Petition for Writ of Certiorari — Feltner v. Columbia Pictures Television, Inc.

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01 716 NOV 2 0 200)

No. 01- OFFICE OF THE CLERIC

IN THE

Supreme Court of the United States

C. ELVIN FELTNER, JR.,

Petitioner,

Vv.

COLUMBIA PICTURES TELEVISION, INC.,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Ninth Circuit

PETITION FOR A WRIT OF CERTIORARI -

WILLIAM H. SHIBLEY

2601 East Willow Street

Signal Hill, CA 90802

(562) 437-6654

*Counsel of Record

SHERMAN L. COHN*

600 New Jersey Ave., N.W.

Washington, D.C. 20001- 2075

(202) 662-9069

RICHARD I. CHAIFETZ

9650 Santiago Road, Suite 8

Columbia, MD 21045

(301) 596-5409

Counsel for Petitioner

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PRESS OF BYRON S. ADAMS @ WASHINGTON, D.C. @ 1-800-347-8208

QUESTIONS PRESENTED

1. Inits previous ruling in this case, this Court held that

“the seventh Amendment provides a right to jury trial on all

issues pertinent to an award of statutory damages under §

504(c) of the Copyright Act, including the amount itself.”

Whether a series as a whole is one “work” or each episode of

such a series is a separate “work,” is a crucial issue of Jamages.

The question presented is:

whether the Ninth Circuit’s affirmance of the district

court’s decision of this issue upon a motion in

limine, in view of the district court’s refusal to

permit Petitioner to introduce evidence on the issue,

ignores and flies in the face of this Court’s ruling in

this very case, and conflicts with the Seventh

Amendment and Fed.R.Civ.P. 56?

2. Whether the courts below erred in treating standing

requirements of the Copyright Act as waivable, rather than

recognizing these- standing requirements, laid down by

Congress, as a requirement of federal-court jurisdiction under

Bennett v. Spear, 520 U.S. 154 (1997), which may not be

waived and which may be raised at any time?

PARTIFS TO THE PROCEEDINGS

C. Elvin Feltner, Jr. was defendant-appellant below and is

the petitioner in this Court.

Krypton Broadcasting of Birmingham, Inc., Krypton

Broadcasting, Inc., Krypton International Corporation, Krypton

Broadcasting of Ft. Pierce, Inc., Krypton Broadcasting of

Jacksonville, Inc., North Florida 47, Inc., WIT WV, Inc., Daniel

S. Dayton, and Alfred F. DeCuir were defendants below, but

have since been dismissed. App. 3a. Krypton International

was also an appellant below in the first appeal on issues

unrelated to the questions presented here. App. 8a, n.2.

Columbia Pictures Television, Inc. was the plaintiff-

appellee below and is the respondent in this Court.

ili

TABLE OF CONTENTS

ES I a OAR L ESET ET

i ere

RSS SINE Toe SG eT ce TER

Reasons for Granting the Writ ....................

The Ninth Circuit’s Affirmance of the District

Court’s Holding that It Is a Question for the

Court and Not for the Jury Whether Each

Episode of a Series Is a Separate Work for

Purposes of an Award of Copyright Statutory

Damages, Without Permitting Feltner To

Submit Evidence Showing a Genuine Issue of

that Material Fact, Conflicts with Fed.R.Civ.P.

56, and the Seventh Amendment, and Flies in

the Face of this Court’s Prior Holding in this

EEE et ple ao aig ai ea

The Courts Below, on the Ground of Waiver,

Erroneously Refused To Consider Feltner’s

Challenge to the Subject-Matter Jurisdiction of

the District Court Based upon Failure of the

Plaintiff To Satisfy the Standing Requirement of

the Copyright Act, Thus Violating the Well-

Settled Law of Standing as Summarized in

Bennett v. Spear, 520 U.S. 154, 162-64 (1997)

Page

CIOL, on cé.vccccesaredcist abi eessiene 21

APPENDICES:

A. July 9, 2001, Opinion of U.S. Court of Appeals .... la

B. March 31, 1999, Order of U.S. District Court re

NN TE og ss iv cc kts aN ketenes 20a

C. March 31, 1998, Opinion of United States Supreme

CS o cvcwensesaiactetesdeteyteeuisaseeis 28a

D. February 6, 1997, Opinion of U.S. Court of

ROBO oocdcvccvacesncecasnisineiuaa ins 47a

E. April 4, 1994, Order for Judgment, U.S. District

CE. vv aecds ccd beeen sade vo cent caneeeusenss 68a

F. September 28, 1993, Order, U.S. District Court ... 7la

G. February 7, 1994, Order, U.S. District Court ..... 82a

H. March 15, 1994, Oral Ruling, U.S. District Court . . 83a

I. March 16, 1994, Oral Ruling, U.S. District Court... 84a

J. August 23, 2001, Denial of Rehearing. U.S. Court of

PPP rere re vere ee ee eee 88a

TABLE OF AUTH AITIES

CASES:

Allen v. Wright, 468 U.S. 737 (1984) ................ 15

American Fire & Cas. Co. v. Finn, 341 U.S.6(1951) ... 13

Arizonans for Official English v. Arizona, 520 U.S. 43

EE ao ke 44. 4A Wan a be Oe ehh hk a eeeee 13

Association of Data Processing Service Organizations,

Inc. v. Camp, 397 U.S. 150 (1970) ........... 15, 18

Bender v. Williamsport Area School Dist., 475 U.S. 34

COREE i wikivcsuvtesssse ky wuask be eiebewures 13

Bennett v. Spear, 520 U.S. 154 (1997) ...... 15, 16, 18, 19

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ......... 12

Dred Scott v. Sanford, 19 How. (60 U.S.) 393 (1857) .... 13

Gaia Technologies v. Reconversion Technologies, 93

Fs Gs kod cn ode ns sbcesdeiwes 19

Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106

CO Gey hoe hoa hha de eee cd nee ee

Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc.,

896 F.2d 1542 (9th Cir. 1989) .................. 17

In re Sanford Ford & Tool Co., 160 U.S. 247 (1895) ..... 9

International Primate Protection League v.

Administrators of Tulane Educational Fund, 500

Shes TE ERUED ba bh achceheddeuneaddiseencewne 15

Jackson v. Ashton 8 Pet.(33 U.S.) 148 (1834) ......... 13

Table of Authorities continued

Page(s)

Kroger v. Owen Equipment & Erection Co., 437 U.S.

TEE Si cha wb Ea hale ahd ee ee ee ee 14

Louisville & N.R. v. Mottley, 211 U.S. 149 (1908) .... 9, 12

Maljack Productions, Inc. v. Goodtimes Home Video

Corp., 81 F.3d 881 (9th Cir. 1996) ............. at

Mansfield, C & L.M.R. v. Swan, 111 U.S. 379 (1884) .... 13

Minneapolis & St. Louis R. v. Peoria & Pekin Union

Railway Co., 270 U.S. 580 (1926) ............. +. 20

Mitchell v. Maurer, 292 U.S. 237 (1934) ............. 13

Mullen v. Torrance, 22 U.S. (9 Wheat.) 537 (1924) ..... 20

National Railroad Passenger Corp. v. National Assn. of

Railroad Passengers, 414. U.S. 453 (1974) .... 15, 18

Rite-Hite Corp. v. Kelly Co., 56 F.3d 1538 (Fed. Cir.

SE 4. s veeun'9$06 4nebew dn caneneen hao ae.4 19

Sosna v. Iowa, 419 U.S. 393 (1975) ............005.. 13

Steel Company v. Citizens for a Better Environment, 523

SE CRIED ictdecanksebancueeeeseee 15, 18

Vendo Co. v. Lektro-Vend Corp., 434 U.S. 424 (1978) ....9

Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir.

BE ccc csdinccnb dns kaseenbecsaumeteressaces 11

Vii

Table of Authorities continued

Page(s)

CONSTITUTIONAL AND STATUTORY PROVISIONS:

U.S. Const. Article Ill, Section 2 ........cccsccecccces ]

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RULES: ?

Rule 12(h)(3), Fed. R.Civ.P. ..........00- 3, 5, 10, 13, 15

abe SER ARS Bo ooo heen se eK 3, 10, 12

on. ccatoteevecevcaneees 15

Rule 7.16, U.S. Dist. Ct. for Central Dist. of California . 4, 5

Vili

Table of Authorities continued

Page(s)

OTHER AUTHORITIES:

15 Wright, Miller & Cooper, Federal Practice &

Procedure § 3844, p. 332 (1986) ........---e eee: 20

PETITION FOR A WRIT OF CERTIORARI

C. Elvin Feltner petitions for a writ of certiorari to the

United States Court of Appeals for the Ninth Circuit in

Columbia Pictures v. Feltner, No. 99-56215.

OPINIONS BELOW

The decision of the United States Court of Appeals for the

Ninth Circuit, App. la, is reported at 259 F.3d 1186 (2001). An

earlier decision of this Court in this case, App. 25a, is reported

at 523 U.S. 340 (1998), reversing an earlier decision of the

United States Court of Appeals for the Ninth Circuit, App. 47a,

reported at 106 F.3d 284 (1997). Decisions of the United

States District Court for the Central District of California are

unreported.

BASIS FOR JURISDICTION IN

THE SUPREME COURT

The judgment of the Ninth Circuit was entered on July 9,

2001. A timely filed petition for rehearing was denied on

August 23, 2001. The jurisdiction of this Court is invoked

under 28 U.S.C. 1254(1).

CONSTITUTIONAL PROVISIONS,

STATUTES AND RULES

Article Il of the United States Constitution provides, in

pertinent part:

Section 2. The judicial Power shall extend to all

Cases, in Law and Equity arising under this

Constitution, the Laws of the United States, and

Treaties made or which shall be made, under their

Authority; to all Cases affecting Ambassadors, other

public Ministers and Consuls; to all Cases of

admiralty and maritime Jurisdiction; to all

Controversies to which the United States shall be a

Party; to Controversies between two or more States;

between a State and Citizens of another State;

between Citizens of different States; between Citizens

of the same State claiming Lands under Grants of

different States, and between a State, or the Citizens

thereof, and foreign States, Citizens or Subjects.

The Seventh Amendment to the United States Constitution

provides:

In Suits at common law, where the value in

controversy shall exceed twenty dollars, the right of

trial by jury shall be preserved, and no fact tried by

jury shall be otherwise re-examined in any Court of

the United States, than according to the rules of the

common law.

Section 501(b) of Title 17, U.S.C., provides in pertinent part:

The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the

requirements of Section 411, to institute an action for

any infringement of that particular right committed

while he or she is the owner of it. . . .

Section 504(c) of Title 17, U.S.C., provides, in pertinent part:

(1) Except as provided by clause (2) of this

subsection, the copyright owner may elect, at any time

before final judgment is rendered, to recover, instead

of actual damages and profits, an award of statutory

damages for all infringements involved in the action,

with respect to any one work, for which any one

infringer is liable individually or for which any two or

more infringers are liable jointly and severally in a

sum of not less than $500 or more than $20,000 as the

court considers just. For the purpose of this

subsection, all the parts of a compilation or derivative

work constitute one work.

(2) In acase where the copyright owner sustains the

burden of proving, and the court finds, that

infringement was committed willfully, the court in its

discretion may increase the award of statutory

damages to a sum of not more than $100,000. In a

case where the infringer sustains the burden of —

proving, and the court finds, that such infringer was

not aware of and had no reason to believe that his or

her acts constituted an infringement of copyright, the

court in its discretion may reduce the award of

statutory damages to a sum of not less than $200.

Rule 12(h), Federal Rules of Civil Procedure, provides in

pertinent part:

(3) Whenever it appears by suggestion of the parties

or otherwise that the court lacks jurisdiction of the

subject matter, the court shall dismiss the action.

Rule 56, Federal Rules of Civil Procedure, provides in pertinent

part:

(a) For Claimant. A party seeking to recover upon a

claim ... may... move with or without supporting

affidavits for a summary judgment in the party’s favor

upon all or any part thereof.

shal! be served at least 10 days before the time fixed

for the hearing. The adverse party prior to the day of

‘hearing may serve opposing affidavits. The judgment

sought shall be rendered forthwith if the pleadings,

depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any,

show that there is no genuine issue as to any material

fact and that the moving party is entitled to a

judgment as a matter of law. A summary judgment,

interlocutory in character, may be rendered on the

issue of liability alone although there is a genuine

issue as to the amount of damages.

Rule 7.16, United States District Court for the Central District

of California, provides, in pertinent part:

A motion for reconsideration of the decision on any

motion may be made only on the ground of (a) a

material difference in fact or law from that presented

to the Court before such decision that in the exercise

of reasonable diligence could not have been known to

the party moving for reconsideration at the time of

such decision, or (b) the emergence of new material

facts or a change of law occurring after the time of

such decision, or (c) a manifest showing of a failure to

consider material facts presented to the Court before

such decision.

STATEMENT OF THE CASE

Respondent, Columbia Pictures Television, Inc.

(Columbia), filed this copyright infringement and contract

action on December 17, 1991, against Petitioner, C. Elvin

Feltner, Jr., (Feltner) and certain others.' Columbia filed its

Amended Complaint on January 14, 1992.

On December 1, 1992, Columbia filed a Motion for Partial

Summary Judgment on its copyright claim. In that Motion,

Columbia claimed that it was the exclusive licensee of the

copyrights in four television series - “Who’s the Boss?”,

' Claims against all except Feltner have been dropped. App. 3a.

“Silver Spoons”, “Hart to Hart”, and “T.J. Hooker” - that it

claimed were being infringed by Feltner. The District Court

granted the motion, finding 664 separate infringements of

“Who’s the Boss?”, “Silver Spoons”, “Hart to Hart”, and “T.J.

Hooker” based on theories of vicarious and contributory

liability.

When Columbia moved for partial summary judgment in

December 1992, Feltner’s original counsel conceded

Columbia’s ownership of the copyrights. Partial summary

judgment was granted on September 28, 1993. App. 71a. On

January 14, 1994, new counsel, relying in part on Rule 12(h)(3)

of the Federal Rules of Civil Procedure, moved to vacate the

interlocutory, partial summary judgment order and to dismiss

on the ground that Columbia in fact did not own or have

exclusive licenses to the copyrights at the time it had filed suit,

as is required by 17 U.S.C. 501(b) for statutory standing, and

thus the court lacked subject-matter jurisdiction.

The district court refused to hear the motion to vacate and

to dismiss for lack of subject-matter jurisdiction on the ground

that it was “out of time.” App. 82a. The court based its ruling

upon Local Rule 7.16 of the Central District of California.

App.26a.

A bench trial on copyright statutory damages was held on

March 15-16, 1994. At the start of the trial, the district court

announced, in an oral ruling from the bench, that it was ruling

as a matter of law that each episode of each of the television

series involved was a separate “work” for purposes of an award

of copyright statutory damages and that it would make one

award of statutory damages for each episode infringed. App.

" In fact, Columbia did not obtain exclusive licences for three of

the series in question until February 19, 1992, and never obtained an

exclusive license in the fourth series.

83a. Despite Feltner’s request to present evidence on this issue,

the district court did not permit evidence to be submitted. App.

84a-87a. On April 4, 1994, the district court entered judgment

for $8.8 million. It held that Feltner had willfully infringed 440

separate works and imposed statutory damages of $20,000 per

work.

On appeal, Feltner argued that the district court lacked

subject-matter jurisdiction over this case because Columbia

lacked the statutory standing to institute a copyright action.

App. 48a. The Ninth Circuit refused to consider the issue of

subject matter jurisdiction on the ground that Feltner had

“failed to demonstrate that the district court abused its

discretion in” refusing to permit Feltner to raise this argument

for the first time on reconsideration. App. 52a. The court of

appeals also affirmed the ruling that the number of works

infringed and the statutory damages therefor were questions of

law for the court and not questions of fact on which Feltner

could introduce evidence. App. 62a-64a.

Upon Feltner’s petition for certiorari, this Court, on March

31, 1998, reversed and remanded for a new trial on damages.

App. 28a. This Court directed that a jury trial be held on all

issues pertinent to an award of damages including the amount

thereof. App. 42a. (“[T]he Seventh Amendment provides a

right to jury trial on all issues pertinent to an award of statutory

damages under § 504(c) of the Copyright Act, including the

amount itself.”)°

After remand to the district court, Columbia filed various

motions in limine. In particular, Columbia requested that the

district court reinstate its prior decision on the number of works

infringed and prevent introduction of any testimony thereon.

? Columbia also asked this Court to reaffirm the district court’s

holding that each episode of each series was a separate work. This Court

did not rule on this request.

Feltner argued that whether an episode of a series is a separate

work for the purposes of statutory damages, or whether the

entire series is a single work for this purpose is an element of

the damage calculation, and under this Court’s prior ruling in

this case, is “factual and fall{s] within the province of the jury.”

App. 21a. The district court granted the motion in limine, ruling

that this element of damage calculation was one to be decided

by the court. App. 21a-22a. .

Feltner filed a motion requesting that the case be dismissed

because Columbia had not been “the legal or beneficial owner

of an exclusive right under [the] copyright[s]” in question at

the time it filed suit and therefore the district court lacked

subject-matter jurisdiction. The district court held that this

issue had been waived. App. 26a, n.1. The district court

acknowledged that Feltner’s motion raised “an issue about

whether the plaintiff [Columbia] is authorized under the statute

to bring an action,” and this is an issue of “statutory standing.”

The court concluded that “this issue can be waived if the

defendant does not timely raise it.” Jd. :

A jury trial was held on April 7-8, 1999. Following trial,

the jury returned a verdict for $31,680,000. After motions for

new trial and rehearing were denied, Feltner again appealed to

the Ninth Circuit.

