Amicus Curiae Brief — Feltner v. Columbia Pictures Television, Inc.

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Y . Supreme Qourt, U.5

: FILED

No. 96-1768 NOV 7 199

- &R*K

In THE “

Supreme Court of the United States

Ocroser Term, 1997

C. ELVIN FELTNER, JR..,

Petitioner,

COLU MBIA PICTURES TELEVISION, INC..,

Respondent.

On Writ of Ceriorari to the

United States Court of Appeals

for the Ninth Circuit

Motion for leave to file Amicus Curiae Brief and

Brief of Howard B. Abrams

as amicus curiae in support of Petitioner

Of Counsel

Howard B. Abrams, pro se*

Professor of Law

University of Detroit Mercy School of Law

651 East Jefferson Avenue

Detroit, Michigan 48226

(313) 596-0215 (voice)

(313) 596-0280 (fax)

* counsel of record for Howard B. Abrams. amicus curiae

QUESTION PRESENTED FOR REVIEW

Whether 17 U.S.C. Section 504(c) permits or requires

a jury trial in actions for statutory damages for copyright

infringement.

The other questions presented for review in this case

are not addressed in this brief.

Service on Attorneys of Record

Service of a copy of this Motion for leave to file

Amicus Curiae Brief and Brief of Howard B. Abrams as

amicus curiae in support of Petitioner was made upon the

attorneys of record for the petitioner and the respondent

by sending copies via Airborne Express to John G.

Roberts, Jr., Hogan & Hartson L.L.P., 555 Thirteenth

Street N.W., Washington, D.C., 20004 (Airborne Express

airbill number 4078882570), the attorney for the

Petitioner, and to Henry J. Tashman, Davis, Wright &

Tremaine, 1000 Wilshire Boulevard, Suite 600, Los

Angeles, California, 90017 (Airborne Express airbill

number 4078882474) on Wednesday, November 12,

1997, for delivery on the morning of Thursday, Novem-

ber 13, 1997.

(ii)

In The

Supreme Court of the United States

October Term, 1997

No. 96-1768

C. ELVIN FELTNER, JR.,

Petitioner,

COLUMBIA PICTURES TELEVISION, INC.,

Respondent.

On Writ of Ceriorari to the

United States Court of Appeals

for the Ninth Circuit

Motion for Leave to File Amicus Curiae Brief and

Brief of Howard B. Abrams

as Amicus Curiae in Support of Petitioner

(iii)

MOTION FOR LEAVE TO FILE

AMICUS CURIAE BRIEF

Pursuant to Rule 37.4, Howard B. Abrams requests

leave of this court to file the following amicus curiae brief

in support of the petitioner in the case of C. Elvin Felt-

ner, Jr., Petitioner, v. Columbia Pictures Television, Inc.,

Respondent, No. 96-1768, now pending before this

Court. In support of this motion, makes the following

representations to this Court:

1. He is a member of the bar of this Court.

2. He has received permission to file this brief from

John Glover Roberts, Jr., the attorney for the petitioner.

3. He called the office Henry J. Tashman, the at-

torney for the respondent, (213) 229-9600, on Monday,

November 10, 1997, and on Tuesday, November 11,

1997, to request permission to file this brief but Mr.

Tashman was out of the office. Thus permission to file

this brief has not been received from the attorney for the

respondent.

4. The amicus curiae is a Professor of Law who has

taught, written and specialized in copyright law.

Howard B. Abrams

Wednesday, November 12, 1997

(iv)

TABLE OF CONTENTS

Questice P ‘for Revi

Service on Attorneys of Record

Motion for Leave to File

Table of Contents

Table of Authorities

Constitutional and

Statutory Provisions

Interest of the Amicus Curiae

Summary of Argument

Argument

Conclusion

Appendix

| Act of August 18, 1856, 11 Stat. 138 (Minot &

TABLE OF AUTHORITIES | Sanger ed. 1859) - p. 9, 25.

United States Constitution | Act of July 8, 1870, ch. 230, $§ 85-11, 16 Stat. 212

| (Sanger ed. 1871).

United States Constituion, Seventh Amendment

- pp. 2, 3, Act of July 8, 1870, ch. 230, §§ 99-103, 16 Stat. 212

(Sanger ed. 1871) - pp. 10-11.

Rev. Stat. title 60, ch. 3, §§ 4964-4967 printed in

United States Statutes currently in force Tue Revisep Statutes or THE Unrrep States, Passep

AT THE First Session oF THE Forty-THRD CONGRESS,

17 U.S.C. § 504(c) (1994) - pp. 2, 18, 20, 28. 1873-'74 957-60 (2d ed. 1878), codifying Act of July

: 8, 1870, ch. 230, $§ 99-102, 16 Stat. 212 (Sanger ed.

Former United States Statutes 1871) - pp. 10, 25, 28.

Act of May 31, 1790, ch. 15, 1 Stat. 124 (Peters ed. Act of March 3, 1891, ch. 565, $§ 7-9, 26 Stat. 1106.

1845) - pp. 2, 5. |

Id., § 2, 1 Stat. 124-25 - p. 6. Act of March 2, 1895, ch. 194, 29 Stat. 545 - p. 12.

Id., $6, 1 Stat. 125-26 - p.7n5.

Act of March 4, 1909, ch. 320, 35 Stat. 1075 (1909)

Act of April 29, 1802, ch. 36, 2 Stat. 171 (Peters ed. ~p. 17.

1845) - p. 8. . Id., § 25, 35 Stat. 1081 (codified as amended at 17

Id. § 2, 2 Stat. 171-p. 8. | U.S.C. § 101 by Act of July 30, 1947, ch. 391, 61

Id. § 3, 2 Stat. 171-72 - p. 8. Stat. 652 - p. 17.

Id. § 27, 35 Stat. 1082 (1909) - pp.16-17.

Act of February 15, 1819, ch. 19, 3 Stat. 481 (Peters

ed. 1846) - pp. 8-9. Act of August 24, 1912, ch. 356, 37 Stat. 488 - p. 18,

n.8.

The Act of 1831, Act of February 3, 1831, ch. 16, 4

Stat. 436 (Peters ed. 1846) - p. 8. | Act of July 30, 1947, ch. 391, 61 Stat. 652 - p. 17.

Id., $ 6, 4 Stat. 437-38 - pp. 8, 13.

Id., $7, 4 Stat. 438 - p. 9. English Statutes

, Statute of 8 Anne c. 19 (1710) - p. 6.

(vi) (vii)

Legislative History Materials

Statute of 3 & 4 William IV, c. 15 - p. 15, Arguments Before the Committees on Patents of the

Senate and House of Representatives on the Bills S.

6330 and H.R. 19853 to Amend and Consolidate the

Acts Respecting Copyright, 59th Cong., 2d Sess. 177-

78 (1906), reprinted in 4 Lecistatve History oF THE

1909 Copyricut Act, Part J (A. Goldman & EF.

Brylawski, ed. 1976) - pp. 21-22.

House Comm. on THE Jupiciary, Copyricut Law

| RevisioN—REcisTER OF THE REGISTER OF CopyRIGHTS

ON THE GENERAL Revision or THE CopyricHt Law

102-06 (Comm. Print 1961) - p. 22.

House Comm. On THE Jupiciary, Copyricut Law

Revision Part 6—SuprLeMentary REporT OF THE

Tue U.S. Copyricut Law: 1965 Revision But 135-38

(Comm. Print 1965) - p. 22.

Cases

Backus v. Gould, 48 U.S. (7 How.) 798 (1849) - p.

14.

Beacon Theatres, Inc. v. Westover, 359 U.S. 500

(1959) - pp. 3 n.2, 24.

Bennett v. Boston Traveller Co., 101 F. 445 (2d Cir.

1900) - p. 12.

Bennett v. Carr, 96 F. 213 (2d Cir. 1899) - p. 12.

(ix)

(viii)

Bleistein v. Donaldson Lithographing Co., 188 U.S.

