What happens when someone rips off your song? The following is an exclusive excerpt from the upcoming music legal guide, The Future of the Music Business (3rd Edition) by industry attorney Steve Gordon (Hal Leonard 2011). Gordon (pictured below) is interviewing copyright attorney Robert Clarida. The book will be available for pre-order in April.
In this interview, copyright attorney Robert Clarida gives a brilliant cost-benefit analysis of starting a legal action for copyright infringement specifically relating to music. Bob is apartner at the leading IP firm Cowan Liebowitz & Latman. He also serves as adjunct professor of Copyright Law at Columbia Law School. Aside from his JD, Bob also earned a PhD in Music Composition. He is the author of Copyright Law Deskbook (BNA 2009) and also edited this book.
SG: Hi Bob, let's suppose that a potential client calls you, introduces himself and says “I heard a song on the radio and it is almost the same as my song!" Take us through the conversation you would have with the client. What would your preliminary questions be?
BC: First, I would want to hear the songs, but I see that's your next question so I'll get to it in a minute. Assuming the songs are similar, it would be essential to establish that the client's song was actually somehow made accessible to the defendant. No matter how similar two songs are, there's no copyright infringement if the second song was created independently, without ever having heard the first one. Copyright infringement requires copying, and you can't copy something you never heard. A lot of infringement cases fail on this basis, because frequently the client has not released his or her song commercially in a big way—maybe they've played it at a few gigs, or it was on the local radio station once, or maybe it's on their MySpace or Facebook page, maybe you can even buy it on iTunes. In those kinds of cases it can very hard to establish that there was a “reasonable opportunity" for the defendant to hear the song, which is what the law requires. Sure, it's theoretically possible, but “mere possibility" isn't enough, and speculation isn't enough.
But if there was a “reasonable opportunity" for defendant to hear the song, the case can go forward—even if the defendant claims they didn't actually hear the song (as of course they will). So let's say the client was an opening act for the defendant one night, and played the song at the gig, they have a video of it that their mother took, whatever. The defendant would clearly have a reasonable opportunity to have heard the song, even if they might say they were out in the tour bus relaxing while the opening act was on. That's just a credibility question, of whether you believe defendant's story. Clearly they had a reasonable opportunity, and it will be up to the jury to decide whom to believe.
Frequently, the client will have sent demos of the song to various record labels, handed a demo to a producer at a party, things like that. In those cases, you really have to establish a connection, or a “channel of communication," between the person who got the demo and the creative team that made the record. Just sending something to the mailroom of a big label is not enough to establish access as to every subsequent record that label releases, or even any record by that label. The courts call this “bare corporate receipt" and it never succeeds in establishing access.
If there is “widespread dissemination" of a song, however, meaning extensive airplay, access is established. The George Harrison case over “He's So Fine" and the Michael Bolton case over the Isley Brothers “Love Is a Wonderful Thing" are both examples of that—there's no way a defendant can plausibly say they never heard the earlier record, even though as I recall the Isley's tune was not a huge hit.
SG: Of course you would have to have to hear and compare the two songs, correct? How similar do they have to be for copyright infringement? It is often said there are a finite number of chords in pop music and there are always going to be some similarities to pre-existing songs.
BC: First, there's a kind of sliding scale, related to access. If you have a very clear case of access, less similarity may be needed to show infringement, but if access is really far-fetched, the similarity has to be very compelling. There's even a concept of “striking similarity" some courts have used to say that if two songs are exactly alike in some unusual, quirky way, that can be enough to show access all by itself. For example, if our client had written a song with the word “supercalifragilisticexpialidocious" in it, before Mary Poppins, the mere presence of that word in Mary Poppins would be virtually impossible to explain, except to say it was copied. There's not really a good argument that it was independently created.
But even with a strong or even “striking" similarity there may be no infringement. To take the Mary Poppins example, if the only similarity was that one word, with no rhythmic or melodic or harmonic similarities, the second song would probably still not infringe. One “striking" word may be proof of copying, but that doesn't mean it's proof of infringement. What you need is “substantial similarity" with respect to the protectable elements of the client's song, and one word, even a made-up word, is probably not enough—I think everyone could go out tomorrow and use the word “supercalifragilisticexpialidocious" in a song and they'd be OK.
