Brief for Petitioner — F. W. Woolworth Co. v. Contemporary Arts, Inc.

Supreme Court brief1952

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SUPREME COURT. U.S. a

—

Supreme Court nf the United States

’“Ocroner Term, 1952 -

) as 42°

oO Se 00L WworTH CO.,

Pe titioner,

a oatnal

CONTEMPORARY ARTS, ING.

Respondent,

‘ON WRIT OF CERTIORARI TO THE UNITED STATES | cou RT OF

APPEALS FOR THE FIRST CIRCU IT. <

BRIEF FOR PETITIONER,

f Ca Martin A. Scuencr,

KENNETH 'W. GreeNawa i, °

Attorneys for Petitioner,

| One Wall Street,

New York 5, New York.

JoHn H.. Barser,.

Of Counsel.

‘ |

APPRPA!T PeImInTinge oo rae en see 6 ee eee” bce, ee i” te

“s,

INDEX.

| .

Rot oe a PAGE

Opinions Betow ................™ . al Catal SM eee eee a

RONNIE 8 core S62 en ae eS id

Tue Srarure [NYOLVED 2.00.02... SPE ic Ra SE yee 2

STATEMENT OR CIRO en 9

(a) Preliminary Statement . Pt E ete Sie, ERM 2

() Phe material facts hearing on the application

“of Section 101(b) of T itle 17-U. S.C. to. this

in MSEC ae SLULTIES Se oA AES | Che ee aN ee

SPECIFICATION oF AssigNepD ERRORS TO BE I BGED 2 9

SUMMARY OF: ARGUMENT -22....... 0 10

ARGUMENT:

Port I—The decisions helow have construed and

applied the ‘‘in lien’? clayse of §LO1(b) of the

Court and with decisions of COurts_ of Appeals.

of other Cireuits.

-Where, as here, there was siathematically cer-

tain and undisputed proof of defendant’s: profits

from the alleged infringing articles and no proof

of actual damages,-no bdsis for a discretionary

award of statutory damages eMteG erty

Pornt I1--The ‘ir lieu’? clanse of Section 101(b)

of the Copyright Act is not intended as a penalty,

but has been’ so applied herein nce Sa texts ool 26

Concrusion Lccksperiesom-scbemanabebedcuuep distin toncbceiboccovencasets 29

Table of Cases

Dar illa Vv. Brunswick-Balky C ‘ollender a aN ay Cir.

. Fed. (2d) 567 (1938), cert. den. 304 UU. Rie 2. 183

Doiglas v.-C unningham 294 U. 5. 207, 209 ees 13, 14, 22,

é 23, 25; 7

. Jewell-LaSalle Realty. Eo: = vied, Zon.U. S§.

AED lc aiuinensceeets nobel Os de ata 14, 25

Malsed vy, Marshall Fiéld €o., 96 FF. Supp. 372

. (US.D.C., Mi an, BDI ig

_ Sammons v. Colonial Press, 1 ir., 126 F. (2a) 341 |

gt a eg oe

Shotdort Vs Metro-Gaiduyn Pictures Corp., 309-U. S.

Tc ae AAOMOY gi BN os 13, 23, 27

— Turner & Dahuke mY, C rowley, 0 dina 2 F. 749,754.

» Universal Pictures Co. v. ‘Harok# Lloy Corp., 9 Cir.

162 Fy (2d) 34 (1947) UP LCN SEBO UP tele Sic DN CT 18, 24 :

Washingtonian Pib. Co., Inc. v.., Pearson, D.C. Cir,

140 FL (20) 465 (1944) Sint el BOB FREER IMEEM 18

Westermann Co, v. Dispatch Printing Co., 249 UC

ct LA 2 1) tll TG Ae es Sanat ea aetna 15, 6 25,2

Statutes Cited

Révined Rules of the Supreme ( Court of the United

States, Rule 38, Par. o(b) nteeqaohoubyidererastscrsnees Se, Cod as ]

Title 17, U. S. Code:

Section 101 (b) du ta hae CeUaeeawweoseddceeukubanee “9 ”, 9, 10, Ll, 12, 26; o7

Title 28, U.S. Code: res me

Bection 19641) 0 peageonmndinaeacilic sisunenasnias 1

= Authorities Cited

Amdur, **Copyright Law and Fraction” ,-p. ».° 1133

et*seq. ey

‘Arguments before Committee on’ Patents. of the

Senate and House of Representatives, gt bse

on the bills S. 6330°s and. H.R. 19853, Dee, , 8-90; - >

Supreme Court af thé Auited States

- — AVCTOBER TeRM, 1952

£ No. 42 .

A X 2 . = : t

————— .

F.W. Wootworrn Co.,

: ‘ Petitioner,

against.

Cont EMPORARY Arts, INc., .

‘Respondent.

% nsf

ON WRIT OF CERTIORARL TO THE UNITED STATES COURT OF

APPEALS FOR THE FIRST CIRCUIT:

rr ae nr

BRIEF. FOR PETITIONER

Opinions Below

ny ie

The opinion of the United States Court. of Appeals for

First Circuit (R. 268-80) is officially reported in 193

", (2d} 162, The memorandum of decision of the United

sae District Court for the District of Massachusetts

(R. 15-25) is officially reported in 93 F. ‘Supp. 739.-

Jurisdiction |

The jurisdiction of. this Court is invoked under: Title :

28 U. S.-Code, Section 12 254(1) and Rule 38, Paragraph

o(b) of the Revised sercci of the silt hear Court of the

United States, :

hts

ay ee

On. June 2 1952, this Court made an aeaw (R. 281)

granting the petition herein for a writ of certiorari to the

United States Court of Appéals for the First Cireuit’

; ‘limited to- the question presented ‘by the application of

‘Section! 1Ol¢b) of Tithe 17 of _ the ‘i nited States Code to

“this ease’

‘The Statute Involved

“The statute involved jierein. is. Section 101(b) of Title

Ii of the United States Codes (foymerly Section 2 {D)).. It

is printed herein at pages 11-12. :

STATEMENT OF THE CASE

(a) Prelieianey Seatsucaed

This action was commenced November 1, 1949, by /plain-

tiff, Contemporary Arts, Iné., the respondent here, in the

‘United Ste ites District Court for the District of Massa-

chusetts, against F. W, Woolworth Co., the petitioner

here, for alleged infringement of copyright (R. 5-7), The’

entitled **Coeker-spaniel in show position’’. The work

was published March 26, 1942, two. copies. of it being

“deposited in bai Copyright Office on March 28, 1942 (PI.

fix. 3;-R. 28, 252). Plaintiff sued as the copyright assignee

(PI. Kix. 4: i 0-6, 28, 253).