On July 9, 2001, the Ninth Circuit upheld the district court

on all issues. App. la. It again refused to decide the subject-

matter jurisdiction issue on the ground that, in light of the

earlier appellate ruling that Feltner had failed to raise the issue

in a timely manner, “the law of the case doctrine bars

reconsideration of the issue... ."* App. 6a-7a. As for the jury

‘ Whatever force the law of the case doctrine may have in a court

of appeals when the prior decision was its own, it clearly does not prevent

this Court from reviewing the decisions below.

trial issue, the Ninth Circuit first ruled that the test as to

whether each episode is a separate “work” is “whether each

episode ‘has an independent economic value and is, in itself

viable,’” quoting Gamma Audio & Video, Inc. v. Ean-Chea, 11

F.3d 1106, 1116 (1st Cir. 1993). The appellate court then noted

that the district court had found that there were facts not in

dispute, concluding: “the question whether each episode of a

television series is a separate work is a question of law because

there are no underlying factual disputes for the jury to resolve.”

App. 10a. The appellate court, however, ignored the facts that

(1) the district court’s list of undisputed facts did not include

whether or not “each episode ‘has an independent economic

value and is, in itself viable,’” and (2) on that factual issue

Feltner had attempted to introduce evidence that the district

court had refused to accept, App. 84a-87a, a matter which the

Ninth Circuit itself had noted on the first appeal. App. 64a.

A timely filed petition for rehearing and suggestion for

rehearing en banc were denied on August 23, 2001.

This petition for certiorari follows.

REASONS FOR GRANTING THE WRIT

1. By its earlier review in this very case, this Court

recognized the importance of the application of the Seventh

Amendment right to jury trial to issues of damages under the

Seventh Amendment required that the issues going to damages

under the Copyright Act are for the jury and not for the judge

to decide.

In its responding brief in this Court, Columbia requested

the Court to affirm the rulings of the courts below that the

statute required that a judge decide whether a television serial,

sold or licensed by Columbia only as a coherent whole, was to

be deemed to be one “work” or was each episode to be deemed

a separate “work,” and that the Seventh Amendment required

no other result. This Court did not address that issue in so

many words, but it did make clear “that the Seventh

Amendment provides a right to jury trial on alll issues pertinent

to an award of statutory damages under §504(c) of the

(Emphasis added.)

There is no doubt that both in this case and generally the

number of “work[s]” that have been infringed is a significant

issue “pertinent to an award of statutory damages” for copyright

infringement. Indeed, as in this case it is often the only issue

of importance: if there were to be found, upon competent

evidence, that there were only four “work(s]” infringed, the

maximum total damages awarded could be no more than

- $400,000, rather than the $31,680,000 awarded in this case

upon a court finding that 440 “work[s]” had been infringed.

The courts below gave no reason why this Court’s

emphasis that “all issues pertinent to statutory damages” be

submitted to a jury did not mean what it said: “all issues.”

Rather, without explanation, the courts below just ignored this

Court’s ruling in this very case.

We respectfully urge that the integrity of this Court’s

rulings requires that this Court again review the rulings of the

courts below. See In re Sanford Ford & Tool Co., 160 U.S.

247, 255 (1895); Vendo Co. v. Lektro-Vend Corp., 434 U.S.

424. 427-28 (1978).

2. This Court has ruled time after time that subject-

_ Matter jurisdiction issues may be raised at any time in the

course of litigation. Indeed, as in Louisville & N.R. v. Mottley,

211 U.S. 149 (1908), this Court has raised the issue itself when

others have not. This settled law is set forth in Fed.R.Civ.P.

12(h)(3) as a reminder to all who come before federal courts.

Yet, in this case, the courts below have used a local rule to

set a time limit on when the issue may be raised in the district

court.

To permit the use of a local rule setting a time limit on a

motion to dismiss on subject-matter grounds is a blatant

disregard of Rule 12(h)(3) and the settled law of this Court that

such an issue can be raised at any time, and certainly while the

case is sub judice. Once again, we respectfully submit that the

' integrity of this Court’s rulings requires that this result be

examined.

I. The Ninth Circuit’s Affirmance of the District Court’s

Holding that It Is a Question for the Court and Not for

the Jury Whether Each Episode of a Series Is a

Separate Work for Purposes of an Award of Copyright

Statutory Damages, Without Permitting Feltner To

Submit Evidence Showing a Genuine Issue of that

Material Fact, Conflicts with Fed.R.Civ.P. 56, and the

Seventh Amendment, and Flies in the Face of this

Court’s Prior Holding in this Very Case.

In its first review of this case, this Court held, in no

uncertain terms, “that the Seventh Amendment provides a right

to jury trial on all issues pertinent to an award of statutory

damages under §504(c) of the Copyright Act, including the

amount itself.” App. 42a. The courts below disregarded this

instruction.

Under Section 504(c), when a plaintiff selects statutory

damages as its remedy, the statute provides for one award of

statutory damages per “work” infringed. Therefore, in a case

such as this, an essential element of damages is the

determination of the number of “works” that were infringed.

Thus, whether episodes of a series are each a separate “work”

or part of one larger “work” is the critical factor in determining

damages. While the Act does not define the term “work,” the

case law is in full agreement that, “whether an episode of a

series is a separate work, or whether the entire series is one

‘work’ depends upon whether [each episode] can live [its] own

569(D.C. Cir. 1990), that is, whether each episode “has an

independent economic value and is, in itself, [commercially]

viable.” Gamma Audio & Video, Inc. v. Ean Chea, 11 F.3d

1106, 1117(1st Cir. 1993). The Ninth Circuit in the instant

case recognized this to be the applicable standard. App. 10a.

The Ninth Circuit also recognized that the application of

the economic viability test in a particular case is a factual one.

Id. When it examined the record in this case, however, the.

Ninth Circuit, applying summary judgment standards, found

no dispute of fact on this issue that justified submission to a

jury. Id. However, the Ninth Circuit ignored the fact that the

issue was before the district court on a motion in limine, and

not on a motion for summary judgment. Although Feltner

argued that, under this Court’s previous decision in this case,

this very significant element of statutory damages was to be

submitted to the jury and not decided on a motion in limine, the

district court granted the motion in limine, thus precluding any

evidence to show that there is a genuine issue of this very

material fact for a jury to decide.

Thus, this Court’s holding in this case was ignored and

circumvented on the issue most significant to damages. The

Ninth Circuit recognized that whether each episode in a series

is a separate “work” is a question of fact: depending upon its

economic viability. But the Ninth Circuit affirmed the district

court’s treatment of this issue as one of law — decided on the

basis of a motion in limine, without ever giving Feltner an

opportunity to demonstrate that there was a genuine issue on

this material fact.

Petitioner recognizes that, if there be no genuine issue of

material fact, then that material fact can be decided by the court

as a matter of law. Fed.R.Civ.P. 56. Celotex Corp. v. Catrett,

477 U.S. 317 (1986), certainly so provides. But Celotex also

recognizes that, before the district court may make such a

decision, it must permit the non-moving party to present sworn

evidence showing that a genuine issue exists on the material

fact. Indeed, the entire underpinning of Celotex is that the

nonmoving party had the opportunity of showing, through

“affidavits or as otherwise provided in this rule,” Rule 56(e),

that there is a genuine issue of the material fact.

Here, by deciding the issue of what is a “work” in the

context of this case through a motion in limine, failing to

consider Columbia’s motion as a motion for summary

judgment, upon which Feltner would have had the opportunity

to present sworn evidence to show a genuine issue of the

material fact as to whether each episode of the four serials

involved in this case was in fact economically viable,’ the

district court did exactly what this Court in its 1998 decision

ruled that it could not do: it decided this very essential element

of damage itself. True, it decided it as a matter of law upon the

motion in limine. But that in itself deprived Feltner of the

benefit of this Court’s 1998 holding.

In affirming, the Ninth Circuit recognized that there could

be a genuine issue of material fact as to whether a single

episode of a serial is economically viable by itself and thus a

separate “work” for the purposes of Section 501(c). App. 10a.

It then searched the record and found no evidence that in this

case there was a genuine issue of that material fact. App. 10a-

11a. In so doing, the Ninth Circuit ignored—even though it was

5 In fact, Columbia itself did not license or sell the episodes

separately, and the practices of Columbia constitute uncontradicted

__ evidence that the series in question were a single “work.”

clearly pointed out in brief and in petition for rehearing— that

—the district court refused to permit Feltner to furnish evidence

that, if admitted, at the least would have shown that this

material fact was genuinely in dispute. App. 84a-87a. In so

doing, the Ninth Circuit joined the district court in refusing to

follow this Court’s 1998 holding.

II. The Courts Below, on the Ground of Waiver,

Erroneously Refused To Consider Feltner’s Challenge

to the Subject-Matter Jurisdiction of the District Court

Based upon Failure of the Plaintiff To Satisfy the

Standing Requirement of the Copyright Act, Thus

Violating the Well-Settled Law of Standing As

Summarized in Bennett v. Spear, 520 U.S. 154, 162-64

(1997).

A. The law is well settled that subject-matter jurisdiction

may never be waived, whether by express consent, Jackson v.

Ashton 8 Pet. (33 U.S.) 148 (1834); Sosna v. Iowa, 419 U.S.

393, 398 (1975), by conduct, Dred Scott v. Sandford, 19 How.

(60 U.S.) 393 (1857); Mitchell v. Maurer, 293 U.S. 237 (1934);

American Fire & Cas. Co. v. Finn, 341 U.S. 6 (1951), or even

by estoppel, Mansfield, C. & L.M.R. v. Swan, 111 U.S. 379

(1884). It may be raised at any time while the case is within the

- district court, Fed.R.Civ.P. 12(h)(3), or on appeal, Bender v.

Williamsport Area School Dist., 475 U.S. 534, 541 (1986),

Arizonans for Official English v. Arizona, 520 U.S. 43, 73

(1997). Indeed, the issue may be raised for the first time in this

Court, even by the Court sua sponte, Louisville & N.R. v.

Mottley, 211 U.S. 149 (1908).

The Ninth Circuit, in the first appeal, held that, because

“Columbia properly pled a claim arising under federal

jurisdiction pursuant to 28 U.S.C. § 1338(a).” App. 49a. That

ruling — that mere pleading of jurisdiction is sufficient even if

the facts be otherwise — flies in the face of this Court’s contrary

ruling in Kroger v. Owen Equipment & Erection Co., 437 U.S.

365 (1978). In Kroger the complaint had pleaded diversity, and

the defendant had in its answer admitted the facts on which the

allegation of diversity jurisdiction rested. But on the third day

of trial it was disclosed that one important fact on which

diversity rested was erroneous. The district court thought it had

discretion to finish the trial, and the Eighth Circuit affirmed,

saying that “the most elementary considerations of judicial

fairness” precluded the belated challenge to jurisdiction,

particularly since the statute of limitations had then run and

would be a bar to a new action in state court. 558 F.2d 417,

427 (1977). This Court reversed, stating:

Our holding is that the District Court lacked power to

entertain the respondent’s lawsuit against the

petitioner. Thus, the asserted inequity in the

respondent’s alleged concealment of its citizenship is

irrelevant. Federal judicial power does not depend

upon “prior action or conduct of the parties.”

437 U.S. at 377 n.21.

Thus, the fact that the complaint pleaded facts on which

subject-matter jurisdiction is based is immaterial when a

challenge is made to those facts. Indeed, the defendant’s

concession of those facts is also immaterial when the true facts

later come to light. And the fact that Feltner had not raised this

issue before the motion for partial summary judgment was

granted in the district court is also immaterial The rulings of

the courts below bestow upon the parties the power to grant to

district courts subject-matter jurisdiction that has been withheld

by Congress. As this Court has made clear time after time, that

is not the law.

Nor can a local rule of a district court preclude a party

from raising an issue of subject-matter jurisdiction on the

ground of timeliness. Fed.R.Civ.P. 12(h)(3) provides in no

uncertain terms: “Whenever it appears by suggestion of the

parties or otherwise that the court lacks jurisdiction of the

subject matter, the court shall dismiss the action.” No local

rule can be validly construed or applied inconsistent with that

rule. See Fed. R. Civ. P. 83(a)(1).

B. This Court has held that, when a plaintiff sues on an

alleged statutory cause of action, the plaintiff must come within

the “zone of interest” for which Congress has made the

statutory cause available. Bennett v. Spear, 520 U.S. 154, 162-

64 (1997); Steel Company v. Citizens for a Better Environment,

523 U.S. 83, 97 (1998); National Railroad Passenger Corp. v.

National Assn. of Railroad Passengers, 414 U.S. 453, 465,

n.13 (1974); Association of Data Processing Service

Organizations, Inc. v. Camp, 397 U.S. 150, 156 (1970). As

this Court stated in Steel Company, “The statutory and

(especially) constitutional elements of jurisdiction are an

essential ingredient of separation and equilibration of powers,

restraining the courts from acting at certain times, and even

restraining them from acting permanently regarding certain

subjects.” 523 U.S. at 101. And Justice Marshall, speaking for

this Court, said in International Primate Protection League v.

Administrators of Tulane Educational Fund, 500 U.S. 72, 76

(1991), “standing is gauged by the specific common-law,

statutory or constitutional claims that a party presents.” Thus,

a plaintiff suing under a federal statute, must meet the statutory

standing requirements laid down by Congress or the court lacks

jurisdiction to proceed.

In Bennett v. Spear, this Court, four years ago, summarized

the prudential standing cases of the preceding 27 years, noting

that “like their constitutional counterparts, these ‘judicially self-

imposed limits on the exercise of federal jurisdiction,’ Allen v.

Wright, 468 U.S. 737, 751 (1984), are ‘founded in concern

about the proper — and properly limited - «le of the courts in

a democratic society, Warth [v. Seldin, 422 U.S. 490 (1975)] at

498.” The Court pointed out that “numbered among these

prudential requirements is the doctrine of particular concern in

this case: that a plaintiff's grievance must arguably fall within

the zone of interests protected or regulated by the statutory

provision or constitutional guarantee invoked in the suit.” 520

U.S. at 162.

The Court noted the truism that “Congress legislates

against the background of our prudential standing doctrine... .”

Id. The Court then went on to list various statutory

formulations of standing (520 U.S. at 165):

¢ any person having an interest which is or may be

adversely affected, 33 U.S.C. § 1365(g) (Clean

Water Act); 30 U.S.C. § 1270(a) (Surface Mining

Control and Reclamation Act)

¢ any person suffering legal wrong, 15 U.S.C. §

797(b)(5) (Energy Supply and Environmental

Coordination Act)

* any person having a valid legal interest which is

or may be adversely affected . . . whenever such

action constitutes a case or controversy, 42

U.S.C. § 9124(a) (Ocean Thermal Energy

Conservation Act)

* any person injured in his business or property, 7

U.S.C. § 2305(c), 15 U.S.C. § 72

* competitors, customers or subsequent purchasers,

15 U.S.C. § 298(b)

In addition, and relevant to a discussion below:

¢ apatentee, 35 U.S.C. § 281, or a successor patentee,

35 U.S.C. 100(d) (the Patent Act)

In each of these statutes, Congress has specified who shall have

standing to bring an action under the statute. It is only a person

who fits the congressionally imposed definition who has

standing. And it is only over a suit brought by such a person,

to vindicate the rights established by the statute, that a federal

court has subject-matter jurisdiction.

Here, Congress in fact laid down standing requirements as

to who may bring an action for infringement of damages.

Section 501(b) authorizes a federal suit for infringement of a

standing to bring such a suit:

(b) The legal or beneficial owner of an exclusive

right under a copyright is entitled, subject to the

Tequirements of section 411, to institute an action for

any infringement of that particular right committed

while he or she is the owner of it.

Thus, by statute, it is “the legal or beneficial owner of an

exclusive right under a copyright” who has standing to bring an

action for infringement. And as this Court recognized in

Bennett v. Spear and many other cases, this requirement is

jurisdictional.

In the instant case, the district court, following earlier

Ninth Circuit precedent, Maljack Productions, Inc. v.

Goodtimes Home Video Corp., 81 F.3d 881, 884 (9th Cir.

1996); Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc.,

896 F.2d 1542, 1553 (9th Cir. 1989), recognized that the

ownership requirement of Section 501(b) is a statement of

“statutory standing,” but then went on to hold that “this issue

can be waived if the Defendant does not timely raise it.” In

this holding, the district court erred, and the Ninth Circuit erred

in refusing, twice, to review and reverse that holding.

Statutory standing is another way of saying “zone of

interest” when the requisite interest is created by statute.

Bennett v. Spear, Steel Company, National Railroad Passenger

Corp., and Data Processing stand for that proposition. Here

Congress has created the “zone of interest” by restricting the

right to bring an action for infringement of a copyright to “the

legal or beneficial owner of an exclusive right under a

person who fits within the “zone of interest” created by

Congress, and thus has statutory standing. Without such a

person before it, the district court has no power to proceed, for

it is an essential aspect — and limitation — of the jurisdiction that

Congress has given to the federal court.

Thus, in the instant case, the district court correctly

recognized that whether Columbia has an exclusive license to

the works in question is an issue of “statutory standing.” If

Columbia had such a license when it filed suit, then it would

have fallen into the “zone of interest” permitting this law suit

to be brought in federal court. If it had not had an exclusive

license at the outset, as has been shown to be the case,

Columbia could not bring this action, for it would not have had

standing under the statute to do so. Where the trial court erred,

and the Ninth Circuit erred in affirming, was in holding that the

parties may bestow jurisdiction upon the district court by

waiving the standing requirement and going beyond the

statutory grant that Congress made in Section 501(b).

Counsel is unaware of any other case that addresses this

issue directly under Section 501(b). However, the decisions of

the court below directly conflict with holdings of the Federal

Circuit in patent cases. The issue of standing of a non-owner,

non-exclusive licensee to maintain a patent infringement action

has arisen many times. The Federal Circuit has consistently

held in such cases that, if the plaintiff did not come within the

statutory grant of jurisdiction, the suit must be dismissed. See,

e.g. Rite-Hite Corp. v. Kelly Co., 56 F.3d 1538, 1551-52 (Fed.

