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Willful Copyright Infringement Requires Proof of Intent in the Ninth Circuit

A pro bono case in the Ninth Circuit just made it harder for plaintiffs to prove copyright infringement is willful.

On Tuesday, in the case of Erickson Productions Inc. v Kast, the Ninth Circuit clarified that an accused willful infringer must either know about or recklessly disregard the copyright in suit. This requires proof of the infringer’s intent. A court had found Kraig Kast liable for $450,000 for uploading three copyrighted photos to a website he had developed. The trial court instructed the jury that the defendant could be liable for enhanced damages if the accused infringer “should have known that [his] acts infringed plaintiffs’ copyright”.

A unanimous Ninth Circuit panel reversed and ordered a new trial. Writing for the court, Judge Michael Day Hawkins reasoned that “should have known” is the standard for negligence, not willfulness. “Negligence is a less culpable mental state than actual knowledge, willful blindness, or recklessness, the three mental states that properly support a finding of willfulness.” For a jury to find willfulness requires an inquiry into the defendant’s state of mind, not what it should have been.

As most copyright practitioners are well aware, the question of willfulness can be important in a case where the plaintiff is seeking statutory damages. Statutory damages for willful infringement can be up to $150,000 per infringement, versus $30,000 for infringement that is not willful. Thus, at retrial, Kast will face maximum damages of only $90,000 (and, possibly, an attorneys’ fees award).

Going forward, the idea that a defendant had “constructive knowledge” of the copyright will not suffice in the Ninth Circuit. Copyright trolls seeking large settlements based on vague standards of willfulness may need to adjust their expectations.

© Copyright 2020 Squire Patton Boggs (US) LLPNational Law Review, Volume IX, Number 111


About this Author

 Rafael Langer-Osuna , Senior associate, San Francisco
Senior Associate

Rafael Langer-Osuna focuses his practice on representing foreign governments and multinational corporations in international disputes in US courts and assisting international clients with patent-related litigation. Rafael is also often called upon to advise other lawyers, including other law firms, on the application of the attorney-client privilege. Rafael also maintains an active appellate and pro bono practice.

Rafael is a member of the Florida Bar Association and the American Bar Association (ABA) and serves as the content chair for...

Joseph A. Meckes, Squire Patton Boggs, Intellectual Property Lawyer

Joe Meckes focuses his practice on intellectual property (IP) litigation, international commercial dispute resolution and class action defense. Joe has been lead counsel in state and federal courts and administrative bodies throughout the US in all aspects of civil litigation as well as in international and US-based arbitrations. Joe’s experience spans a wide variety of industries including pharmaceuticals, semiconductor packaging and fabrication, automotive, fiber optics, software, heavy industries, mining and agriculture. Joe is a member of our technology steering committees and has chaired the firm’s Knowledge Management core group. He frequently speaks and writes about civil procedure, knowledge management, electronic discovery and emerging intellectual property issues.

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