When Does a Copyrighted Work Qualify as a “Work” for Purposes of Fixing Statutory Damages?

17 U.S.C. § 504 (c)(1) provides for only one award of statutory damages for multiple infringements of one “work.” But many copyright holders do not realize that not all their copyrighted works qualify as “works” for purposes of fixing statutory damages. Eligible for statutory damages are only those works that have an independent economic value and are viable. In other words, if the copyrighted work can stand on its own and generate its own income stream, it will qualify as a “work” that will trigger statutory damages if infringed.

MCS Music America, Inc. v. Yahoo! Inc., __ F. Supp. 2d __(2010), adds a further wrinkle to this analysis. It holds that even multiple musical compositions that may have independent economic value do not qualify for statutory damages if the compositions are essentially the same. But first some brief background.

Four circuits, the 1st, 9th, 11th and the D.C. Circuits, have adopted the independent economic test. For instance, in Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106 (1st Cir. 1993), each episode of a television series, although released on videotape as part of a complete series, qualified as a work eligible for statutory damages. That was because each episode could be rented and viewed separately and therefore “could stand on its own.”

Similarly, in Playboy Enterprises, Inc. v. Sanfilippo, 1998 U.S. Dist. LEXIS 5125 (S.D. Cal. Mar. 25, 1998), Playboy published multiple copyrighted photographs that defendant then infringed. Each constituted separate works for statutory damages purposes because “these images are subject to re-use and redistribution in accordance with various licensing arrangements;” and “each image represents a singular and copyrightable effort concerning a particular model, photographer, and location.”

In contrast, Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir 1990), found that defendant, who was selling shirts depicting Minnie and Mickey Mouse in six different poses, only infringed two of Disney’s works because each shirt was essentially the same; only the poses varied:

While Mickey and Minnie are certainly distinct, viable works with separate economic value and copyright lives of their own, we cannot say the same is true for all six of the Disney copyrights of Mickey and Minnie in various poses which the district court found to be infringed in this case. Mickey is still Mickey whether he is smiling or frowning, running or walking, waving his left hand or his right.

How Many Works Are There When the Same Musical Composition Is Embodied in Different Recordings?

In MCS, the issue was whether the same copyright musical composition contained in multiple sound recordings was nevertheless one work for statutory damages purposes.

Plaintiffs, various music publishers who administer rights in compositions transferred to them by composers, claimed copyright ownership to 215 musical compositions. Each composition was embodied in a sound recording the copyright to which was owned by others.

Various record labels had recorded some of the compositions multiple times. For example, eight different record labels, using different recording artists, separately recorded the musical composition Christmas in the Trenches. Accordingly, the 215 compositions were now contained in 308 recordings; and plaintiffs sought separate awards of statutory damages for each of these recordings.

MCS, relying on Disney v. Powell (discussed above), found that, although each musical composition was a “distinct, viable work with separate economic value …, any variation of that ‘work’ (contained in multiple recordings of the composition) is still simply one ‘work’ for the purposes of statutory damages.” Accordingly, the court, in response to a motion for judgment on the pleadings, limited the number of awards to 215 representing the number of separately registered musical compositions.

What is interesting about this case is that at least some of the different recordings of the same musical composition seemed to be economically viable and thus could stand on their own. For instance, if the first two recordings of Christmas in the Trenches had not produced sufficient income, it is doubtful that six other record labels would have thereafter separately recorded that composition.

But what doomed the multiple compositions of the same song embodied in various recording from qualifying for “work” status was that each composition was essentially the same. Just as Mickey is Mickey whether frowning or walking, a musical composition is essentially the same composition whether recorded by one artist or another.

Therefore this case presents an added hurdle for copyright holders seeking multiple awards of statutory damages. You may have to show that each work for which statutory damages are sought has a viable economic life as well as a viable copyright life distinct from the other works at issue.

Other Posts About Statutory Damages

Want to read Parts I, II and III of the posts that attempt to clear up other common misconceptions about statutory damages in copyright litigation? See link (Part I),  link (Part II ) and link (Part III). To read some later posts criticizing the decision in Sony BMG v. Tenenbaum slashing the jury’s verdict by 90% go to link and link. For a post discussing some of the issues raised by the upcoming third trial in Capitol v. Thomas-Rasset case go to link.  Still have questions about statutory damages in copyright litigation and want to see a video answering those questions, go to link or want to read an article about statutory damages written for non-lawyers, go here.

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7 Responses to “When Does a Copyrighted Work Qualify as a “Work” for Purposes of Fixing Statutory Damages?”

  1. Buck McKinney says:

    Great post Andy.

    The key lesson for our clients may be to “register, register, register.” The court left open the question of whether its analysis would have changed had the Plaintiffs argued that the various versions of, say, Christmas in the Trenches, constituted a different “arrangement” of the song, and therefore a “derivative work.” I believe that might have been a winning argument – provided that each of the different “arrangements” were independently registered, and paricularly if each of the the arrangements contained additional material which was independently copyrightable.

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