Cir. 1995, en banc) (“The question of standing to sue is a

jurisdictional one.”); Gaia Technologies v. Reconversion

Technologies, 93 F.3d 774, 777-78 (Fed. Cir. 1996) (“Absent

ownership of the Intellectual Property, Gaia lacked standing to

sue on the patent and trademark infringement claims. . . . The

problem for Gaia in this case, however, is not the conduct of

the defendants, but Gaia’s inability to prove that it was the

owner of the Intellectual Property at the time the suit was

filed.”)

While the specific statutes are distinct, the fundamental

concept is the same: In each statute, Congress has specifically

legislated who is within the zone of interest so as to be able to

file suit to vindicate that right. The Federal Circuit has held

that prudential standing emanating from a statute is

jurisdictional; the courts below in the instant case have held

that it is a standing to be bestowed by the parties no matter

what restrictions Congress may have imposed. We submit that

the Federal Circuit’s rulings are consistent with the rulings of

this Court, most recently Bennett v. Spear, which mandate the

judicial boundary of prudential standing where Congress has

established the limit of who may vindicate a statutory right.

The courts below have flagrantly violated this Court’s

instructions by sustaining an action clearly not contemplated by

Congress in the Copyright Act.

The facts pertinent to prudential standing here have never

been considered by the courts below, which, relying upon

waiver of prudential standing, closed their eyes to the evidence.

Columbia’s motion for partial summary judgment was

accompanied by the affidavit of its vice president which set

forth that Columbia had the exclusive license to the video

programs in question. After the motion was granted, Feltner

uncovered evidence which showed that that affidavit did not

reflect the true facts, that, in fact, when it filed suit, Columbia

did not have the exclusive license required by Section 501(b).

If the evidence uncovered by Feltner, and offered to the district

court, reflects the actual fact, the affidavit of the vice president,

upon which the district court relied, is erroneous if not

perjurious, and Columbia in fact had no standing under the

statute to bring this law suit, for it was not in that zone of

interest that the statute wished to protect by authorizing the

bringing of suit in federal court. As has been noted, the courts

below refused to examine this evidence, although it was

presented to the district court by Feltner in documentary form,

and Columbia has never introduced evidence showing that

Feltner’s conclusion from the evidence is incorrect.

The record is clear from the four corners of the agreements

licensing these works to Columbia that the licenses that

Columbia possessed at the beginning of this case were not

exclusive, for nowhere in the licenses can there be found the

word “exclusive” or any other word, phrase, or combination

thereof that purports to convey an “exclusive” license.

Columbia has never denied that fact. Moreover, on February

19, 1992, after this case had been instituted, Columbia entered

into new agreements with the copyright owners that, for the

first time, purported to be exclusive license arrangements for

three of the four serials of which infringement was alleged. (At

no time has there been any evidence that there existed an

exclusive license agreement concerning the fourth series.)

As this Court has made clear, subject-matter jurisdiction,

and hence standing, must exist when the case is filed,

Minneapolis & St. Louis R. v. Peoria & Pekin Union Railway

Co., 270 U.S. 580, 586 (1926) (“The jurisdiction of the lower

court depends upon the state of things existing at the time the

suit was brought.”) A later change in facts does not act to

create subject-matter jurisdiction retroactively when it did not

exist when suit commenced. Mullen v. Torrance, 22 U.S. (9

Wheat.) 537, 538 (1924); 15 Wright, Miller & Cooper, Federal

Practice and Procedure, §3844, at 332 (1986). The fact that an

exclusive license agreement was entered into after suit was

instituted is irrelevant to the issue of standing, except as

evidence that there was no exclusive license at the beginning of

this suit.

CONCLUSION

For the foregoing reasons, the petition for a writ of

certiorari to the United States Court of Appeals for the Ninth

Circuit should be granted.

Respectfully submitted,

SHERMAN L. COHN*

600 New Jersey Ave., N.W.

_ Washington, D.C. 20001- 2075

(202) 662-9069

RICHARD I. CHAIFETZ

9650 Santiago Road, Suite 8

Columbia, MD 21045

(301) 596-5409

WILLIAM H. SHIBLEY

2601 East Willow Street

Signal Hill, CA 90802

(562) 437-6654

Counsel for Petitioner

2 * Counsel of Record

APPENDIX

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APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Nos. 99-56215, 99-56331, 99-56733

COLUMBIA PICTURES TELEVISION, INC.,

Plaintiff-Appellee,

KRYPTON BROADCASTING OF

BIRMINGHAM, INC., Defendant,

and

C. Elvin Feltner, Jr., Defendant-Appellant.

Columbia Pictures Television, Inc.,.

Plaintiff-Appellant,

Vv.

C. Elvin Feltner, Jr., Defendant-Appellee,

and

Krypton Broadcasting, Inc., Defendant.

Columbia Pictures Television, Inc.,.

Plaintiff-A ppellee,

Vv.

Krypton Broadcasting of Birmingham, Inc.;

WABM Birmingham; Krypton Broadcasting, Inc.;

Krypton International Corporation; Wtmvy, Inc.;

Daniel S. Dayton; Alfred F. Decuir, Defendants,

and

C. Elvin Feltner, Jr., Defendant-Appellant.

Argued and Submitted Nov. 14, 2000

Filed July 9, 2001

Appeal from the United States District Court

for the Central District of California

Edward Rafeedie, District Judge Presiding.

D.C. No. CIV 91-06847-ER

OPINION

Before: PREGERSON, SILVERMAN, and TALLMAN,

Circuit Judges.

PREGERSON, Circuit Judge:

This matter comes before the court on three related appeals.

Defendant C. Elvin Feltner, Jr. (“Feltner”) appeals from a jury

verdict awarding the plaintiff, Columbia Pictures Television

Inc. (“Columbia”), $31.68 million in statutory damages for

violations of the Copyright Act of 1976 (“Copyright Act”), 17

U.S.C. § 101, et seq. In a separate appeal, Columbia asserts that

the district court erred in denying its motion for attorneys’ fees

pursuant to the Copyright Act. Finally, in a third appeal, Feltner

asserts that the district court erred in facilitating Columbia’s

efforts to enforce its judgment against him pending appeal by

certifying the judgment for registration in other districts

pursuant to Federal Rule of Civil Procedure 62(a) and 28

U.S.C. § 1963. We have jurisdiction pursuant to 28 U.S.C. §

1291, and we affirm.

FACTS & PROCEDURAL HISTORY

Feltner is the sole shareholder of Krypton International

Corporation, a holding company that owns all of the stock in

defendant Krypton Broadcasting Corporation (“KBC”). KBC,

in turn, owns three television stations in the Southeast, which

were also named as defendants in this action.' In 1990, each of

the three stations licensed television programs from Columbia,

either directly, or by assuming the rights and obligations under

contracts with former station owners. The licensed programs

include the four series at issue in this litigation: (1) “Who’s the

Boss?”; (2) “Silver Spoons”; (3) “Hart to Hart”; and (4) “T.J.

Hooker.”

In 1991, the stations failed to make timely licensing

payments and Columbia *1190 terminated the licensing

agreements. When the stations nonetheless continued to air the

series, Columbia filed the present action in federal district court

alleging various claims against the defendants, including

Columbia dismissed all claims against all defendants with the

exception of the copyright claims against Feltner. On

September 28, 1993, the district court granted partial summary

judgment in favor of Columbia, finding Feltner vicariously and

contributorily liable for the copyright infringement committed

by the defendant stations.

On January 14, 1994, Feltner sought leave to file a motion

to vacate the order granting partial summary judgment in favor

of Columbia. In the motion to vacate, Feltner asserted that

Columbia was not the exclusive licensee of the series in

question at the time Columbia filed the lawsuit, and that

therefore, Columbia lacked standing under the Copyright Act.

The district court denied Feltner’s request for leave to file the

motion to vacate and did not address the merits of Feltner’s

standing argument.

' The three subsidiary television stations are Krypton Broadcasting

of Jacksonville; Inc. (“KBJ”), Krypton Broadcasting of Ft. Pierce, Inc.

(“KBFP”), and Krypton Broadcasting of Birmingham (“KBB”).

Columbia elected to recover statutory damages in lieu of

actual damages pursuant to § 504(c) of the Copyright Act,

which permits an award of statutory damages “for all

infringements involved in the action, with respect to any one

work.” 17 U.S.C. § 504(a)(1) (emphasis added). Although

Feltner requested a jury trial on the issue of statutory damages,

the district court denied the request. Proceeding with a bench

trial, the district court found as a matter of law that each

episode of each series was a separate “work” for purposes of

computing statutory damages.” The district court also found

that each airing of the same episode by a different station

constituted a separate act of infringement. Finally, the district

court found that Feltner’s infringement was willful. Based on

these findings, the district court determined that Feltner

infringed 440 separate “works,” and on April 4, 1994, the

district court entered judgment against Feltner in the amount of

$8,800,000. The district court also granted a motion by

Columbia for attorneys’ fees and costs incurred through April

1994,

A prior panel of this court generally affirmed the district

court’s rulings, Columbia Pictures Television v. Krypton

Broadcasting of Birmingham, Inc., 106 F.3d 284 (9th Cir.

2 It is not clear from the record whether the district court reached

this decision just prior to trial, or whether the district court reached this

decision following the conclusion of a bench trial. The district court's order

regarding the motions in limine states that “[bJefore the first trial on

statutory damages, and before any evidence had been heard, the Court

determined that the Defendant was liable for 440 separate acts of

infringement.” However, the Supreme Court opinion in this case states:

“After two days of trial, the trial judge held that each episode of each series

constituted a separate work ....” Feltner v. Columbia Pictures Television,

523 U.S. 340, 344, 140 L. Ed. 2d 438, 118 S. Ct. 1279 (1998). Regardless,

it is clear that the district court treated the question of what constitutes a

“work” under the statutory damages provision of the Copyright Act as a

question of law.

1997),? but the Supreme [*1191] Court reversed. The

Supreme Court held that the Seventh Amendment guarantees

Feltner the right to a jury trial “on all issues pertinent to an

award of statutory damages under § 504(c) of the Copyright

Act, including the amount itself.” Felmmer v. Columbia Pictures

Television, 523 U.S. 340, 355, 140 L. Ed. 2d 438, 118 S. Ct.

1279 (1998).

Following the Supreme Court’s ruling, we remanded the

case to the district court for a jury trial on the sole question of

the amount of money to award Columbia, within the range

permitted by the statutory damages provision of the Copyright

Act, for each of the 440 “works” that Feltner infringed.

Columbia Pictures Television v. Krypton Broadcasting of

Birmingham, Inc., 152 F.3d 1171 (9th Cir. 1998). The jury

ultimately returned a $31.68 million verdict for Columbia. This

verdict is equivalent to an award of $72,000 for each of the 440

works infringed, which is within the statutory damages range

3 More specifically, on appeal to this court, Feltner asserted, inter

alia, that the district court: (1) improperly granted Columbia’s motion for

partial summary judgment because Columbia lacked standing under the

erred in concluding that each episode is a separate “work” for purposes of

computing statutory damages; (4) erred in concluding that each airing of the

same episode by a different station controlled by Feltner constituted a

separate act of infringement; (5) erred in concluding that Feltner’s

infringement was willful; and (6) erred in granting Columbia’s motion for

attorneys’ fees. With the exception of the motion for attorneys’ fees, we

affirmed the district court’s rulings. See generally Columbia Pictures, 106

F.3d 284.

On the issue of attorneys’ fees, we reversed the award and remanded the

case to the district court because the district court failed to explain its

reasoning regarding the amount of the award. On remand, the district court

more fully explained its reasoning and determined that the amount requested

by Columbia was reasonable. Columbia was ultimately awarded $722,621

in attorneys’ fees, and $30,646.47 in costs.

for willful infringement. The district court entered judgment

against Feltner on April 14, 1999.

Shortly after judgment was entered, Columbia filed a

motion for attorneys’ fees and a motion for an order certifying

the judgment against Feltner for registration in another

jurisdiction. In addition, Feltner filed a motion for judgment

notwithstanding the verdict or for a new trial. The district court

granted Columbia’s motion to certify the judgment, denied

Columbia’s motion for attorneys’ fees, and denied Feltner’s

motion for judgment notwithstanding the verdict or for a new

trial. This appeal followed.

Il.

DISCUSSION

A. Feltner’s Appeal from the Jury Verdict

Feltner first appeals from the jury’s $31.68 million verdict

in favor of Columbia. Specifically, Feltner asserts that a new

trial is warranted because the district court erred in: (1) denying

his motion in limine to dismiss the suit because Columbia lacks

standing under the Copyright Act; (2) denying his motion in

limine to preclude a jury trial on statutory damages; (3)

granting Columbia’s motion in limine to reaffirm the district

court’s prior ruling that Feltner infringed 440 separate “works”;

(4) ruling as a matter of law that the two stations that aired

“Who’s the Boss?” were not joint tortfeasors for purposes of

calculating statutory damages; and (5) denying Feltner’s new

trial motion. We address each of these arguments in turn.

1. Feltner’s Motion to Dismiss for Lack of Standing

[1] Feltner asserts that the district court erred in denying

his motion in limine to dismiss the suit for lack of standing

under the Copyright Act. A prior panel of this court already

held that Feltner failed to timely raise this issue in opposition

to a motion for summary judgment, and that Feltner failed to

satisfy the requirements for a motion for reconsideration.

Columbia Pictures, 106 F.3d at 290. In light of this prior ruling,

the law of the case doctrine bars reconsideration of the issue

whether Columbia’s standing as an exclusive licensee is

properly before the court. [*1192] See Jeffries v. Wood, 114

F.3d 1484, 1489 (9th Cir. 1997 .en banc); Milgard Tempering,

Inc. v. Selas Corp. of Am., 902 F.2d 703, 715 (9th Cir. 1990).

2. Feltner’s Motion to Preclude a Jury Trial on

Statutory Damages

[2] Feltner also asserts that the district court erred in

denying his motion in limine to preclude a jury trial on the

issue of statutory damages. Here, Feltner argues that in holding

that the statutory damages provision of the Copyright Act

violates the Seventh Amendment, the Supreme Court

effectively found that the statutory damages provision of the

urges us to find that the Supreme Court’s decision in this case

rendered the statutory damages provision of the Copyright Act

constitutionally unenforceable.

This argument is not persuasive. What the Supreme Court

held is that to the extent § 504(c) fails to provide a jury trial

right, it violates the Seventh Amendment and is therefore

unconstitutional. However, this holding in no way implies that

under the Copyright Act. Indeed, the position urged by Feltner

is contrary to the express language of the Supreme Court’s

decision in this case. As the Feltner Court stated, “if a party so

demands, a jury must determine the actual amount of statutory

damages under § 504(c)... .” Feltner, 523 U.S. at 355. The

Court later reaffirmed this point by stating, “the Seventh

Amendment provides a right to a jury trial on all issues

pertaining to an award of statutory damages under § 504(c) of

the Copyright Act, including the amount itself.” Jd. This

language evinces the Court’s intent to preserve a plaintiff's

ability to seek statutory damages under § 504(c) of the

Feltner argues that this interpretation of the Supreme

Court’s decision amounts to an impermissible rewriting of §

504(c). According to Feltner, if the Court finds that § 504(c) is

constitutionally infirm because it fails to provide for a jury

trial, then the Court must strike down § 504(c) in its entirety

and wait for Congress to reenact § 504(c) with a jury trial

provision included. This argument fails to understand the

Supreme Court’s holding in this case. In Felter, the Supreme

Court held that § 504(c) provides a remedy for copyright

infringement, and the Seventh Amendment provides a right to

a jury trial when that remedy is at issue. This holding is

consistent with the Supreme Court’s interpretation of other

federal statutes that provide a remedy but similarly fail to

provide for a jury trial. See, e.g., Tull v. United States, 481

U.S. 412, 95 L. Ed. 2d 365, 107 S. Ct. 1831 (1987) (regarding

civil penalties under the Clean Water Act); Curtis v. Loether,

415 U.S. 189, 39 L. Ed. 2d 260, 94 S. Ct. 1005 (1974) (holding

that although it is not clear whether Section 812 of the Civil

Rights Act of 1968 provides for a jury trial, a jury trial is

provided by the Seventh Amendment).

This interpretation is also consistent with Nimmer’s

reading of the Supreme Court’s decision in Feltner. According

to Nimmer:

Eight justices of the Supreme Court have now

determined that Congress did not allow for juries to

be appointed under Section 504(a), which is therefore

unconstitutional; one might therefore conclude that an

award of statutory damages cannot ever be invoked

against a defendant who demands her right to a jury

trial... . But in the topsy-turvy world of the Seventh

Amendment, a finding that a_ statute is

unconstitutional typically does not render it

inoperative. Whenever the Supreme Court has

determined that the particular statute [*1193] under

examination does not accord the right to a jury but the

Seventh Amendment so requires in that type of case,

the same pattern recurs: Notwithstanding that the

Court holds the enactment of Congress

unconstitutional, the statute itself goes on functioning.

Melville B. Nimmer & David Nimmer, Nimmer on Copyright,

§ 14.04[C][2] (2000) (emphasis added).

Finally, we note that since the Supreme Court’s ruling in

Feltner, various courts have conducted jury trials on the issue

of statutory damages. See, e.g., Yurman Design, Inc. v. PAJ,

Inc., 93 F. Supp. 2d 449, 462 n. 5 (S.D.N.Y. 2000) (stating that

“[I]t is worth noting that the question of statutory damages was

put to the jury, rather than decided by the Court, given the

Supreme Court’s decision in Feltner ....”); Segrets, Inc. v .

