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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 2021 Squire Patton Boggs (US) LLPNational Law Review, Volume IX, Number 111
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About this Author

 Rafael Langer-Osuna Commercial Litigation Attorney Squire Patton Boggs San Francisco, CA & Miami, FL
Senior Associate

Rafael Langer-Osuna is a commercial litigator who tries cases. Rafael has significant experience litigating matters that turn on international relations and involve the foreign relations law of the US. How the law handles information – whether data privacy, the attorney-client privilege, online defamation or intellectual property – fascinates Rafael. Rafael often uses Spanish and a broad understanding of various legal cultures in representing foreign governments and multinational corporations in international disputes in US courts. These disputes often call upon Rafael to help coordinate...

415-393-9806
Joseph A. Meckes Business & Technology Attorney Squire Patton Boggs San Francisco, CA
Partner

Joe Meckes helps his clients resolve the most complex business and technology disputes both in and out of court.  Joe has particular expertise in intellectual property (IP) litigation, antitrust, international commercial dispute resolution and class action defense. Joe has been lead counsel in numerous 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 is the exclusive recipient of the 2015 Client Choice Award from the International Law Office (ILO) for the “Arbitration” category...

415-954-0201
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