The complaint alleged (R. ©) that defendant had in-

fringes plaintiffs’ copyright ‘‘in said seulpture and work

of art’? by reproducing and selling copies thereof. Plain. .

tiff demanded, in its complaint, damages and profits or

statutory damages of not less than $250 (RR. 6),

Plaintiff; on trial, produced. and offered: in evidence: as

-the infringed articles and.as embodying the copyright”,

three dog statuette models, each of wate differed from

the other and none of which was identified to be a dupli-

cate of the deposited work upon whieh ‘a copyright had

heen obtained (R. 31, 50;,

Asithe Court of Appeals noted (Rh. 269), one Was of”

buff colored plaster with a spot of black on the muzzle

aind on each eye, which retailed for $4.00 (Pl. Ex. 5s R. 31) ;

ore, smaller, was of red porcelain, which retailed for $9.00

(PI. Ex. 6; R. 31); and one,-also smaller, was of black and

white ‘porcelain, which -retailed for $15.00 (Pl. Ex. 7:

R. 31). These ‘fembodiments”’ were diverse as to color, -

size and materials and also, in certain ways, as to shape_

and aspect (R. 272-3). 7” . ee

The alleged infringsnig article was a light-brown ceramic

statuette of-a cocker-spaniel dog in show position (Pl. Ex.

l; Det. Kx. A; R.-28-9), whieh retailed for $1.19. This

article was. purchased by Woolworth early in 1949 from

Sabin Manufacturing Co.. of McKeesport, Pennsylvania

(R. 73-5, 123). Sabin, in turn, had obtained it from Lepere

Pottery Company of Zanesville, Ohio (R. 124) wKich had

acquired it (ie., the dies, molds and a plaster reproduction

of it) as part of the stock of Burley Pottery Company of

Zanesville, Ohio after Burley had made and sold ‘the dog

statuette in 1938, and had later, during that year, gone out |

of business (R. 139,189,141, 148-9, 154-5, 159; Def. Kx.

I’; R. 136). Sah Sette ested clare ;

‘ Defendant's primary defense to thé infringement claim

was that the ceramic statuette of a deg which it had sold

Was not copied, directly or indirectly, froin plaintiff ’s work

copyrighted in .1942. but Wits, in fact, an’ exact copy and

reproduction of a statuette designed and modeled: inde-

pendently, -by:a Craftsman named Moyer, using his own.

pet cocker-spaniel English type as a model, in 1938, while

‘he was in the employ of said Burley Pottery Company,

‘which company, in that -year, manufactured and sold such

statuettes but later‘went ‘out of busmess and disposed

of its stock. > In support of this defense, Moyer testified

to his- making of said cocker-spaniel model, is aforesaid,

and produced a grey plaster statuette (Def. Ex. Fy; R:

136), with the year date “1938” embedded in it, which he

identified as an early replica of his work and which he

said he found, together with -the Burley set of dies and

inolds from which te make it, in the storeroom of the —

Lepere concern, for whom he Ifad later gone to work..

As the Court of Appeals stated (R. 269), thes issue of

agri dior pah was ‘“‘hotly contested’’,

' However, that Court upheld the District Court’s finding

of infringement, as heing supported by -ample evidence

and as not being clearly erroneous (R. 272-3). It also

upheld, as not erroneottx (om the theory that defendant

had ** gambled on a favorable discretionary ruling’’ by

the trial court and having lost, could hardly be heard to

complain) the ruling by the trial judge ‘in rejecting the

evidenee, offered on rebuttal by defendant; of a scientific

expert from M.LT. on materials and plasters to the effect

_ that the plaster model (Def. Ex. F—from which the alleged

infeinging model was made) was authentie and as old as

the 1958 year date imprinted on it which evidence would

have shown that the original of defendant’ s article ante-

dated by four years plaintiff's copyright (R. 273-5, 229-

40). The Court of Appeals also overruled defendant’s

contention that it had not received from the trial judge a

fair and impartial trial, though it recognized that the

trial judge had made remarks which were “both unszemly-

and uncalled for’’ (R. 279-80), |

The District Court adjudged plaintiff's copyrig t-to be

valid and infringed and awarded plaintiff. joeroned

damages in the maximum amount = $5,000, as well ¢

$2,000 as an attorney's fee (R. 14, 2).

—_

The Court of Appeals affirmed that Ph, ad nt, with an

‘additional attorney's fee of $500 (RR. 280). .

The order Allowing: certiorari (R, Ont J, Innits the review

by this Court **to the question, -presented by the apyrlica-

‘tion vf Seetion 44 (b) of. Title 17 of the. United States

Code to this case.”’ ‘ Accordingly, the factual statement

which Yollows is. restricted to the- ‘fact ts bearing on that

question,

(b) The material facts bearing ss the Sunlicaiion: of |

Section 101(b) of Title 17 U.S.C. to this case. :

Defendant? s profits from its sale of the alleged bntring:

ing artic le, a dog statuette, were proved with exactness.

At the commencement of the trial, if was stipulated.

(RK. 26-7) that Woolworth had purchased, as a trial order,

from. its ae Sabin Manufacturing Co. of MekKeeés-

port, Pa., 127 dozen (1524) .of ¥aid dog statuettes which

Oke fae ee for sale in 34, only, of its more than

1,00 retail stores; that Woolworth had paid 60e-for each

statuette and had sold theni at $1.19 eac h, for a gross

eas of O9¢ per statuette: and that its total gross profit

< $899, 1G,

During plaintiff's case, the Woolworth: buser, Lindquist,

testified likewise (R. 72-4); and was cross- examined by.

plaintiff’s counsel (R. 74). Later, Sabin testified to the

same effect (R. 122-3), It was also proved, without con

tradiction, that Woolworth had placed with Sabin’ this:

single trial order of 127 dozen dog statuettes in Jatuary

1949, and that this merchandise had been delivered to

Woolworth stores in Mareh, April and May, 1949 (RL 73.