Gillman Knitwear, Co., 207 F.3d 56, 62-65 (1st Cir. 2000)

(remanding for a jury trial following Supreme Court’s ruling in

Feltner).

Therefore, we find that the Supreme Court’s decision in

Feltner did not eliminate § 504(c) of the Copyright Act, and we

affirm the district court’s denial of Feltner’s motion to preclude

a jury trial on statutory damages.

3. Columbia’s Motion to Reaffirm that Feltner

Infringed 440 “Works”

[3] Feltner next argues that the district court erred in

granting Columbia’s motion in limine to reaffirm the district

court’s prior ruling that each episode aired by Feltner is a

separate “work” for purposes of computing statutory damages.

10a

recover “an award of statutory damages for all infringements

involved in the action, with respect to any one work, for which

any one infringer is liable individually, or for which any two or

more infringers are liable jointly and severally.” 17 U.S.C. §

504(c)(1) (2001) (emphasis added). In addition, § 504(c)(1)

States that “all the parts of a compilation or derivative work

constitutes one work.” Id. (emphasis added). Thus, under the

award.” Columbia Pictures, 106 F.3d at 294 (emphasis added).

[4] Although the Copyright Act does not define the term

“work,” every circuit to address the issue has held that

“separate copyrights are not distinct works unless they can ‘live

their own copyright life.’” Walt Disney Co. v. Powell, 283 U.S.

App. D.C. 111, 897 F.2d 565, 569 (D.C. Cir. 1990) (quoting

Robert Stigwood Group, Ltd. v. O'Reilly, 530 F.2d 1096, 1105

(2d Cir. 1976)). As applied to episodes of a television series,

this test requires us to determine whether each episode “has an

independent economic value and is, in itself, viable.” Gamma

Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1117 (1st Cir.

1993) (citing Walt Disney, 897 F.2d at 569). We adopted this

test for what constitutes a “work” in a prior appeal of this case.

Columbia Pictures, 106 F.3d at 295.

[5] In this appeal, Feltner argues that in light of the

Supreme Court’s ruling, the issue whether each episode

constitutes a separate work is a question of fact for the jury to

decide, and that because this issue was not presented to the

jury, he is entitled to a new trial. Although there may be a case

in which the issue of what constitutes a “work” is a jury

question, we need not address that issue at this time. In the

present action, the question whether each episode of a

television series is a separate work is a question of law because

there are no underlying factual disputes for the jury to resolve.

Cf. Segrets, 207 F.3d at 65 n.7 (stating that the Supreme

lla

Court’s decision in Feltner “does not require that issues

properly decided on summary judgment be remanded to a

jury”). As the district [*1194] court explained in granting

Columbia’s motion to reaffirm its prior ruling that Feltner

infringed 440 works:

The facts wnich underlie the determination of the

number of infringements are not disputed . . . . There

are no factual disputes on this issue for the jury to

decide. The prior ruling was made by the Court as a

matter of law, since there were no factual issues... .

The Ninth Circuit noted that the Court made this

finding. The Ninth Circuit went on to affirm this

Court’s determination that each episode in a television

series constitutes a separate work .... This holding was

not certified by the Supreme Court, and was not

affected by the Supreme Court’s opinion, and thus

remains the law of the case.

Because “([t}here are no factual disputes . . . for the jury to

decide,” our prior ruling on this issue was not disturbed by the

Supreme Court’s decision in this case. Accordingly, the law of

the case doctrine bars reconsideration of the question whether

each episode constitutes a separate work for purposes of

computing statutory damages. See Jeffries, 114 F.3d at 1489;

Milgard, 902 F.2d at 715. The district court’s ruling on this

issue is therefore affirmed.

4. Feltner’s Appeal of the District Court’s Ruling

That the Two Stations That Aired “Who’s the Boss?”

Were Not Joint Tortfeasors

[6] Feltner next argues that the district court erred by

allowing two awards of statutory damages for one “work”

under Copyright Act § 504(c)(1). Specifically, Feltner asserts

that he is entitled to introduce evidence that the two defendant

Stations that aired “Who's the Boss?” are joint tortfeasors, and

12a

that therefore, eacii station’s airing of the same episode should

only count as one “work.” This argument is not persuasive for

two reasons. First, there is no evidence in the record to suggest

that the stations are joint tortfeasors. Second, to the extent that

Feltner seeks to introduce evidence to demonstrate his

connection with each of the stations, that simply makes Feltner

a joint tortfeasor with each station — it does not make each

station a joint tortfeasor with respect to the other. Columbia

Pictures, 106 F.3d at 294. This district court’s decision on this

issue is therefore affirmed.

5. Feltner’s New Trial Motion

Feltner also argues that the district court erred in denying

his new trial motion. Specifically, Feltner argues that a new

trial is warranted because: (1) the jury’s verdict was excessive;

and (2) the district court erred in excluding certain evidence.

We review a district court’s denial of a motion for a new trial

for an abuse of discretion. Scott v. Ross, 140 F.3d 1275, 1281

(9th Cir. 1998).

a. Excessive Verdict

[7] [8] [9] Feltner first asserts that the jury’s verdict in this

case was excessive. As set forth above, the Copyright Act

provides a plaintiff the option of electing either statutory

damages or actual damages. 17 U.S.C. § 504(a) (2001). In this

case, Columbia elected to seek statutory damages. A plaintiff

may elect statutory damages “regardless of the adequacy of the

evidence offered as to his actual damages and the amount of the

defendant’s profits.” Nimmer, supra, § 14.04[A]. “If statutory

damages are elected, ‘[t]he court has wide discretion in

determining the amount of statutory damages to be awarded,

constrained only by the specified maxima and minima.’” Peer

Int’l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (9th

Cir. 1990) (quoting Harris v. Emus Records Corp., 734 F.2d

1329, 1335 (9th Cir. 1984)). Subject to certain exceptions, at

13a

the time this case was tried to a jury, the statutory minimum

was $500 and the maximum was [*1195] $20,000. 17 U.S.C.

§ 504(c)(1) (1998). In the case of “willful” infringement,

however, the maximum amount per “work” infringed was

$100,000.* Jd. at § 504(c)(2). We will uphold a jury’s finding

of willful infringement if it is supported by “substantial

evidence.” Transgo, Inc. v. Ajac Transmission Parts Corp., 768

F.2d 1001, 1013-14 (9th Cir. 1985).

Here, the district court initially held a bench trial and found

that Feltner was liable for $8.8 million in statutory damages for

infringing 440 works. This award amounts to approximately

$20,000 per work infringed. That award was vacated, however,

after the Supreme Court held that Feltner was entitled to a jury

trial on the amount of statutory damages. Feltner, 523 U.S. at

355. The case was then remanded and tried to a jury, and the

jury awarded Columbia $31.68 million in statutory damages for

the same 440 works infringed. This award amounts to

approximately $72,000 per work infringed.

[10] Although the jury’s $31.68 million verdict is

substantial, it is equal to a per work infringed award that is well

within the statutory range for willful infringement. 17 U.S.C.

§ 504(c)(2). In addition, there was substantial evidence to

support a finding of willfulness. Transgo, 768 F.2d at 1013-14.

For example, it is undisputed that 415 of the 440 works

infringed were aired after Columbia filed the instant action. The

jury also heard testimony that Feltner was an experienced

businessman who understood the nature of Columbia’s

* — Since this case was tried to a jury, the statutory damages

provision of the Copyright Act was amended to increase the range of

statutory damages from $750 to $30,000 in most cases of infringement. 17

U.S.C. § 504(c)(1) (2000). In the case of willful infringement, however, a

jury may now award up to $150,000 per work infringed. Id. at § 504(c)(2).

l4a

to air the series in question until well into the course of this

litigation. This is sufficient to support a finding of willfulness.

Accordingly, we find that the district court did not abuse

its discretion in denying Feltner’s motion for a new trial due to

the allegedly excessive jury verdict.

b. Evidentiary Rulings

[11] Feltner also asserts that the district court erred in

denying his new trial motion because the district court

improperly excluded evidence from the jury trial. According

to Feltner, the district court erred in excluding: (1) the

stipulated testimony of Alanna Anderson,’ which Feltner

asserts is relevant to whether Feltner ever really assumed the

licenses for the television series at issue in this litigation; (2)

evidence of Feltner’s reliance on advice of counsel; and (3)

evidence that Columbia recovered some of the licensing fees in

bankruptcy. To reverse on the basis of an evidentiary ruling, we

must conclude both that the district court abused its discretion

and that the error was prejudicial. Defenders of Wildlife v.

Bernal, 204 F.3d 920, 927-28 (9th Cir. 2000).

[12] Feltmer asserts that the district court erred in

precluding him from introducing into evidence the stipulated

testimony of Alanna Anderson because Anderson’s testimony

demonstrates that Feltner never assumed the licenses between

Columbia and the prior owners of two of Feltner’s television

stations. As the district court noted, however, Feltner would be

liable for copyright infringement regardless of whether the

licenses were [*1196] valid because he broadcast the

television series without permission from Columbia. Moreover,

Anderson’s testimony is generally relevant to the question of

5 The record does not state what Anderson’s role is in this

litigation. For example, it is not clear whether she was employed by one of

the parties.

15a

liability rather than to the question of damages, and was thus

properly excluded from the damages phase of the trial.

The district court was also within its discretion in

excluding evidence of Feltner’s reliance on advice of counsel.

Feltner sought to rely on advice of counsel to demonstrate that

his infringement was not willful. But Feltner refused to answer

questions regarding his interactions with counsel at his

deposition. Accordingly, prior to the bench trial, the district

court precluded Feltner from relying on the defense of advice

of counsel] at trial.

Following remand from the Supreme Court, Columbia

filed a motion in limine to reaffirm the district court’s prior

ruling prohibiting Feltner from relying on the advice of counsel

defense. In opposition to the motion in limine, Feltner offered

“to make himself available for deposition on this issue.” The

district court rejected this offer, stating that “[t]he Defendant

cannot now, at the eleventh hour, make himself available for a

deposition.”

[13] [14] Although courts have recognized that reliance on

advice of counsel may be probative of non-willfulness, see

RCA/Ariola Int’l, Inc. v. Thomas & Grayston Co., 845 F.2d

773, 779 (8th Cir. 1988), the district court was within its

discretion in precluding Feltner from relying on advice of

counsel in this case. “The privilege which protects attorney-

client communications may not be used both as a sword and a

shield. Where a party raises a claim which in fairness requires

disclosure of the protected communication, the privilege may

be implicitly waived.” Chevron Corp. v. Pennzoil Co.,974 F.2d

1156, 1162 (9th Cir. 1992) (citing United States v. Bilzerian,

926 F.2d 1285, 1292 (2d Cir. 1991)). Here, Feltner sought to

argue that he continued his infringing activities based on the

advice of his attorney, while at the same time refusing to

answer questions regarding relevant communications with

16a

counsel] until the “eleventh hour.” Under these circumstances,

the district court was within its discretion in precluding Feltner

from invoking the advice of counsel defense. Cf. William A.

Schwarzer, et al., Federal Civil Procedure Before Trial, 11:37

at 11-29 (2000) (stating that “the court may fashion remedies

to prevent surprise and unfairness to the party seeking

discovery. For example, where the party claiming privilege

during discovery wants to testify at the time of trial, the court

may ban that party from testifying on the matters claimed to be

privileged”).

[15] Finally, Feltner asserts that the district court erred in

precluding him from introducing evidence that Columbia

received money from Feltner’s television stations through the

stations’ bankruptcy proceedings. At the close of the first day

of trial, and at the suggestion of the district court, the parties

entered into a stipulation regarding the bankruptcy proceeding

evidence. The stipulation, which was read to the jury, provided

as follows:

In the summer and fall of 1993 the three television

stations at issue went into bankruptcy. Columbia filed

claims for unpaid license fees on over 15 television

series or groups of motion pictures which it had

licensed to the stations, including the four series at

issue in this case. The three television stations were

sold to new operators. In 1995 and 1996, Columbia

received a portion of the proceeds of that sale which

substantially reduced the license fees owing on the 15

series and motion picture groups, including the four

series at issue in this case.

On appeal, Feltner essentially argues that he was forced to

agree to this stipulation in order to introduce any evidence

regarding [*1197] the bankruptcy payments at trial. This

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17a

argument is not sufficient to demonstrate that the district court

abused its discretion.

For the reasons set forth above, we affirm the district

court’s denial of Feltner’s new trial motion.

B. Columbia’s Appeal from District Court’s Denial of Its

Motion for Attorneys’ Fees

{16] [17] [18] In a separate appeal, Columbia argues that

the district court erred in denying its motion for attorneys’ fees.

Section 505 of the Copyright Act provides for an “award [of]

reasonable attorney’s fee to the prevailing party as part of the

costs.” 17 U.S.C. § 505 (2001). In deciding whether to award

fees, the district court should consider “the degree of success

obtained; frivolousness; motivation; objective

unreasonableness (both in the factual and legal arguments in

the case); and the need in particular circumstances to advance

considerations of compensation and deterrence.” Jackson v.

Axton, 25 F.3d 884, 890 (9th Cir. 1994). A district court’s

decision whether to award attorneys’ fees under the Copyright

Act is reviewed for an abuse of discretion. Yount v. Acuff Rose-

Opryland, 103 F.3d 830, 836 (9th Cir. 1996).

We find that the district court applied the proper legal test

and did not abuse its discretion in denying Columbia’s motion.

Jackson, 25 F.3d at 890. The district court’s decision denying

Columbia’s motion for attorneys’ fees is therefore affirmed.

C. Feltner’s Appeal from District Court’s Order

Certifying the Judgment for Registration

[19] Finally, in a third appeal, Feltner argues that the

district court erred by granting Columbia’s motion to certify its

judgment against Feltner for registration in other districts. We

review the district court’s decision to certify the judgment for

registration based on a finding of good cause for an abuse of

18a

discretion. See Chicago Downs Ass'n, Inc. v. Chase, 944 F.2d

366, 372 (7th Cir. 1991).

Under Federal Rule of Civil Procedure 62(a), a judgment

of a United States District Court becomes final and enforceable

ten days after judgment is entered. Fed. R. Civ. P. 62(a). At that

time, a prevailing plaintiff is entitled to execute upon a

judgment.® Pending appeal, however, the judgment is only

enforceable in the district in which it was rendered, unless the

judgment is “registered” in another district by court order. 28

U.S.C. § 1963 (2001). The registration process is set forth in 28

U.S.C. § 1963, which provides in relevant part:

A judgment in an action for the recovery of money or

property entered in any [ ]district court . . . may be

registered by filing a certified copy of the judgment in

any other district [ ], . . . when the judgment has

become final by appeal or expiration of the time for

appeal or when ordered by the court that entered the

judgment for good cause shown . . . . A judgment so

registered shall have the same effect as a judgment of

the district court of the district where registered and

may be enforced in like manner.

Id. (emphasis added). Section 1963 thus permits a district court

to issue an order certifying a judgment for registration during

the pendency of an appeal upon a finding of “good cause.” Id.

[20] Although there is no Ninth Circuit law defining “good

cause,” “the courts that have found good cause have generally

based their decisions on an absence of [*1198] assets in the

judgment forum, coupled with the presence of substantial assets

in the registration forum.” Dyll v. Adams, 1998 U.S. Dist.

¢ An appellant may obtain a formal stay of the judgment pending

appeal by posting a supersedeas bond. Fed. R. Civ. P. 62(d). Feltner did not

post such a bond following entry of judgment on the jury’s verdict in this

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LEXIS 1616, 1998 WL 60541 at *1 (N.D. Tex. 1998); Johns v.

Rozet, 143 F.R.D. 11, (D.D.C. 1992); Chicago Downs, 944

F.2d at 372; Graco Children’s Prods., Inc. v. Century Prods.

Co., 1996 U.S. Dist. LEXTS 10356, 1996 WL 421966, at *36

(E.D. Pa. 1996); Bingham v. Zolt, 823 F. Supp. 1126, 1136

(S.D.N.Y. 1993), aff'd, 66 F.3d 553 (2d Cir. 1995). Here, the

district court’s order granting Columbia’s motion simply states

that good cause has been shown. Although a more detailed

explanation of the district court’s reasoning is generally

desirable, in the instant action, there is ample evidence to

support the district court’s finding. Feltner does not dispute that

- he lacks assets in California. He also does not dispute that he

owns substantial property in Florida. This evidence is sufficient

to support a finding of good cause. Johns, 143 F.R.D. at 12-13;

Associated Business Tel. Sys. Corp. v. Greater Capital Corp.,

128 F.R.D. 63, 68 (D.N.J. 1989). We therefore find that the

district court did not abuse its discretion in granting Columbia’s

motion to certify the judgment for registration.

Ill.

CONCLUSION

The judgment of the district court is AFFIRMED. As a

part of this holding we affirm the district court’s denial of

Columbia’s request for attorneys’ fees in connection with the

district court proceedings. We note, however, that Columbia

also seeks costs and attorneys’ fees on appeal pursuant to 17

U.S.C. § 505. With respect to Columbia’s request on appeal,

we find that Columbia is entitled to costs and attorneys’ fees in

connection with its appeal of Case Number 99-56215, but not

in connection with its appeal of (Case Number 99-56331. The

determination of an appropriate amount of fees on appeal is

referred to the Appellate Commissioner Peter L. Shaw, who

shall conduct whatever proceedings he deems appropriate, and

who shall have authority to enter an order awarding fees. See

9th Cir. R. 39-1.9.

20a

APPENDIX B

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Filed: March 31, 1999

Columbia Pictures Television, ) Case No.