239 (1903) (Holmes, J.), rev'g Courier Lithographing

Co. v. Donaldson Lithographing Co., 104 F. 993 (6th

Cir. 1900), aff'g Bleistein v. Donaldson

Co., 98 F. 608 (C.C.D. Ky. 1899) - p. 14.

Blunt v. Patten, 3 F. Cas. 762 (C.C.S.D.N.Y. 1828)

(No. 1579) - p. 15.

Blunt v. Patten, 3 F. Cas. 763 (C.C.S.D.N.Y. 1828).

(No. 1580) - p. 15

Bolles v. Outing Co., 175 U.S. 262 (1899) - p. 14.

Boucher v. DuBoyes, Inc., 137 F. Supp. 639

(S.D.N.Y. 1955) - p. 24.

Brady v. Daly, 175 U.S. 148 (1899) - pp. 10, 15, 25-

26-28.

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.

53 (1884), affg Sarony v. Burrow-Giles Lithographic

Co., 17 F. 591 (C.C.S.D.N.Y. 1883) - p. 16.

Caliga v. Inter Ocean Newspaper Co., 212 U.S. 182

(1909), aff'g 157 F. 186 (7th Cir. 1907) - p. 16.

Chappell & Co. v. Palermo Cafe, Inc., 249 F.2d 77

(1st Cir. 1957) - pp. 23-25.

Chappell & Co. v. Palermo Cafe, Inc., 146 F. Supp.

867 (D. Mass. 1956) - p. 23.

Chappell & Co. v. Cavalier Cafe, Inc., 13 F.R.D. 321

(D. Mass. 1952) - p. 23.

(x)

« ° a en

Chatterton v. Cave, 3 App. Cas. 483 (1875) - p. 15.

Curtis v. Loether, 415 U.S. 189 (1974) - - pp. 3 n.2,

4, 20, 27.

Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962) - pp.

3 n.2, 24.

Dwight v. Appleton, 8 F. Cas. 183 (C.C.S.D.N.Y.

1843) - p. 16.

F.W. Woolworth Co. v. Cont Arts, Inc., 344

U.S. 228 (1952), affg 193 F.2d 162 (ist Cir. 1951),

aff'g Contemporary Arts, Inc. v. F. W. Woolworth Co.,

93 F. Supp. 739 (D. Mass. 1950) - p. 25-26.

Fraser v. Jacobs, 1789-1909 Copyright Dec. (13

1897) - p. 16.

L.A. Westermann Co. v. Dispatch Printing Co., 239

U.S. 100 (1919) - p. 26.

Parsons v. Bedford, 28 U.S. (3 Pet.) 433 (1830) -

p. 4.

Pernell v. Southall Realty, 416 U.S. 363 (1974) - pp.

3 n.2, 5.

Ross v. Bemhard, 396 U.S. 531 (1970) - pp. 2, 3 n.2,

4, 19, 24, 28.

Stevens v. Gladding, 58 U.S. (17 How.) 447 (1854) -

p. 14.

(xi)

CONSTITUTIONAL AND

Tull v. United States, 481 U.S. 412 (1987) - pp. 3 n.2, STATUTORY PROVISIONS

4, 27-28.

Webster v. Daly, 163 U.S. 155 (1896) - p. 15. Seventh Amendment, United States Constitution:

Zenith Radio Corp. v. Matsushita Electric Industrial

. . In Suits at common law, where the value in con-

Corp. ion). 676 Fdeop ee an et eee | troversy shall exceed twenty dollars, the right of trial by

Litigation " ° ° . ’ ’ i d.

631 F.2D 1069 (3d Cir. 1980) (2-1) - p. 29. | i hrrastneh stmiee

2 Howarp B. Aras, THe Law or Coryricut, § | Due to time constraints and the number and length of

16.04[D] (1997) - pp. 3 n.1. ) the statutory provisions involved, the amicus curiae was

, | not able to type in the text of the relevant statutory provi-

Biack’s Law Dicronary 1251 (6th ed. 1990) - p. 7 | sions in time to file this brief in a timely fashion. If the

n.4. . typing can be completed in a timely manner, the amicus

10 CJS. Penalties § 11 (1987) - p.7n.4 . curiae plans to file a supplement to this brief setting forth

the text of the statutory provisions cited in the brief.

CopyriGut Orrice, Decisions of THE Unrrep STATES

Courts INVoLvinGc CopyriGHT AND INTELLECTUAL

Property 1789-1909 with AN ANALYTICAL INDEX,

Coryricut Orricr Buttemins Nos. 13-16 (1980) - p.

13.

35A Worps anv Purases 617 (permanent ed. 1963)

-p. 7 n.4.

Atte 8 alge a AD rai Lela, Neh la tat TO an, ll A ER ate

—

(xii) (xiii)

(xiv)

~ _ —

INTEREST OF THE AMICUS CURIAE

The amicus curiae is a Professor of Law at the Univer-

sity of Detroit Mercy School of Law who has specialized,

written” and taught in the area of copyright law. This

brief is submitted in the belief that the courts which have

denied jury trials on the issue of statutory damages have

been unaware of the historical roots of the contemporary

Statutory damages provision in the purely legal remedies

of the earlier American Copyright Acts which could be

determined by a jury under pre-merger custom.

° Howarp B. ABRAMS, THE Law or CopyriGut (2 vol. 1991, 1992,

1993, 1994, 1995, 1996, 1997) (treatise originally published by Clark

Boardman Callaghan which subsequently merged with Thomson and

Thomson, which in 1996 merged with West Publishing Company to

form West Group Publishing); Copyricut (1992) (casebook co-

authored with Sheldon Halpern and David Shipley); Standards of

Qualification for the Protection of Literary and Antistic Property,

Académie Internationale de Droit Comparé, Rapporis Généraux,

XIVe Congrés International, Institut Hellénique de Droit Internation-

al et Etranger, Athénes (International Academy of Comparative Law,

General Reports, XI Vth International Congress, Hellenic Institute of

International and Foreign Law, Athens) 449-456 (1994); Originality

and Creativity in Copyright Law, 5S Law & Contemp. Pross. 3-44 (No.

2, Spring 1992); Authors’ Rights in Light of New Technology, 38 AMER-

ICAN JOURNAL OF COMPARATIVE Law 283-323 (Supp. 1990) (Report for

the United States to the International Academy of Comparative Law

on “Authors’ Rights in Light of New Technology” for the XIIIth Inter-

national Congress of Comparative Law held in Montréal, Canada, Au-

gust, 1990); Who's Sorry Now? Termination Rights and the Derivative

Works Exception, 62 Universtry oF Detrorr Law Review 181-243

(1985); Copyright, Misappropriation and Preemption: Constitutional

and Statutory Limits of State Law Protection, 1983 Supreme Court

Review 509-581; The Historic Foundation of American Copyright Law:

Exploding the Myth of Common Law Copyright, 29 Wayne Law

Review 1119-1191 (1983); Goldstein v. California: Sound, Fury and

Significance, 1975 Supreme Court Review 147-187 (co-authored with

Robert H. Abrams).

SUMMARY OF ARGUMENT

The Seventh Amendment requires that issues of

Statutory damages be tried to a jury whenever a party

makes a timely demand for a jury trial because the

remedy is a legal rather than an equitable remedy. In

Ross v. Bernhard, 396 U.S. 531 (1970), set forth three

tests to determine whether there was a right to a jury

trial;

As our cases indicate, the “legal” nature of

an issue is determined by considering, first,

the pre-merger custom with reference to such

questions; second, the remedy sought; and,

third, the practical abilities and limitations of

juries. Of these factors, the first, requiring ex-

tensive and possibly abstruse historical in-

quiry, is obviously the most difficult to apply.

Id. at 538, n. 10 (1970).