123, (132, 26, 255-6). Woolworth did not, after placing

said trial order, es or purehase any nore of said dog

‘Statuettes (Ro 125, 255-6). The order was placed and

the A Was received (and presumably disposed

of) by said stores before Woolworth had knowledge %of

- .

plaintiff's copyrighted work or of. the clained infringe-.

ment (R. 74). ° Plaintiff’s notice. of intringe mment, dated

May 23, 1949 and addressed to asstore, was: received hy

the Woolworth company about June 1, 149, and Wool-

worth promptly notified Sabin of. it (R:. 123, 127-9, 957:

Pl. Ex, FE). Sabin thereupon automatically discontinued

dealing in the article, which, incidentally, had proved a

poor seller (R. 123-4). : |

Woolworth, through Lindquist, had placed said. order

from a finished sample of said dog statuette exhibited by

Sabin (R. 74, 124). Sabin was not the manufacturer, but

merely the factory distributor for the manutacturer, |

Lepere Pottery of Zanesville, Ohio, a small factory with

whom he had dealt for some vears (R. 123-7).

Plaintiff’s counsel conceded that Woolworth had acted

innocently in selling the article, stating GR. 76): ©

“The Woolworth Company is in the innocent

position of a bystander. . It appears, from what .

Mr. Lindquist says, he doesn’t know haps Was a

. copy right: on the dog.’’

There was no proof that W oolworth, Sabin, Lepere,

Burley or Mover ever had seen of had access to. plaintiff ’s

copyrighted dog statuette or any copy or reproduction

thereof or any of the diverse “embodiments”? thereof. or

that anyone of them had knowledge: of sieseeat S- copy-

right prior-to said notices. eG.

‘Not only were defendant’s “profits proved with mathe-

matical certainty, but plaintiff did not prove any actual:

damages or make anv real effort to do so. Neither did

plaintiff inake any showing that it was difficult. or IM pos-

‘sible to prove actual damages. ° Moreover, no such dif- Boas

ficulty or linpossibility existed in fact. The subject matter

of the alleged infringement——one specific statuette— (un

like a story in a newspaper which Is combined with other

copyrighted features. or a motion’ picture to which the

- 182).

infringer contributed his own tafents). presented no dif-

ficulty as to proof of. damage. |

Any. so-called ‘difficulty’ that plaintiff might have had

) proving its alleged actual damages, if any, Was of its .

own choosing (R. 114,119, 120, 121), allowed from

unchallenged statements and rulings by the District Court

(R.: 77,. 111. 113-115; 117-119, 120-1) and represented

merely. fhe assertions of its counsel (R. 114, 119-21, 183).

Plaintiff did not prove by any evidence that any such

difficulty or’ impossibility actually existed. It never pro-

duced any ef its books or records of its business opera-

tions, though oral and speculative testimony on the subject

was early objected _ to on tlrat specific ground (R. 115,

When given an opportunity by the District Court to

put in evidentiary proofs of actual damages, piaintiff’s

counsel | ‘stated ‘Our reliance was on statutory damages,

your Honor”? (R. 182-8, 238) ; and at this time the District

Court advised plainfiff’s counsel of the difieulties ‘‘un-

less vou show some actual damages’? (R. 183).° Later,.

however, during rebuttal, plaintiff's counsel merely made

an offer of proof of some evidence of actual damages,

again without any books or records to support it, which

offer he did not follow up, after defendant’s counsel

indicated tne necessity of plaintiff’s producing sates rec-

ords and his exercising the right of cross examination in

respect thereof (R. 245.6). Moreover, plaintiff failed to

avail itself of the rare opportunity, suggested by the

Court at the end of the trial, to have a special master

appointed to ‘es 0% damages”’ (RL 247). Plaintiff's

position throughout was that its-reliance was on statutory

damages and that it, on its own election, had a right to

statutory damages in eh of and irrespective of actual

damages « or | profits (R. » 182-3 3,°248- a8).

Plaintiff did not produce or identify. ‘upon Me trial the

dog sfat uette which was the basis of the copyright and

actually deposited in the Copyright Office or a replica

thereof, but only three variant models, each: of which *

was. said by its counsel! to ‘fembhody"*: the copyright (R.

31, 50). Plaintiff did not prove that it was selling its

copyrighted dog statuette at the titne- Woolworth placed

its trial order ‘with Sabin for - the .aileged infringing

statuette. Plaintiff produced no books or records to show

that it was de ealing in said copyrighted dog statuette, let

alone all of said three variant models, during the very

brief period of several months in 1949 of the. alleged

- infringement. The whole award for damages and counsel

fee is in reality predicated upon a showing that was never

_ made; to wit, that plaintiff had been damaged’ in its sale

of said copyrighted work of art. |

Also, there was no evidence that the alleged iattabing

statuette .and plaintiff's s ‘Statnettes were competitive

articles or sold in the satne market. According to plain-

tiff, its dog.statuettes were distributed through dealers and

‘sold to dog fanciers, kennel shops, dog clubs, dog breeders,

trainers. and judges and at og shows and as ee

They were also sold at high- priced gift shops (R. 111-12,

116, 221). The alleged infringing article was sold in sale a |

few of defendant’s low- priced stores, none of which were

in New England where plaintiff had its place of business

R. 10). Nor was it shown that defendant’s said sales

occurred ‘during the same time period as the sales of

plaintiff’s copyrighted article or of any one or all of- the

several “embodiments’’ thereof,

Hereinafter, under Point I (at pages 12-13), are set

forth the basis of the District Court’ s award of maximum

statutory damages and the basis of the Court of Appeals.

abate ; ae 9

affirmance thereof, with referenees to the texts af their

eapectey e opinions. -

_ Specification of heitaned Errors to be Urged

i. \y was efror for the Court of, Appeals ios thre

irst Chyeuit, on an appeal in a copy right infringement

suit, to-uphold the Distriet Court's award to plaintiff of

maximurn Statutory damages in lieu of ‘plaintiff’s actual

damages and defendant's profits, where plaintiff neither

proved actual tlamages nor difficulty or impossibility of

proving such: actual damages and where defendant's:

profits were se with mathematical certainty.