Inc., ) CV 91-6847 ER (CTx)

)

Plaintiff, )

) Order Regarding the

v. ) Plaintiff's and the

) Defendant’s Motions in

C. Elvin Feltner, et al., ) Limine

)

Defendants. )

)

The Court has read and considered the papers filed in

connection with the Plaintiff Columbia Pictures Television’s

four motions in limine and Defendant Krypton Broadcasting’s

three motions in limine, and now reaches the following

conclusions, which are subject to change as the posture of the

evidence demands:

Confirmation of Court’s Prior Ruling that Defendant

Infringed 440 Works:

[1] The Plaintiff asks the Court to confirm its prior ruling

that the Defendant is liable for infringing 440 separate works

for the purposes of awarding statutory damages. The statutory

damages provision allows a damage award for each work

infringed “for which any one infringer is liable individually.”

17 U.S.C. §504(c). Before the first trial on statutory damages,

and before any evidence had been heard, the Court determined

;

2la

that the Defendant was liable for 440 separate acts of

infringement. This calculation was based on the finding that

each station would be individually liable for its own broadcasts,

and that each episode in a series constituted a separate work.

[2] The Plaintiff argues that the Court decided this issue

as a matter of law, and that therefore the Supreme Court’s

holding that a jury trial is necessary does not upset this

determination. The Defendant argues that this was a factual

finding, and must be revisited by the jury because the Supreme

Court held that a jury should hear “all issues pertinent to an

award of statutory damages.”

[3] The facts which underlie the determination of the

number of infringements are not disputed. In the original

pretrial conference order, the Defendant stipulated to the

number of times each station had broadcast infringing episodes,

and the number of episodes each station allegedly infringed.

Pretrial Conference Order, pages 9-10 (filed February 18,

1994). The parties do not dispute the specific episodes that

were broadcast, the number of episodes that each station

broadcast, nor the timing of the broadcasts. There are no factual

disputes on this issue for the jury to decide. The prior ruling

was made by the Court as a matter of law, since there were no

factual issues. The Court found that the television stations

owned by the Defendant were not joint tortfeasors, and that

therefore the same episode broadcast by two stations constitutes

two “infringements” as defined by the statutory damages

provision. The Ninth Circuit noted that the Court made this

finding. 106 F.3d 284, 293. The Ninth Circuit went on to affirm

this Court’s determination that each episode in a television

series constitutes a separate work, and affirmed the finding that

each television station would be individually liable for the

infringements. This holding was not certified by the Supreme

Court, was not affected by the Supreme Court’s opinion, and

thus remains the law of the case. The Court confirms this

22a

ruling, finding as a matter of law that the Defendant is liable for

440 separate acts of infringement.

Confirmation of Ruling Excluding Evidence of

Defendant’s Reliance on Counsel:

[4] Prior to the previous bench trial on statutory damages,

the Court granted the Plaintiff's motion in limine to exclude

evidence relating to the Defendant’s reliance on counsel

because the Defendant refused to answer questions on this issue

during depositions. The Plaintiff now moves to have the Court

confirm that prior ruling and exclude evidence of reliance on

advice of counsel. The Defendant does not assert that changed

circumstances require the Court to reach a different conclusion

now. By way of opposition, the Defendant only states that he

“is willing to make himself available for deposition on this

issue.” The Defendant cannot now, at the eleventh hour, make

himself available for a deposition. The Court grants the motion,

and excludes testimony that the Defendant relied on the advice

of counsel when he did not terminate the broadcasts.

Payments and Statements Made During Settlement

Negotiations:

[5] Next, the Plaintiff seeks to exclude all evidence of

statements and payments made during settlement negotiations

between the parties. The Plaintiff relies on Federal Rule of

Evidence 408, which the Plaintiff argues excludes settlement

evidence for the purpose of determining damages. Rule 408

bars evidence of conduct, statements, or payments made in the

course of settlement negotiations, if that evidence is offered for

the purpose of proving liability or the amount of damages. The

Rule does not bar such evidence if offered for another purpose.

Liability has already been established in this case, so evidence

probative only of liability is irrelevant even without Rule 408.

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23a

[6] Though the issue for the jury is the determination of

Statutory damages, Rule 408 does not categorically bar

evidence that relates to the determination of statutory damages.

The determination of statutory damages differs from the

determination of actual damages because the factors considered

include the willfulness or innocence of the infringement,

deterrent effect of damages, and other equity-like factors.

Because of these other factors, evidence of settlement

negotiations or payments can be relevant. The Defendant can

offer this evidence for purposes other than those outlined in the

rule. Accordingly, the Court denies the Plaintiff's request for a

complete exclusion of settlement evidence.

Amounts Recovered in Bankruptcy Proceedings for

Contract and Copyright:

[7] The Plaintiff seeks the exclusion of evidence showing

damages recovered from the Defendant in bankruptcy

proceedings. These damages consist of both part of the

licensing fees due to the Plaintiff under the license agreements,

and part of the copyright infringement judgment previously

entered by this Court. The Court will discuss this motion with

counsel on the day of trial before the Court makes a final ruling

with respect to the two types of recovery in the bankruptcy

court.

Exclusion of Testimony that Defendant Did Not

Assume Licenses:

[8] The Plaintiff seeks to exclude the stipulated testimony

of Alanna Anderson on the issue of whether the Defendant

assumed the licenses for the television programs at issue. The

Defendant contends this testimony is relevant to statutory

damages because it involves the conduct of the parties.

However, whether the licences were valid is not relevant to

infringement or statutory damages for infringement. The

Defendant would be liable for copyright infringement

24a

regardless of whether the licenses were valid or not, since the

Defendant broadcast the programs and did not pay the licensing

fees. Also, this testimony could confuse the jury, and could

only be used by the Defendant to reargue liability. Accordingly,

the Court grants this motion, and excludes testimony that is

relevant only to whether the Defendant assumed the stations’

license agreements with the Plaintiff.

Motion to Strike Defendant’s Reply to Objections to

Jury Instructions:

[9] The Plaintiff moves to strike the Defendant’s reply to

objections to jury instructions, on the ground that such a reply

is not contemplated under the local rules. There is no rule

which bars this filing, and the Court denies this motion to

strike.

Exclusion of Evidence of Other Disputed Works:

[10] The Defendant seeks to exclude all documents or

testimony which refer to works which are not the subject of the

current action. In so far as the Defendant seeks a broad ruling

barring any such evidence, the Court would deny the motion.

In fixing the amount of statutory damages, the jury can consider

many factors, including conduct of the Defendant outside the

specific works that were infringed. Deterrence is one of the

considerations in the determination of statutory damages within

the ranges provided by 17 U.S.C. section 504.

[11] In so far as the Defendant specifically seeks to

exclude the termination letters dated July 8, 1991, and October

17, 1991, the Court would also deny the motion. The

termination letters are relevant to the willfulness of the

infringement, regardless of whether they refer to works other

than the four television series at issue. The letters put the

Defendant on notice of the termination of the licenses, and

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25a

informed him that further broadcast of the shows would violate

the Plaintiff's copyrights. Those letters should not be excluded.

Motion to Preclude Trial on Statutory Damages:

[12] The Defendant makes a motion in limine “to preclude

atrial on statutory damages,” arguing that the Supreme Court’s

opinion in this case invalidated section 504(c) of the Copyright

Act. The Defendant contends that if the statute is

unconstitutional, the Court does not have the authority to award

statutory damages, even if a jury determines the amount. The

Defendant asks the Court to hold trial on the issue of actual

damages, though the Plaintiff has elected to seek statutory

damages.

[13] First, the Court notes that this motion is not a proper

motion in limine. The motion should have been brought as a

noticed motion to be heard before trial. The Defendant did not

file such a motion, nor did he seek leave of the Court to file

such a motion. Even if the Court considers the motion,

however, the Court would deny the Defendant’s motion.

[14] The Supreme Court held in this case that the Seventh

Amendment granted a right to a jury trial in the determination

of statutory copyright damages. Felter v. Columbia Pictures

Television, 118 S.Ct. 1279, 1282 (1998). The Court stated that

the statute was silent on the issue of whether the a defendant

could demand a jury trial. 118 S.Ct. at 1282. Nowhere in the

opinion does the Court explicitly invalidate the statutory

damages provision, nor does the Court state that the statute is

irreconcilable with the Seventh Amendment. Instead, the

Supreme Court remanded the case. 118 S.Ct. at 1288. On

remand to the Ninth Circuit, that court in turn remanded the

case to the District Court, holding that the Defendant was

entitled to a jury determination of statutory damages. Columbia

Pictures Television v. Krypton Broadcasting of Birmingham,

Inc., 152 F.3d 1171, 1172 (9th Cir. 1998). Accordingly, in the

26a

absence of any indication in the Supreme Court’s opinion to the

contrary, the Court will hold a jury trial on the issue of the

amount of statutory damages.

Motion to Dismiss Suit Based on Standing of Plaintiff:

[15] The Defendant makes a motion in limine to preclude

a damages award because the Plaintiff lacks standing and is not

the owner of an exclusive right to the works. This motion is

untimely. It should have been brought in opposition to the

Plaintiff's motion for summary judgment as to liability. The

Defendant did not raise this issue at that time. Instead, four

months after the Court granted summary judgment, the

Defendant filed a “Motion to Vacate Order Granting Summary

Judgment.” The Court denied that motion because the

Defendant has not met the requirements for reconsideration

under Local Rule 7.16. The Ninth Circuit affirmed this Court’s

denial of the motion for reconsideration. Columbia Pictures

Television v. Krypton Broadcasting of Birmingham, Inc., 106

F.3d 284, 290. The Ninth Circuit refused to hear the

Defendant’s standing argument on appeal. The Defendant did

not include this issue in the writ of certiorari filed in the

Supreme Court.

[16] This issue has already been litigated, and the Court

has already found the Defendant barred from making this

argument. The Defendant cannot now bring up an argument

that this Court and the Ninth Circuit has already rejected.

' The Defendant attempted to frame this issue as one of

constitutional standing, which can thus be raised at any time. However, the

Defendant really only raises an issue about whether the Plaintiff is

authorized under the statute to bring this action. There is not a dispute about

whether the Plaintiff suffered injury-in-fact. The question raised by the

Defendant is really one of statutory standing, in which they challenge an

element of copyright infringement. This issue can be waived if the

3 Defendant does not timely raise it.

27a

Accordingly the Court would deny the Defendant’s motion to

preclude the Plaintiff from seeking damages.

IT IS SO ORDERED.

IT IS FURTHER ORDERED that the Clerk of the Court

shall serve, by United States mail or by telefax, copies of this

Order on counsel for the parties in this matter.

Dated: March 31, 1999.

/s/ Edward Rafeedie

EDWARD RAFEEDIE

Senior United States District Judge

28a

APPENDIX C

Supreme Court of the United States

No. 96-1768

C. Elvin FELTNER, Jr., Petitioner,

COLUMBIA PICTURES TELEVISION, INC.

Argued Jan. 21, 1998.

Decided March 31, 1998.

Justice THOMAS delivered the opinion of the Court.

Section 504(c) of the Copyright Act permits a copyright

owner “to recover, instead [**1282] of actual damages and

profits, an award of statutory damages... , in a sum of not less

than $500 or more than $20,000 as the court considers just.” 90

Stat. 2585, as amended, 17 U.S.C. § 504(c)(1). In this case, we

consider whether § 504(c) or the Seventh Amendment grants a

right to a jury trial when a copyright owner elects to recover

statutory damages. We hold that although the statute is silent on

the point, the Seventh Amendment provides a right to a jury

trial, which includes a right to a jury determination of the

amount of statutory damages. We therefore reverse.

Petitioner C. Elvin Feltner owns Krypton International

Corporation, which in 1990 acquired three television stations

in the southeastern United States. Respondent Columbia

Pictures Television, Inc., had licensed several television series

to these stations, including “Who’s the Boss,” “Silver Spoons,”

“Hart to Hart,” and “T. J. Hooker.” After the stations became

29a

delinquent in making their royalty payments to Columbia,

Krypton and Columbia entered into negotiations to restructure

the stations’ debt. These discussions were unavailing, and

Columbia terminated the stations’ license [*343] agreements

in October 1991. Despite Columbia’s termination, the stations

continued broadcasting the programs.

Columbia sued Feltner, Krypton, the stations, various

Krypton subsidiaries, and certain Krypton officers in federal

district court alleging, inter alia, copyright infringement arising

from the stations’ unauthorized broadcasting of the programs.

Columbia sought various forms of relief under the Copyright

Act of 1976 (Copyright Act), 17 U.S.C. § 101 et seq., including

a permanent injunction, § 502; impoundment of all copies of

the programs, § 503; actual damages or, in the alternative,

statutory damages, § 504; and costs and attorney’s fees, § 505.

On Columbia’s motion, the District Court entered partial

summary judgment as to liability for Columbia on its copyright

infringement claims.'

Columbia exercised the option afforded by § 504(c) of the

damages. In relevant part, § 504(c) provides:

“STATUTORY DAMAGES -—

“(1) Except as provided by clause (2) of this subsection,

the copyright owner may elect, at any time before final

judgment is rendered, to recover, instead of actual

damages and profits, an award of statutory damages for all

infringements involved in the action, with respect to any

one work, . . . in a sum of not less than $500 or more than

$20,000 as the court considers just. . . .”

' During the course of the litigation, Columbia dropped all claims

against all parties except its copyright claims against Feltner.

30a

“(2) In a case where the copyright owner sustains the

burden of proving, and the court finds, that infringement

was committed willfully, the court [in] its discretion may

increase the award of statutory damages to a sum of not

more than $100,000. In a case where the infringer sustains

the burden of proving, and the court finds, that such

infringer was not aware and had no reason to believe that

his or her acts constituted an infringement of [*344]

of statutory damages to a sum of not less than $200. ...”

17 U.S.C. § 504(c).

The District Court denied Feltner’s request for a jury trial

on statutory damages, ruling instead that such issues would be

determined at a bench trial. After two days of trial, the trial

judge held that each episode of each series constituted a

separate work and that the airing of the same episode by

different stations controlled by Feltner constituted separate

violations; accordingly, the trial judge determined that there

had been a total of 440 acts of infringement. The trial judge

further found that Feltner’s infringement was willful and fixed

statutory damages at $20,000 per act of infringement.

Applying that amount to the number of acts of infringement,

the trial judge determined that [**1283] Columbia was

entitled to $8,800,000 in statutory damages, plus costs and

attorney’s fees.

The Court of Appeals for the Ninth Circuit affirmed in all

relevant respects. Columbia Pictures Television v. Krypton

Broadcasting of Birmingham, Inc., 106 F.3d 284 (1997).?

Most importantly for present purposes, the court rejected

Feltner’s argument that he was entitled to have a jury determine

2 The Court of Appeals vacated and remanded (for further

explanation) the District Court’s award of costs and attorney’s fees to

_ Columbia. See 106 F.3d at 296.

3la

statutory damages. Relying on Sid & Marty Kro:ft Television

Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157 (CA9

1977) — which held that § 25(b) of the Copyright Act of 1909,

the statutory predecessor of § 504(c), required the trial judge to

assess statutory damages’ — the Court of [*345] Appeals held

that § 504(c) does not grant a right to a jury determination of

statutory damages. The Court reasoned that “if Congress

intended to overrule Krofft by having the jury determine the

proper award of statutory damages, it would have altered” the

language “‘as the court considers just” in § 504(c). 106 F.3d at

293. The Court of Appeals further concluded that the “Seventh

Amendment does not provide a right to a jury trial on the issue

of statutory damages because an award of such damages is

equitable in nature.” Jbid. We granted certiorari. 521 U.S.

(1997).

[1][2] Before inquiring into the applicability of the

Seventh Amendment, we must “‘first ascertain whether a

construction of the statute is fairly possible by which the

[constitutional] question may be avoided.’” Tull v. United

States, 481 U.S. 412, 417, n. 3, 95 L. Ed. 2d 365, 107 S. Ct.

1831 (1987) (quoting Curtis v. Loether, 415 U.S. 189, 192, n.

6, 39 L. Ed. 2d 260, 94 S. Ct. 1005 (1974)). Such a

construction is not possible here, for we cannot discern “any

3 _- Under the 1909 Act, a copyright plaintiff could recover “in lieu

of actual damages and profits, such damages as to the court shall appear to

be just, and assessing such damages the court may, in its discretion, allow

the amounts as hereinafter stated, but in the case of a newspaper

reproduction of a copyrighted photograph, such damages shall not exceed

the sum of [$200] nor be less than the sum of [$50], and such damages shall

in no other case exceed the sum of [$5,000] nor be less than the sum of

[$250] . . .” Act of Mar. 4, 1909, § 25(b), 35 Stat. 1081 (later amended and

codified at 17 U.S.C. § 101()).

32a

congressional intent to grant . . . the right to a jury trial,” 481

U.S. at 417, n. 3, on an award of statutory damages.‘

The language of § 504(c) does not grant a right to have a

jury assess statutory damages. Statutory damages are to be

assessed in an amount that “the court considers just.” §

504(c)(1). Further, in the event that “the court finds” the

infringement was willful or innocent, “the court in its

discretion” may, within limits, increase or decrease the amount

of [*346] statutory damages. § 504(c)(2). These phrases, like

the entire statutory provision, make no mention of a right to a

jury trial or, for that matter, to juries at all.