The legal nature of statutory damages is conclusively

demonstrated as a matter of “pre-merger custom” by

tracing the historic evolution of the statutory damages

provision of the current Copyright Act, 17 U.S.C. §

504(c) (1994), from the first American Copyright Act,

Act of May 31, 1790, ch. 15, 1 Stat. 124 (Peters ed. 1845),

to the present day. /nfra Argument §§ I-V. Today’s

Statutory damages are the direct descendants of the qui

tam recoveries in legal actions provided by the earlier

American copyright acts.

The legal nature of the statutory damages remedy also

points to the legal rather than equitable character of this

remedy, infra Argument § VI, and the limitation of the

Seventh Amendment's applicability based on the “practi-

cal abilities and limitations of juries” does not apply to

Statutory damages. Jnfra Argument § VII.

ARGUMENT

I. The Constitutional Background

Determination of statutory damages under section

504(c) of the Copyright Act, involving as it does one of

the fundamental protections of the Bill of Rights—the

Seventh Amendment’s guarantee of a jury trial—raises a

Constitutional rather than a purely copyright issue.

The Seventh Amendment of the U.S. Constitution pro-

vides that “In Suits at common law, where the value in

controversy shall exceed twenty dollars, the right of trial

by jury shall be preserved.” U.S. Const. amend. 7. A

series of cases arising after the merger of law and equity

under the Federal Rules of Civil Procedure, presented

the Supreme Court with the question of how to preserve

the Constitutional right to a jury trial in an integrated

court 2

As the philosophical basis for its position, the Court

has relied on the statement:

[The right to a jury trial extends] not merely

suits, which the common law recognized

among its old and settled proceedings, but

suits in which legal rights were to be as-

certained and determined, in contradistinction

1. The argument made in this brief is largely derived from the

arguments on this issue presented in the author’s treatise. 2 HowARD

B. ABRAMS, THE Law or Copyriont, § 16.04[D] (1997).

2. _—‘ The trio of Ross v. Bemhard, 396 U.S. 531 (1970), Dairy Queen,

Inc. v. Wood, 369 U.S. 469 (1962), and Beacon Theatres, Inc. v.

Westover, 359 U.S. 500 (1959), are usually regarded as the seminal de-

cisions in the Supreme Court's analysis of the Seventh Amendment's

guarantee of a jury trial after the merger of law and equity in the fed-

eral courts. See also Tull v. United States, 481 U.S. 412 (1987); Perel!

v. Southall Realty, 416 U.S. 363 (1974); Curtis v. Loether, 415 U.S. 189

(1974).

to those where equitable rights alone were

recognized, and equitable remedies were ad-

ministered ... In a just sense, the amendment

then may well be construed to embrace all

suits which are not of equity and admiralty

jurisdiction, whatever may be the peculiar

form which they may assume to settle legal

rights.

Parsons v. Bedford, 28 U.S. (3 Pet.) 433, 447 (1830)

(original emphasis); quoted in Ross v. Bernhard, 396 U.S.

531, 533 (1970), and in Curtis v. Loether, 415 U.S. 189,

191 (1974).

From this premise, the Supreme Court in Ross v. Bern-

hard, 396 U.S. 531 (1970), set out the three tests to be

used to determine whether there was a right to a jury

trial:

As our cases indicate, the “legal” nature of

an issue is determined by considering, first,

the pre-merger custom with reference to such

questions; second, the remedy sought; and,

third, the practical abilities and limitations of

juries. Of these factors, the first, requiring ex-

tensive and possibly abstruse historical in-

quiry, is obviously the most difficult to apply.

Id. at 538, n. 10 (1970). Similarly, in Tull v. United States,

481 U.S. 412 (1987), the Court described the inquiry as a

two step process:

First, we compare the statutory action to 18th

Century actions brought in the courts of En-

gland prior to the merger of the courts of law

and equity. Second, we examine the remedy

sought and determine whether it is legal or

equitable in nature.

Id. at 417-18 (citations omitted). Using historical in-

quiry to find the closest analog to a modern statutory

3. It seems reasonable to infer that Tull listed on the first two

tests in Ross because they are concerned with whether an action

6 eae

;

cause of action in the proceedings in English courts at the

time of the Seventh Amendment was adopted was given

perhaps its fullest in Pernell v. Southall Realty,

416 U.S. 363 (1974), where the Court engaged into a

detailed and lengthy inquiry into the form of proceedings

a landlord would use to evict a tenant for nonpayment of

rent in London in 1791 to determine that a jury trial was

required by the Seventh Amendment. /d. at 370-81.

Thus the first step in determining whether there is a

right to a jury trial on the issue of statutory damages is to

inquire as to the custom of the courts prior to the merger

of law and equity.

Il. The Evolution of Statutory Damages: 1789-1909

Tracing the evolution of monetary recoveries for in-

fringement of copyright under American copyright

statutes demonstrates that the statutory damage provision

of the present Copyright Act is the direct descendant of

the strictly legal monetary awards provided under the

earlier British and American cc pyright statutes. Thus the

first of the three tests for the right to a jury trial under

the Seventh Amendment is satisfied.

A. 1790-1856: Qui Tarn Recoveries as the Monetary

Recoveries for Copyright Infringement

1. The Act of 1790: The First American

What we know today as statutory damages evolved

directly from the earliest form of monetary awards al-

lowed in copyright cases. The original American Copy-

right Act, Act of May 31, 1790, ch. 15, 1 Stat. 124 (Peters

ed. 1845), adopted by the First Congress in 1790, pro-

(footnote continued from previous page)

qualifies for the Seventh Amendment's guarantee of a jury trial while

the third test is designed to eliminate actions that would otherwise

qualify.

vided only one form of monetary relief against infringers

of published works:

[E}very such offender and offenders shall also

forfeit and pay the sum of fifty cents for every

sheet which shall be found in his or their pos-

session, either printed or printing, published,

imported or exposed to sale, contrary to the

true intent and meaning of this act, the one

moiety thereof to the author or proprietor of

such map, chart, book or books who shall sue

for the same, and the other moiety thereof to

and for the use of the United States, to be

recovered by action of debt in any court of

record in the United States, wherein the same

is cognizable.

Id. § 2, 1 Stat. 124-25 (emphasis added). This provision

was derived from the first English copyright act, the

famous Statute of Anne. 8 Anne c. 19 (1710). The

Statute of Anne provided the following monetary assess-

ment against an infringer:

[Sjuch offender or offenders shall forfeit one

penny for every sheet which shall be found in

his, her or their custody, either printed or

printing, published, or exposed to sale, con-

trary to the true intent and meaning of this

act; the one moiety thereof to the Queen’s

most excellent majesty, her heirs and succes-

sors, and the other moiety thereof to any per-

son or persons that shall sue for the same, to

be recovered in any of her Majesty’s courts of

record at Westminster, by action of debt, bill,

plaint, or information, in which no wager of

law, essoin, privilege, or protection, or more

than one imparlance shall be allowed.

Id. § 1. The Statute of Anne thus provided the historical

basis for the monetary remedy of a qui tam* recovery for

4. “Qui tam” translates from the Latin as “who as well” and is

infringement of published works that was embodied in

the early American copyright acts.

For purposes of the Seventh Amendment inquiry, it is

that an action for money under this provi-

sion was an “action of debt,” an action that indisputably

belongs to the common law rather than to equity. More-

over, qui tam recoveries, the form of remedy granted by

the contemporaneous English statute, are also in-

disputably of a legal nature.

Four characteristics of this remedy are important to

note. First, and perhaps most importantly, this was the

only form of monetary recovery from an infringer that

was permitted for the infringement of a published work.

Second, any money recovered from the infringer is

divided equally between the United States and the author

or copyright owner, the essence of a qui tam recovery.

Third, only the proprietor of the copyright could bring

the action, thus differing from most gui tam actions

where any citizen or even the government could bring the

action. Fourth, there is a mechanical, “multiplication

table” approach to calculating the amount of the

monetary judgment; legislatively fixed amount of money

(footnote continued from previous page)

shorthand for the Latin phrase “gui tam pro domino rege quam pro

ipso in hac parte sequitur,” which translates as “who sues on behalf of

the King as well as for himself.” The name qui tam action is applied

to actions under statutes that authorize individuals to bring the action

and divide the penalty recovered between the person bringing the ac-

tion and the state. The designation gui tam action arose from the fact

that the plaintiff sued “as well” for the state as for himself or herself.