2. It was error for ee Court. of Appeals tor the F irst

Cire uit, to allow, on appeal, by a unique method of compu-

tation: of damages without statutory or judicial sanction

“in a copyright infringeme nt, suit, an award of statutory

damages in an arbitrary, amount, in addition to the pre-

cise amount of defendant's gross. profits, in order to

maintain the exact amount of the ‘District. Court’s ; award

of maximum ‘statutory damages.

3: The award of statutory damages, under the cireum-

stance es-of this case, was erroneous-in thiat it amounted to

the imposition of a penalty.

4. The decision of the Court of Appeals for the First .

Circuit, in ‘its interpretation and application yf Section

1Ol(b) of the. Copyright ‘Act, particularly the “in lieu”?

clause thereof, is erroneous in that it is in confliet with

the decisions of this Court and with the decisions of the °

Courts of Appeals of other Cirenits.

10 ce

Summary of Argument

The decisions below have construed and applied the

“*in lieu"? clause of Seetion T01(b). of the Copyright Act

in conflict with decisions of this Court and with decisions

of Courts of Appeals of other Circuits. No basis for-a

discretionary award of statutory damages existed in this’

case because there was exact and undisputed proof of

defendant's profits from the alleged infringing articles,

no proof of actual damages to plaintiff, and no showing »

that it was difficult or impossible to prove such damages.

Under the circumstances .of this ease, ‘the District

Court’s award of maximum statutory damages, instead of

the ascertained amount of ‘defendant’s profits, amounted

to the imposition of a penalty. The Court of Appeals’

_ having held clearly erroneous. the District Court’s finding

that profits could not be determined with legal certainty, .

‘it had_ no legal basis for affirming the District Conrt’s

gross award of $5,000 statutory damages. The Court of

Appeals should have. modified the judgment’ below by.

limiting the award to the amount of defendant’s profits,

as proved. , ; E ee | :

Where either actual damages or profits are proved,

there is no basis for an award of statutory damages under ;

Section 1O1(b) of the Copyright Act. In-wo event, may

a Court aWard, as did the Court of Appeals, both statu-

tory damages and profits. ; .

oe Ss

ARGUMENT fi

POINT I1—

The -decisions below have construed and applied

the “in lieu” clause of §101(b) of the Copyright Act

in conflict with decisions of this Court and with deci-

sions of Courts of Appeals of other Circuits.

Where, as here, there was mathematically certain

and undisputed proof of defendant’s profits from the

alleged infringing articles and no proof of actual

damages, no basis for a discretionary award of statu-

tory damages existed. N

The award by ‘the District Court of $5,000 damages was

based on the Copyright Act, Title 17, U.S. ¢ ‘ode, Sec, 101

(formerly See. 25(b)), whieli permits an award of statu

tory damages ‘‘in lieu of actual damages and profits’’

The statute, so far as applicable, provides:

‘S101. Infringement

“Tf any person shall infringe the copyright in

any work protected under the’ copyright laws of

the United States such person shall be liable:

* * * + a

‘‘(hb) Damages and profits; amount; other reme.

dies. To pay to the copyright: proprietor such dats.

_ ages as the copyright proprietor inay have suffered

due to the infringement, as well as all the profits

which the infringer shall have made from such

infringement, and in proving profits the plaintilf

shall be required to prove. sales only, and. the

defendant shall be required to prove every #¢lement

of cost which he claims, or in lieu of actu damages

ane profits, such damages as to the Court) shall

appear to be just, and in assessing such damages

the court may, in its discretion, allow the amounts

as hereinafter stated, * * and such damave-

shall in no other case exeeed the. sum of $5,000

‘12

’ E a ;

her be fess than the sum of $250, and shall not

be regarded as ‘a penalty. But the foregoing ex-

‘ceptions shall not deprive the copyright proprietor

of any other remedy giver him under, the law, nor

shall the limitation as to the amount of recovery

apply .to infringements occurring -after the actual

notice to a defendant, either by.service of process

. _ in a suit or other, written notice served upori him.

“First. In the case of a painting, statue or

sculpture, $10 for every infringing copy made or af

sold or found in the possession of the infringer or

his agents or employees; * *° *,” a | wy

‘- ; A . : . ,

In making its award, the Distriet Court found: |

"It is difficult, if not impossib , for the plaintiff

fo prove ifs actual damages and defendant’s profits,

» with. the certainty required by thé law»for the

_ Tecovery of actual damages and profits: (R. 24)

* * * * *

“Pursuant to S 101 of the ‘Copyright Act, and:

‘in‘lieu of actual damages and profits’ the Court in.

its diseretion awards the plaintiff stafutory dam-

ages in-the amount. of $5,000, at the rate of $10

per infringing copy for the first 500 infringing

copies.”’ (R. 25) | Ai

Actually, there, Was’ precise, mathematical ‘and undis-

puted evidence of defendant’s profits. from its sale of the

alleged infringing article. Under the statute,’in order’ i

to prove such profits, plaintiff was required only to prove

_ Sales-and this was ‘done. The facts as to such sales,

which resulted in a total gross profit’ to defendant of

$899.16, are stated above and were found by both Courts

below (R. 16, 24; 269, 279). ‘’

In view. of such undisputed facts, the Court of Appeals:

found (R. 279): fet a PCIE Nee 2.

Jit is true that the defendant by showing: its

‘gross profits, (fol) 282) which the plaintiff does not.

, Gaaeee f

& | me are

dispute and with which the defendant appears to be

content, has made clearly erroneous the district

‘court-s finding that. profits cannot be determined

with legal certainty. Thus anv assessment of’

"profits under the ‘in lieu’ clause is precluded.’’