[3] The word “court” in this context appears to mean

judge, not jury. Cf. F. W. Woolworth Co. v. Contemporary

Arts, Inc., 344 U.S. 228, 232, 97 L. Ed. 276, 73 S. Ct. 222

(1952) (referring to the “judicial discretion” necessary for “the

court’s choice between acomputed measure of damage and that

imputed by” the Copyright Act of 1909) (emphasis added). In

fact, the other remedies provisions of the Copyright Act use the

term “court” in contexts generally thought to confer authority

on a judge, rather than a jury. See, e.g., § 502 (“court ... may ...

grant temporary and final injunctions”); § 503(a) (“the court

may order the impounding . . . of all copies or phonorecords”);

§ 503(b) (“as part of a final judgment or decree, the court may

order the destruction or other reasonable disposition of all

copies [**1284] or phonorecords”); § 505 (“[T]he court in its

discretion may allow the recovery of full costs” of litigation and

*. The Courts of Appeals have unanimously held that § 504(c) is not

susceptible of an interpretation that would avoid the Seventh Amendment

question. See, e.g., Cass County Music Co. v. C. H. L. R., Inc., 88 F.3d 635,

641 (CA8 1996); Video Views, Inc. v. Studio 21, Ltd., 925 F.2d 1010, 1014

(CA7 1991); Gnossos Music v. Mitken Inc., 653 F.2d 117, 119 (CA4 1981);

see also Oboler v. Goldin, 714 F.2d 211, 213 (CA2 1983); 4M. Nimmer &

D. Nimmer, Nimmer on Copyright § 14.04[C] (1997).

33a

“the court may also award a reasonable attorney’s fee’’). In

contrast, the Copyright Act does not use the term “court” in the

subsection addressing awards of actual damages and profits, see

§ 504(b), which generally are thought to constitute legal relief.

See Dairy Queen, Inc. v. Wood, 369 U.S. 469, 477, 8 L. Ed. 2d

44, 82 S. Ct. 894 (1962) (action for damages for trademark

infringement “subject to cognizance by a court of law’’); see

also Arnstein v. Porter, 154 F.2d 464, 468 (CA2 1946)

(copyright action for damages is “triable at ‘law’ and by a jury

as of right”); Video Views, Inc. v. Studio 21, Ltd., 925 F.2d

1010, 1014 (CA7 1991) (“little question that the right to a jury

trial exists in a copyright infringement action when the

damages”); 4M. Nimmer & D. Nimmer, Nimmer on Copyright

§ 12.10[B] (1997) (“beyond dispute that a plaintiff who seeks

to recover actual damages is entitled to a jury trial” (footnotes

omitted)).

[*347] Feltner relies on Lorillard v. Pons, 434 U.S. 575,

585, 55 L. Ed. 2d 40, 98 S. Ct. 866 (1978), in which we held

that the Age Discrimination in Employment Act of 1967

(ADEA), 81 Stat. 602, 29 U.S.C. § 621 et seq., provides a

statutory right to a jury trial in an action for unpaid wages even

though the statute authorizes “the court ... to grant such legal

or equitable relief as may be appropriate,” § 626(b). That

holding, however, turned on two crucial factors: The ADEA’s

remedial provisions were expressly to be enforced in

accordance with the Fair Labor Standards Act of 1938, as

amended, 29 U.S.C. § 101 et seg., which had been uniformly

interpreted to provide a right to a jury trial, Lorillard v. Pons,

434 U.S. at 580-581; and the statute used the word “legal,”

which we found to be a “term of art” used in cases “in which

legal relief is available and legal rights are determined” by

juries, id., at 583. Section 504(c), in contrast, does not make

explicit reference to another statute that has been uniformly

34a

interpreted to provide a right to jury trial and does not use the

word “legal” or other language denoting legal relief or rights.°

We thus discern no statutory right to a jury trial when a

Accordingly, we must reach the constitutional question.

iil

[4}[{5}[6}][7] The Seventh Amendment provides 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., Amdt. 7. Since Justice Story’s time,

the Court [*348] has understood “Suits at common law” to

refer “not merely [to] suits, which the common law recognized

among its old and settled proceedings, but [to] suits in which

legal rights were to be ascertained and determined, in

contradistinction to those where equitable rights alone were

recognized, and equitable remedies were administered.”

Parsons v. Bedford, 3 Peters 433, 447 (1830) (emphasis in

original). The Seventh Amendment thus applies not only to

common-law causes of action, but also to “actions brought to

enforce statutory rights that are analogous to common-law

causes of action ordinarily decided in English law courts in the

late 18th century, as opposed to those customarily heard by

courts of equity or admiralty.” Granfinanciera, S. A. v.

Nordberg, 492 U.S. 33, 42, 106 L. Ed. 2d 26, 109 S. Ct. 2782

(1989) (citing Curtis v. Loether,415 U.S. at 193). To determine

whether a statutory action is more analogous to cases tried in

* In addition, a copyright plaintiff may elect statutory damages “at

any time before final judgment is rendered.” § 504(c)(1). The parties agree,

and we have found no indication to the contrary, that election may occur

even after a jury has returned a verdict on liability and an award of actual

damages. It is at least unlikely that Congress intended that a jury, having

already made a determination of actual damages, should be reconvened to

make a determination of statutory damages.

courts of law than to suits tried in courts of equity or admiralty,

we examine both the nature of the statutory action and the

remedy sought. See 492 U.S. at 42.

(**1285] Unlike many of our recent Seventh Amendment

cases, which have involved modern statutory rights unknown

to 18th-century England, see,-e.g., Wooddell v. Electrical

Workers, 502 U.S. 93, 116 L. Ed. 2d 419, 112 S. Ct. 494 (1991)

(alleged violations of union’s duties under Labor Management

Relations Act, 1947, and Labor-Management Reporting and

Disclosure Act of 1959); Granfinanciera v. Nordberg, supra

(action to rescind fraudulent preference under Bankruptcy Act);

Tull v. United States, supra (government’s claim for civil

penalties under Clean Water Act); Curtis v. Loether, supra

(claim under Title VIII of Civil Rights Act of 1968), in this

case there are close analogues to actions seeking statutory

damages under § 504(c). Before the adoption of the Seventh

Amendment, the common law and statutes in England and this

country granted copyright owners causes of action for

infringement. More importantly, copyright suits for monetary

[*349] damages were tried in courts of law, and thus before

juries.

By the middle of the 17th century, the common law

recognized an author’s right to prevent the unauthorized

publication of his manuscript. See, e.g., Stationers Co. v.

Patentees, Carter’s Rep. 89, 124 Eng. Rep. 842 (C.P. 1666).

This protection derived from the principle that the manuscript

was the product of intellectual labor and was as much the

author’s property as the material on which it was written. See

Millar v. Taylor, 4 Burr 2303, 2398, 98 Eng. Rep. 201, 252 (K.

B. 1769) (Mansfield, J.) (common-law copyright derived from

principle that “it is just, that an Author should reap the

pecuniary Profits of his own ingenuity and Labour”); 1 W.

Patry, Copyright Law and Practice 3 (1994). Actions seeking

damages for infringement of common-law copyright, like

36a

actions seeking damages for invasions of other property rights,

were tried in courts of law in actions on the case. See Millar v.

Taylor, supra, 2396-2397, 98 Eng. Rep. at 251. Actions on the

case, like other actions at law, were tried before juries. See

M’Clenachan v. M’Carty, 1 U.S. 375, 1 Dall. 375, 378, 1 L.

Ed. 183 (C. P. Phila. Cty. 1788); 5 J. Moore, Moore’s Federal

Practice { 8.11[5] (2d ed. 1996); 1 J. Chitty, Treatise on

Pleading and Parties to Actions, at 164 (1892).

In 1710, the first English copyright statute, the Statute of

Anne, was enacted to protect published books. 8 Anne ch. 19

(1710). Under the Statute of Anne, damages for infringement

were set at “one Penny for every Sheet which shall be found in

[the infringer’s] custody, either printed or printing, published,

or exposed to Sale,” half (“one Moiety’’) to go to the Crown

and half to the copyright owner, and were “to be recovered ...

by action of Debt, Bill, Plaint, or Information.” § 1. Like the

earlier practice with regard to common-law copyright claims

for damages, actions seeking damages under the Statute of

Anne were tried in courts of law. See [*350] Beckford v.

Hood, 7 T.R. 621, 627, 101 Eng. Rep. 1164, 1167 (K. B. 1798)

(“The statute having vested that right in the author, the

common law gives the remedy by action on the case for the

violation of it”) (Kenyon, C. J.).

The practice of trying copyright damages actions at law

before juries was followed in this country, where statutory

Constitution. In 1783, the Continental Congress passed a

resolution recommending that the States secure copyright

protections for authors. See U.S. Copyright Office, Copyright

Enactments: Laws Passed in the United States Since 1783

Relating to Copyright, Bulletin No. 3, p. 1 (rev. ed. 1963)

(hereinafter Copyright Enactments). Twelve States (all except

Delaware) responded by enacting copyright statutes, each of

which provided a cause of action for damages, and none of

sla

which made any reference to equity jurisdiction. At least three

of these state statutes expressly stated that damages were to be

recovered through actions at law, see id., at 2 (in Connecticut,

damages for double the value of the infringed copy “to be

recovered ... in any court of law in this State”); id., at 17 (in

Georgia, similar damages enforceable “in due course of law’’);

id., at 19 (in New York, similar damages enforceable in “any

court of law”), while four others provided that damages would

be recovered in an “action of debt,” a prototypical action

brought in a court of law before a jury. See [**1286] F.

Maitland, The Forms of Action at Common Law, 357 (1929)

(hereinafter Maitland); see Copyright Enactments 4-9 (in

Massachusetts, New Harnpshire, and Rhode Island, damages

enforceable by “action of debt”); id., at 12 (in South Carolina,

damages of one shilling per sheet enforceable by “debt, bill,

plaint or information”). Although these statutes were short-

lived, and hence few courts had occasion to interpret them, the

available evidence suggests that the practice was for copyright

actions seeking damages to be tried to a jury. See Hudson &

Goodwin v. Patten, 1 Root 133, 134 [*351] (Conn. Super. Ct.

1789) (jury awarded copyright owner # 100 under Connecticut

Moreover, three of the state statutes specifically authorized

an award of damages from a statutory range, just as § 504(c)

does today. See Copyright Enactments 4 (in Massachusetts,

damages of not less than a # 5 and not more than # 3,000); id.,

at 8 (in New Hampshire, damages of not less than # 5 and not

more than # 1,000); id., at 9 (in Rhode Island, damages of not

less than # 5 and not more than # 3,000). Although we have

found no direct evidence of the practice under these statutes,

there is no reason to suppose that such actions were intended to

deviate from the traditional practice: The damages were to be

recovered by an “action of debt,” see id., at 4-9, which was an

action at law, see Maitland 357.

38a

In 1790, Congress passed the first federal copyright statute,

the Copyright Act of 1790, which similarly authorized the

awarding of damages for copyright infringements. Act of May

31, 1790, ch. 15, §§ 2, 6, 1 Stat. 124, 125. The Copyright Act

of 1790 provided that damages for copyright infringement of

published works would be “the sum of fifty cents for every

sheet which shall be found in [the infringer’s] possession, . . .

to be recovered by action of debt in any court of record in the

United States, wherein the same is cognizable.” § 2. Like the

Statute of Anne, the Copyright Act of 1790 provided that half

(“one moiety”) of such damages were to go to the copyright

owner and half to the United States. For infringement of an

unpublished manuscript, the statute entitled a copyright owner

to “all damages occasioned by such injury, to be recovered by

a special action on the case founded upon this act, in any court

having cognizance thereof.” § 6.

There is no evidence that the Copyright Act of 1790

changed the practice of trying copyright actions for damages in

courts of law before juries. As we have noted, actions on the

case and actions of debt were actions at law for which a [*352]

jury was required. See supra, at 9, 11.° Moreover, actions to

recover damages under the Copyright Act of 1831—which

differed from the Copyright Act of 1790 only in the amount

(increased to $1 from 50 cents) authorized to be recovered for

certain infringing sheets—were consistently tried to juries. See,

6 The Copyright Act of 1790 did not provide for equitable

remedies at all, and in Stevens v. Gladding, 58 U.S. 447, 17 HOW 447, 15

L. Ed. 155 (1855), we held that, even after Congress had provided for equity

jurisdiction under the Copyright Act, see Act of Feb. 15, 1819, ch. 19, 3

Stat. 481, the statute’s damages provision could not be enforced through a

suit in equity. Id., at 455; see also Callaghan v. Myers, 128 U.S. 617, 663,

32 L. Ed. 547, 9 S. Ct. 177 (1888) (Stevens v. Gladding determined that “the

penalties given by § 7 of the copyright act of 1831 cannot be enforced in a

suit in equity”).

39a

e.g., Backus v. Gould, 48 U.S. 798, 7 HOW 798, 802, 12 L. Ed.

919 (1849) (jury awarded damages of $2,069.75); Reed v.

Carusi, 1 Taney 72, 20 F. Cas. 431, 432 (No. 11,642) (CCMd.

1845) (jury awarded damages of $200); Millett v. Snowden, 17

F. Cas. 374, 375 (SDNY 1844) (jury awarded damages of

$625); Dwight v. Appleton, 8 F. Cas. 183, 185 (SDNY 1843)

(jury awarded damages of $2,000).

Columbia does not dispute this historical evidence. In fact,

Columbia makes no attempt to draw an analogy between an

action for statutory damages under § 504(c) and any historical

cause of action—including those actions for monetary relief that

we have characterized as equitable, such as actions for

disgorgement of improper profits. See Teamsters v. Terry, 494

U.S. 558, 570-571, 108 L. Ed. 2d 519, 110 S. Ct. 1339 (1990);

Tull v. United States, 481 U.S. at 424. Rather, Columbia

merely contends that statutory damages are clearly equitable in

nature.

(**1287] [8][9] We are not persuaded. We have

recognized the “general rule” that monetary relief is legal,

Teamsters v. Terry, supra, at 570, and an award of statutory

damages may serve purposes traditionally associated with legal

relief, such as compensation and punishment. See Curtis v.

Loether, 415 U.S. at 196 (actual damages are “traditional form

of relief offered in the courts of law”); Tull v. United States,

supra, at 422 [*353] (“Remedies intended to punish culpable

individuals . . . were issued by courts of law, not courts of

equity”). Nor, as we have previously stated, is a monetary

remedy rendered equitable simply because it is “not fixed or

readily calculable from a fixed formula.” 481 U.S. at 422, n. 7.

And there is historical evidence that cases involving

discretionary monetary relief were tried before juries. See, e.g.,

Coryell v. Colbaugh, 1 N.J.L. 77 (1791) (jury award of

“exemplary damages” in an action on a promise of marriage).

Accordingly, we must conclude that the Seventh Amendment

40a

provides a right to a jury trial where the copyright owner elects

to recover statutory damages.

The right to a jury trial includes the right to have a jury

determine the amount of statutory damages, if any, awarded to

the copyright owner. It has long been recognized that “by the

law the jury are judges of the damages.” Lord Townshend v.

Hughes, 2 Mod. 150, 151, 86 Eng. Rep. 994, 994-995 (C. P.

1677). Thus in Dimick v. Schiedt, 293 U.S. 474, 79 L. Ed. 603,

55 S. Ct. 296 (1935), the Court stated that “the common law

rule as it existed at the time of the adoption of the Constitution”

was that “in cases where the amount of damages was

uncertain[,] their assessment was a matter so peculiarly within

the province of the jury that the Court should not alter it.” /d.,

at 480 (internal quotation marks and citations omitted). And

there is overwhelming evidence that the consistent practice at

common law was for juries to award damages. See, e.g., Duke

of York v. Pilkington, 2 Show. 246, 89 Eng. Rep. 918 (K. B.

1760) (jury award of # 100,000 in a slander action); Wilkes v.

Wood, Lofft 1, 19, 98 Eng. Rep. 489, 499 (K. B. 1763) (jury

award of #1,000 in an action of trespass); Huckle v. Money, 2

Wils. 205, 95 Eng. Rep. 768 (K. B. 1763) (upholding jury

award of #300 in an action for trespass, assault and

imprisonment); Genay v. Norris, 1 S.C. L. 6, 7 (1784) (jury

award of #400); Coryell v. Colbaugh, supra (sustaining

correctness of jury award of exemplary damages in an action on

a promise of marriage); see also K. Redden, Punitive Damages

[*354] § 2.2, p. 27 (1980) (describing “primacy of the jury in

the awarding of damages”).

More specifically, this was the consistent practice in

134, for example, a jury awarded a copyright owner #100 under

the Connecticut copyright statute, which permitted damages in

an amount double the value of the infringed copy. In addition,

juries assessed the amount of damages under the Copyright Act

4la

of 1831, even though that statute, like the Copyright Act of

1790, fixed damages at a set amount per infringing sheet. See

Backus v. Gould, supra, at 802 (jury awarded damages of

$2,069.75); Reed v. Carusi, supra, at 432 (same, but $200);

Dwight v. Appleton, supra, at 185 (same, but $2,000); Millett

v. Snowden, supra, at 375 (same, but $625).

Relying on Tull v. United States, supra, Columbia

contends that the Seventh Amendment does not provide a right

to a jury determination of the amount of the award. In Tull, we

held that the Seventh Amendment grants a right to a jury trial

on all issues relating to liability for civil penalties under the

Clean Water Act, 33 U.S.C. §§ 1251, 1319(d), ’ see 481 U.S.

at 425, but then went on to decide that Congress could

constitutionally authorize trial judges to assess the amount of

the civil penalties, see 481 U.S. at 426-427. According to

Columbia, [**1288] Tull demonstrates that a jury

determination of the amount of statutory damages is not

necessary “to preserve ‘the substance of the common-law right

of trial by jury.”” 481 U.S. at 426 (quoting Colgrove v. Battin,

413 U.S. 149, 157, 37 L. Ed. 2d 522, 93 S. Ct. 2448 (1973)).

[*355] In Tull, however, we were presented with no

evidence that juries historically had determined the amount of

7 Section 1319(d) of the Clean Water Act provided that violators

of certain sections of the Act “shall be subject to a civil penalty not to

exceed $10,000 per day” during the period of the violation. 481 U.S. at

414.

* This portion of our opinion was arguably dicta, for our holding

that there was a right to a jury trial on issues relating to liability required us

to reverse the lower court’s liability determination.