Biacx’s Law Dicrionary 1251 (6th ed. 1990). See also 35A Worps

AND Purases 617 (permanent ed. 1963); 70 C.J.S. Penalties § 11

(1987).

5. Purely compensatory damages were available only for infringe-

ment of unpublished manuscripts in an action on the case. Act of May

31, 1790, ch. 15, § 6, 1 Stat. 124, 125-26 (Peters ed. 1845).

is multiplied by the number of sheets of the infringing

book, map or chart in the infringer’s possession to

determine the sum of money for which the infringer is |i-

able. This multiplication table approach only gradually

disappears from the monetary remedies for copyright in-

fringement. It is also important to note that the original

relief, a feature that was not added to the copyright laws

until the Act of February 15, 1819, ch. 19, 3 Stat. 481

(Peters ed. 1846).

2. From the Act of 1802 to the Act of 1856

Until the middle of 19th Century, succeeding copyright

Statutes continued the same scheme of allowing mo

judgments for the infringement of a published work only

in an amount determined by multiplying a congressional-

ly fixed sum by the number of infringing sheets, which

sum would then be divided between the United States

and the author or proprietor. The Act of April 29, 1802,

ch. 36, 2 Stat. 171 (Peters ed. 1845), which added “histor-

ical or other print or prints” to the subject matter pro-

tected by copyright, id. § 2, 2 Stat. 171, provided that the

amount of money recoverable for infringements of such

prints was to be $1.00 per sheet. Jd. § 3, 2 Stat. 171-72.

Although it did not refer to this recovery as an “action of

debt,” it continued to divide any amount recovered be-

tween the United States and the copyright owner. /d.

The Act of 1831, Act of February 3, 1831, ch. 16, 4

Stat. 436 (Peters ed. 1846), a complete revision of the

cents per sheet of any infringing books, again stating that

any such sum was “to be recovered by action of debt,”

and continued to divide any monetary recoveries between

the United States and the copyright owner. Jd. § 6, 4

Stat. 437-38. For “any print, cut, or engraving, map,

chart, or musical composition,” the amount recoverable

was fixed at one dollar per sheet, “to be recovered in any

court having competent jurisdiction” and divided equally

between the United States and the copyright owner. Jd. §

7, 4 Stat. 438. Unpublished manuscripts were again pro-

tected separately, and damages for their infringement

could be sued for “by a special action on the case

founded upon this act.” Jd. § 9, 4 Stat. 438. Again, the

legal nature of these remedies cannot seriously be ques-

tioned. |

The year 1819 saw the adoption of a statute authoriz-

ing the circuit courts of the United States “to grant in-

junctions, according to the course and principles of courts

of equity, to prevent violation of the rights of any authors

or inventors.” Act of February 15, 1819, ch. 19, 3 Stat.

481 (Peters ed. 1846). This act was the first statutory in-

clusion of any form of equitable relief for infringement of

t. Relevant to the Seventh Amendment inquiry,

it must be noted that this statute did not provide any

form of monetary recovery in equity whatsoever.

B. The Introduction of Compensatory Damages

1. The Act of 1856 |

The first major variation in this pattern of multiplica-

tion table calculation of qui tam recoveries as the

monetary remedy for copyright infringement came in

1856 when Congress extended copyright protection to the

public performance of any “dramatic composition.” Act

of August 18, 1856, 11 Stat. ant (Minot & rion of =

1859). Specifically referring to the monetary remedy

eitegion performances as “damages,” the Act provided

for a recovery by the copyright owner of a sum of “not

less than one hundred dollars for the first, and fifty dol-

lars for every subsequent [infringing] performance. Id.,

11 Stat. 139. This scheme differed from the previous ap-

proach to monetary recoveries in two respects. First, the

statute characterized as “damages;” the United States

was no longer entitled to_one-half of the recovery. Sec-

ond, the amount determined by the multiplication table

approach was the statutorily required minimum that

could be awarded, but was not a maximum.

.¥

Brady v. Daly, 175 U.S. 148 (1899), held that monies

awarded under the direct and near verbatim descendant

of this provision, Rev. Stat. § 4966, were compensatory

damages rather a form of qui tam recovery and that the

1856 Act and its progeny had “nothing in the nature of a

qui tam action about it.” 175 U.S. 154-55,

The importance of Brady to the present case is that the

Brady, the plaintiff in error, was arguing that an award of

damages for infringing a play based on the statutory mini-

mui was a penalty and thus the circuit court lacked juris-

diction over the action which could only be exercised by a

district court.© The Supreme Court stated it was un-

necessary to determine whether the district courts had ex-

clusive jurisdiction over the qui tam monetary awards

under the other sections of the then current Copyright

Act, 175 U.S. at 152-53, holding that the monetary

awards provided by the 1856 Act and preserved in Rev.

Stat. § 4966 (multiplication table minimum with no maxi-

mum, all monies going to the copyright owner), were

compensatory damages. 175 U.S. 154-57. Thus Brady

clearly indicated that these progenitors of today’s

Statutory damages were both legal remedies. Brady itself

was an appeal from a action brought at law in which a

Jury was voluntarily waived. 175 U.S. at 151.

2. The Act of 1870: The First Allowance of

Purely Compensatory Damages for In-

fringement of a Published Book

The Act of July 8, 1870, ch. 230, §§ 85-11, 16 Stat. 212

(Sanger ed. 1871), was the next complete revision of

monetary relief. For the first time, the statute provided

compensatory damages for infringement of a published

6. . This case arose in the days when there were two courts of

orginal jurisdiction in the federal system, the district courts and the

circuit courts.

-10-

“ ad, it te —~s

do Ot tee ob « >

book that were independent of any multiplication table.

Id. § 99, (Any unauthorized person who would “print,

publish, or import, or, knowing the same to be so printed,

published or imported, shall sell or expose to sale any

copy of such book, such offender . . . shall also forfeit and

pay such damages as may be recovered in a civil ac-

tion.”). For “any map, chart, musical composition, print,

cut engraving, or photograph, or chromo, or of the des-

cription of any painting, drawing, statue, statuary, or

model or design intended to be perfected and executed as

a work of the fine arts,” the prior scheme of monetary

awards was continued. The amount was statutorily fixed

at one dollar for each sheet containing an infringing copy,

except “in case of a painting, statue or statuary,” for

which the amount was fixed at ten dollars for each copy,

and the amount thus determined was again divided

equally between the copyright owner and the United

States. Id. § 100. The damage provisions for infringing

performances of “any dramatic composition” were identi-

cal to those of the 1856 Act: a minimum of one hundred

dollars for the first infringing performance plus fifty dol-

lars for each subsequent infringing performance, no max-

imum recovery specified by statute, and the entire

amount recovered belonged to the copyright owner. Jd. §

101. As before, compensatory damages were provided

for the infringement of an unpublished manuscript. /d. §

102. Under the Revised Statutes of 1873-74, the relevant

provisions of the 1870 Act were renumbered but

remained essentially unchanged. Compare Act of July 8,

1870, ch. 230, §§ 99-102, 16 Stat. 212 (Sanger ed. 1871),

with Rev. Stat. title 60, ch. 3, §§ 4964-4967, printed in THE

Revisep STATUTES OF THE Unirep States, PasseD AT THE

First Session OF THE Forty-THirp Conoress, 1873-74 957-

60 (2d ed. 1878). The amendment of these sections by

the Act of March 3, 1891, ch. 565, §$§ 7-9, 26 Stat. 1106,

made no change in the relevant provisions for monetary

awards against infringers.