However, in deciding the remaining question—and the

question now before this Court—as to whether when de-

-fendant’s profits have been ascertained, a court may

nevertheless make an award of statutory damages under

the ‘in lieu’ clause, the Court of Appeals, in a confusing

statement made an unprecedented~ ruling permitting an

award of defendant's ‘actual profits ($899.16) plus statu-

tory damages in the purely arbitrary amount of ‘$4,100

and odd cents,’’ thusQnaintaining the gross statutory

damage award of the District Court (R. 279). |

The decision -of the District Court, as well as -the de-

cision of the Court of Appeils affirming it, are in conflict

with the decision of this Court in Sheldon v. Metro-

Goldwyn Pictures Corp., 309 U. S. 390, 399 (1940), in

which it was held that the *‘in lieu’’ clause was not appli-

cable’ where, profits have been proved, and with the rule

‘stated by this Court in Douglas vy. Cunningham, 294 U. S.

207, 209 (1935), that the statutory damage provision was

adopted to afford a copyright owner relief ‘‘in a case

where the rules of law. render difficult or impossible proof

of damages or discovery of profits’, eee

In Sheldon v. Metro-Goldwyn Piéetures Corp.

infringement, which was deliberate, was of

by defendant's motion picture. Defenda

from the motion picture, amounting to $4 Z, 6

proved.: ‘Phere was no proof. of actual

Court, in interpreting Sectian 20(b) of the Copy

stated, at page 399; 3

’ « ’

“We agree with petitioners that the ‘in. lieu”

clause is not applicable here, as the: profits have

“~w?

Lie ee Se

been proved and the: only question is-as to° their

apportionment.’? °°, | 3

In the earlier case of Douglas v. Cunningham, supra,

the alleged infringement consisted of the unauthorized -

publication of plaintiff’s co yrighted story in some 384,000

copies of a Sunday editio of a Boston newspaper. The

infringenient was found to be vlear, but innocent. There

was no proof of: plaintiff's actual damages or of defend-

ants’ profits. The trial judge ruled that no actual damage

had been shown and granted plaintiff $9,000 statutory .—

damages and a counsel fee, but the First Cireuit Court of.

‘Appeals reassessed the statutory damages in the minimum

amount of $250. This Court reversed the Court ~of

Appeals and stated, at pages 208-9 vos

The sole question presented by the petition for

certiorari is whether consistently with §25(b) of

the Act of 1909, an appellate court may review .the -

action of a trial judge in assessing’ an amount in

. lieu, of actual damages, where the amount awarded

is within the limits imposed by the seetion.”’

In answering that question in the. negative and in cen-

struing the purpose of Section 25(b) of the Copyright Act,

this Court stated, at page 209;

“The phraseology of the section was adopted to

avoid «the strictness. of construction incident to a

law imposing penalties, and. to give the owner of

a copyright some recompense for injury done him,

in a-case where the rules of. law render difficult or -

impossible proof of damages or discovery of profits.

‘In this respect the old law was -unsatisfactory.”’

In two earlier cases this Court had occasion to con-

sider Section, 25(b). | Sete

In Jewell-LaSalle fiealty Co. v. Buck, 283 U.S. Ale

(1931), where the infringement consisted of ‘an unauthor-

| ie

ized performance of a musical composition, there was no

showing of actual damages and an award of $250 minimuin

‘ fm)

statutory damages was upheld. This Court pointed out,

at page 206, that:

ahr: the primary purpose of §25 Was to. ineor-

porate in one section all of the civil remedies there.

tofore given, including statuto ‘vy. damages where

aclual proof was lacking.’ ([talices supplied.)

In Westermann Co. v. Dispatch Printing Co., 249 U. S.

100 (1919), the infringements consisted of publications in

a newspaper of copyrighted illustrations of styles and this

Court held that an -award of: $250 minimum statutory

damages in each case was proper. There was no proof

of plaintiff's agtual damages or of defendant’s profits

and both’ parties recognized that, under: the’ proofs, the

damages had. to be assessed under the “in liew’’ clause

of the‘statute.

‘In none of these cases ‘is there any suggestion that

statutory damages may properly be awarded in the dis-

cretion of the court where there is proof either of plain-

tiff ‘s'actual: damages or of defendant's profits. —

The decisions below, also, are contrary tofand in direct

conflict with the decisions of other United States ‘Courts

of Appeals. | 3 wih

The leading case of Davilla vy. Brunswick-Balke Col-

lender Co., 2 Cir, 94 Fed. (2d) 567 (1938) ; ceFt. den., 304

U.S. 572, is exactly in point on the question here involved;

and there the ryle is stated to be iuat proof of profits

precludes the recovery of statutory damages and that it is

-not a matter of choice with the plaintiff whether profits,

or statutory damages are to be allowed.

In the Davilla ‘ase, the — infringenient— consisted of

unauthorized phogegraphic records of plaintiff's copy-

righted’ song and there was proof of defendant’s profits.

DOS:

16 |

The District Court iad confirmed-the ‘award by a master:

of $5,000 stattitory dainages and an attorney's fee to

plaintiff. The Court of Appeals tor the Secon! Circuit

unanitnously modified that decision by eliminating the

$9,000 award of statiitory damages and in. place thereof,

awarded -profits in the sum of $1,057.53, with a reduced

attorney's fee. ;

Therein,” defendant's protits ‘were proved by-a_state-

ment, filed by defendant, setting forth the nitnber of

records sold, the selling. price and ‘the cost of production.

The Second Cireuit’ Court of Appeals stated. at page

“Whether profits shall be awarded or statutory

damiges allowed is:not a matter of choice with a

plaintiff. In Douglas “a Cunninghain, 294 Us S. 207,

209, 5D S. Ct. 365, 366, 79 LL: Kd. 862, the.ecourt said:

‘I'he phraseology of the section was adopted to

avoid’ the strictness of construction incitlent toa

law imposing penalties, and to give the owner of a

in a case where-the rules of law render difficult or

impossible proof of damages or discovery of profits.’

