Re: Responsibility for an insert...

At 1:55 PM -0400 5/4/06, J. Noble wrote:
>The hell he does. You're the plaintiff. You have
>to prove damages. A prima facie claim of
>infringement doesn't shift the burden of proof
>on damages.

At 11:31 AM -0700 5/5/06, Jim Donohue wrote:
>(a) That pursuant to 17 U.S.C. § 504(b), Defendants must account for
>and pay over to Plaintiff all of the profits realized by the Defendants from
>the use, competitive advantage gained and distribution of Plaintiffs maps
>attributable to the infringement alleged herein in an amount to be determine
>at trial but believed to exceed $250,000, plus interest and costs. Pursuant
>to 17 U.S.C. § 504(b), the copyright owner is required only to present proof
>of the infringer’s gross revenue, and the infringer must prove its
>deductible expenses and the elements of profit attributable to factors other
>than the copyrighted work.

Busted by pro se counsel. I'm never going to live this down.

504(b) Actual Damages and Profits.-The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the
copyrighted work.

That works just fine when you rip off somebody's novel, slap your name on it, have it published. You add up the sales, and subtract the costs of production, marketing, distribution, and fight over whether to deduct proven returns or the reserve for returns because "profits" in the Copyright Act might not mean the same thing as "earnings" at the SEC. But what if--

Walmart hires a New York advertising agency to work up a new advertising campaign. They put together a 30 second commercial that has ten people of diverse gender, age, and ethnicity smiling and enthusiastically proclaiming, "I shop at Walmart!" The commercial is a big hit. It runs for five years, off and on, in hundreds of local media markets, and is dubbed in a dozen languages for overseas broadcast use, and stills are used in magazine and newspaper ads. Turns out that one three-second clip of one Walmart shopper was shot by a freelancer, and by accident it was filed with some other photographer's signed release and cancelled check. The guy sues before the limitations runs out, proves infringement and that the claim's three-year limitations period captures $1 trillion in gross revenue (net sales actually, but lets not quibble over the allowance for returns).

Now Walmart has to rebut the presumption that $1 trillion in gross revenue is attributable to our plaintiff's 3-second portion of a 30-second commercial. Dumbfounded disbelief lets the jury lop off 3 or 4 zeros, but when and how does Walmart start proving "the elements of profit attributable to factors other than the
copyrighted work." I don't even know what an "element of profit" looks like. I can't even guess, much less imagine how to "prove" by a preponderance of the evidence, which "elements of profit" are attributable to low prices, which to high volume, which to blanketed market
penetration, and which to enterprise
efficiencies. How much can we provably attribute to Sam Walton's genius before we move on to his ambition?

There are a couple of cases suggesting that the plaintiff's initial burden is to prove gross revenues attributable to the infringement -- the assumption of the first sentence qualifying the second. In one case, the court limits the presumption to revenues attributable to the product line that was the subject of the infringing advertisement. But this disregards the plain language of the second sentence.

Microsoft gives away software that opens old WordPerfect files in Word. The MS programmer was dying to get out of the morgue and into the emergency room to work on Windows
Until-Next-Time. He called a buddy at Corel, who didn't think twice before he shot the code to his buddy at Microsoft who dropped it into a Word extension where it belongs. There are no damages at all. Corel would send that code over in sedan if Gates called and asked for it. But if the use is unauthorized, there's no "product line" where you can draw the line. The infringement contributes to the usefulness of Word, which contributes to the usefulness of the Office suite, which contributes to the usefulness of Windows. The infringement contributes to nothing so much as the usefulness of WordPerfect, but Microsoft's presumptive liability is its entire gross revenue.

Thanks for the education Donohue. I pity the guy in your cross-hairs, but I still think you have a lot problems with your case. The defendant, unlike Walmart or Microsoft, can actually drag in the limited number of identifiable former owners of the homes he sold to testify whether the map had any bearing on their decision to give him the listing. The sellers might truthfully testify that "maybe we knew the name from the map, but we asked around; we got a couple estimates; your name came up, but we went with the other guy." More importantly, the map had nothing to do with the willing buyer's offer and willing sellers acceptance that established the value of the house and determined the agent's commission, factors that overwhelm the significance of the map in generating the agent's profit.

John Noble Received on Mon May 08 2006 - 23:15:01 GMT