-ll-

3. The Act of 1895: Correcting for Abusive

Overcompensation

Using the multiplication table approach as a method

to calculate either qui tam recoveries or compensatory

damages to an injured copyright owner rather than to as-

sess a quasi-criminal penalty raises the question of sys-

temically undercompensating or overcompensating the

lem of overcompensation, which arose as the perhaps in-

evitable result of technical progress in reproductive tech-

nology. The monetary awards recoverable for infringe-

ment of various works of visual art remained calculated

at a rate of one dollar for every infringing sheet, with the

award divided equally between the copyright owner and

the United States; however, for photographs a maximum

award of $5,000 and a minimum award of $100 was su-

perimposed on the calculation, while a maximum award

of $10,000 and a minimum of award $250 was super-

imposed on the recovery provided for infringing copies of

a variety of other types of works of visual art. Act of

March 2, 1895, ch. 194, 29 Stat. 545.

The type of problem this amendment contemplated

can be illustrated by the case of a daily newspaper print-

ing an infringing photograph, engraving or illustration. A

copy of the newspaper would sell for only a tiny fraction

of the statutory amount prescribed for each infringing

copy of the work. Thus a newspaper selling 30,000 copies

for one or two cents a copy (this was 1895), could be li-

able for $30,000 for inadvertently printing an infringing

photograph even though the total income derived from

the sale of the papers was only $600, and the overwhelm-

ing majority of the newspaper’s content had nothing to do

with the infringement. Cases such as Bennett v. Boston

Traveler Co., 101 F. 445, 449 (2d Cir. 1900) (apparently

tried to a jury, with the trial court “directing a verdict for

the defendant”), and Bennett v. Carr, 96 F. 213, 214 (2d

Cir. 1899) (“a jury awarding a verdict of $10,000”), il-

» fs

lustrate the potential problem, even though they were de-

cided on grounds unrelated to the calculation of the

amount of any monetary recovery, possibly to avoid the

damage issue where it led to excessive results. beng

This critical historical importance of this provision is

that it establishes the pre-merger legal nature of damages

calculated in the same manner as the “in lieu” damages

provided in the 1909 Act (a multiplication table approach

subjected to maximum and minimum statutory limits to

the recovery) and continued in the 1976 Act with the

dropping of the multiplication table approach.

Ill. The Legal Nature of the Monetary Awards

from 1790 to 1909

The critical inquiry concerning the Seventh Amend-

ment right to a jury trial on the issue of statutory

damages is whether actions for monetary recovery

brought under any of the provisions analyzed above, the

progenitors of today’s statutory damages provisions, were

brought as legal or as equitable actions. During the peri-

od prior to the 1909 Copyright Act when there was “

strict separation of law and equity, the inescapable fact is

that such actions were routinely brought as legal rather than

equitable actions, and they were routinely tried to a jury.

This can be demonstrated by a review of the copyright

actions for monetary awards brought from the adoption

of the original American Copyright Act in 1790 through

the adoption of the 1909 Act. These decisions are easier

to find than it might first appear. The Copyright Office

has collected and published all of these decisions in a

single set of four volumes, Copyricut Orrice, Decisions OF

THE Unrrep States Courts Invotvinc CopyRiGHT AND IN-

TELLECTUAL Property 1789-1909 wir AN ANALYTICAL INDEX,

Copyricut Orrice Buiierins Nos. 13-16 (1980), saving the

tremendous amount of time and labor that would other-

wise be required to locate all of these decisions. Al-

though there are too many decisions to discuss or even

~ $9.

list each one individually, several illustrate the legal na-

ture of these remedies quite clearly.’

Particular note should be taken of Stevens v. Gladding,

58 U.S. (17 How.) 447, 453-455 (1854), which expressly

held the monetary awards provided by the then current

Similarly in Backus v. Gould, 48 U.S. (7 How.) 798

(1849), involving “a qui tam action . . . brought under the

sixth section of the Act of 1831,” 48 U.S. at 811; Act of

February 3, 1831, ch. 16, § 6, 4 Stat. 436, 437-38 (Peters

ed. 1846), the Supreme Court remanded an award for a

new trial due to faulty jury instructions. In Bolles v. Out-

ing Co., 175 U.S. 262 (1899), the Supreme Court ruled

that Rev. Stat. § 4965 was “a substantially copy” of § 6 of

the 1831 Act, 175 U.S. 265, and the case before it “is

clearly controlled” by Backus.” 175 U.S. at 266. The

famous copyright case of Bleistein v. Donaldson

Lithographing Co., 188 U.S. 239 (1903) (Holmes, J.), revg

Courier Lithographing Co. v. Donaldson Lithographing

Co., 104 F. 993 (6th Cir. 1900), affg Bleistein v. Donald-

son Lithographing Co., 98 F. 608 (C.C.D. Ky. 1899), in-

volved a suit for a monetary award under Rev. Stat. §

4965, which provided both a multiplication table recovery

of $1.00 per sheet of infringing copies limited by a maxi-

mum recovery of $5,000.00 and a minimum recovery of

$100.00, thus making it a model of for the Statutory

damage provisions of the 1909 Act. In that case, the trial

court had “instruct(ed] the jury to find a verdict for [the

defendant],” 98 F. at 613, a matter which caused no com-

ment by the Supreme Court.

_ Arecurring pattern throughout the period before 1909

is the bringing of separate suits at law for recovery of

7. Due to time limitations, it has not been possible for the author

of this brief to read all of the decisions printed in these volumes,

therefore the author's review of copyright cases from 1790 to 1909

while substantial, has not been exhaustive.

-14-

money under the provisions of the acts discussed above

and in equity for injunctive relief. For example, Blunt v.

Patten, 3 F. Cas. 762 (C.C.S.D.N.Y. 1828) (No. 1579), a

case that could only have sought damages under § 2 of

the Act of May 31, 1790, ch. 15, § 2, 1 Stat. 124, 124-25

(Peters ed. 1845), was tried to a jury. The parallel action

in equity, Blunt v. Patten, 3 F. Cas. 763 (C.C.S.D.N.Y.

1828) (No. 1580), denied the application for an injunc-

tion pending the outcome of action at law, then issued

one following a jury verdict for the plaintiff. Similarly,

the Supreme Court decided an appeal from an equitable

action in Webster v. Daly, 163 U.S. 155 (1896), and de-

cided an appeal from an award of damages under Rev.

Stat. § 4966 in the corresponding legal action in Brady v.

Daly, 175 U.S. 148 (1899) (jury trial waived) without the

slightest hint that the action for damages could be

brought anywhere other than a court of law. Brady ruled

that an action to recover a monetary award under Rev.

Stat. § 4966 should be regarded as an action for damages

and “has nothing in the nature of a qui tam action about

it, we think it provides for the recovery of neither a pen-

alty nor a forfeiture.” 175 U.S. at 154-55. Brady also dis-

cusses the English equivalent of Rev. Stat. § 4966, the

Statute of 3 & 4 William IV, c. 15, and its interpretation

in Chatterton v. Cave, 3 App. Cas. 483 (1875), reaching

the same conclusion as Brady. 175 U.S. at 157.

Perhaps the most conclusive demonstration of the

legal nature of these remedies for purposes of the

Seventh Amendment analysis is that actions under these

statutory provisions were routinely tried at law, whether

to a jury or in a bench trial, and not in equity without the

slightest hesitation or question on the part of any court or

litigant. Most cases at law simply do not even discuss the

issue but merely mention in passing that the case was

tried to a jury or was tried without a jury rather than in

equity. Indeed, this automatic classification of such ac-

tions as legal in the days of separate law and equity

courts and the very lack of discussion over whether the

statutory monetary remedies were legal or equitable, is

the most convincing proof that these monetary recoveries

were legal in nature was beyond dispute. See, e.g., Caliga

v. Inter Ocean Newspaper Co., 212 U.S. 182 (1909), aff'g

157 F. 186 (7th Cir. 1907) (action for award under Rey.

Stat. § 4965, jury verdict directed); Burrow-Giles

Lithographic Co. v. Sarony, 111 U.S. 53 (1884), aff’g

Sarony v. Burrow-Giles Lithographic Co., 17 F. 591

(C.C.S.D.N.Y. 1883) (damages under Rev. Stat. § 4965);

Dwight v. Appleton, 8 F. Cas. 183 (C.C.S.D.N.Y. 1843)

(action of debt qui tam, presumably brought under 1831

Act, tried to a jury); but see Fraser v. Jacobs, 1789-1909

(C.C.N.D. Ill. 1897) (issuing a permanent injunction and

awarding $100 “being the minimum damages fixed by the

Statutes for the unauthorized performance of the com-

plainant’s said copyrighted play” without objection by the

defendant; listed in the Copyright Office Bulletin as an

unreported case).

