Mandell Menkes successfully challenges foreign claimant’s eligibility to recover statutory damages under the Copyright Act

The U.S. District Court for the Northern District of Illinois issued multiple motion rulings which advanced Mandell Menkes’ successful effort to insulate a Chicago-based radio station from statutory damages in a copyright infringement lawsuit. 


The plaintiff, a foreign news correspondent, alleges in the lawsuit that the station infringed his copyrights by airing without his authorization a series of news dispatches originally broadcast in Europe.  The parties have disputed a number of novel legal issues during the course of the litigation concerning whether the plaintiff can recover statutory damages afforded by the Copyright Act (the “Act”). 

The plaintiff initially moved the Court to declare that §411(b) of the Act entitled him to statutory damages, even though the reports were not registered at the time of the alleged infringement, because: (a) he was not required to register his copyrights with the U.S. Copyright Office before initiating copyright infringement litigation as a foreign national residing in a signatory nation to the Berne Convention; and (b) he fixed his work simultaneously with its transmission by a Polish radio station.  The Court rejected plaintiff’s argument in a memorandum opinion, ruling that although foreign claimants are permitted to file copyright infringement suits in American courts without registering their copyrights, the Act reserves the recovery of statutory damages for claimants who comply with the registration requirements, barring an applicable exception.  Since the plaintiff failed to prove either of the requisites necessary to qualify for the exception — that his reports were transmitted “live” overseas or that he provided the station with the notice required by the Act — he could not establish his potential entitlement to statutory damages.


This ruling forced the plaintiff to adopt a different tact in his effort to recover statutory damages.  He filed for copyright registration, deposited six news reports with the Copyright Office, and began arguing that the registration resulting from that deposit conferred copyright protection for other, similar news reports (within a certain time frame).  Mandell Menkes lawyers analyzed plaintiff’s interpretation of the Act and then attempted to persuade counsel that the interpretation was erroneous.  The parties could not resolve their dispute and plaintiff again filed a motion seeking a ruling that he was entitled to statutory damages, even if he could not prove the replayed reports were deposited with the Copyright Office.  Plaintiff supported this motion by citing a variety of regulations which appear to exempt certain “addresses” from the strict deposit requirements established by §408 of the Act.  Mandell Menkes attorneys refuted this contention, in part, by pointing out that plaintiff’s interpretation of the registration requirements incorrectly relied on regulations pertaining to §407 of the Code, which governs deposits with the Library of Congress, rather than deposits for purposes of copyright registration, codified at §408.  The Court found Mandell Menkes’ reasoning persuasive and denied plaintiff’s motion, ruling in that “the only broadcasts that are registered and thus eligible for statutory damages and attorney’s fees, are the six broadcasts that were submitted with the registration application.”  This ruling significantly narrows the potential exposure of the radio station because it requires plaintiff to prove something which, thus far, he has not even alleged: that the station played one of the reports he deposited with the Copyright Office.


Following this ruling, Mandell Menkes filed a motion for summary judgment which the Court granted, ruling that the news correspondent lacked standing to assert the copyright claims. Our litigators established during discovery that, in an employment agreement, the broadcaster assigned the economic rights to the broadcasts at issue to an overseas station. Although the plaintiff contended that the overseas station agreed he could pursue the, the parties had not reduced that supposed assignment to writing as required by Polish copyright law. We then leveraged this favorable ruling and the case was ultimately terminated.


Mandell Menkes attorneys Steven Mandell and John Fitzpatrick wrote the briefs which helped bring about this favorable outcome.