Sunstein Copyright Litigation Strategy

Our success in copyright litigation comes from our understanding the way copyright law is ever changing to keep pace with technological advances. Our extensive trial experience and facility with technology issues give us an edge in developing powerful copyright litigation strategies.

We know copyright. Our copyright practice continually confronts complex legal and technical issues. Our ability to devise focused, strategic direction for copyright litigation enhances the prospects for success at trial, in alternative dispute resolution, or in settlement. Copyright cases often turn on technical defenses and contain traps for the unwary. Our experience in this field assures our clients aggressive and informed representation, which can turn those potential hazards to advantage. In one case involving a wall mural in a university museum, we identified an important flaw arising from the plaintiff’s improper use of a copyright notice under then-existing copyright law. This flaw, we successfully argued, injected the work into the public domain with the result that our client could not be liable for infringement. In another case, involving collectable figurines, we cited the legal doctrines of merger and scenes a faire in convincing our opponent that its copyrighted work was not protectable because the features it shared with our client’s products were derived from nature, and were not original.

Copyright litigation is often expensive in relation to the value of the assets in contest, such as an academic article, short story, or piece of visual art, which may have commercial worth that is difficult to quantify. Even under these circumstances, successful copyright litigants can vindicate their rights by using the fee-shifting provisions of the copyright statute to obtain an award of attorney’s fees. The statute also entitles a plaintiff to seek statutory damages in a fixed amount rather than proving actual damages which may amount to less. We are thoroughly immersed in copyright law, and advise our clients in ways that leverage this knowledge.

We understand the technology. Technology is second nature for our attorneys, many of whom have science and engineering backgrounds. Copyright litigation is often bound up with computer science and digital technology. We have represented clients in matters involving the protectability of source code, the interplay between the Copyright Act and shrink-wrap licenses, file-sharing, and the effect of recent legislation barring the circumvention of measures that control access to a protected work. Our attorneys have worked with leading experts to assess whether complex computer software is original and protectable by copyright or merely reflects common programming practice or functional requirements. We take pride in our ability to present the issues clearly and simply to a jury.

We work with the right experts. Our relationships with leading research institutions and universities are valuable resources in selecting the best expert witness for the case. The choice of an expert can be of paramount importance, and we address this challenge early in the litigation. Experts offer invaluable help in evaluating the strength of a copyright infringement claim and in lending focus to pretrial discovery. Their testimony can tilt the contest at both the summary judgment level and at trial. Such testimony may address such issues as probative similarity (that is, whether sufficient similarities exist between the works to infer copying) or the calculation of revenues and profits in assessing damages.

We think expansively. Our facility in all areas of intellectual property law has benefited our clients in copyright litigation matters. A recent success came in a case that originated as a trademark dispute. We identified a strong copyright claim based on the trademark plaintiff’s creation of a derivative-work film based on our client’s underlying work, and flipped our client’s position from trademark defendant to copyright plaintiff. In a case involving CAD-CAM software used in the paper box industry, we combined IP claims (copyright infringement and trade secret misappropriation) with other commercial claims (breach of contract and fraud) to effectively advance our client’s case.

We aim to resolve disputes without litigation. Before filing a suit for copyright infringement, we consider the pros and cons of a demand letter notifying the defendant of our client’s claims. The letter can provide the basis for a claim of willful infringement, thus increasing damages. A demand letter is particularly valuable if it produces a favorable settlement for our client without the greater expense of litigation. A demand letter may not be advantageous, however, when the delay in awaiting the defendant’s response may decrease the chances of obtaining injunctive relief, or when giving the defendant more time to prepare its defense (and to continue infringement) would outweigh possible benefits. While the risk that the defendant receiving a demand letter may initiate a declaratory judgment action in an unfavorable venue can be mitigated by careful crafting of the demand letter or other strategies, we are careful to consider this risk. When our clients are on the receiving end of demand letters, our knowledge of copyright law often enables us to efficiently dispatch such claims and reduce the possibility of litigation.

We know the forum and the possibilities. Copyright infringement is litigated in the federal district courts, where we have extensive experience. We try to steer cases to a jurisdiction and venue that puts our client in the best position, and we have particular experience analyzing jurisdictional issues in connection with the Internet. We consider whether the complaint should be accompanied by a motion for temporary restraining order (TRO), preliminary injunction and/or a seizure order, which is implemented by a U.S. Marshal and can be used to effect seizure of the infringing items. We have used such motions to shut down an infringer’s business in appropriate cases. In one case, we filed suit in federal court in North Carolina and asked the court for an immediate hearing. Within days, we presented our case at a hearing in which the court issued a TRO (which later became a preliminary injunction) that prevented the opposing party from distributing the infringing product.

We aggressively conduct discovery. We have extensive experience in pursuing discovery in cases involving complex technology to get the information needed to pursue our client’s claims or defenses. In a suit relating to computer software, we worked with experts to evaluate whether source code contained elements that were included because they were required by industry standards or otherwise were dictated by function. We have vigorously litigated protective orders regarding confidential information to ensure that our client’s confidential and trade secret information is adequately protected.

We apply pressure through summary judgment. We always consider whether summary judgment is appropriate. Often the issue of what is protectable under copyright law may be decided on summary judgment and may result in early disposition of the case. Even if this procedure does not fully resolve the case, the court’s rulings can narrow the issues to be litigated. Presenting the arguments to the judge early on can also be useful for framing the issues for future determination.

We persuade. Copyright litigation often involves both complex law and complex technology. It is all the more important that the issues for the jury be framed clearly and compellingly. Early on in every case, we develop a theme in order to present a persuasive story for the finder of fact. Our experience in presenting complex technical issues to a jury in a straightforward, convincing manner has delivered winning results for our clients. The consistent and energetic employment of the sound litigation practices outlined here provides our clients with the highest quality of representation.

If you have any questions about copyright litigation or would like to discuss the handling of copyright litigation in the context of your business, contact a member of our Litigation Practice Group.