§ 2.04 Elements of Criminal Copyright Infringement

• Jurisdiction: United States
• Publication year: 2020

§ 2.04 Elements of Criminal Copyright Infringement

Actions that do not give rise to civil copyright liability cannot constitute a criminal copyright violation. Infringement in a criminal proceeding is thus determined by reference to basic copyright law.¹⁶⁵ In other words, in addition to the criminal copyright elements,¹⁶⁶ the government must also establish the elements of civil copyright infringement: (1) ownership of a valid copyright in each infringed work, and (2) infringement of the copyrighted work by the defendant.¹⁶⁷ Because criminal copyright infringement requires proof of additional elements, courts have found that a determination of criminal copyright infringement can be used as offensive collateral estoppel to establish civil copyright infringement.¹⁶⁸ In addition, although the Copyright Act does not specifically include language that criminalized aiding and abetting, aiding and abetting under Title 18, Section 2 United States Code¹⁶⁹ applies, and courts have upheld convictions for aiding and abetting violations of Title 17, Section 506 United States Code.¹⁷⁰

In general, there are three copyright crimes: (1) willful infringement "for purposes of commercial advantage or private financial gain;"¹⁷¹ (2) willful infringement by "the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000";¹⁷² and (3) willful infringement "by the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to members of the public, if such person knew or should have known that the work was intended for commercial distribution."¹⁷³

Criminal copyright infringement is punishable as a felony if the criminal conduct involved reproduction or distribution in a 180-day period of at least ten copies of copyrighted works worth more than $2,500 or involved distribution of a "work being prepared for commercial distribution" over a publicly accessible computer network.¹⁷⁴ Although felony copyright infringement does not require a profit motive, the maximum penalties will increase from three years to five years if the offense is committed for commercial advantage or private financial gain.¹⁷⁵

[1] Ownership

The initial factor in all copyright infringement cases requires proof of ownership of the infringed work.¹⁷⁶ The Copyright Act of 1976 provides that copyright ownership vests initially in the author or authors of a copyrighted work,¹⁷⁷ and the initial "author" is usually considered to be "the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection."¹⁷⁸ In the case of a "work made for hire", however, "the employer or other person for whom the work was prepared is considered the author" of the work and the initial owner of the copyright therein.¹⁷⁹ All authors can transfer subsequent ownership of a copyright, or any portion of the exclusive rights comprised in a copyright, by any means of conveyance,¹⁸⁰ but an author can eventually terminate the transfer of his or her copyright interests pursuant to the procedures set out in 17 U.S.C. § 203(a), unless the copyrighted work is a work made for hire. Once an author has terminated a transfer of copyright interests, the interests revert to the author, but such reversion does not prevent the continuing exploitation of any derivative works prepared prior to the termination and properly under the authority of the transferred interests.¹⁸¹

In criminal cases, this means that the government must establish that the victim has a valid copyright.¹⁸² The easiest and most direct way for the government to establish this element is through showing the existence of a copyright registration since this constitutes prima facie evidence of copyright ownership in a criminal as well as a civil action.¹⁸³ The Copyright Act specifies that a certificate of registration "made before or within five years after the first publication of the work shall constitute prima facie evidence of the validity of the copyright. . . ."¹⁸⁴ The parties can also stipulate to the copyright's validity.¹⁸⁵

Where the government produces a copyright registration certificate, the burden shifts to the defendant to present evidence of an invalid copyright, the existence of a license, or a defense to infringement.¹⁸⁶ If the work was registered more than five years after its first publication, the certificates probative value is left to the court's discretion.¹⁸⁷ If the defendant contests the validity of a copyright, the government is required to make an independent evidentiary showing that the copyright is valid. This primarily involves proving beyond a reasonable doubt that the copyright was not obtained by fraud and that the registration certificate is genuine.¹⁸⁸

Courts have also held that that the government is not required to show copyright registration if the defendant is charged with conspiracy to defraud the United States as opposed to being charged with copyright infringement.¹⁸⁹

