What are my legal rights to this image subsequent to my application for registration date of April 22 2013? Am I entitled to statutory damages against infringers on or after this date?

A: The issue at this time, as explained above, depends on whether or not there is a new act of infringement, rather than a continuation of prior infringement. And, there is an argument to be made that notice of the infringement after registration, breaks the chain of continuing infringement, and so statutory damages should be available after notice. But, this is a question for a court to decide -- at this time there is simply no answer to the question.

I encourage you to review the Poof decision, cited above, because it carefully explains the issues in detail.

Please let me know if I can clarify anything or further assist.
Customer: replied 1 year ago.
Are you saying that the statutory rights of infringement begin with the copyright registration date in my circumstances and that anyone infringing on my image after the registration date are liable for statutory damages? We are currently waiting the ninety day period for notification of formal registration of the copyright. Do we have to wait for the registration number before we can send a demand letter?
Expert:  socrateaser replied 1 year ago.
Are you saying that the statutory rights of infringement begin with the copyright registration date in my circumstances and that anyone infringing on my image after the registration date are liable for statutory damages?

A: Exactly correct -- unless the infringement is part of a continuous act of infringement that began before the copyright registration date -- in which case, statutory damages remain unavailable, until the infringer commits a new act of infringement.

In the Poof case, the defendant/infringer continued to produce infringing hang tags after the date of registration and remained not liable for statutory damages, because the act was considered a continuing infringement. But, for example, had the defendant started using the infringing material for some other purpose after registration, then statutory damages would apply to that new infringement.

We are currently waiting the ninety day period for notification of formal registration of the copyright. Do we have to wait for the registration number before we can send a demand letter?

A: You can send your demand letter at any time. Remember, you are still entitled to sue for actual damages, connected with infringement occurring at any time in the past, regardless of the date of registration. The registration requirement only applies to statutory damage awards.

Please let me know if I can be of further assistance.
Customer: replied 1 year ago.
Clarification: since this is a non commercial user and there has not been financial loss that we can calculate for a court, we are only interested in sending a demand letter for statutory damages and attorneys fees. Does your answer mean that we must wait until we have the registration number, which will be given in about two months, before we can send the kind of demand letter we are speaking of?
A sidenote: this is a professor with a multiple use website that publishes the works of many writers, including himself. When I sent notice to him to take down my image, he took down his portion of the website for a day, then reposted it in the same form with my image. Does this constitute a new use?
Expert:  socrateaser replied 1 year ago.
Clarification: since this is a non commercial user and there has not been financial loss that we can calculate for a court, we are only interested in sending a demand letter for statutory damages and attorneys fees. Does your answer mean that we must wait until we have the registration number, which will be given in about two months, before we can send the kind of demand letter we are speaking of?

A: You can send a demand letter at any time. The registration will relate back to the date when you submitted the application. The demand letter does not trigger your right to sue. You aren't obligated to send a demand letter. You can just sue without any warning -- though the standard practice for law firms is to send a demand first, because sometimes you can get paid without suing.

A sidenote: this is a professor with a multiple use website that publishes the works of many writers, including himself. When I sent notice to him to take down my image, he took down his portion of the website for a day, then reposted it in the same form with my image. Does this constitute a new use?

A: That's interesting. I think that goes to my argument that once a takedown notice is submitted to an internet service provider, that breaks the chain of continuous infringement. I cannot say definitively that the removal and reposting represents a new infringement, but if I were the judge, that is what I would rule, because it makes sense. There was an absolute break in the continuity of infringement, and the infringer caused that break.

Hope this helps.
Customer: replied 1 year ago.
Thank you.
Expert:  socrateaser replied 1 year ago.
You're welcome.

I hope you will provide a positive rating for my answer so that I may receive appropriate compensation.

Best wishes.
socrateaser, Lawyer
Satisfied Customers: 33504
Experience: Retired (mostly)
socrateaser and 3 other Intellectual Property Law Specialists are ready to help you
Customer: replied 1 year ago.
The most egregious abusers of my registered art images appear to be in other countries. What is involved in going after damages and/or to court against foreign illegal users once we are able to locate them and is it worth it in the long run?

Companies, both those in the U.S. and foreign, have layers of web hosts and other related security systems that protect them from direct contact. I do not have the skill level it takes to unravel the protection that surrounds such companies. Are there investigators who are able to find out the information needed to proceed with legal action?

I have been successful getting images removed from these sites by emailing DMCA notices to host servers. Is it sufficient to send demand letters by email and physical address to these websites via their webhosts as listed in 'who is' searches?
Expert:  socrateaser replied 1 year ago.
The most egregious abusers of my registered art images appear to be in other countries. What is involved in going after damages and/or to court against foreign illegal users once we are able to locate them and is it worth it in the long run?

