17.37 Copyright—Damages—Willful Infringement—(17 U.S.C. § 504(c)(2))

            An infringement is considered willful when the plaintiff has proved both of the following elements by a preponderance of the evidence: 

1.         the defendant engaged in acts that infringed the copyright; and

2.         the defendant knew that those acts infringed the copyright, or the defendant acted with reckless disregard for, or willful blindness to, the copyright holder’s rights. 

Comment 

            The statutory damage maximum for willful infringement is $150,000.  17 U.S.C. § 504(c)(2). 

            Since at least 2008, the Ninth Circuit has recognized that “a finding of ‘willfulness’ can be based on either ‘intentional’ behavior, or merely ‘reckless’ behavior.”  In re Barboza, 545 F.3d 702, 707 (9th Cir. 2008); see also Wash. Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668, 674 (9th Cir. 2012) (“[T]o prove ‘willfulness’ under the Copyright Act, the plaintiff must show (1) that the defendant was actually aware of the infringing activity, or (2) that the defendant’s actions were the result of ‘reckless disregard’ for, or ‘willful blindness’ to, the copyright holder’s rights.” (quoting Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 944 (9th Cir. 2011))).  see also Erickson Prods., Inc. v. Kast, 921 F.3d 822, 833 (9th Cir. 2019) (“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.”). 

            To refute evidence of willful infringement, the defendant must “not only establish its good faith belief in the innocence of its conduct, it must also show that it was reasonable in holding such a belief.”  Peer Int’l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (holding that defendant who ignored revocation of its license to copyrighted work, and continued to use work after revocation, willfully infringed that work); see also Evergreen Safety Council v. RSA Network Inc., 697 F.3d 1221, 1228 (9th Cir. 2012) (“Continued use of a work even after one has been notified of his or her alleged infringement does not constitute willfulness so long as one believes reasonably, and in good faith, that he or she is not infringing.”); see also VHT, Inc. v. Zillow Grp., 918 F.3d 723, 748 (9th Cir. 2019) (same).  

            Generally, deductions of defendant’s expenses are denied where the defendant’s infringement is willful or deliberate.  See Kamar Int’l, Inc. v. Russ Berrie & Co., 752 F.2d 1326, 1331-32 (9th Cir. 1984).  Apparently, a finding of willfulness can also be made in connection with an assessment of defendant’s profits, even though reference to willful infringement is made only in connection with statutory damages.  See, e.g., Three Boys Music Corp. v. Bolton, 212 F.3d 477, 487-88 (9th Cir. 2000) (noting, in case involving allocation of defendant’s profits under 17 U.S.C.§ 504(b), that “non-willful infringers” were entitled to deduct from damage assessment income taxes and management fees actually paid). 

Revised June 2019