IV, Statutory Damages Under the Copyright Acts

of 1909 and 1976

The remaining link in the Seventh Amendment analy-

sis Is to demonstrate the lineal ancestry of these provi-

sions with our contemporary statutory damage provisions.

In this inquiry, particular attention must be given to the

provisions of the 1909 Act, which merged law and equity

for copyright cases roughly 29 years prior to this being

done for all federal cases.

A. The 1909 Act

1. The Merger of Law and Equity

Of critical relevance to the Seventh Amendment issue

was the merger of law and equity for cases arising under

the 1909 Copyright Act, section 27 of which provided:

“That the proceedings for an injunction, damages, and

profits, and those for seizure of infringing copies, plates,

molds, matrices, and so forth, aforementioned, may be

- 16-

united in one action.” Act of March 4, 1909, ch. 320, §

27, 35 Stat. 1075, 1082 (1909). When the Copyright Act

was codified in 1947, Act of July 30, 1947, ch. 391, 61

Stat. 652 (hereinafter sometimes referred to as “17

U.S.C. (1909 Act), this was omitted as the Fed-

eral Rules of Civil Procedure had by then merged law

and equity for all forms of civil action.

This merger of law and equity for copyright cases took

place some 29 years prior to the merger of law and equity

for other forms of civil action with the adoption of the

Federal Rules of Civil Procedure. As of 1909, the same

court could decide both legal and equitable issues in the

same proceeding without worrying about the difference

except for the question of the right to a jury trial. Thus

inquiry into “pre-merger custom” under the Supreme

Court’s Seventh Amendment analysis must focus on the

period from 1790 to 1909.

2. Statutory Damages Under the 1909 Act

The adoption of the 1909 Act, Act of March 4, 1909,

ch. 320, 35 Stat. 1075 (1909), made several major

changes in the provisions for statutory damages. First,

qui tam recoveries were abolished; the copyright owner

retained all monetary awards without any share going to

the United States. Act of March 4, 1909, ch. 320, § 25,

35 Stat. 1075, 1081 (codified as amended at 17 U.S.C. §

101(b) (1909 Act)). Second, purely compensatory

damages described as “such damages as the copyright

proprietor may have suffered duc »o the infringement,”

id., could be recover for all forms of copyrightable works,

not just unpublished works and published books. As an

alternative, the copyright owner could recover “in lieu of

actual damages and profits, such damages as to the court

shall appear to be just,” id., ie., statutory damages. Maxi-

mum and minimum limits on all statutory damage awards

were set,® and the multiplication table approach to

8. The limits were a $250 minimum and a $5,000 maximum.

Separate maximum and minimum limit of $50 and $200 were estab-

determining the amount of a monetary award was

retained, but in a subordinete role to the maximum and

minimum limitations. The 1909 Act clearly echoed the

amounts provided in previous statutes. The amounts to

be awarded were ten dollars for every infringing copy of

“a painting, statue or sculpture,” id. First subsection; one

dollar for every infringing copy of any work ot'ser than a

painting, statue or sculpture, id. Second subseciion; one

hundred dollars for the first and fifty dollars for each sub-

sequent infringing performance of a “dramatic or

dramatico-musical or choral or orchestral composition,”

id. Fourth subsection; ten dollars for each infringing per-

formance of “other musical compositions,” id; fifty dol-

lars for every infringing delivery of a “lecture, sermon or

address,” id. Third subsection. The maximum limit on an

award of statutory damages did not apply to infringe-

ments occurring after actual written notice was served on

the defendant. Id.

B. The 1976 Act

Statutory damages assumed their current form in sec-

tion 504(c) of the 1976 Copyright Revision Act. 17

U.S.C. § 504(c) (1994). The essential change from the

1909 Act was the complete elimination of any multiplica-

tion table calculation of damages and the placing of a

maximum limit on statutory damages for willful infringe-

ment. 17 U.S.C. § 504(c)(2) (1994).

V. The Results of the Historical Inquiry

What the historical inquiry clearly shows is that the

closest equivalent to our contemporary statutory damages

existing in 1791 was a strictly legal rather than equitable

(footnote continued from previous page)

lished for newspaper reproduction of a photograph. In 1912, a maxi-

mum recovery of one hundred dollars for innocent infringement of an

“undramatized or non-dramatic work by means of motion pictures”

was added. Act of August 24, 1912, ch. 356, 37 Stat. 488.

- 18-

form of action. Indeed, this legal remedy was the lineal

ancestor of our statutory damages provisions. Thus the

first and most important test for the applicability of the

Seventh Amendment's guarantee of trial by jury under

Ross v. Bernhard, 396 U.S. 531, 538 n. 10 (1970), “the

pre-merger custom with reference to such questions,”

must answered in the affirmative.

V1. The Nature of the Remedy is Legal Rather

Than Equitable

Although the historical inquiry should be conclusive

on the issue of the right to a jury trial on the issue of

statutory damages, the alternate tests announced by the

Supreme Court for use if the historical inquiry was in-

conclusive will be examined.

A. The Arguments for Statutory Damages Being

a Legal Remedy

In determining if there is a right to a jury trial under

the Seventh Amendment, the second inquiry mandated

by the Supreme Court in Ross v. Bernhard, 396 U.S. 531

(1970), is the nature of “the remedy sought.” Jd. at 538

n. 10. Apart from the fact that the pre-merger copyright

cases almost invariably treated statutory damages and

their predecessors as a legal remedy, there are persuasive

reasons for viewing statutory damages as legal even out-

side of the historical context and can be quickly stated.

First, there is no doubt but that an award of money as

compensation for an injury, such as a remedy for the tort

of copyright infringement, is typical of a legal remedy

rather than an equitable one. Second, the award of

statutory damages is an alternative rather than a cumula-

tive remedy for the plaintiff's actual damages, a clearly

legal remedy. Third, although the amount of statutory

damages may be in the court’s discretion, their awarding

requires an election by the copyright owner. Moreover,

the awarding of statutory damages is not wholly discre-

tionary as the minimum and maximum award limitations

must be observed. Finally, the resemblance between

-19-

Statutory and punitive damages suggests these are legal

remedies.

B. The Arguments Against Statutory Damages

Being a Legal Remedy

The principal argument for treating statutory damages

as equitable, is that the statute states the “court” shall

award “statutory damages” in an amount “as the court

considers just” within the statutory maximum and

miminum. 17 U.S.C. § 504(c) (1994). This requires

reading the word “court” to exclude a jury determination

of statutory damages. However, Curtis v. Loether, 415

U.S. 189 (1974), the Supreme Court held that an action

for the damages provided by a statute was legal rather

than equitable even though the statute provided that the

“court” should assess the damages. Holding otherwise

would permit Congress to deny jury trials in legal actions,

thus abrogating the Seventh Amendment, by simply stat-

ing the damages were to be awarded by a “court.” Thus

any determination that places statutory damages outside

of the Seventh Amendment’s command cannot be solely

based on the use of the word “court” in section 504(c).

Moreover, it must be noted that the word “discretion”

does not appear in § 504(c)(1) which establishes statutory

damages, but only in § 504(c)(2) which permits the maxi-

mum statutory damage award to be increased for cases of

willful infringement and permits the minimum statutory

damage award to be decreased for innocent infringe-

ments.

