By Gerard P. Fox, Esq.
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| Gerard P. Fox, Esq. and his firm handle general business, contract and IP litigation across the entertainment industry and beyond. |
Attorney Gerard P. Fox has acted as lead trial counsel for corporate clients such as Vivendi and Clear Channel. Mr. Fox has also represented high profile entertainers including Madonna, Anita Baker and the Isley Brothers.
From hiring experts to damage awards, in his post below, Mr. Fox shares some very useful tips from his years of copyright litigation experience. For a personalized consultation, contact the Law Offices of Gerard Fox and also check out his Fox's Litigation Strategies Blog.
1.
In my opinion the Federal District Courts have
been improperly applying a quantitative and not qualitative copyright analysis
in music and film cases. This means that they take the totality of your
copyrighted work which you claim has been infringed, and hold it up against the
totality of the infringing work and actively look for dissimilarities.
This is incorrect under the law because in truth a song often includes many
small, integrated and unique copyrightable works. Unfortunately, because the
courts are taking this approach, it is much harder to win a copyright case in
district court. I tried one of the last published wins where I
represented an artist claiming a part of their song was infringed. See Three Boys Music (Ronald Isley) v.
Michael Bolton. It’s not common.
2.
You will need to hire a musicologist up
front. If you want to have any chance of negotiating an early settlement
or defeating an early motion for summary judgment (see below), you will need to
retain an accomplished and respected musicologist. First, you should secure
their independent opinion as a consultant, then if their opinion is one you
respect and one that supports your contentions you should retain them as a
formal expert. Good musicologists, who are respected by defense counsel
and the court, will usually ask for an up front retainer of no less than $5,000
or $10,000. Keep in mind that this retainer is not a cap of their total
billings. If the case proceeds through to depositions, summary judgment
and trial, the musicologist would likely charge you upwards of $25,000.
3.
Another consideration is that the defendants
will most assuredly make an early motion for summary judgment wherein they will
argue that the infringed elements of your song are common and not unique, and
that the two musical works are not substantially similar. They may make
other arguments that are common to these type cases, but these are the two most
likely arguments. In making these arguments, they will put forth cases
that move away from the proper application of Copyright law to a quantitative
analysis of the works. It is imperative that you retain attorneys who
have a deep and up to date understanding of the case law, legislative history
and this process to have any chance of defeating this type of motion.
This is no area for a general practitioner. Defeating this summary
judgment motion is essential, because if you do, which is rare in these cases,
you will have all the leverage, as the defendants would be left to face a
public jury trial.
4.
The prevailing party may be awarded their
attorney’s fees under Copyright law. Under 17 U.S.C. § 505 “the court may
also award reasonable attorney’s fees to the prevailing party” in a copyright
infringement case. This is a huge issue
to consider if you are the artist because if you lose, you could be ordered to
pay hundreds of thousands of dollars of defense fees. Now, awarding
attorney’s fees and costs is discretionary with the district court judge, and
many of these judges will NOT award the defendants their fees even if they win,
on account of their very human concern about the financial devastation such an
award would cause the artist, but this is a risk.
5.
Finally, when it comes to estimating your
damages, you will not be awarded all of the infringing defendants’ net profits
from the infringing distribution and use of the song, but an apportioned
amount. 17 U.S.C. § 504(b) provides that the defendants are entitled to
prove that certain elements of the profits are “attributable to factors other
than the copyrighted work.” See Mackie v. Rieser, 296 F.3d 909,
915–16 (9th Cir.2002) (In the Ninth Circuit, on a claim to recover profits that
are attributable to the copyright infringement, a plaintiff must show that the
infringement itself, that is, the use of the plaintiff's work, was causally
linked to the gross revenue claimed.).
This means that the defendants will argue that their notoriety, other
songs on an album, the marketing behind them and their songs, the market that
pre-exited for their music and other non-infringing parts of the song at issue
were responsible for most of the profits earned, and that you should only be
awarded a small apportioned amount of the net profits. Of course, most
defendants are not truthful about their actual net profits and will try to hide
the true amount of their profits. To combat this it is important that you hire
a forensic accountant who is knowledgeable about the music industry, such as
Green Hasson Janks, to figure out the actual net profits, and then use your
musicologist and maybe another music industry expert to argue that the piece of
music stolen from you drove the sales and as a result defendants’ profits.
# # #
Gerard
("Gerry") Fox graduated from Georgetown Law School, magna cum laude,
and earned an accounting degree from the University of Richmond. Mr. Fox acted
as lead trial counsel for clients such as Vivendi, Clear Channel and Dow
Chemical.
Gerry
started his career at Covington & Burling, followed by Kaye, Scholer,
before forming Fox & Spillane, where Mr. Fox honed his trial skills for
twelve years. Four years ago, Gerry
began the Law Offices of Gerard Fox.
Gerry
handles General Business Litigation, Contract Litigation and Intellectual
Property Litigation across the entertainment industry and beyond.
Gerry
is admitted to practice in Maryland, Washington, D.C., California, has served
as a media commentator, and wrote the book “Sue the Bastards.”