See Jewell-LaSalle Realty Cor r.. Buck, 283 U. S.

“02, 51S. Ct. 407, 75 L. Ed. 978; Hendricks Co. v.

Thomas Pub, Co.) 2 Cir, 245 F.°37.""

The Court algo stated, at pages 069-70 (italics ours) :

‘On the issues as framed, weethink here was

ample evidence to make-an award of damages on

the basis of actual profits, and therefore the master

wid the court beiow were in error in granting

statutory damages. The master’s report is based

‘on the theory that there. Was an inadequate explana- .

tion of appellant's failure to produce certain books,

that there was error in the first statement madé to

appellee as to the mumber of sales, and therefore

appellant probably sold or disposed’ of more than.

W285 records. Be that as it may, actual profits

were sufficicutly established before the master so

as to. preclude :the recovery of statutory damages. .

* * * * ¥

Since thie aimnouil of the sales US sufficiently

proved, ‘there was noe basis for an award of ‘statu-

tory damages... Such an award should not be based-

. upon the idea of punishment, but eepend: upon the

absence of proof of actual profits and damages,

Turner. & Dahnken +. Crowley, 9 Cir. 252. F. 749°

(04; Westeanann Co. ¢. Dispateh, Printing Co., 249

U.S. 100, 39%§8: Ct. 194, 63 L. Hd. 499,"

in Sammons vy. Colonial Press, 1 Cir., 126 F, (2d) 341

(1942), the Court of Appeals for the First Circuit unani- |

mously approved and followed the Davilla case. Therein,

the District Court had awarded plaintiff, as to one defend-

ant, statutory damages in the mjnimum amount of $250.

On plaintiff's apveal, the Court of Appeals reversed and ¢

remanded the éase. to the District Court for the purpose

of ascertaining if that defendant had made. any profits,

With instructions that. the amount of such profits, if ariy,

would be the measure of recovery. The Court of Appeals

stated, at page 350:

“No evidence ‘of actual damages having been

given, if Colonial. Press made no profits for which

itis accountable thé assessment by the district court

under §25(b) of statutory damages against Colonial °

in the minimum amount of $250 cannot be reviewed

“upon appeal. Douglas ¢. Cunningham, 1935, 204

U.S, 207, 210, 55'S. Ct. 365; 79 L, Ed. S62; Hartfield

v, Peterson, 2 Cir., 1937, 91 F. 2d. 998, 1001. How-

ever, If the district court finds after further hearing

upon remand that Colonial Press made profits for

Which it must account, the. amount of such profits

will be the measure of recovery, and it will no

-longer be- permissible to dlecree statutory damages

‘in lew of actual damages and profits.” Sheldon vw,

Metro-Goldwyn Pictures Corp., 1940, .309 U. S.

390, 399, 60S. Ct. G81, 683, 84 L. Ed. 825: Davilla v.

Branswick-Balke CoHender Co. of New York, 2

Cir, 1938, 94 F. 9q 967, 569). Cf. Johns 2& Johns

Printing Co. 7. Paull-Pioneer “Music Corp., 8 Cir.,

~1989,;-102 F, 2d 282." : SAY

B :

However, in the instant case, that ‘same’ Court has

brushed aside the Pardla case simply with the comment

that while the language therefrom relied upon by. petitioner

‘seems to lend support to its arguinent that proof’of actual

profits precludes the assessment of Statutory damages

under the ‘in lieu’ clause,’’ such language was ‘‘taken out

of context’? (R. 276-7).. That comment is without. basis

since, obviously, the Davilla case is exactly in point. here.

Realizing that, respondent's attorney, much more forth-_

rightly than said Court, sought to avoid the’ Davilla case,

in his brief herein opposing certiorari, on the ground it

“was “wrongly decided’? (with which we disagree).

In Universal Pictures Co. v. Harold Lloyd Corp., 9 Cir.,

162 F, (2d) 354 (1947), the Court of Appeals for the Ninth

Circuit has adopted the same rule. Therein.on plaintiff’s -

cross appeal, it stated at page 378: ee aie

‘Award of statutory damages in the terms’? of

‘the statute is proper only in the -absence of proot

of actual damages and profits. The court: having

found the extent of both, the point fails. The court

awarded actnal damages, holding the award on that

basis as adequate without resorting to the use of

statutory damages. We find no error, in this

course.

The rule of the Sheldon and Davilla cases, cited above,

has also been followed in® the Court of Appeals for the’

District of Columbia. In Washingtonian Pub. Co., Inc: y.

Pearson, -D;-C. Cir. 140 ¥F. (2d) 465 (1944), that Court.

stated:

‘ .

‘Since the ‘in lieu’ clause is not intended as a

penalty, the court was right in awarding no dam-

ages, That ¢lause ‘was adopted * * * to sive

the owner of aé opyright some recompense for injury

done him, in a case where the rules of glaw render

ripe ‘ult or impossible proof of damages or diseovery

profits’ (Douglas, et al. . Cunningham, et al.,

. = U.S. 207,- 209, 55'S. ns 365, 366, ¥9 1... Kd.

862). It is not applicable here, first beequse. there

Was no ‘injury done’ te appellant (Woodman. +r.

Lvdiard-Peterson Co: C, us D. Minn., 198 F. 67;

ef. Lo A. Westermann Co. ». Dispatch Printing Co.,

294 1. S. 100, 108, 39'S. Ct 194, 63 L. Ed. 499)

and heeona hecause ‘the profits have been , proved

i. oe Sheldon Fy. Metro-Goldwyn Pictures Corp..

309 U.S. 390, 399, GO S. Ct. 681, 684, 84 L. Ed.

825; Davilla +. Brunswick-Balke Collender Co, of

“New York, 2 Cir., 94 F. oe 567).°°

A very recent case directly in point arose in a District

| sepa in the Ninth Circuit.” In Malsed v. Marshall Field

+» 96 FL Supp. 872 (U.S. D.C W. D. Wash. N. D., 1951),

ution was brought for infrinkement of copyright on a_

abel and plaintiff sought an injunetion, damages and

orotits, In making an award of $100 profits, the Court

said at pages 376-7 (Italics in original) :

"The ‘in lieu’ provision is, as the: language of

the section states specifically, ‘in lieu of actual °

damages and profits.’ .