2. Congressional Intent

The argument has been made that Congress somehow

intended the statutory damage provisions of the 1909 and

1976 Acts to provide an equitable rather than a legal

remedy. The fact is that there is simply nothing in the

legislative history to support this conclusion. Indeed, at

least one passage in the legislative history of the 1909 Act

demonstrates that its originators explicitly contemplated

-20-

issues of statutory damages being tried to a jury. At joint

congressional hearing on amending and consolidated the

ty for copyright cases:

Mr. Wiucox: [I]}f the plaintiff sought his

remedy on the equity side of the court and

asked for an injunction and incidentally for

the assessment of profits and damages, or for

the substituted damages which are provided

for in the second half of that section, then it

would be for the court to assess the damages

unless it referred that section of assessment of

damages to a jury, which is what in many juris-

dictions the court would do;.... But suppose

the plaintiff . . . proceeded directly on the law

side of the court, then how could the court ex-

ercise its discretion? .... The case would

then be tried before a court and a jury, and it

would be a matter for a jury to pass upon.

Mr. Stevart: Of course, such questions as

were submitted to the jury would have to be

passed upon by the jury, and whatever verdict

the jury found would leave the court in the *

position where the court could increase the

that if the court saw fit to do so, if the judg-

ment were too small.

Arguments Before the Committees on Patents of the Senate

and House of Representatives on the Bills S. 6330 and H.R.

19853 to Amend and Consolidate the Acts Respecting

-21-

4 LeorstaTive History or THE 1909 Coryvricnt Act, Part J

(A. Goldman & E.F. Brylawski, ed. 1976). Not sur-

prisingly, almost all of the consideration of statutory

damages was unconcerned with whether such issues were

entitled to a jury trial as a matter of right under the

Seventh Amendment, as this was the accepted law of the

day. To the extent there is any consideration of the ques-

tion apart from the passage quoted above, it is oblique,

showing up in the assumptions and statements that such

damages are derived from the damage provisions of the

earlier acts which had always been regarded as legal.

The legislative history of section 504(c) of the 1976

Act does not indicate that Congress ever directly consid-

ered whether a jury trial should be granted as a matter of

right on the issue of statutory damages, although there

are a number of indications that Congress saw the

Statutory damage provisions as a modernized version of

the 1909 Act’s “in lieu of” damage provisions. See, e.g.,

House Comm. on THE Jupiciary, Coryricut Law Revi-

SION—REGISTER OF THE REGISTER OF COPYRIGHTS ON THE

General Revision or THE Corpyricut Law 102-06 (Comm.

Print 1961); House Comm. on THe Jupiciary, Copyriont

Law Revision Part 6—SurrLeMentary Report or THE Rec-

isTeR OF CopyRiGHTs ON THE GeNneRAL Revision or THE U.S.

Coryricut Law: 1965 Revision But 135-38 (Comm. Print

1965).

3. The Case Law Denying the Right to a

Jury Trial

The idea that statutory damages are equitable rather

than legal first emerged in case law precedents arising

after the merger of law and equity under the 1909 Copy-

right Act. As this subsection of the brief wil!

demonstrate, the seminal case law is simply inaccurate

and cannot stand up to analysis.

Given the historical lineage of the current statutory

damage provisions, and their direct descent from clearly

legal pre-merger custom, it is perhaps surprising that any

court ever considered statutory damages to be equitable

in nature. It is worth examining how the view that

statutory damages were equitable evolved, as it is

demonstrable that its underlying legal analysis is in error.

The seminal denial of the right to a jury trial on the

issue of statutory damages came in Chappell & Co. v.

Palermo Cafe, Inc., 249 F.2d 77 (ist Cir. 1957), the prece-

dent to which all other denials of jury trials on statutory

damages in copyright infringement cases ultimately can

be traced. In Palermo Cafe, plaintiff brought an infringe-

ment suit seeking statutory damages and injunctive relief.

The district court denied plaintiff's motion to strike de-

fendant’s demand for a jury trial on the issue of statutory

damages, even though the plaintiff waived all claims for

any recovery exceeding the statutory minimum. Chappell

& Co. v. Palermo Cafe, Inc., 146 F. Supp. 867 (D. Mass.

1956). The district court followed Chappell & Co. v.

Cavalier Cafe, Inc., 13 F.R.D. 321 (D. Mass. 1952), on the

grounds that a precedent from the same district should be

respected unless clearly in error, although the court’s

opinion disagreed with Cavalier Cafe’s conclusion that the

Seventh Amendment guaranteed a jury trial of statutory

damages and suggested the lines of analysis subsequently

adopted by the First Circuit. The district court sub-

sequently granted a permanent injunction but held the

issue of statutory damages for trial by jury.

On appeal, the First Circuit stated that an award of

the minimum statutory damages did not require a jury

trial. First, as its principal basis of decision, the court

argued that because a district court could determine its

own order of proceedings, it could properly resolve the

issue of a permanent injunction first, thus rendering the

award of statutory damages merely “incidental” to the is-

suance of the injunction and allowing the court to resolve

the issue of statutory damages without a jury. 249 F.2d at

80-81. As the trial court had issued an injunction in the

case based on a finding of infringement, the First Circuit

-23-

held that the trial court could proceed to assess statutory

damages consistent with its decision to enjoin the plaintiff

from future infringements. Jd. at 81. Then, without the

slightest citation of authority or examination of the

relevant statutory and decisional history, the First Circuit

simply asserted:

[W]e regard the present complaint under 17

U.S.C. § 101(b) [1909 Act] as being entirely a

claim invoking the equity jurisdiction of the

district court, so that defendant had no right

to demand a jury trial in any aspect of the

claim.

Id. at 81.

The idea that jury trials could be denied where the

legal relief was “incidental” to the equitable relief arose

after the merger of law and equity, when some cases took

the position that in a case where both legal and equitable

causes were joined, the court could deny a jury trial

where it had previously resolved the underlying factual is-

sues in the course of granting or denying equitable relief,

after which the legal issues became “incidental” to the

court’s equity jurisdiction. See, e.g., Boucher v. DuBoyes,

Inc., 137 F. Supp. 639 (S.D.N.Y. 1955). This permitted

the courts to avoid potentially inconsistent decisions by

taking away the jury trial, even on clearly legal issues,

where the court had already ruled on equitable relief.

This position is untenable today in light of the

Supreme Court’s decisions in Ross v. Bernhard, 396 U.S.

531 (1970), Dairy Queen, Inc. v. Wood, 369 U.S. 469

(1962), and Beacon Theatres, Inc. v. Westover, 359 U.S.

500 (1959). In light of these decision, it is fair to say that

in any case presenting both legal and equitable issues, the

court should take every reasonable step to accord the

parties a jury trial on the legal issues. For example,

preliminary injunctions can be used and the issuance of

permanent injunctions delayed if their issuance would

preclude a jury trial. Only where a permanent injunction

~ 24

must be issued or denied before the legal issues could be

tried might there be preclusion of the right to a jury trial.

Secondly, Palermo Cafe’s unsupported assertion that

the action under 17 U.S.C. § 101(b) (1909 Act), was equi-

table is just that, an unsupported assertion that flies in

the face of every statutory and decisional precedent. As

such it deserves and should receive no credence, particu-

larly in light of the overwhelming historical evidence to

the contrary.

Thirdly, the First Circuit in Palermo Cafe cited two

Supreme Court cases Brady v. Daly, 175 U.S. 148 (1899),

and F.W. Woolworth Co. v. Contemporary Arts, Inc., 344

U.S. 228 (1952), in support of its conclusion. Brady, how-

ever, sO strongly supports the conclusion that an action

for statutory damages is a legal action that it is almost im-

possible to understand how the Palermo Cafe opinion

could construe it otherwise. In Brady, after a permanent

injunction had been issued against infringing per-

formances of a dramatic work in a different and entirely

separate action, and the injunction had been sustained on

appeal, the plaintiff brought a legal action in the Circuit

Court, 175 U.S. at 148 (Reporter's syllabus: “This was an

action brought at law . . .”), for damages for the infringing

performances based on the then current statutory for-

mula of an award of at least $100 for the first infringing

performance and at least $50 for each subsequent per-

formance under section 4966 of the Revised Statutes.