What you can't do, though, is also take any significant portion of the melody and harmony and rhythm of the Mary Poppins song, because then you're going to have recognizable similarity as to protectable elements. There's a recent case called Bridgeport vs. UMG, involving a hip-hop group called Public Announcement that had made a very inconspicuous use of the lyric and melody of “bow-wow-wow-yippee-yo-yippee-yay" from George Clinton's “Atomic Dog." They were held to be infringers: they took the melody, rhythm and lyric of George Clinton's hook and used in their own song. That was too much, even as part of the background during the fade-out.
Similarly with Michael Bolton, who was held to infringe the Isley Brothers “Love Is a Wonderful Thing" in his song of the same name, although there's really not much similarity besides the lyric and title. There's a great website people should check out, started by Charles Cronin, that's got music clips from the actual songs at issue in virtually every music infringement case ever decided, it's a joint project by Columbia and UCLA at cip.law.ucla.edu. The best way to get a sense of what infringes and what doesn't is to spend some time on that site and get familiar with what the courts have already done. It's hugely instructive, even though you might come away thinking the cases are all over the map, which they arguably are.
One big point I need to make, though, is that a lot of pop songs (and metal songs, and smooth jazz songs, and bluegrass songs, etc.) sound very much alike, simply because people are writing within certain shared patterns and conventions. Some melodic figures and chord progressions which may strike the client as unique and original (because they've never heard them before) are actually pretty common once you start looking for them, and another song with those same features will probably not be infringing, however much the client may feel it's a rip-off. That's why it's usually not enough to have a song that's kinda sorta the same, it's really got to be exactly the same, and for more than just a few notes, to be an infringement. Once you knock out all the commonplace stuff, which the court will do there's often not much left of the claim.
I got a Ph.D. in music composition before I was a lawyer and I can analyze melody and harmony better than most expertwitnesses, at least judging from the expert reports I've seen, but no matter what kind of chart or graph an expert might make to show similarities it's ultimately the ear of a layperson on the jury that has to make the call. If your client can play the two songs back-to-back for ten total strangers, without telling them what result he's looking for, and nine of them call it a rip-off, you've got a case.
If you need to show some color-coded chart made by an expert, think again before bringing the claim.
SG: Once you hear the two songs and assuming you find there is sufficient similarity between the songs for copyright infringement, then who would be the target be? Suppose the offending song was recorded and sung by “Johnny Rapper." Would you only go against Johnny, or his record company and music publisher as well?
BC: Typically, you'd sue as many people as you can plausibly link to the sale of the infringing song: the artist, the label, the publisher, the producer; and there's often several publishers, and maybe several producers, so you'd put them all in the caption. Probably not iTunes or Wal-Mart—although retailers are often sued in other kinds of copyright cases, like with fabric designs for example, you don't see it so much in music claims. Clearly they are distributing the infringing work, though, and making money at it, so there's no reason the law shouldn't reach them. Maybe we'll start seeing more of that, since record sales are being concentrated in such few places now.
SG: I suppose the very next conversation with the client is “Is it worth it?" For instance, would you recommend sending a “demand" before filing a lawsuit to save money, and if so what would that letter say?
BC: Yes, I would send a demand letter in almost every case, unless there was some reason to think that the defendant would react by starting a declaratory judgment action in some distant place. Usually, a defendant in a case like this will not do that, because they will hope and expect that it can all go away either by ignoring it or throwing a little money at it, certainly less than they'd have to spend on litigating. So they probably won't start a lawsuit. The demand letter will basically say what your claim is: the client is the owner of copyright in a song called XYZ, registered in the Copyright Office no. PA1234567. If it's not registered, now is the time to register it; you may even want to register on an expedited “special handling" basis before you send out your demand letter, to make the letter more impactful. You will then go on to identify the infringing song, say that it is copied from and substantially similar to protectable elements of the client's song XYZ, and that it therefore violates the Copyright Act, 17 U.S.C. 101 et seq. Then comes the demand: the defendant must stop all further use and exploitation of the song, account for all money received to date from exploitation of the song, and pay a sum not less than the amount they've made to date or they will act at their peril.
SG: In your experience, what is the likelihood that a strong letter will result in a tangible benefit for the client? Or is it most often the case that such letters are ignored and nothing will happen unless a lawsuit is filed?
