Defenses to Copyright Infringement Claims

By Hank FasthoffNovember 27, 2016

You can organize a copyright defense by separating the questions that the claim presents. Some arguments challenge whether the owner can file suit. Others challenge ownership, copying, or the protected scope of the work. License, fair use, statutory limitations, and the limitations period can defeat liability even when some copying occurred. Innocence generally affects remedies rather than liability.

When you list defenses without differentiating them, you can obscure the plaintiff's burden. A defendant may prevail by showing that the plaintiff can't prove an element, without relying on an affirmative defense. Each argument depends on different documents and testimony.

Registration Controls When Many Copyright Actions Can Begin

For a United States work, Section 411(a) generally requires registration or refusal before the owner files a copyright infringement action. Filing an application alone doesn't satisfy that requirement. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019), the Supreme Court held that registration occurs when the Copyright Office registers the claim, not when the owner submits the application.

Section 411(a) permits suit after the Office refuses registration if the applicant serves the Register of Copyrights as the statute requires. Preregistration and certain live broadcasts receive narrow statutory treatment. A foreign work may present a different registration question because Section 411(a) applies by its terms to a United States work.

The Supreme Court classified Section 411(a) as a claim processing rule rather than a limit on subject matter jurisdiction in Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010). A timely defense can therefore enforce the registration requirement even though the federal court has jurisdiction over the type of dispute.

Registration Errors Use the Statutory Test

An inaccuracy undermines the certificate only when both statutory conditions exist. Section 411(b) provides that a certificate satisfies the registration requirement despite inaccurate information unless the applicant knew the information was inaccurate and the Register would have refused registration if the Office knew the truth. When a party alleges both conditions, the court asks the Register whether the inaccuracy would have caused a refusal.

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178 (2022), confirmed that the knowledge inquiry covers mistakes about law as well as mistakes about facts. A deposit problem may affect whether the Office accepts an application or what material the registration covers. Once a certificate issues, Section 411(b) supplies the test for an inaccuracy offered to defeat the certificate in an infringement action.

Ownership and the Protected Work Are the First Questions

Section 501(b) permits the legal or beneficial owner of an exclusive right to sue for infringement of that right committed during ownership. A defense can therefore begin with authorship, work for hire status, assignments, exclusive licenses, termination rights, and the dates when each party held the relevant right.

A certificate issued before or within five years after first publication provides prima facie evidence of validity and the facts stated in the certificate under Section 410(c). A defendant can rebut that presumption. A certificate issued later receives the evidentiary weight the court finds appropriate.

Originality requires independent creation and a minimal degree of creativity under Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991). Section 102(b) excludes ideas, procedures, processes, systems, methods of operation, concepts, principles, and discoveries. Facts and public domain material also remain available for others to use, although an original selection or arrangement may receive limited protection.

The Plaintiff Has to Prove Factual Copying

The Fifth Circuit separates factual copying from legally actionable copying. Under Batiste v. Lewis, 976 F.3d 493 (5th Cir. 2020), a plaintiff can prove factual copying through direct evidence or through access combined with probative similarity. Striking similarity can support an inference of copying without proof of access. The similarity has to rule out coincidence, independent creation, and a prior common source.

Evidence of independent creation attacks the plaintiff's proof of copying. Courts sometimes call independent creation an affirmative defense, and defendants often plead it that way. In the Fifth Circuit, its usual function is to rebut an inference of factual copying. Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004), held that a defendant can rebut the inference with proof of independent creation by a preponderance of the evidence, while the plaintiff retains the burden of proving that protected material was copied.

Your evidence may include dated drafts, source files, session files, version histories, design sketches, repository records, source materials, and testimony from the people who created the accused work. With a clean development record, you can resolve the question before the court considers substantial similarity.

A common source can also explain similarities. That evidence may show that both parties drew from the same public domain work, convention, data set, or earlier expression. This shared origin is a defense in the broader sense, but it ordinarily challenges causal copying or protected scope rather than supplying a separate justification for infringement. The inquiry then turns to whether the defendant copied protected expression contributed by the plaintiff rather than material available to both sides.

Substantial Similarity Filters Out Unprotected Material

Proof that copying occurred doesn't end the analysis. The plaintiff must show substantial similarity between the accused work and protectable elements of the asserted work. Batiste directs courts to compare the works while considering the qualitative and quantitative importance of the copied material to the plaintiff's work as a whole.

Scènes à faire, merger, common phrases, facts, stock elements, and expression dictated by external constraints narrow the comparison. These doctrines often define the protected scope instead of operating as separate affirmative defenses. A work assembled from common material may receive protection in an original selection or arrangement, but the owner can't use that limited copyright to control the underlying material.

The same distinction informs a de minimis argument. A small or insignificant taking may fail the substantial similarity inquiry, depending on the type of work and the importance of what was copied. Sound recording claims require separate care. Batiste recognized a conflict among the circuits over digital sampling and left that conflict unresolved in the Fifth Circuit.

