Introduction

California is a hotspot for creation and innovation. As a result, copyright disputes regarding who owns, and who can use, creative works are common. In fact, more copyright lawsuits are filed in California than in any other state in the country. In the internet and social media era, many of these disputes arise from online activity. It is all too easy (and tempting) for an infringer to copy a photograph or other work for use in an article, advertisement, or social media post. Some mistakenly believe that “fair use” allows for wide-ranging copying and reuse of others’ works. Recent legal cases serve as reminders that copyright law is alive and well, and that the exceptions to copyright law are narrower than many believe. 

This article provides an overview for individuals and companies doing business in California that are concerned with protecting their copyrighted works, including what can be done to deter infringement and the avenues for recourse should infringement occur.

Copyright Law in the United States

The purpose of copyright law in the United States is to promote the arts by granting authors exclusive rights in their works for a limited time. Copyright laws apply nationwide and are enforced in federal courts. 

Copyright protection is available for “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” (17 U.S.C. § 102(a)). In practice, this means that written, drawn, or recorded work created by a human reflecting at least a minimal degree of creativity is subject to copyright protection. 

Typically, the author of a work owns the copyright in that work. Ownership may also be transferred or assigned to another individual or entity. For example, employees that create a work within the scope of their employment may assign the copyright in their work to an employer; these are called “works made for hire”. Or authors may assign their copyrights to other individuals or entities via assignment agreements.

In general, works receive copyright protection for the life of the author plus 70 years. Certain types of works, such as works made for hire or works created prior to 1978, may have different copyright terms that are determined based on factors such as the date of first publication.

A copyright owner has the following exclusive rights:

• to reproduce the copyrighted work;
• to prepare derivative works based upon the copyrighted work;
• to distribute the copyrighted work to the public;
• to perform the copyrighted work publicly (in the case of sound recordings and audiovisual works); and
• to display the copyrighted work publicly (in the case of audiovisual works and pictorial, graphic, or sculptural works) (17 U.S.C. § 106).

A copyright owner’s exclusive rights are subject to certain exceptions, such as fair use. Fair use means that certain uses of a copyrighted work – such as for criticism, comment, news reporting, teaching, scholarship, or research – might not be infringement. The purpose of the fair use doctrine – like the copyright system itself – is to promote creativity, innovation, and freedom of expression, reflecting an effort to balance a copyright owner’s exclusive rights in a work with the public benefit of allowing some limited uses of the work.

While copyright in a work is established upon its creation, if a copyright owner wishes to enforce their exclusive rights, they must register the work with the Copyright Office. Only then can an owner of a registered copyright bring a lawsuit for copyright infringement in federal court against any individual or entity that violates these exclusive rights.

Best Practices for Protecting Copyrighted Works

There are several steps that copyright owners should take to protect their copyrighted work.

Registration and copyright notices

Copyright owners should register their work with the Copyright Office as soon as the work is fixed (ie, written, drawn, or recorded). Registration can be done online at the Copyright Office website.

Once registration is complete, the copyright owner should place a notice on copies of the work with the following:

• the symbol © (or the letter “p” in a circle for certain sound recordings) or the word “copyright” or abbreviation “copr.”;
• the year the work was first published (ie, distributed to the public); and
• the name of the copyright owner.

Doing so gives notice to the public that the work is copyright protected and deters others from using the work without permission. 

Licensing

Copyright owners who are willing to license others to use their work should make it simple to request a licence. If a copyright owner wishes to negotiate licences with users directly, they should make sure to include a copyright notice on copies of their work so that potential users can easily find contact information to request a licence. Alternatively, copyright owners can retain licensing agents to negotiate licences on their behalf for a fee.

Having a simple licensing process can be a deterrent to infringement. For example, if the licensing process is too difficult or users cannot figure out how to request a licence, they may be more likely to use a work without permission.

Taking action against infringement

The first step a copyright owner should take upon discovering their work has potentially been infringed is to preserve evidence of the potential infringement. The evidence should include the date on which the evidence was preserved and the URL where the infringing content is hosted, if the infringing content is online. For example, if taking a screenshot of an infringing webpage, the screenshot should include the browser toolbar with the website URL and the date and time marker typically found on computer desktops.

Next, the copyright owner should consider whether the allegedly infringing use might be fair use. If the use is clearly fair use, then the copyright owner should not take any further action. However, if fair use does not apply – or if it is unclear whether fair use applies – then enforcement may make sense. 