BC: It depends on a lot of things. If you have a really strong case, and the defendant is being represented by a responsible grown-up, and you have a credible copyright lawyer writing the letter, there can be a quick settlement. I've certainly seen that happen; it never makes sense for a defendant to pour a bunch of money into a lawsuit if they know they'll have to litigate and they know they'll lose. If the client doesn't seem to have the wherewithal to sue, however, or if the case is thin, or if the defendant is just ignoring the problem or reacting to it with bluster rather than rational thought, it will take more than a letter to get them thinking clearly about the spot they're in.
There are middle steps between a demand letter and starting a full-blown lawsuit, though. If the song is on the web somewhere, you can send a DMCA notice to the host of the site on which it appears, and often the host will take it down. If the defendant is hosting its own site, this will obviously not be effective, and even with a third-party host, the defendant could send a counter-notice and get the song put back up, but they may not want to bother to do so. You can draft a complaint, and send to the defendant with a letter saying we plan to file this in X days if we can't resolve our dispute. You can draft a complaint, file it with the court, but not formally serve it on defendants, and say “we have commenced this action, we will serve it on you in X days if etc." This has the advantage of essentially precluding a declaratory judgment action, if you have reason to worry about that (for example, if the defendant is in California and you're in New York, you don't want them to beat you to the courthouse and file in California). Or you can go all the way, formally serve the complaint on defendants with a summons, which starts their clock for having to hire a lawyer and respond within 20 days or they're in default.
SG: Suppose you send the letter but hear nothing back and a lawsuit must be filed, what would you tell the client as to how much money he is likely to recover and how long will it take? Let's focus on timing of recovery first, isn't it true the client may have to wait a long time to see any money. The “He's So Fine Case" against George Harrison took 12 years for a final decision on liability and damages! Is this standard?
BC: It can take a very long time to get a final result from a court: a year or more until you get to a jury, then maybe another year or more until an appeal is argued and decided, if someone appeals, and then maybe another proceeding on remand if the appeal doesn't resolve all the issues. But bear in mind that most cases settle at some point in the process, often fairly early through mediation or simple negotiation. Once the parties start paying tens of thousands every month in legal bills—and they will, if the case is being vigorously litigated -they quickly begin to see the value in settling even if they think they'd ultimately prevail.
SG: Couldn't you try for a preliminary injunction? That could take much less time, prevent the defendant from selling the song, and force a quick settlement?
BC: You could, but that would front-load the expenses in a big way. You'd have to spend those tens of thousands immediately to get a PI ready, and even if you win the PI you'd probably have to post a bond, which the court holds as security in case it turns out that you really don't win and the defendant's business has been halted for no good reason. Sometimes it's warranted, and the leverage can be great if you win because a defendant may have to stop selling a record (or showing a movie with an infringing song in the soundtrack) just as it's taking off, but it's a very expensive proposition. I guess like anything else, if you're willing to take a big risk you might get a big reward.
SG: Now let's talk about damages, just because the client has registered the song doesn't mean they will get the maximum statutory damages of $150,000, correct? What will the client have to prove to get that?
BC: Well, the statutory damage number you mention, $150,000, is the top of the range for willful infringement. So the first thing you'd have to prove would be willfulness, basically meaning that the defendant knew they were ripping off your client and they did it anyway. If the infringement was something less than willful, like where the defendant credibly says “I really didn't know what I was doing was a rip-off, it was just a tune that came into my head" (George Harrison said that, if you read his court transcript), the maximum for statutory damages is $30,000. For any statutory damage award, willful or not, you'd also have to show some kind of connection between the number you're asking for and the actual harm suffered—statutory damages are not supposed to be a windfall. But if the defendant's song has been successful, the client would go for actual damages.
SG: Well, what about actual damages, if the song made a million bucks, and the client wins the case how much does he get?
BC: Actual damages are basically the profits made by the defendant from the infringing song. That can be a huge number, and you don't have to show willfulness or anything, just that there was an infringement and the defendant made profits of X. “Profits" is basically gross revenue less the associated costs, including general overhead (unless the infringement is willful—there are some cases saying the defendant can't deduct general overhead for a willful infringement, so it would pay to prove willfulness even though you don't have to). The court doesn't necessarily award the whole profits number, though, it can only award the profits attributable to the infringement. Where a song is very substantially copied, the court would probably attribute the whole profits to the stolen material, but if the infringement is very short and fleeting, like the little George Clinton reference in the fade-out of the Public Announcement track, the court can and should apportion the profits and only award the amount it can reasonably attribute to the infringement.