Rev. Stat. title 60, ch. 3, $§ 4966, printed in THe Revisep

STATUTES OF THE Unrrep States, Passep AT THE First Ses-

SION OF THE Forty-THIRD Conoress, 1873-’74 957-60 (2d

ed. 1878), codifying Act of July 8, 1870, ch. 230, § 101, 16

Stat. 212 (Sanger ed. 1871), re-enacting Act of August 18,

1856, 11 Stat. 138 (Minot & Sanger ed. 1859). A jury

trial was waived, so this was never an issue before the

court. 175 U.S. at 151 (Reporter’s syllabus). Claiming

this type of an award was a penalty that could only be

awarded by a District Court, the defendant attacked the

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jurisdiction of the Circuit Court. The Supreme Court

held that these damages were not penal but com-

pensatory, never saying a single word that could be con-

strued as suggesting that they were equitable. In fact, the

legal nature of the suit is quite clear from several other

references in the Supreme Court’s opinion. For example,

the Court rejected defendant’s contention that it was

error to admit into evidence in the legal proceeding the

record of the proceeding in equity for an injunction. 175

US. at 159-60.

Nor is there anything in F.W. Woolworth Co. v. Con-

temporary Arts, Inc., 344 U.S. 228 (1952), affg 193 F.2d

162 (ist Cir. 1951), affg Contemporary Arts, Inc. v. F. W.

Woolworth Co., 93 F. Supp. 739 (D. Mass. 1950), that

would support treating statutory damages as an equitable

remedy. In Woolworth, an action brought after the

merger of law and equity in copyright cases, the Supreme

Court equated statutory damages with legal damages, and

stated that the purpose of statutory damages was to

permit a recovery to be made where the proof of the

amount of actual damages might not have a satisfactory

degree of legal certainty, 344 U.S. at 232-33, an analysis

that is incompatible with the view of statutory damages as

a form of equitable relief. Nothing in the Supreme

Court’s opinion in Woolworth, or in the other courts’

opinions for that matter, indicate that it even considered

the question of whether statutory damages were a legal

equitable remedy.

Similarly, the district court opinion in Palermo Cafe

had summarily stated that “Congress made it plain that

the amount of just damages is to be fixed by a judge with-

out a jury,” citing L.A. Westermann Co. v. Dispatch Print-

ing Co., 239 U.S. 100 (1919) and F.W. Woolworth Co. v.

Contemporary Arts, Inc., 344 U.S. 228 (1952).

Westermann held that statutory damages were com-

pensatory rather than penal in nature, discussed the rela-

tionship of the maximum and minimum amounts in rela-

- %-

tion to the recommended multiplication table calcula-

tions, and traced the genealogy of the 1909 Act’s

Statutory damages provision back to those of the 1856

Act and other earlier copyright acts. As we have seen,

proceedings under these provisions were invariably legal,

thus Westermann in fact refutes the proposition for which

it is cited by the district court in Palermo Cafe. Certainly,

neither Westermann not Woolworth ever made the hold-

ings the district court attributed to them.

It should be reiterated that the arguments that the use

of the word “court” in section 504(c) makes an action for

Statutory damages equitable must be rejected on the au-

thority of Curtis v. Loether, 415 U.S. 189 (1974), which

held that an action for the damages provided by a statute

was legal rather than eq: itable even though the statute

provided the “court” shouid assess the damages.?

Finally, the differences between the Copyright Act’s

Statutory damage provisions and the penal provision held

to be equitable in Tull v. United States, 481 U.S. 412

(1987), should be noted. Tull held that although there

was a Seventh Amendment right to a jury trial on the

issue of liability for a violation of the Clean Water Act,

fixing the amount of the penalty did not require a jury

trial under the Seventh Amendment. First, the penalty in

Tull went entirely to the government, while statutory

damages go entirely to the injured copyright proprietor.

As pointed out earlier, it is precisely for this reason that

the Supreme Court in Brady v. Daly, 175 U.S. 148 (1899)

held that an action to recover a monetary award under

9. Analysis of the decisions subsequent to Palermo Cafe denying

the right to a jury trial have been omitted due to space limitations and

the fact that they all can be traced, mediately or immediately back to

Palermo Cafe. Further, none of these precedents made any effort to

confront the historical evolution of the statutory damage provisions

and provide any analysis other than the arguments discussed above.

-27-

Rev. Stat. § 4966 (minimum recovery per infringing per-

formance established; all monies to be paid to the copy-

right owner) should be regarded as an action for damages

and “has nothing in the nature of a qui tam action about

it, we think it provides for the recovery of neither a pen-

alty nor a forfeiture.” 175 U.S. at 154-55. In discussing

Rev. Stat. § 4966, Brady also held:

Where a statute provides . . . for a recovery

of damages for an act which violates the rights

of the plaintiff and gives the right of action

solely to him, the fact that it also provides that

such damages shall not be less than a sum

certain, and may be more, if proved, does not,

we think, transform it into a penal statute.

Id. at 156. Section 504(c) can be no more a penal statute

than the one at issue in Brady. Statutory damages simply

are not a penalty, they are damages. Even though

Statutory damages may be said to penalize an infringer

for its infringing conduct and may serve to deter future

infringements, the fact that they compensate or even

over-compensate the copyright owner for the injury in-

flicted by the infringement is unavoidable.

Second, the early copyright statutes provide the type of

indisputable legal ancestry for the statutory damage pro-

visions of § 504(c) of the Copyright Act that simply did

not exist for the penalty provision of the Clean Water Act

at issue in Tull. For this reason also Tull is not applicable

to § 504(c) of the Copyright Act.

VII. Statutory Damages Do Not Exceed the Limits

of a Jury

Under Ross v. Bernhard, 396 U.S. 531, 538 n. 10

(1970), the third test for the right to a jury trial is “the

practical abilities and limitations of juries.” Jd. at 538,

n.10. This concern seems to have been intended to ad-

dress the problem of litigation that might be so lengthy

and technically complex that no jury could sit through it

or understand it. This question has surfaced in such cases

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as Zenith Radio Corp. v. Matsushita Electric Industrial

Corp. (In re Japanese Electronic Products Antitrust Litiga-

tion), 478 F.Supp. 889 (E.D.Pa. 1979), rev'd, 631 F.2d

1069 (3d Cir. 1980) (2-1). In Zenith, the trial court held

that a jury was required by the Seventh Amendment in a

case alleging an illegal conspiracy under the anti-trust

and anti-dumping laws. The case was expected to take a

year to try, and nine years of discovery had produced mil-

lions of documents and over 100,000 pages of deposi-

tions. The Third Circuit reversed, holding that under

these circumstances a jury would not be able to render a

rational decision. These type of circumstances are simply

irrelevant to the case at bar.

CONCLUSION

The relevant constitutional tests all demonstrate that

the Seventh Amendment’s guarantee that the right to a

jury trial shall be preserved in actions at law requires that

the denial of a jury trial on the issue of statutory damages

must be tried to a jury upon a timely request by a party.

The relevant historical inquiry into pre-merger custom

clearly establishes that the statutory damage provisions of

today’s Copyright Act are the direct descendants of the

purely legal monetary remedies for infringement of copy-

right that existed in 1791. Consequently, statutory

damages are a legal rather than equitable remedy, and,

as such, a remedy to which the Seventh Amendment

preserves the right to a trial by jury. Moreover, the na-

ture of the remedy, a monetary award to the copyright

owner as compensation for the tort of copyright infringe-

ment, smacks of law rather than equity. Finally, there is

nothing inherent in the nature of statutory damages that

precludes their being determined by a jury.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.