Advanced Copyright Issues on the Internet - Fenwick & West LLP

awarded “shall constitute compensation and not a penalty.” Section 1323(a) permits the court toincrease the damages to such amount, not exceeding $50,000 or $1 per copy, whichever isgreater, as the court deems just. As an alternative, under Section 1323(b), the court may awardthe owner of the protected design the infringer’s profits resulting from the sale of the infringingcopies “if the court finds that the infringer’s sales are reasonably related to the use” of theprotected design. The owner is required to prove only the amount of the infringer’s sales, andthe infringer must then prove its expenses against such sales. Section 1323(d) allows the court toaward attorneys’ fees to the prevailing party and Section 1323(e) allows the court to order thedestruction of plates, molds, and the like used to make infringing articles. Section 1323(c) setsup a three year statute of limitations.(11) Private Rights of Action Against Pirated DesignsSection 1326 affords a powerful remedy for victims of pirated designs. Specifically, thatSection allows a private right of action to recover civil fines of not more than $500 per offensefor false marking with a design notice knowing that the design is not protected. The civil finesare split equally between the private plaintiff and the United States.(12) Relation to Design Patents and Retroactive EffectFinally, Section 1329 provides that the issuance of a design patent terminates anyprotection for the original design under the design statute, and Section 1332 provides that thedesign statute has no retroactive effect.(g) Limitation of Liability of Online Service ProvidersThe DMCA contains elaborate provisions and safe harbors that limit the liability ofonline service providers for copyright infringement occurring through their services. Theseprovisions are discussed in Section III.C.5 below.(h) Subpoenas to Service ProvidersSection 512(h) of the DMCA sets up a procedure through which a copyright owner mayobtain a subpoena through a United States district court directing the service provider to releasethe identity of an alleged direct infringer acting through the service provider’s system ornetwork. The subpoena is issued by the clerk of any United States district court upon a requestby the copyright owner (or one authorized to act on the owner’s behalf) containing the proposedsubpoena, “a copy of a notification described in subsection (c)(3)(A),” and a sworn declarationensuring that the subpoena is solely to obtain the identity of the alleged infringer, whichinformation will be used only to protect rights to the copyright. 1029 The subpoena, in turn,authorizes and orders the recipient service provider “to expeditiously disclose” informationsufficient to identify the alleged infringer. 1030 The clerk “shall expeditiously issue” the subpoenaif it is in proper form, the declaration is properly executed, and “the notification filed satisfies the1029 17 U.S.C. § 512(h)(2).1030 Id. § 512(h)(3).- 237 -