SG: If the client registered the song, and he wins the case will the court always award attorneys fees?
BC: No, even if the client registered before the infringement. The best they can know for sure is that they are eligible for an award of attorneys fees, not that they will automatically get them. (If they didn't register before the infringement, or within 90 days of publishing their work, they aren't even eligible for attorneys fees.) Winning parties in copyright cases often get a fee award, but the main issue is whether the defendant's position is “objectively unreasonable." If the defense to an infringement claim is plausible enough to get to a jury trial, meaning that it survives a summary judgment motion, it is probably not objectively unreasonable. Also, the client needs to bear in mind that the defendant can get fees if it wins, and the plaintiff's position is shown to be objectively unreasonable.
SG: Can you give us an idea of what it costs to start a lawsuit for copyright infringement?
BC: As I discussed earlier, there are several intermediate steps between a demand letter and serving a complaint, one of which is to “start a lawsuit" by filing the complaint but not formally serving it. That can often get settlement talks happening, and it gives the parties up to 4 months to work something out before they have to start litigating. You don't have to be rich to do that, but it might cost several thousand dollars to draft a complaint even if the case is very straightforward.
A cease and desist letter is much cheaper, but also puts essentially no pressure on defendants and they can easily blow it off indefinitely if they so choose (again, if they have no responsible grown-ups around). Obviously, the best answer to almost every dispute is a settlement, which is why almost all cases settle. And a settlement is much easier for a defendant to do if they have “deep pockets." So if you're asking for a $50,000 settlement from Goldman Sachs—maybe if they used the client's song on their website or something—that $50,000 is easier for them to part with than it would be for some formerly high-living musician who's now in bankruptcy. I think the depth of the defendant's pockets is more relevant to how much you settle for, rather than whether you take any action at all.
Even if the infringer is broke, you still want them to stop using the client's music. Also, there are other ways to resolve a dispute besides money. Maybe the defendant is an established artist who would give the client credit as a co-writer or producer on the infringing track, or some future track, or agree to record several of the client's tunes on their next album, or something else that would be of value to the client but would not involve the defendant writing a big check. Often people don't think about these sorts of proposals until the lawsuit is underway and there's a mediation or settlement conference, but there's no reason to wait that long. Unless you want to spend more money on your lawyer, which I certainly don't want to discourage.
In this interview, copyright attorney Robert Clarida gives a brilliant cost-benefit analysis of starting a legal action for copyright infringement specifically relating to music. Bob is apartner at the leading IP firm Cowan Liebowitz & Latman. He also serves as adjunct professor of Copyright Law at Columbia Law School. Aside from his JD, Bob also earned a PhD in Music Composition. He is the author of Copyright Law Deskbook (BNA 2009) and also edited this book.
SG: Hi Bob, let's suppose that a potential client calls you, introduces himself and says “I heard a song on the radio and it is almost the same as my song!" Take us through the conversation you would have with the client. What would your preliminary questions be?
BC: First, I would want to hear the songs, but I see that's your next question so I'll get to it in a minute. Assuming the songs are similar, it would be essential to establish that the client's song was actually somehow made accessible to the defendant. No matter how similar two songs are, there's no copyright infringement if the second song was created independently, without ever having heard the first one. Copyright infringement requires copying, and you can't copy something you never heard. A lot of infringement cases fail on this basis, because frequently the client has not released his or her song commercially in a big way—maybe they've played it at a few gigs, or it was on the local radio station once, or maybe it's on their MySpace or Facebook page, maybe you can even buy it on iTunes. In those kinds of cases it can very hard to establish that there was a “reasonable opportunity" for the defendant to hear the song, which is what the law requires. Sure, it's theoretically possible, but “mere possibility" isn't enough, and speculation isn't enough.
But if there was a “reasonable opportunity" for defendant to hear the song, the case can go forward—even if the defendant claims they didn't actually hear the song (as of course they will). So let's say the client was an opening act for the defendant one night, and played the song at the gig, they have a video of it that their mother took, whatever. The defendant would clearly have a reasonable opportunity to have heard the song, even if they might say they were out in the tour bus relaxing while the opening act was on. That's just a credibility question, of whether you believe defendant's story. Clearly they had a reasonable opportunity, and it will be up to the jury to decide whom to believe.