When considering whether to take enforcement actions against a potential infringer, a copyright owner should determine the goals to be achieved from enforcement. Then the copyright owner can develop an enforcement strategy that best supports these goals. For example, if the infringement is found online and the copyright owner wants the infringing content taken down, the best course of action may be to submit a DMCA Takedown Notice (ie, a request that the platform hosting the content remove it). A cease-and-desist letter is another (or alternative) option. If the copyright owner wants compensation for the infringement, the best course of action may be to send a cease-and-desist letter and then sue for copyright infringement if the infringer is unwilling to pay a reasonable licence fee for the unauthorised use.

Various enforcement strategies are discussed below. It is advisable to retain a copyright attorney to advise on, and execute, an enforcement strategy that best aligns with the copyright owner’s goals.

Evaluating fair use

There is no bright-line rule as to what constitutes fair use. A copyright owner should consult with an attorney to determine whether an unauthorised use might be fair use.

Four factors must be considered to determine whether a use is fair use:

• the purpose and character of the use, such as whether the use is commercial or transformative (ie, adds something new);
• the nature of the copyrighted work;
• the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use upon the potential market for or value of the copyrighted work (17 U.S.C. § 107).

Court opinions analysing and applying these factors can be a helpful guide. The following are some recent examples from jurisdictions relevant to California.

• In Andy Warhol Foundation for the Visual Arts, Inc v Goldsmith, the Andy Warhol Foundation licensed a magazine to use a portrait of Prince that Andy Warhol created from a copyrighted photograph. The US Supreme Court held that the Foundation’s use of the photograph was not fair use. Key factors influencing the court’s decision included the commercial nature of the Foundation’s use (ie, for commercial licensing) and that the purpose of the Warhol portrait and the original photograph were substantially the same (ie, to illustrate stories about Prince) (598 U.S. 508 (2023)).
• In McGucken v Pub Ocean Ltd, Pub Ocean used copyrighted photographs to illustrate an online news article about a lake in Death Valley. The US Court of Appeals for the Ninth Circuit held that fair use did not apply. Key factors influencing the court’s decision included that the use was commercial (ie, illustrating a for-profit article), the use was not transformative because the photographs merely illustrated the subject matter of the article, and Pub Ocean used the entire photographs without meaningful alteration (42 F.4th 1149 (9th Cir. 2022)).
• In In re DMCA Subpoena to Reddit, Inc, an anonymous Reddit user posted a Jehovah’s Witnesses organisation’s copyrighted materials on a discussion forum to start a discussion critical of the organisation. The US District Court for the Northern District of California held that fair use did apply. Key factors influencing the court’s decision included that the copyrighted works were factual works with minimal creativity and the use was non-commercial and for purposes of criticism and commentary (441 F.Supp.3d 875 (N.D. Cal. 2020)).

DMCA Takedown Notices

In some instances, a copyright owner can submit a DMCA Takedown Notice to a platform that hosts infringing content requesting that the content be removed. Popular hosting platforms, such as YouTube, Instagram, TikTok, Facebook, and Reddit, allow copyright owners to submit DMCA Takedown Notices directly through their websites. 

Upon receiving a DMCA takedown notice, the platform must remove the infringing content. The accused infringer will then have the opportunity to dispute the infringement claim by filing a “DMCA Counter Notice” with the platform. Within ten to 14 business days of receiving a DMCA Counter Notice, the platform must put the content back up unless the platform receives notice from the copyright owner that it has filed a copyright infringement lawsuit against the accused infringer.

Cease-and-desist letters

A copyright owner can send a cease-and-desist letter to an accused infringer demanding removal of infringing content and/or compensation for the infringement. The letter should identify the copyright owner, the registration number of the work infringed, evidence of the infringement, a demand for relief (ie, remove the infringement, pay a licence fee, etc), and a demand that the accused infringer preserve any evidence potentially relevant to the infringement allegations. A copyright owner should retain a copyright attorney to draft and send the letter, both to ensure the letter is complete, and because an accused infringer may be more responsive if they know counsel is involved.

Sending a cease-and-desist letter can be beneficial because it may motivate the infringer to provide the requested relief (ie, remove the infringement, pay a licence fee) without needing to resort to litigation. If litigation does become necessary, a copyright owner can use the letter to show that the infringer was put on notice of its infringement but continued to infringe, which may influence a court to award higher damages to the copyright owner for willful infringement (ie, the infringer knowingly infringed).

