946 F.3d 780
5th Cir.2020Background
- Southern Credentialing created customized initial (83 pp.) and recredentialing (113 pp.) application packets for Hammond Surgical Hospital and later stopped providing services in 2013.
- Hammond (through a new provider) used forms that included ~50 pages identical to Southern Credentialing’s packets; those forms were behind a password until 2017 when they became publicly accessible.
- Southern Credentialing registered copyrights in the original packet (Feb 2014) and recredentialing packet (July 2014), then sued Hammond for copyright infringement.
- The district court granted summary judgment that Southern Credentialing owned valid copyrights and that Hammond infringed; at bench trial Southern Credentialing elected statutory damages and the court awarded $5,000 and attorney’s fees, and entered a permanent injunction.
- On appeal the Fifth Circuit affirmed copyright validity, infringement, and the injunction, but reversed the award of statutory damages and attorney’s fees under 17 U.S.C. § 412 and remanded for entry of an amended judgment without statutory damages or fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright originality | Forms show minimal creativity in selection/arrangement and are protectable | Forms are unoriginal or merely factual/blank forms | Held: Originality met; copyright valid |
| Infringement (copying) | Hammond copied large portions (~50%) verbatim; substantial similarity | Hammond did not copy or used only unprotectable facts | Held: Held Hammond infringed; injunction affirmed |
| Availability of statutory damages under 17 U.S.C. § 412 | Postregistration distribution (making forms publicly available) is a different kind of infringement (§106(3)) so §412’s preregistration bar doesn’t apply | Any preregistration infringement (regardless of type) bars statutory damages for later infringements of same work | Held: §412 bars statutory damages and attorneys’ fees because any preregistration infringement by the same infringer of the same work prevents statutory damages for subsequent infringements |
| Willfulness (impact on enhanced statutory damages) | Infringement was willful, so increased statutory damages could apply if available | Infringement was not willful | Held: Court found infringement not willful; moot after §412 barred statutory damages |
Key Cases Cited
- Feist Publ’ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality requires minimal creativity; facts not protected)
- Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992) (§412 bars statutory damages when preregistration infringement of same work occurred)
- Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1994) (copyright can protect selection/arrangement in compilations and forms)
- Bridgmon v. Array Sys. Corp., 325 F.3d 572 (5th Cir. 2003) (substantial similarity test and lay observer comparison)
- Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) (discusses continuing infringement when infringements are of the same kind)
- Qualey v. Caring Ctr. of Slidell, 942 F. Supp. 1074 (E.D. La. 1996) (rejects argument that different §106 violations after registration permit statutory damages)
- Troll Co. v. Uneeda Doll Co., 483 F.3d 150 (2d Cir. 2007) (dicta suggesting a long cessation of preregistration infringement might affect §412 analysis)