Frequently, the client will have sent demos of the song to various record labels, handed a demo to a producer at a party, things like that. In those cases, you really have to establish a connection, or a “channel of communication," between the person who got the demo and the creative team that made the record. Just sending something to the mailroom of a big label is not enough to establish access as to every subsequent record that label releases, or even any record by that label. The courts call this “bare corporate receipt" and it never succeeds in establishing access.
If there is “widespread dissemination" of a song, however, meaning extensive airplay, access is established. The George Harrison case over “He's So Fine" and the Michael Bolton case over the Isley Brothers “Love Is a Wonderful Thing" are both examples of that—there's no way a defendant can plausibly say they never heard the earlier record, even though as I recall the Isley's tune was not a huge hit.
SG: Of course you would have to have to hear and compare the two songs, correct? How similar do they have to be for copyright infringement? It is often said there are a finite number of chords in pop music and there are always going to be some similarities to pre-existing songs.
BC: First, there's a kind of sliding scale, related to access. If you have a very clear case of access, less similarity may be needed to show infringement, but if access is really far-fetched, the similarity has to be very compelling. There's even a concept of “striking similarity" some courts have used to say that if two songs are exactly alike in some unusual, quirky way, that can be enough to show access all by itself. For example, if our client had written a song with the word “supercalifragilisticexpialidocious" in it, before Mary Poppins, the mere presence of that word in Mary Poppins would be virtually impossible to explain, except to say it was copied. There's not really a good argument that it was independently created.
But even with a strong or even “striking" similarity there may be no infringement. To take the Mary Poppins example, if the only similarity was that one word, with no rhythmic or melodic or harmonic similarities, the second song would probably still not infringe. One “striking" word may be proof of copying, but that doesn't mean it's proof of infringement. What you need is “substantial similarity" with respect to the protectable elements of the client's song, and one word, even a made-up word, is probably not enough—I think everyone could go out tomorrow and use the word “supercalifragilisticexpialidocious" in a song and they'd be OK.
What you can't do, though, is also take any significant portion of the melody and harmony and rhythm of the Mary Poppins song, because then you're going to have recognizable similarity as to protectable elements. There's a recent case called Bridgeport vs. UMG, involving a hip-hop group called Public Announcement that had made a very inconspicuous use of the lyric and melody of “bow-wow-wow-yippee-yo-yippee-yay" from George Clinton's “Atomic Dog." They were held to be infringers: they took the melody, rhythm and lyric of George Clinton's hook and used in their own song. That was too much, even as part of the background during the fade-out.
Similarly with Michael Bolton, who was held to infringe the Isley Brothers “Love Is a Wonderful Thing" in his song of the same name, although there's really not much similarity besides the lyric and title. There's a great website people should check out, started by Charles Cronin, that's got music clips from the actual songs at issue in virtually every music infringement case ever decided, it's a joint project by Columbia and UCLA at cip.law.ucla.edu. The best way to get a sense of what infringes and what doesn't is to spend some time on that site and get familiar with what the courts have already done. It's hugely instructive, even though you might come away thinking the cases are all over the map, which they arguably are.
One big point I need to make, though, is that a lot of pop songs (and metal songs, and smooth jazz songs, and bluegrass songs, etc.) sound very much alike, simply because people are writing within certain shared patterns and conventions. Some melodic figures and chord progressions which may strike the client as unique and original (because they've never heard them before) are actually pretty common once you start looking for them, and another song with those same features will probably not be infringing, however much the client may feel it's a rip-off. That's why it's usually not enough to have a song that's kinda sorta the same, it's really got to be exactly the same, and for more than just a few notes, to be an infringement. Once you knock out all the commonplace stuff, which the court will do there's often not much left of the claim.
I got a Ph.D. in music composition before I was a lawyer and I can analyze melody and harmony better than most expertwitnesses, at least judging from the expert reports I've seen, but no matter what kind of chart or graph an expert might make to show similarities it's ultimately the ear of a layperson on the jury that has to make the call. If your client can play the two songs back-to-back for ten total strangers, without telling them what result he's looking for, and nine of them call it a rip-off, you've got a case.
If you need to show some color-coded chart made by an expert, think again before bringing the claim.
SG: Once you hear the two songs and assuming you find there is sufficient similarity between the songs for copyright infringement, then who would be the target be? Suppose the offending song was recorded and sung by “Johnny Rapper." Would you only go against Johnny, or his record company and music publisher as well?