Infringement lawsuits

The owner of a registered copyright may file a copyright infringement lawsuit in federal district court. If the copyright owner is a legal entity, like a corporation or an LLC, it must be represented by counsel in federal court. An individual copyright owner may file suit without a lawyer, but it is advisable to retain counsel to help navigate the complexities of the legal system.

California is divided into four regions, each of which is served by a federal judicial district: Northern District, Southern District, Central District, and Eastern District. A copyright owner can benefit from filing a lawsuit in California district court if the alleged infringer resides in or does business in California. 

California courts are experienced with copyright because of their proximity to California’s thriving entertainment and technology industries, where copyright disputes are commonplace. From 2009 to 2024, more copyright cases were filed in the US District Court for the Central District of California (which encompasses Los Angeles) than any other judicial district in the country. During that same period, the fourth-highest number of copyright cases were filed in California’s Northern District (which encompasses Silicon Valley).

To file in a California district court, the copyright owner must show that the court has personal jurisdiction over the defendant and that venue is proper. If the defendant is an individual who lives in California, jurisdiction and venue will likely be satisfied in the court for the district where the defendant lives. If the defendant is an entity incorporated in California, jurisdiction and venue will likely be satisfied in any of the California district courts. 

In addition, jurisdiction and venue may be satisfied where enough facts tie the case or the defendant to California and/or the district. The following are some recent copyright cases where personal jurisdiction and venue in a federal district court in California were satisfied.

• In Marshmello Creative, LLC et al v Thomas Hoefer, the defendant was employed by a company located in the district that provided him with the equipment to create the works at issue, and the defendant created some of those works in the district (No 2:23-cv-07345, 2024 WL 2106949 (C.D. Cal. Apr. 4, 2024)).
• In Scott v Domus Construction and Design, Inc, the defendant targeted its advertising at residents of the district (No 3:21-cv-00623, 2021 WL 5505888 (S.D. Cal. Nov. 24, 2021)).
• In Velaro, Inc v National Flood Services, LLC, the defendant was bound by a forum selection clause in a licence agreement providing that disputes arising from the agreement shall be exclusively heard in the courts of the district (No 20-5078, 2021 WL 8779924 (C.D. Cal. July 7, 2021)).
• In Loomis v Slendertone Distribution, Inc, 420 F.Supp.3d 1046 (S.D. Cal. Nov. 6, 2019), the defendant had an agent for service of process in California, was registered with the California Secretary of State, and targeted its advertising at California residents.

Infringement damage awards

A copyright owner that prevails on an infringement claim is entitled to recover either the copyright owner’s actual damages from the infringement and any additional profits of the infringer not already counted as actual damages, or statutory damages in the amount of USD750 to USD30,000 per work infringed, or up to USD150,000 per work if the infringement was willful (17 U.S.C. § 504). Courts also have discretion to award costs and reasonable attorney’s fees to a prevailing copyright owner (17 U.S.C. § 505).

The following are some recent California copyright cases with damages awards.

• In Mackie v West Valley Properties, Inc, the parties consented to entry of judgment and damages of USD15,001, including costs and attorneys’ fees, for infringement of one photograph posted on the defendant’s website (No 5:22-cv-02663 (N.D. Cal. Apr. 4, 2024)).
• In Watson Music Group, LLC v Unreale Promotions, Inc, the court entered a default judgment for USD6,194 consisting of damages, costs and attorney’s fees for infringement of one song used in the defendant’s social media content (No 8:23-cv-02091 (C.D. Cal. Mar. 4, 2024)).
• In Scott Hargis v Pacifica Senior Living Management LLC, a jury awarded USD6.3 million for willful infringement of 43 photographs used by the defendant to market senior living facilities online (No 2:22-cv-06989 (C.D. Cal. Dec. 18, 2023)).

Conclusion

While it is not possible to eliminate the risk of copyright infringement, authors and copyright owners (eg, employers whose personnel create works for hire) can take measures to decrease the risk that their works will be used without permission, and to seek recourse should infringement occur. Companies and individuals that own copyrights and do business in California should consult with an experienced copyright attorney to formulate a strategy that meets their goals for protecting and enforcing their copyrights.