I Know You Know, Because I Told You So: Effective Notice Of Infringement

Copyright infringement is normally a factual question - it doesn't matter whether one intended to copy a substantial part of someone else's original expression if, in fact, one did so1 - but there are circumstances where the alleged infringer's state of mind does matter. Knowledge is relevant to secondary infringement under s. 27 of the Canadian Copyright Act, or to the assessment of statutory damages under s. 38.1, for example. Willful infringement may also be relevant to the applicable limitation period, to the assessment of costs or punitive damages, or to piercing the corporate veil.

Rights holders often want to put an alleged infringer on notice of the rights that they claim. What does it take for such a notice to establish a state of mind of knowing or willful infringement? A recent decision of the United States Court of Appeals for the Eleventh Circuit, while not directly applicable in Canada, offers some clues.

In Olem Shoe Corporation v. Washington Shoe Corporation, Washington claimed infringement of certain designs for women's boots. Washington had sent a typical "cease-and-desist" letter to the defendant, which included photographs of its boots, but did not identify any copyright registration or specifically identify that the plaintiff claimed rights in the design itself.

Olem's counsel asked for more information. Washington sent a further response identifying a copyright registration number for one design, but not another. Olem apparently canceled a shipment of one style of boots, but continued to sell others. Later, Olem discovered some technical deficiencies in the registration and filed an action for a declaration of non-infringement. Washington counter-claimed.

At first instance, the District Court granted summary judgment in favour of Washington on infringement, but in favour of Olem on whether or not that infringement was "willlful". Washington appealed the judgment and Olem cross-appealed.

The Court of Appeals for the Eleventh Circuit affirmed both findings. The boots were "strikingly similar" and this was enough to lead to an inference of copying, and therefore infringement. But the objective similarity was of no use to establish the state of mind of the infringer:

while striking similarity may be the basis for finding that a work has been copied, it is not evidence that Olem's state of mind was that of reckless disregard of the risk that it was violating copyrights when it purchased and sold the infringing boots. This...