BC: Typically, you'd sue as many people as you can plausibly link to the sale of the infringing song: the artist, the label, the publisher, the producer; and there's often several publishers, and maybe several producers, so you'd put them all in the caption. Probably not iTunes or Wal-Mart—although retailers are often sued in other kinds of copyright cases, like with fabric designs for example, you don't see it so much in music claims. Clearly they are distributing the infringing work, though, and making money at it, so there's no reason the law shouldn't reach them. Maybe we'll start seeing more of that, since record sales are being concentrated in such few places now.
SG: I suppose the very next conversation with the client is “Is it worth it?" For instance, would you recommend sending a “demand" before filing a lawsuit to save money, and if so what would that letter say?
BC: Yes, I would send a demand letter in almost every case, unless there was some reason to think that the defendant would react by starting a declaratory judgment action in some distant place. Usually, a defendant in a case like this will not do that, because they will hope and expect that it can all go away either by ignoring it or throwing a little money at it, certainly less than they'd have to spend on litigating. So they probably won't start a lawsuit. The demand letter will basically say what your claim is: the client is the owner of copyright in a song called XYZ, registered in the Copyright Office no. PA1234567. If it's not registered, now is the time to register it; you may even want to register on an expedited “special handling" basis before you send out your demand letter, to make the letter more impactful. You will then go on to identify the infringing song, say that it is copied from and substantially similar to protectable elements of the client's song XYZ, and that it therefore violates the Copyright Act, 17 U.S.C. 101 et seq. Then comes the demand: the defendant must stop all further use and exploitation of the song, account for all money received to date from exploitation of the song, and pay a sum not less than the amount they've made to date or they will act at their peril.
SG: In your experience, what is the likelihood that a strong letter will result in a tangible benefit for the client? Or is it most often the case that such letters are ignored and nothing will happen unless a lawsuit is filed?
BC: It depends on a lot of things. If you have a really strong case, and the defendant is being represented by a responsible grown-up, and you have a credible copyright lawyer writing the letter, there can be a quick settlement. I've certainly seen that happen; it never makes sense for a defendant to pour a bunch of money into a lawsuit if they know they'll have to litigate and they know they'll lose. If the client doesn't seem to have the wherewithal to sue, however, or if the case is thin, or if the defendant is just ignoring the problem or reacting to it with bluster rather than rational thought, it will take more than a letter to get them thinking clearly about the spot they're in.
There are middle steps between a demand letter and starting a full-blown lawsuit, though. If the song is on the web somewhere, you can send a DMCA notice to the host of the site on which it appears, and often the host will take it down. If the defendant is hosting its own site, this will obviously not be effective, and even with a third-party host, the defendant could send a counter-notice and get the song put back up, but they may not want to bother to do so. You can draft a complaint, and send to the defendant with a letter saying we plan to file this in X days if we can't resolve our dispute. You can draft a complaint, file it with the court, but not formally serve it on defendants, and say “we have commenced this action, we will serve it on you in X days if etc." This has the advantage of essentially precluding a declaratory judgment action, if you have reason to worry about that (for example, if the defendant is in California and you're in New York, you don't want them to beat you to the courthouse and file in California). Or you can go all the way, formally serve the complaint on defendants with a summons, which starts their clock for having to hire a lawyer and respond within 20 days or they're in default.
SG: Suppose you send the letter but hear nothing back and a lawsuit must be filed, what would you tell the client as to how much money he is likely to recover and how long will it take? Let's focus on timing of recovery first, isn't it true the client may have to wait a long time to see any money. The “He's So Fine Case" against George Harrison took 12 years for a final decision on liability and damages! Is this standard?
BC: It can take a very long time to get a final result from a court: a year or more until you get to a jury, then maybe another year or more until an appeal is argued and decided, if someone appeals, and then maybe another proceeding on remand if the appeal doesn't resolve all the issues. But bear in mind that most cases settle at some point in the process, often fairly early through mediation or simple negotiation. Once the parties start paying tens of thousands every month in legal bills—and they will, if the case is being vigorously litigated -they quickly begin to see the value in settling even if they think they'd ultimately prevail.
SG: Couldn't you try for a preliminary injunction? That could take much less time, prevent the defendant from selling the song, and force a quick settlement?