A: Unfortunately, the only practical means of holding a foreign person or entity liable for copyright infringement, is to sue that person/entity in their jurisdiction. Otherwise, it becomes difficult to enforce any judgment -- because the person/entity is not subject to the powers of a U.S. court or law, and none of their assets are located in the USA. If you were able to ascertain that an infringer has assets located in the USA (accounts or real property), then you could sue in U.S. Federal District Court, assuming that you successfully plead and allege that the foreign person/entity is intentionally directing its infringement into U.S. territory. Otherwise, you could end up with a judgment that the foreign nation wherein the infringer is located refuses to enforce.

The point is that if businesses like Microsoft, Sony, Intel, GM, et. al. have impossible difficulties trying to enforce their intellectual property rights in nations such as China or other non U.S. or EU jurisdictions -- you will likely be "tilting at windmills" attempting to enforce your IP rights.

Companies, both those in the U.S. and foreign, have layers of web hosts and other related security systems that protect them from direct contact. I do not have the skill level it takes to unravel the protection that surrounds such companies. Are there investigators who are able to find out the information needed to proceed with legal action?

A: Yes, but they will charge you a lot of money to discover the source of the infringement. Google, "IP Investigations" to find some service providers. If you decide to use a vendor, obtain a copy of their "curriculum vitae" and a list of cases in which the expert has testified as an expert witness in court. If the firm has no expert witness experience, look elsewhere.

I have been successful getting images removed from these sites by emailing DMCA notices to host servers. Is it sufficient to send demand letters by email and physical address to these websites via their webhosts as listed in 'who is' searches?

A: 17 U.S.C. 512(c)(2)(A), requires that a website provide "the name, address, phone number, and electronic mail address of the agent," for notification of infringement. Sending notice to a generic domain name address is insufficient, under the DMCA, because the law requires the website to expressly provide the email and/or physical address as a prerequisite to receiving safe harbor protection. If there is no DMCA notice provided by the website, then there is no DMCA protection for the website, and no reason for you to send notice (other than as a generic cease and desist), because it won't have any legal effect.

Hope this helps.
socrateaser, Lawyer
Satisfied Customers: 33504
Experience: Retired (mostly)
socrateaser and 3 other Intellectual Property Law Specialists are ready to help you

JustAnswer in the News:

 
 
 
Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.
 
 
 

What Customers are Saying:

 
 
 
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
< Last | Next >
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
  • My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer. Eric Redwood City, CA
  • I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight. Michael Wichita, KS
  • PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent. Three H. Houston, TX
  • Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!! Elaine Atlanta, GA
  • It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem. Tony Apopka, FL
  • Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help. Mary C. Freshfield, Liverpool, UK
 
 
 

Meet The Experts:

 
 
 
  • Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
< Last | Next >
  • http://ww2.justanswer.com/uploads/sosolid007/2010-08-05_070536_Suitpic.jpg Alex Reese's Avatar

    Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
  • http://ww2.justanswer.com/uploads/scottymacesq/2009-6-10_221523_small.jpg Robert McEwen, Esq.'s Avatar

    Robert McEwen, Esq.

    Lawyer

    Satisfied Customers:

    387
    Licensed Texas General Practice Attorney
  • http://ww2.justanswer.com/uploads/tswartz123/2010-02-08_225658_Tommy.jpg Thomas Swartz's Avatar

    Thomas Swartz

    Lawyer

    Satisfied Customers:

    374
    Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
  • http://ww2.justanswer.com/uploads/dkaplun/2009-05-17_173121_headshot_1_2.jpg Dimitry K., Esq.'s Avatar

    Dimitry K., Esq.

    Attorney

    Satisfied Customers:

    371
    I assist my clients with IP questions that arise in their daily course of doing business.
  • http://ww2.justanswer.com/uploads/personwilt/2010-1-10_164828_person1.jpg Wilton A. Person's Avatar

    Wilton A. Person

    Lawyer

    Satisfied Customers:

    339
    MBA, Experienced and Knowledgeable in Intellectual Property Law
  • http://ww2.justanswer.com/uploads/BA/bart0358/2012-1-23_232424_1056.64x64.JPG BartEsq's Avatar

    BartEsq

    Researcher

    Satisfied Customers:

    192
    Juris Doctor
  • http://ww2.justanswer.com/uploads/IP/ipesq/2012-1-9_164431_RetouchPortraitHighResCopy.64x64.jpg ipesq's Avatar

    ipesq

    Lawyer

    Satisfied Customers:

    134
    Specializing in patent prosecution, trademark and copyright registration/enforcement.
 
 
 

Related Intellectual Property Law Questions