Permission Can Defeat the Claim

Permission may arise through an express license, an implied nonexclusive license, or other consent. The Fifth Circuit treats license as an affirmative defense. Baisden v. I'm Ready Productions, Inc., 693 F.3d 491 (5th Cir. 2012), enforced one exclusive license and found an implied nonexclusive license for another work based on the parties' conduct.

The defense depends on scope. The record should identify the rights granted, media, territory, duration, sublicensing authority, payment terms, approval rights, termination, and any conditions on the grant. Section 101 and Section 204(a) require a signed writing for a transfer of copyright ownership, which includes an exclusive license. A nonexclusive license may arise without that signed transfer document.

Fair Use Examines the Challenged Use

Section 107 directs courts to weigh the purpose and character of the use, the nature of the copyrighted work, the amount and importance of what was used, and the effect on the potential market. Criticism, comment, news reporting, teaching, scholarship, and research illustrate possible fair uses, but a listed purpose doesn't resolve the analysis.

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), focused the first factor on the specific challenged use. A new meaning, message, style, or aesthetic doesn't by itself establish a different copyright purpose. Similar commercial uses raise a stronger substitution concern, especially when both parties participate in the same licensing market.

The Fifth Circuit applied that framework in Keck v. Mix Creative Learning Center, L.L.C., 116 F.4th 448 (5th Cir. 2024). The court affirmed fair use for children's art kits after examining the educational purpose and the absence of meaningful substitution in the relevant market. A fair use review compares the accused use with the owner's use and licensing market. Using transformative as a label supplies no conclusion on its own.

Statutory Limitations Can Authorize the Conduct

The Copyright Act contains specific limitations for particular conduct. Section 109 generally permits the owner of a lawfully made copy to sell or otherwise dispose of that copy, subject to statutory qualifications. That first sale rule concerns distribution of the owned copy and doesn't authorize reproduction.

Section 117 permits the owner of a copy of a computer program to make certain essential step and archival copies. Section 110 provides detailed exemptions for specified performances and displays. Each provision has conditions that can make the ownership of a copy, the setting, the audience, or the manner of use decisive.

Online service providers may invoke the safe harbors in Section 512 when they satisfy the provisions relevant to their functions. Safe harbor eligibility and underlying liability remain separate questions. Section 512(l) provides that a failure to qualify doesn't undermine another defense that the provider's conduct wasn't infringing.

Secondary Liability Requires Proof Directed at the Defendant

A claim based on another person's infringement requires more than proof that the defendant supplied a useful service and knew some customers used it unlawfully. In Cox Communications, Inc. v. Sony Music Entertainment, 607 U.S. 583 (2026), the Supreme Court reversed a $1 billion contributory infringement judgment. The Court held that a provider doesn't become liable merely by continuing to provide a general service to users associated with infringement.

The opinion requires intent that the service be used for infringement under the contributory liability theories the Court recognized. A copyright owner can show inducement or a service tailored to infringement. The liability reversal made the separate willfulness question unnecessary, so the Court left willfulness unresolved. Vicarious liability requires its own analysis of control and direct financial benefit.

Time Limits and Equitable Conduct Require Separate Analysis

Section 507(b) requires a civil copyright action within three years after the claim accrued. The Fifth Circuit applies a discovery rule under Martinelli v. Hearst Newspapers, L.L.C., 65 F.4th 231 (5th Cir. 2023), measuring accrual from when the plaintiff knew or had reason to know of the injury. Repeated infringements can produce separate accrual dates.

Warner Chappell Music, Inc. v. Nealy, 601 U.S. 366 (2024), assumed that a discovery rule applied and rejected a separate three year damages limit for a timely claim. The Supreme Court didn't resolve whether the Copyright Act permits discovery accrual in the first place. The Fifth Circuit rule therefore controls cases in that circuit unless later authority changes it.

Laches doesn't bar a timely claim for legal damages under Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014). Delay can influence equitable relief and the proof of harm. Equitable estoppel presents a different doctrine when the owner misleads the defendant about enforcement and the defendant relies to its detriment, as the Fifth Circuit discussed in Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, L.P., 948 F.3d 261 (5th Cir. 2020).

Innocence and Registration Timing Affect Remedies

Innocent infringement affects statutory damages. Under Section 504(c)(2), a defendant who proves a lack of awareness and no reason to believe the conduct infringed may receive a statutory award as low as $200. The defense doesn't erase liability.

Registration timing can have greater economic effect. Section 412 generally bars statutory damages and attorney fees for infringement of an unpublished work that began before registration. It imposes the same bar when infringement began after publication but before registration, unless the owner registered within three months after first publication. The owner may remain able to seek provable losses and infringer profits, but the available remedies narrow sharply.

The Defense Record Starts Before Litigation

You can connect each defense theory to its evidence. Relevant records include the asserted work and registration, ownership documents, accused conduct, creation history, source materials, licenses, communications, dates, sales information, platform notices, and the markets served by both works.

That record also separates a claim that fails on ownership or copying from one that depends on fair use, license, a statutory limitation, or a remedy issue. Early classification keeps a copyright dispute focused on the questions the plaintiff has to prove and the defenses the evidence can support.