BC: You could, but that would front-load the expenses in a big way. You'd have to spend those tens of thousands immediately to get a PI ready, and even if you win the PI you'd probably have to post a bond, which the court holds as security in case it turns out that you really don't win and the defendant's business has been halted for no good reason. Sometimes it's warranted, and the leverage can be great if you win because a defendant may have to stop selling a record (or showing a movie with an infringing song in the soundtrack) just as it's taking off, but it's a very expensive proposition. I guess like anything else, if you're willing to take a big risk you might get a big reward.
SG: Now let's talk about damages, just because the client has registered the song doesn't mean they will get the maximum statutory damages of $150,000, correct? What will the client have to prove to get that?
BC: Well, the statutory damage number you mention, $150,000, is the top of the range for willful infringement. So the first thing you'd have to prove would be willfulness, basically meaning that the defendant knew they were ripping off your client and they did it anyway. If the infringement was something less than willful, like where the defendant credibly says “I really didn't know what I was doing was a rip-off, it was just a tune that came into my head" (George Harrison said that, if you read his court transcript), the maximum for statutory damages is $30,000. For any statutory damage award, willful or not, you'd also have to show some kind of connection between the number you're asking for and the actual harm suffered—statutory damages are not supposed to be a windfall. But if the defendant's song has been successful, the client would go for actual damages.
SG: Well, what about actual damages, if the song made a million bucks, and the client wins the case how much does he get?
BC: Actual damages are basically the profits made by the defendant from the infringing song. That can be a huge number, and you don't have to show willfulness or anything, just that there was an infringement and the defendant made profits of X. “Profits" is basically gross revenue less the associated costs, including general overhead (unless the infringement is willful—there are some cases saying the defendant can't deduct general overhead for a willful infringement, so it would pay to prove willfulness even though you don't have to). The court doesn't necessarily award the whole profits number, though, it can only award the profits attributable to the infringement. Where a song is very substantially copied, the court would probably attribute the whole profits to the stolen material, but if the infringement is very short and fleeting, like the little George Clinton reference in the fade-out of the Public Announcement track, the court can and should apportion the profits and only award the amount it can reasonably attribute to the infringement.
SG: If the client registered the song, and he wins the case will the court always award attorneys fees?
BC: No, even if the client registered before the infringement. The best they can know for sure is that they are eligible for an award of attorneys fees, not that they will automatically get them. (If they didn't register before the infringement, or within 90 days of publishing their work, they aren't even eligible for attorneys fees.) Winning parties in copyright cases often get a fee award, but the main issue is whether the defendant's position is “objectively unreasonable." If the defense to an infringement claim is plausible enough to get to a jury trial, meaning that it survives a summary judgment motion, it is probably not objectively unreasonable. Also, the client needs to bear in mind that the defendant can get fees if it wins, and the plaintiff's position is shown to be objectively unreasonable.
SG: Can you give us an idea of what it costs to start a lawsuit for copyright infringement?
BC: As I discussed earlier, there are several intermediate steps between a demand letter and serving a complaint, one of which is to “start a lawsuit" by filing the complaint but not formally serving it. That can often get settlement talks happening, and it gives the parties up to 4 months to work something out before they have to start litigating. You don't have to be rich to do that, but it might cost several thousand dollars to draft a complaint even if the case is very straightforward.
A cease and desist letter is much cheaper, but also puts essentially no pressure on defendants and they can easily blow it off indefinitely if they so choose (again, if they have no responsible grown-ups around). Obviously, the best answer to almost every dispute is a settlement, which is why almost all cases settle. And a settlement is much easier for a defendant to do if they have “deep pockets." So if you're asking for a $50,000 settlement from Goldman Sachs—maybe if they used the client's song on their website or something—that $50,000 is easier for them to part with than it would be for some formerly high-living musician who's now in bankruptcy. I think the depth of the defendant's pockets is more relevant to how much you settle for, rather than whether you take any action at all.
Even if the infringer is broke, you still want them to stop using the client's music. Also, there are other ways to resolve a dispute besides money. Maybe the defendant is an established artist who would give the client credit as a co-writer or producer on the infringing track, or some future track, or agree to record several of the client's tunes on their next album, or something else that would be of value to the client but would not involve the defendant writing a big check. Often people don't think about these sorts of proposals until the lawsuit is underway and there's a mediation or settlement conference, but there's no reason to wait that long. Unless you want to spend more money on your lawyer, which I certainly don't want to discourage.