“It does not apply where either actual damages

or profits. are “ascertainable. This has. been the

roling of the courts ever sitice the section was

amended to its present form, The folléysing quota.

tions are. typical:

‘**The phraseology of the section was adopted

to avoid the strictness of construction-incident to a

a law- imposing ‘penalties, and to give the owner

of a copyright some recompense for injury done

him, in case where the rules of law render dif-

feult or impossible proof of damages or discovery

of pr ofits, In this: respect the old law was unsatis-

factory.’ - Doviglas ¢. Cunningham, 1935, 294 0. S.:

207, 209, 55 S. Ct. 365, 366, 79 L. Ed. S62. -(Empha-

sis added.)

"The plaintiff seems to suppose that, regard.

less of any Joss, it nay satisfy its spleen by treat

ing the allowances as ‘pe nalties: but the. seetion

expressly declares:-that they are not to be regarded

as such. ‘They are ‘tin liew of actual’ d: undges and

profits,’’ and are limited to ‘such damages as to

the court) shall appear to be just,’’ though it is

true that the court may use them without proof. of

the qQantum of the loss. The minimum was all that

Was proper, When we can see, as we’ ean, ‘that the

‘plaintiff has not been damaged.” (Russell & Stoll

Co. r. Oceanic Klectrieak Supply. Co... 3:(r,, 1936,

SUF, 2d S64, S65, ye’ ice Dy ; -

e e .. = * o &

: S| se :

“Lhe ‘In Lieu’ Provision Does Not Apply.

“The plaintiff takés the view that, because the

recovery of hoth profits and damages are allowable,

the ‘in lieuw* provision is effective in case one or

‘the other element of recovery is difficult of ascer-

tainient. The weakness of this argument is that

it overlooks the very wording of the section Wwhigh

is fo the effect that in order that the ‘in lieu’ pro-

Vision be resorted to, there must be dittie ulty or

lmnpossibiity of computing both damages and profits,

Or, differently put, if profits me ascertainable, the

niin provided In the ‘in lieu’ provision need

e be resorted*to) The Supreme Court in Sheldon

Metro-Goldwyn Corp., 1940, 309 UL oS. 390, 396.

60 S. Ct. 681, 684, $4 La Ed, 820, has said so gpe-

cifieally: “We agree with petitioners that the **in.

lieu’

, clause is net applicable here, as the profils

have been.proved and the only question is ‘as to

their apportionment.’ (Emphasis added.) . *

dub, whe n the plaintiff has suffered no damages,

and ‘the profits are asce ‘rtajirah le, te resort-to. the

‘

pt,

‘in Hew’ clause and award to the plaintiff a mini-

mum based upon her theory of three publications,—.

the printing, of the“five hundred labels and the two

advertisements--would amount te the imposition of

a penalty. And the tin lieu’ provision has been

declared by the cases vot to be such, yut rather,the -

ejuitable substitute for cases which present. diffi-.

culty or intpossibility of -proof. as to damages and -”

profits, -Douglas +. Cunningham, stpra, 294 U. S.

at. pages, 209-210, 55.8. Ct. 865, 79 LL. Ed. 862.

Where no such difficulty exists; where, on the con.

_ trary, exact proof of profits has. been made, and no-

- other damage is sliown to have flown from the vio-

lation, there is no need for resorting to the ‘in lieu’

-:\ provision.”

a eed a as

As shown in. the statement of facts, not only were

defendant’s profits proved with certainty, but plaintiff.

failed to prove any actual damages or’ that itéwas difficult.

or impossible to, prove sueh damages.’ No such difficulty

or impossibility eXisted in. fact because plaintiff's dam-

agesy if any, were readily susceptible of proof.t Plaintiff, -

lowever, relied sokely on. stit@ory damages and took the”

position throughout that: it, onaits” own election, had the

right to statutory damages in plage of and irrespective *

of actual damages or profits. | Ree |

The District Judge Moreover, was under a inisappre- ~

henson ‘as to the appropriate rile of dantage to be applied

im such a-case as ‘this, It was his erroneous position

that, once Infringement Of copyright was proved, all die.

had to do was to apyity the statutory measure or. vard-

stick of statutory damages which he regarded as “fixed!

"(R. 77, 11, 118-4.- £19.21. 248); and ‘plaintiff's unsel

“aequiesced in that. position (R. 11, 114, 121, .248).: It.

ie also apparent from said cited referencées to the Record

“that the Distriet Judge was under a further ertoneous

inpression that he was required to assess statutory dam

oh aa : q

i } ~~

Douglas vy. Cunningham, 294 v.

ages for infringement of copyright at $10 for each copy

up to $5,000, Actually, under the stafute, the. $100 figure

. is purely discretionary. (See W estermann C6... Dis-

patch Printing Co., 249 U.S. 100, 105, supra; Turner :

Dahunken vy. Crowley, 9 Cir, 252 FP. 749, 754 (1918)

. S. 207, 218, supra; pa

While plaintiff’s counsel conceded and the District

Court -recognized. that defendant was “in the innocent

position of a bystander” (R. 76), nevertheless, that Court

anche an award of statitory damages and: attorney’s fee

Which amounted to the imposition of a penalty. Such

awards could have been no more punitive if defendant tad

been a deliberate infringey, after notice (ef. it. 34),

Despite that state of the Record, the Court of Appeals

stated that the District Court, on adequate evide nee, cate-

rorically found that the plaintiff had suffered damage —

from the alleged‘ infringement (R, 278). Actually, the

» District Court made no such finding. The District Court

stated merely, that: ‘the plaintiff, offered testimony’ * that

the sale of its dog statuette Was harmed by the. ‘sale of thre

W oolworth dog ¢R. 24) and. then restated, praetically

verbatim, the offers of eyide neé as made. by plaintiff *s

counsel, which. offers were rejected (R. 113-119, 244-6,

V48), and the assertions in his opening statement (R. 32).