Prior to the enactment of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (Pro IP Act),¹⁹⁰ it was accepted by many commentators¹⁹¹ that the registration of the infringed work was a prerequisite to criminal prosecution.¹⁹² However, the Pro IP Act made it clear that the requirement of registration under section 411 only applies to civil infringement actions,¹⁹³ and, consequently, there is no requirement that the work be registered before the government may commence a criminal prosecution.¹⁹⁴

Further, consistent with this position, the government also takes the view that criminal liability may be based on infringing activities committed before the work is registered.¹⁹⁵ This understanding must be correct since there is no requirement that the work ever be registered. The government also addresses the registration issue of whether a defendant may be criminally prosecuted for the distribution, for example, of a work before it has been legitimately distributed to the public and has not been registered. The government notes that in such a situation a defendant might argue that because civil remedies would be limited, criminal penalties should similarly be fore-closed.¹⁹⁶ However, there is no indication that Congress intended to give defendants a free pass simply because the work has not yet been registered by the copyright owner.

[2] Proof of Infringement

The second element of copyright infringement that is common to both civil and criminal actions is infringement. In criminal cases this means that once ownership of the copyrighted work is established, the government must prove beyond a reasonable doubt that the defendant "infringed" upon that copyright. The term "infringement" is not expressly defined in the Copyright Act. "Infringement" refers to the violation of one or more of the exclusive rights granted to a copyright owner by Title 17, Section 506 of the United States Code. In addition, infringement is implicitly defined in Section 501(a): "Anyone who violates any of the exclusive rights of the copyright owner as provided by [17 U.S.C. § 106(a)], or imports copies or phonorecords into the United States in violation of [17 U.S.C. § 602], is an infringer of the copyright."¹⁹⁷ Thus, infringement may include more than violation of the rights enumerated in Section 106. However, criminal copyright is limited to infringement of those rights set out in Section 106,¹⁹⁸ as limited by Sections 107 through 122.

In order, however, to convict a defendant of felony copyright infringement, the government must prove that, during a 180-day period, the defendant reproduced or distributed ten or more copyrighted works with a retail value of $2,500,¹⁹⁹ or, alternatively, that the infringement involved "distribution of a work being prepared for commercial distribution," by making it available on a publicly accessible computer network.²⁰⁰ Misdemeanor penalties apply to infringement by reproduction or distribution of one or more copyrighted works, which have a total retail value of at least $1,000, but which do not meet the higher numeric and monetary threshold.²⁰¹ Misdemeanor penalties also apply to the willful infringement of any of the exclusive rights under Section 106, if committed for commercial advantage.²⁰²

Generally infringement is established by direct evidence of copying. However, direct evidence of copying, at least in civil cases, is usually not available, because the plaintiff only rarely has a witness to the physical act of copying. "Proof of direct evidence of copying is generally not possible since the actual act of copying is rarely witnessed or recorded. Normally, there is no physical proof of copying other than the offending object itself."²⁰³ "Plagiarists rarely work in the open and direct proof of actual copying is seldom available."²⁰⁴ This may be less true in criminal action, since the government often may secure the testimony of a co-defendant as part of a plea.²⁰⁵ Still, proof of infringement is ordinarily established by circumstantial evidence that the defendant (1) had access to the copyrighted work,²⁰⁶ and (2) reproduced or distributed copies substantially similar to the copyrighted work.²⁰⁷

[a] Access

Access generally refers to whether the defendant had the opportunity to copy.²⁰⁸ Access can be inferred²⁰⁹ where there is evidence that the defendant played a role in the creation²¹⁰ or manufacture²¹¹ of both the infringed work and the infringing copies, but the evidence must be beyond mere speculation, conjecture,²¹² or the "bare possibility" that defendant had access to plaintiff's work.²¹³

In the case of criminal infringement where the infringed product is likely to be commercially available or widely disseminated, access may be shown by evidence of these factors.²¹⁴ Thus, in the civil arena, one court found that...