42a

civil penalties to be paid to the Government.’ Moreover, the

awarding of civil penalties to the Government could be viewed

as analogous to sentencing in a criminal proceeding. See 481

U.S. at 428 (SCALIA, J., concurring in part and dissenting in

part).'° Here, of course, there is no similar analogy, and there

is clear and direct historical evidence that juries, both as a

general matter and in copyright cases, set the amount of

damages awarded to a successful plaintiff. Tull is thus

inapposite. As a result, if a party so demands, a jury must

determine the actual amount of statutory damages under §

504(c) in order “to preserve ‘the substance of the common-law

right of trial by jury.’” 481 U.S. at 426.

** *

For the foregoing reasons, we hold that the Seventh

Amendment provides a right to a jury trial on all issues

pertinent to an award of statutory damages under § 504(c) of

the Copyright Act, including the amount itself. The judgment

below is reversed, and we remand the case for proceedings

consistent with this opinion.

It is so ordered.

% It should be noted that Tull is at least in tension with Bank of

Hamilton v. Lessee of Dudley, 2 Pet. 492 (1829), in which the Court held in

light of the Seventh Amendment that a jury must determine the amount of

compensation for improvements to real estate, and with Dimick v. Schiedt,

293 U.S. 474, 79 L. Ed. 603, 55 S. Ct. 296 (1935), in which the Court held

that the Seventh Amendment bars the use of additur.

0 As we have noted, even under the Statute of Anne and the

Moiety”) was determined by a jury.

43a

JUSTICE SCALIA, concurring in the judgment.

It is often enough that we must hold an enactment of

Congress to be unconstitutional. I see no reason to do so here

— [*356] not because I believe that jury trial is not

constitutionally required (I do not reach that issue), but because

the statute can and therefore should be read to provide jury

trial.

“[W]here a statute is susceptible of two constructions, by

one of which grave and doubtful constitutional questions arise

and by the other of which such questions are avoided, our duty

is to adopt the latter.” United States ex rel. Attorney General v.

Delaware & Hudson Co., 213 U.S. 366, 408, 53 L. Ed. 836, 29

S. Ct. 527 (1909). The Copyright Act of 1976 authorizes

statutory damages for copyright infringement “in a sum of not

less than $500 or more than $20,000 as the court considers

just.” 17 U.S.C. § 504(c). The Court concludes that it is not

“fairly possible,” ante, at 4 (internal quotation marks omitted),

to read § 504(c) as authorizing jury determination of the

amount of those damages. I disagree.

In common legal parlance, the word “court” can mean

“[t]he judge or judges, as distinguished from the counsel or

jury.” Webster’s New International Dictionary 611 (2d ed.

1949) (def. 10d). But it also has a broader meaning, which

includes both judge and jury. See, e.g., id., (def. 10b: “The

persons duly assembled under authority of law for the

administration of justice”); Black’s Law Dictionary 318 (Sth

ed. 1979) (“. .. A body organized to administer justice, and

including both judge and jury”). We held in Lorillard v. Pons,

434 U.S. 575, 55 L. Ed. 2d 40, 98 S. Ct. 866 (1978), that a

statute authorizing “the court . . . to grant such legal or

equitable relief as may be appropriate,” 29 U.S.C. § 626(b),

could fairly be read to afford a right to jury trial on claims for

44a

backpay under the Age Discrimination in Employment Act of

1967.

As the Court correctly observes, ante, at 6, there was more

evidence in Lorillard than there is in the present case that

“court” [**1289] was being used to include the jury. The

remedial provision at issue explicitly referred to the “‘powers,

remedies, and procedures’” of the Fair Labor Standards Act,

under which “it was well established that there was a right to a

jury trial,” Lorillard, 434 U.S. at 580. The provision’s [*357]

reference to “legal ... relief’ also strongly suggested a statutory

right to jury trial. Jd., at 583. The text of § 504(c) lacks such

clear indications that “court” is being used in its broader sense.

But their absence hardly demonstrates that the broader reading

is not “fairly possible,” e.g., Tull v. United States, 481 U.S.

412, 417, n. 3, 95 L. Ed. 2d 365, 107 S. Ct. 1831 (1987). The

only significant evidence cited by the Court for that proposition

is that the “Copyright Act use[s] the term ‘court’ in contexts

generally thought to confer authority on a judge, rather than a

jury,” ante, at 5, but “does not use the term ‘court’ in the

subsection addressing awards of actual damages and profits, see

§ 504(b), which generally are thought to constitute legal relief,”

ante, at 5-6. That is a fair observation, but it is not, in my view,

probative enough to compel an interpretation that is

constitutionally doubtful.

That is at least so in light of contradictory evidence from

the statutory history, which the Court chooses to ignore.

Section 504(c) is the direct descendant of a remedy created for

unauthorized performance of dramatic compositions in an 1856

than one hundred dollars for the first, and fifty dollars for every

subsequent performance, as to the court having cognizance

thereof shall appear to be just,” enforced through an “action on

the case or other equivalent remedy.” Act of Aug. 18, 1856, ch.

169, 11 Stat. 138, 139. Because actions on the case were

45a

historically tried at law, it seems clear that this original statute

permitted juries to assess such damages. See Lorillard, supra,

at 583. Although subsequent revisions omitted the reference to

“action[s] on the case,” they carried forward the language

specifying damages “as to the court shall appear to be just.” See

Act of July 8, 1870, ch. 230, § 101, 16 Stat., 214; Act of

January 6, 1897, ch. 4, 29 Stat., 482. In 1909, Congress

extended those provisions to permit all copyright owners to

recover “in lieu of actual damages and profits such damages as

to the court shall appear just ....” Act of March 4, 1909, ch. 320,

§ 25(b), [*358] 35 Stat. 1081. We have recognized that,

although the prior statutory damages provisions

“were broadened [in 1909] so as to include other

copyrights and the limitations were changed in amount, ...

the principle on which they proceeded — that of committing

the amount of damages to be recovered to the court’s

discretion and sense of justice, subject to prescribed

limitations — was retained. The new provision, like one of

the old, says the damages shall be such ‘as to the court

shall appear to be just.’” L. A. Westermann Co. v. Dispatch

Printing Co., 249 U.S. 100, 107, 63 L. Ed. 499, 39 S. Ct.

194 (1919).

If a right to jury trial was consistent with the meaning of

the phrase “as to the court . . . shall appear to be just” in the

1856 statutory damages provision, I see no reason to insist that

the phrase “as the court considers just” has a different meaning

in that provision’s latest reenactment. “[W]Jhere, as here,

Congress adopts a new law incorporating sections of a prior

law, Congress normally can be presumed to have had

knowledge of the interpretation given to the incorporated law,

at least insofar as it affects the new statute.” Lorillard, 434 U.S.

at 581.

46a

I do not contend that reading “court” to include “jury” is

necessarily the best interpretation of this statutory text. The

Court is perhaps correct that the indications pointing to a

change in meaning from the 1856 statute predominate. As I

have written elsewhere, however:

“The doctrine of constitutional doubt does not require that

the problem-avoiding construction be the preferable one

— the one the Court would adopt in any event. Such a

standard would deprive the doctrine of all function. ‘Adopt

the interpretation that avoids the constitutional doubt if

that is the right one’ produces precisely the same result as

‘adopt the right interpretation.’ Rather, the doctrine of

constitutional doubt [**1290] comes into play when the

statute is ‘susceptible of’ the problem-avoiding [*359]

interpretation, Delaware & Hudson Co., 213 U.S. at 408

— when that interpretation is reasonable, though not

necessarily the best.” Almendarez-Torres v. United States,

523 U.S. 224, 270 (SCALIA, J., dissenting).

As the majority’s discussion amply demonstrates, there

would be considerable doubt about the constitutionality of §

504(c) if it did not permit jury determination of the amount of

statutory damages. Because an interpretation of § 540(c) that

avoids the Seventh Amendment question is at least “fairly

possible,” I would adopt that interpretation, prevent the

invalidation of this statute, and reserve the constitutional issue

for another day.

47a

APPENDIX D

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

CoLumBIA Pictures TELEVISION,

Plair ntiff-Appellee,

KRYPTON BROADCASTING OF

BirMINGHAM, INc.; WABM Nos. 94-55816

BIRMINGHAM; KRYPTON 94-55894

BROADCASTING, INC.; KRYPTON . D.C. No

INTERNATIONAL CORPORATION; CV-91-06847-ER

WTWY, Inc.; WTVX; Dantz S.

Dayton; ALFRED F. Decur, OPINION

Defendants,

and

C. Ervin Fevtner, Jr.,

Defendant-Appellant.

Appeal from the United States District Court

for the Central District of California

Edward Rafeedie, District Judge, Presiding

Argued and Submitted

November 15, 1995—Pasadena, California

Filed February 6, 1997

Before: Jerome Farris, Meivin Brunetti, and Alex Kozinski,

Circuit Judges.

Opinion by Judge Brunetti

48a

OPINION

BRUNETTI, Circuit Judge:

C. Elvin Felmer is the owner of Krypton Intemational Cor-

poration, which in tum owns three television stations in the

southeast.’ Columbia Pictures Television licensed several

television shows to the three stations, including “Who’s the

Boss?,” “Silver Spoons,” “Hart to Hart,” and “TJ. Hooker.”

After the stations became delinquent in paying royalties,

Columbia attempted to terminate the licensing agreements.

The stations continued to broadcast the programs, and Colum-

bia filed suit. During the course of the litigation, Columbia

dropped all causes of action except its copyright claims

against Felmer. The district court found Felmer vicariously

and contributorily liable for copyright infringement on the

part of the Krypton defendants, granted summary judgment in

favor of Columbia on liability, and, after a bench tial,

awarded Columbia $8,800,000 in statutory damages and over

$750,000 in attorneys fees and costs. In this appeal, Felmer

and Krypton International’ challenge several of the district

court’s rulings.

L SUBJECT MATTER JURISDICTION

Felmer argues that Columbia’s complaint fails to properly

plead a claim arising under federal copyright law. Therefore,

argues Felmer, subject matter jurisdiction was lacking in the

district court. However, because Columbia’s complaint

alleges ownership and infringement of multiple copyrights

and seeks relief under several sections of the Copyright Act—

‘Krypton International and its subsidiaries—Krypton Broadcasting,

Inc.; Krypton Broadcasting of Birmingham, Inc.; Krypton Broadcasting of

Jacksonville, Inc.; and Krypton Broadcasting of Ft. Pierce, Inc.—are col-

lectively referred to as “the Krypton defendants.”

*Krypton International is only appealing the district court’s dismissal of

its counterclaims and the district court’s denial of its motion for fees.

49a

17 U.S.C. §§ 502 (injunction), 503 (impoundment), 504

(damages and profits), and 505 (costs and attorneys fees)—

Columbia properly pled a claim arising under federal copy-

right law. Rano v. Sipa Press, Inc., 987 F.2d 580, 584 (9th

Cir. 1993); Vestron, Inc. v. Home Box Office, Inc., 839 F.2d

1380, 1381-82 (9th Cir. 1988); Effecis Assocs., Inc. v. Cohen,

817 F.2d 72, 73-74 (9th Cir. 1987). The district court had sub-

ject matter jurisdiction pursuant to 28 U.S.C. § 1338(a).

IL VENUE

Feltner argues that venue was improper in the Central Dis-

trict of California. So long as the underlying facts are not in

dispute, we review the district court’s venue determination de

novo. Decker Coal Co. v. Commonwealth Edison Co., 805

F.2d 834, 841 (9th Cir. 1986). The district court’s factual

findings must be accepted unless clearly erroneous. See

Reebok Int'l, Lid. v. McLaughlin, 49 F.3d 1387, 1390 (9th

Cir.), cert. denied, 116 S.Ct. 276 (1995). We find that venue

was proper in the Central District.

Venue under 28 U.S.C. § 1400(a)’ is proper in any judicial

district in which the defendant would be amenable to personal

jurisdiction if the district were a separate state. Milwaukee

Concrete Studios v. Fjeld Manufacturing Co., 8 F.3d 441,

445-47 (7th Cir. 1993); Johannsen v. Brown, 788 F.Supp.

465, 469 (D.Or. 1992).

[1] Columbia contends that specific jurisdiction exists over

Feltmer. We use a three part test for analyzing whether the

exercise of specific jurisdiction satisfies the requirements of

due process:

*28 U.S.C. § 1400 provides:

Civil actions, suits, or proceedings arising under any Act of Con-

gress relating to copyrights or exclusive rights in mask works

may be instituted in the district in which the defendant or his

agent resides or may be found.

50a

(1) the defendant must purposefully avail himself

of the privilege of conducting activities in the forum,

thereby invoking the benefits and protections of its

laws;

(2) the claim must arise out of or result from the

defendant’s forum-related activities; and

(3) the exercise of jurisdiction must be reasonable.

Sher v. Johnson, 911 F.2d 1357, 1361 (9th Cir. 1990).

[2] Columbia alleged, and the district court found, that Felt-

ner willfully infringed copyrights owned by Columbia, which,

as Felmer knew, had its principal place of business in the

Central District. This fact alone is sufficient to satisfy the

“purposeful availment” requirement. Calder v. Jones, 465

U.S. 783, 789-90 (1984) (holding that an intentional tort

knowingly directed at a forum resident satisfies the minimum

contacts test).

[3] Additionally, Columbia relies on Felmer’s wide-ranging

contract-related contacts with Columbia in the Central Dis-

trict. Feltner argues that these contacts cannot support venue

because they all arise out of the license agreements which,

according to Felmer, are unenforceable because they were

never signed by Columbia. This argument fails both because

Felter did not raise this argument in the district court and

because whether or not the agreements are enforceable as a

matter of contract law, Felter’s contacts with the Central

District remain the same. Feltner’s contract-related contacts

are sufficient to satisfy the “purposeful availment” require-

ment. See Burger King Corp. v. Rudzewicz, 471 U.S. 462,

476, 479 (1985) (holding in contract action that, when one

analyzes the “prior negotiations and contemplated future con-

sequences, along with the terms of the contract and the par-

ties’ actual course of dealing,” the purposeful availment

Sla

requirement is satisfied if a defendant has created “continuing

obligations between himself and residents of the forum”).

[4] Under the second prong, Columbia’s claims clearly

“arise out of or result from the defendant’s forum-related

activities.” As correctly asserted by Columbia, Felmer was

able to authorize infringing broadcasts of Columbia’s pro-

grams only because Columbia shipped those programs from

the Central District to the Krypton stations pursuant to the

license agreements.

[5] Finally, under the third prong, “there is a presumption

of reasonableness upon a showing that the defendant purpose-

fully directed his actions at forum residents which the defen-

dant bears the burden of overcoming by presenting a

compelling case that jurisdiction would be unreasonable.”

Haisten v. Grass Valley Medical Reimbursement, 784 F.2d

1392, 1397 (9th Cir. 1986) (citing Burger King, 471 U.S. at

477) (emphasis in original). Feltner’s contentions—that he

had more of a burden litigating in California than Columbia

would have had in Florida, that Florida had a stronger interest

than California in adjudicating the suit because he lived in

Florida, and that Florida was the most efficient forum—are

insufficient to meet his burden.

Because Felner would be amenable to personal jurisdiction

in the Central District if the Central District were a separate

State, venue was proper under 28 U.S.C. § 1400(a).*

Il. SUMMARY JUDGMENT

Feltner contends that summary judgment was inappropri-

ately granted because: (A) Columbia was not the proper party

“The district court also relied on the license agreements’ forum selection

clauses to confer venue. While we agree with the district court that the

forum selection clauses were appropriately enforced against Felmer, we

need not analyze the issue here.

52a

to the copyright claims; (B) there was a triable issue of fact

as to whether Columbia’s termination of the license agree-

ments was proper; (C) there was a triable issue of fact as to

whether Felmer would reasonably have interpreted Cclum-

bia’s actions as terminating the license agreements; and (D)

triable issues of fact existed conceming Felmer’s allegations

that Columbia was precluded from terminating the agree-

ments on the basis of estoppel, negligent misrepresentation,

and an oral contract not to terminate. None of Feltner’s con-

tentions has merit.

A. Feltner’s Standing Argument Is Not Properly

Before This Court.

Felmer argues that the district court’s summary judgment

ruling was erroneous because, under 17 U.S.C. § 501(b),

Columbia was not the proper party to the copyright claims.

‘ Felmer never raised this argument in his opposition to Colum-

bia’s summary judgment motion. In fact, in his “Statement of

Genuine Issues,” Felmer agreed that “Columbia holds the

contends that the issue was “raised in a Motion to Vacate filed

under F.R.Civ.P. 60(b),” this contention is not supported by

the record: The district court denied Felmer’s motion for

leave to file the motion to vacate, impliedly finding that Felt-

ner had failed to meet the prerequisites for relief under

F.R.Civ.P. 60(b) and Central District Local Rule 7.16.

A district court’s decision not to consider an argument

raised for the first time on reconsideration is reviewed for

abuse of discretion. Rosenfeld v. United States Dept. of Jus-

tice, 57 F.3d 803, 811 (9th Cir. 1995). Because Felter has

failed to demonstrate that the district court abused its discre-

tion in refusing to consider his motion to vacate, Felmer’s

standing argument may not be considered on appeal.

B. Columbia’s Termination Was Proper.

Felmer argues that a triable issue of fact exists as to

whether the defendants’ breach of the license agreements was

53a

sufficiently material to enable Columbia to terminate the

agreements. In support of his argument, Feltmer cites Rano v.

Sipa Press, Inc., 987 F.2d at 586-87, and Fantasy, Inc. v.

Fogarty, 984 F.2d 1524, 1529-31 (9th Cir. 1993), rev’d on

other grounds, 114 S.Ct. 1023 (1994), which held that the

licensing agreement at issue was not rightfully terminated

because the licensee’s breach did not “go to the root of the

matter,” Fantasy, 984 F.2d at 1530 (citations omitted), or did

not “constitute a total failure in the performance of the

contract.” Rano, 987 F.2d at 586 (citation and intemal quota-

tion omitted).

[6] However, both Rano and Fantasy dealt with licensing

agreements that did not have an express contractual provision

authorizing termination. See Rano, 987 F.2d at 583; Fantasy,

984 F.2d at 1529. In contrast, each of the license agreements

in this case has an express provision authorizing Columbia to

terminate the agreement if the licensee “fails to make pay-

ments of the License Fee or any portion thereof when due.”

Because these agreements expressly consider the failure to

timely pay royalties material, Columbia’s termination of the

agreements was proper. See Fantasy, 984 F.2d at 1529 (stat-

ing that “a bona fide dispute concerning royalty payments

does not automatically constitute a material breach unless the

contract so provides”) (emphasis added and omitted).

C. Feltner Could Not Reasonably Interpret

Columbia’s Actions as Anything But Termination.

Feltmer’s version of the facts surrounding the termination of

the licensing agreements is as follows: In 1989, Feltner began

negotiations to purchase WNFT-TV in Jacksonville, Florida.

Because he determined that the station needed to cut expenses

to operate profitably, he instructed Dan Dayton, his Chief

Operating Officer, to negotiate with all of the syndicators sup-

plying programs to WNFT to see if they would be willing to

restructure the license agreements. In this regard, Dayton con-

tacted John Darakjy of Columbia, who indicated that Colum-

54a

bia would “work with” Krypton to restructure the deal.

Dayton memorialized this conversation in a March 22, 1990

letter.

Feltner thereafter purchased WNFT, as well as stations

WABM-TV in Birmingham, Alabama and WTVX-TV in

West Palm Beach, Florida. From March 1990 until Columbia

filed its lawsuit in December of 1991, Columbia and the

Krypton entities engaged in protracted negotiations for the

restructure of each of the three stations’ debt to Columbia.

During that time, at least thirteen written proposals of restruc-

ture were exchanged—six from Columbia and seven from

Krypton. The parties were unable to reach an agreement

“primarily because Columbia insisted upon a large up-front

payment and refused to spread out the payments over the

entire term of the contract notwithstanding defendants’ pro-

tests that the stations were not eaming enough money to make

those payments.”

On July 8, 1991, Columbia sent the first of three purported

termination letters.’ Despite the letter’s threatening language,

Columbia made no attempts to enforce the letter’s demands

and sent three more restructure proposals in September and

October of 1991. On October 17, 1991, Columbia sent

another termination letter similar to the letter of July 8. Like

the July 8 letter, the October 17 letter was subsequently con-

tradicted by a restructure proposal sent on December 10,

1991.

Based on these facts, Felner argues that a triable issue of

fact exists as to whether he should have reasonably imter-

preted Columbia’s conduct to effectuate a termination of the

licensing agreements. In particular, Felmer cites to the

ambiguity caused by the restructuring proposals sent by

"The letter demanded that WNFT cease and desist from the broadcast

of the formeriy-licensed programs and demanded the immediate acceler-

ated payment of $2,733,644.18.

55a

Columbia after the purported termination letters of July 8 and

October 17 and the inconsistency of the July 8 and October

17 letters’ simultaneous demands of full accelerated payment

and termination of the license agreements.

[7] Felmer’s arguments are unavailing. Both the July 8 and

October 17 letters are clear and unequivocal. While Felmer

argues that the October 17 letter was rendered ambiguous by

the letter of December 10, the December 10 letter clearly indi-

Cates that it was sent “in the interest of resolving Columbia’s

Claims without resorting to litigation,” and that if Krypton

“continu[ed] its deliberate campaign of copyright infringe-

ment,” Columbia would file a lawsuit. Nor could the other

restructure proposals be interpreted as anything other than

last-ditch efforts to strike a deal.

[8] Likewise, the October 17 letter was not rendered ambig-

uous by the simultaneous exercise of the acceleration and ter-

mination provisions. The contract clearly indicates that in the

event of a failure to pay royalties, Columbia could terminate

the agreement and would be immediately entitled to “the

entire unpaid balance of the license fee.” Thus, the October 17

letter’s exercise of both the acceleration provision and termi-

nation provision could not reasonably be interpreted as

ambiguous.

D. Feltner’s Defenses Fail as a Matter of Law.

In his reply brief to this court, Felmer argues that, despite

the apparent termination, there was nevertheless a triable

issue of material fact concerning whether Columbia was pre-

cluded from terminating on the basis of estoppel, negligent

misrepresentation, or an oral contract not to terminate. Felt-

ner’s evidence fails to raise a triable issue of fact as to any of

these defenses.

[9] A claim of promissory estoppel requires, among other

things, “a promise clear and unambiguous in its terms,” and

56a

injury caused by the promisee’s reasonable reliance on the

promise. Laks v. Coast Federal Sav. & Loan Ass'n, 131

Cal.Rptr. 836, 839 (Ct App. 1976). The only “promise” that

could reasonably be inferred from Feltmer’s evidence was a

promise by Columbia to “work with” Krypton. However, this

is not a “clear and unambiguous” promise, for it clearly con-

templated further negotiations to finalize the terms of the

restructure. /d. Furthermore, to the extent it was an adequate

promise, Felmer was not injured because Columbia performed

the promise by negotiating extensively from March 1990 until

December 1991. Thus, Feltmer’s promissory estoppel claim

must fail.

Felmer’s negligent misrepresentation ciaim is similarly

defective. Negligent misrepresentation is “a statement made

for the guidance of others which is not warranted by the infor-

mation of the person making it.” Grenell v. City of Hermosa

Beach, 163 Cal.Rptr. 315, 319 (Ct. App. 1980); see Cal. Civ.

Code § 1572(2). Although Felmer argued in the district court

that Columbia had already restructured the license agreement

with Krypton’s predecessor and that Columbia’s practice was

not to undertake subsequent restructures of licenses that had

already been restructured, Feltmer has failed to present suffi-

cient evidence for a reasonable jury to conclude that this was

in fact Columbia’s practice. Thus, Felmer has failed to raise

a triable issue of fact on his negligent misrepresentation

Claim.

[10] Lastly, Felmer’s breach of oral contract claim is prop-

erly dismissed on summary judgment. “An agreement to

make in the future such a contract as may be agreed upon at

a later time amounts to nothing, is not binding, and cannot be

made the basis of a cause of action.” Forgeron Inc. v. Hansen,

308 P.2d 406, 411 (Cal. Ct App. 1957) (quoting 12

Cal. Jur.2d, Contracts, § 111); accord Kruse v. Bank of Amer-

ica, 248 Cal. Rptr. 217, 229 (Ct. App. 1988), cert. denied, 488

U.S. 1043 (1989). Because the facts presented by Felter indi-

cate, at best, an agreement to negotiate in the future, Felmer

57a

has failed to raise a triable issue of fact on his oral contract

claim.®

In sum, Felmer failed to raise a triable issue of material fact

as to whether Columbia validly terminated the license agree-

ments by October 17, 1991. Summary judgment against Felt-

ner for copyright infringements occurring after that date was

therefore proper.

IV. COURT TRIAL ON STATUTORY DAMAGES

{11] Section 504(c)(1) of the Act allows a copyright holder

to elect statutory damages in lieu of actual damages. If stam-

tory damages have been elected, and a defendant is found to

have infringed, damages are to be awarded “in a sum of not

less than $500 or more than $20,000 as the court considers

pst.” 17 U.S.C. § 504(c\(1). Additionally, if the “court finds

.. . that infringement was committed willfully, the court in its

discretion may increase the award of statutory damages to a

sum of not more than $100,000,” and if the court finds that

the infringement was committed innocently “the court [in] its

discretion may reduce the award of statutory damages to a

sum of not less than $200.” Jd. § 504(c)(2). Columbia elected

Statutory damages. Over Felmer’s objection, the district court

held a bench trial on damages, found Felter’s infringement

to be willful, and fixed the stamtory damages at $20,000 per

violation.

Felter argues that the district court’s denial of his request

for a jury trial on the issue of statutory damages was errone-

ous, both as a matter of statutory interpretation and because

“While Felmer raises the claims of promissory estoppel, negligent mis-

representation, and breach of oral contract as defenses to Columbia’s

a counterclaim filed against Columbia. As the above discussion makes

Clear, the district court properly granted summary judgment in favor of

Columbia on the Krypton defendants’ counterclaims.

58a

it deprived him of his Seventh Amendment right to a jury

trial. We reject Felmer’s argument.

(12] In Sid & Marty Krofft Television v. McDonald s Corp.,

562 F.2d 1157 (9th Cir. 1977), we interpreted the analogous

Statutory damages provision of the 1909 Copyright Act and

held that the amount of statutory damages “is properly

addressed to the court, not the jury.” Jd. at 1177. In so hold-

ing, the court relied on the statute’s language, which provided

for the award of “such damages as to the court shall appear

to be just.” Jd. at 1177 n. 5 (quoting 17 U.S.C. § 101(b))

(emphasis added). The Krofft court reasoned: “The jury plays

no role in this determination, because ‘the court’s conception

of what is just in the particular case, considering the nature of

the copyright, the circumstances of the infringement, and the

like, is made the measure of the damages to be paid... .’”

Id. at 1177 (quoting Westermann Co. v. Dispatch Printing

Co., 249 U.S. 100, 106 (1919)) (emphasis in original).

Feltner argues that Krofft is distinguishable because the

1909 Act, interpreted by Krofft, gave the court the option of

awarding “in lieu” (statutory) damages while the 1976 Act

gives the option to elect statutory damages to the plaintiff.

However, Krofft’s rationale is equally applicable to § 504 of

the 1976 Act Section 504(c)(1) of the 1976 Act, like § 101(b)

of the 1909 Act, provides for the award of such damages

(within fixed limits) “as the court considers just.” 17 U.S.C.

§ 504(c)( 1). If Congress intended to overrule Krofft by having

the jury determine the proper award of statutory damages, it

would have altered this language.

[13] As for Felmer’s contention that the district court’s rul-

ing deprived him of his Seventh Amendment right to a jury

trial, we agree with those cases holding that the Seventh

Amendment does not provide a right to a jury trial on the

issue of statutory damages because an award of such damages

is equitable in nature. See Cable/Home Communication v.

Network Prods., Inc., 902 F.2d 829, 852-53 (11th Cir. 1990);

59a

Oboler v. Goldin, 714 F.2d 211, 213 (2d Cir. 1983);

Twentieth Century Music Corp. v. Frith, 645 F.2d 6, 7 (Sth

Cir. 1981); Raydiola Music v. Revelation Rob, Inc., 729

F.Supp. 369 (D.Del. 1990); cf. Video Views, Inc. v. Studio 21,

Lid., 925 F.2d 1010, 1014-16 (7th Cir.), cert. denied, 502 U.S.

861 (1991) (holding that the amount of statutory damages is

decided by the court but the issue of willfulness should be

tried to the jury). But see Cass County Music Co. v. C.H.L.R.,

Inc., 88 F.3d 635 (8th Cir. 1996) (holding that Seventh

Amendment provides right to have jury assess statutory dam-

ages); Gnossos Music v. Mitken, Inc., 653 F.2d 117, 119-21

(4th Cir. 1981) (same); Educational Testing Services v. Katz-

man, 670 F.Supp. 1237 (D.N.J. 1987) (same). See generally

3 M. Nimmer & D. Nimmer, Nimmer on Copyright

§ 14.04[C] (1995) (listing cases and describing those cases

allocating decision to judge as “the better view”).

The district court properly denied Felmer’s request for a

jury trial on the issue of statutory damages.

V. WILLFULNESS FINDING

(14] “Willful” within the meaning of § 504(c)(2) means

“with knowledge that the defendant’s conduct constitutes

Inc., 909 F.2d 1332, 1335 n.3 (9th Cir. 1990) (quoting 3

denied, 498 U.S. 1109 (1991). “To refute evidence of willful

infringement, [the defendant} must not only establish its good

faith belief in the innocence of its conduct, it must also show

that it was reasonable in holding such a belief.” Id. at 1336.

(15] Felmer contends that the district court’s findings of

willfulness are unsupported by the evidence. In support of this

contention, Feltmer presents his version of how the evidence

should be interpreted. Felmer, however, neglects to mention

that the district court’s finding is reviewed for clear error. See

Fed.R.Civ.P. 52(a); Price v. United States Navy, 39 F.3d

60a

1011, 1021 (9th Cir. 1994). Felmer’s arguments, at best, dem-

onstrate that the facts presented to the district court were sus-

ceptible to more than one interpretation. Considering that all

440 of the infringing episodes were broadcast after Colum-

bia’s clear termination of the licensing agreements on October

17, 1991, and 415 of them were broadcast after the complaint

in this action was filed, we cannot say that the district court’s

finding was clearly erroneous.

VL EVIDENTIARY RULINGS REGARDING

FELTNER’S RELATIONSHIP TO COUNSEL

[16] Prior to trial, the district court granted Columbia’s

motion in limine to preclude Felmer from introducing evi-

dence relating to advice of counsel because Feltner refused to

answer questions on the issue during his deposition. Felmer

now argues that the in limine order precluded Columbia from

questioning Feltmer at trial about whether his counsel kept

him apprised of the progress of the litigation, and the district

court’s failure to prevent Columbia from doing so was errone-

ous. Feltner’s argument fails for two reasons. First, because

he objected to Columbia’s questions at trial only on relevance

and that on calling for a legal conclusion, he waived the

Objection he now raises. Furthermore, even if the objection

was not waived, the testimony admitted was not precluded by

the in limine order because the testimony concerned Feltner’s

knowledge of the litigation, not whether he relied on the

advice of counsel.

VIL CALCULATION OF THE NUMBER OF

INFRINGEMENTS

A. The Stations Were Separate Infringers.

[17] Section 504(c)(1) of the Act provides that statutory

damages may be awarded “for all infringements involved in

the action, with respect to any one work, for which any one

infringer is liable individually, or for which any two or more

6la

infringers are liable jointly and severally . . . .” Thus, when

Statutory damages are assessed against one defendant or a

group of defendants held to be jointly and severally liable,

each work infringed may form the basis of only one award,

regardless of the number of separate infringements of that

work. See Mason v. Montgomery Data, Inc., 967 F.2d 135,

143-44 (Sth Cir. 1992). However, “where separate infringe-

ments for which two or more defendants are not jointly liable

are joined in the same action, separate awards of statutory

damages would be appropriate.” H.R. Rep. No. 94-1476, 94th

Cong., 2d Sess., at 162, reprinted in 1976 U.S. Code Cong.

and Admin. News 5778; Mason, 967 F.2d at 144.

[18] By finding that “the “Who’s the Boss?’ episodes

broadcast by WNFT are separate acts of infringement from

the episodes broadcast by WTVX,” the district court

impliedly found that WNFT and WTVX were not joint tort-

feasors with respect to the broadcasting of these episodes.

Felmer, relying on RCA/Ariola International, Inc. v. Thomas

& Grayston Co., 845 F.2d 773, 778-778 (8th Cir. 1988),

argues that this finding was erroneous because Columbia had

repeatedly alleged in its complaint that all of the defendants

acted together and should be treated as one. See ER Tab 1,

First Amended Complaint, $f 18, 19, 31-114.

(19] RCA/Arioia is distinguishable. In that case, the district

court had found a group of defendants to be jointly and sever-

ally liable. Jd. at 778. On appeal, the Eighth Circuit rejected

the plaintiff’s argument that the district court’s finding was

erroneous. Because the plaintiff asserted in its summary judg-

ment papers that the defendants were jointly and severally lia-

ble, the plaintiff “invited any error and ha{d] no grounds to

complain.” Id. at 779. In contrast to RCA/Ariola, the district

court’s finding was contrary to the allegations in the com-

plaint and it is the defendant who is challenging the findings.

Felmer has not presented sufficient facts to develop a

“judicial estoppel” argument. See Rockwell International v.

Hanford Atomic Metal Trades, 851 F.2d 1208, 1210 (9th Cir.

62a

1988) (defining purpose of judicial estoppel as “preventing

the use of inconsistent assertions that would result in an

‘affront to judicial dignity’ and ‘a means of obtaining unfair

advantage’ ”) (citations omitted). Thus, despite the fact that

the district court’s finding on this issue was both favorable to

the plaintiff and contrary to the complaint, Felter has failed

to demonstrate that the finding was erroneous.’

B. Each Episode Was a Separate Work.

As mentioned, § 504(c)(1) of the Act provides that statu-

tory damages may be awarded “for all infringements involved

in the action, with respect to any one work.” Section 504(c)(1)

further provides that “for purposes of this subsection, all the

parts of a compilation or derivative work constitute one

work.” The district court found that each infringed episode of

the television series constituted a separate work for purposes

of § 504(c)(1). Felner argues that each series, and not each

episode, constitutes a work.

[20] The two courts to have addressed whether each epi-

sode of a television series constitutes a separate work have

both held in the affirmative. Gamma Audio & Video, Inc. v.

_ Ean-Chea, 11 F.3d 1106, 1116-17 (1st Cir. 1993); Twin Peaks

Prods. v. Publications Int’l, 996 F.2d 1366, 1380-81 (2d Cir.

1993).° Felner attempts to distinguish these cases by arguing

that the episodes at issue are not separate works because they

do not have independent economic value.

"Felmer’s other argument on this issue—that the finding was erroneous

because Felmer was jointly and severally liable with all three stations—is

similarly meritless. Because the stations were not jointly and severally lia-

ble with each other, Felmer’s liability vis-a-vis the stations merely renders

him jointly and severally liable for each station’s infringements—it does

not convert the stations’ separate infringements into one.

*We note that the Eleventh Circuit, in another case in which Felmer was

the defendant, recently agreed that each episode of a television series was

a separate work. MCA Television Lid. v. Feltner, 89 F.3d 766, 1996 WL

388406 at *2-*3 (11th Cir. Jul. 26, 1996).

63a.

While Felmer correctly states the proper te

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