No such lestimony was actually received.

The Court of Appeals thus assumed that. the plaintiff

sustained actual damages - and that While defendant's

profits ‘in the amount of $899.16 were proved within the

requirements of the statute, neS€rthele ess, plaintidf in addi-

tion to these profits was entitled to statutory damages.

The. rationale for this novel method of calculation appears -—

to iaye been the Court,of Appeals’ erroneous conclusion

that inca copyright action, once infringément’ is estab-

cae if plaintiff Ix entitled to both his own actual daro.

: 23

ages and defendant's profits. It alse placed a new and

unwarranted interpretation on the case of Douglas _v.

Cunningham, supra, by citing that case ax authorjty for

tie proposition that statutory damages are recoverable

When ‘it is difficult or impossible for a plaintiff to prove

thie actual amount of either damages or profits with the

certainty required by law’? (R. 219)" (italies supplied).

Actually, this Court has already. stated that the pro-

prietor of a copyright, like the holder: of a patent, Is

entitled to actual damages or actual profits, Whichever is

greater. In. Sheldon vy. Metro-Goldwyn Pictures Corp.,

supra, this Court examined .the intent of Congress in

enacting in 1909 the section in the Copyright Act pro.

viding for dainages, Which section, for the first time, gave

statutory sanction for the recovery of profits.» In 309

U.S, at page 400, the Court said:

‘*In passing the Copyright Act, the apparent inten-

tion of Congress was to assimilate the remedy with

‘respect to the recovery of profits to that ‘already

recognized in patent cases. Not only is there no sug

gestion that Congress intended that the award of

profits should be governed by a -different principle

in copyright cases but. the eontrary is clearly iftdi-

‘cated by the committee reports on the bill. As to

}25(b) the: House Committee said: %

‘Section 25 deals with the matter of civil reme-

dies for infringement of a copyright *°* *, The

provision that the copyright proprietor may have *

such damages as well as the profits which the

infringer shall have made is substantially the same

provision’ found in section 4921 of the Revised

Statutes relating to. remedies for the infringement

of patents. The courts have aisually construed that:

to mein that the owner of the patent might have

one or the other, whichever was the greater. Ag

such a provision was found’ both-in the trade-mark

and patent laws the comuittee felt’ that it might be

properly included in the copyright laws’,”’

«- 2 ;

The issue of Whether a successful plaintiff in a copy-

right case was entitled to both profits and damages was

squarely met in Universal. Pictures Co. v. Harold Lloyd

Corporation, 162° F. (2d) 354, 375-6. supra. Therein an

award of $40,600 actual damages had been made and when

defendant vappealed and denied infringement, plaintiff

cross-appealed on the question of damages and sought, in

addition to plaintiff's damages, defendant’s profits. The

Court in refusing to grant profits, in addition.to damages,

relied on the’ Sheldon case, supra, referred to the intent

of Congress as expressed in the Committee report quoted

above and’stated that the intention of Congress was to ’

award a copyright) proprietor cither actual damages or

defendant's actual profits, whichever Was the larger,

When the Senate and’ House Bills revising the Copy

right Act were before the Joint’ Committee, this section

of the statute was criticized since if appeared to permit”

a double remedy in allowing the recovery ot both profits

and damages. As the Cominittee report (quoted in. the

in the

Sheldon case above) points out, a’ similar sttuite

Patent. Act has been construed hy the Wourts not

such a double recovery. All of this wis brought Out in

the Committee hearings and. prestunably was influentfat |

. the passage of the Aet containing the present language as |

fo profits and damages (see pp. 174.5, 408 of ** Argunente

before Conimittee on Patents of the Senate and House

of Representatives, Conjeinted, on the bills S. 6330 and

H.R. 19853, Dee. 7, & 10, 11. 19067").

Since a cppyright proprietor is not entitled to both

profits and damages, but only one or the other, obviously

the Court of Appeals was unjustified in awarding profits

plus stattitory damages. Even if. the Court of Appeals

fad any evidential basis for assuming that plaintiff had

suffered some damages, ‘it certainly liad no evidential

bas?s for assuming that such damages exceeded the amount

.of defendant’s profits. pear:

There is no authority either im the sfatute or in any

court decision for a court’ s exercising its discretion under

the facts of this case. The statute precludes the exercise

‘of discretion whenever actual damages or profits are

‘proved. gDiscretion, Which is not reviewable, comes into

play only whe neither profigs nor damages have been

proved, in Which event, the court-has diseretion in making

an award within the £P50-$5,000 statutory limitations

{Westermann vy. se meet Printing Co., supra; Jewell- La-

Salle Realty Co. v. Buck, ‘supra; Bouaios v. Cunninghani,

supra),

The Court of Appeals eee inan effort to justify.

its decision (R. 276-7), to distinguish the cases. cited by

petitioner (the ee Nrom which that Court) admits

lends support to petitioner’: swargument that proof of actual:

profits precludes the assessment of statutory: damage)

under the ‘tin lieu’? clause). The substance of that \

attempted distinction is that in the present case alone there

is a ‘‘live’’ issue of plaintiff's damages (R.277).

However, the only ease that that Court specifically, at-

tempted to distinguish was its own earher decision in

Sammons vy. Colonial Press, supra. “As to that case, ‘thre

Court said (R. 277-78): :

- “It is made clearly to appear that there was no

issue of the plaintiff’s damages, the only recovers

sought .or the only recovery available, on the evi-

dence being thie infringer’ ’s profits,’’ but ‘the case

at bar differs: radically from those upon whieh the

appellant relies in that here we have a live issue

of daniages.”’

—v

Actually, in the Sammons case. the: Court (pp. 544-5)

merely said that because of the difficulty of proof, the

playntiff did not attempt te prove damages which would

have been measured by the ** profits which the plaintiffs

would have made upon additional sales of its copyrighted

book, had not the infringing book been competing in the

market.’? The Court did not say that fhe plaintiff had

not suffered actual damages; (and, in -taet stated that

normally a copyright proprietor. is “presumed to have

suffered from the infringement” (p. 545),) but only that-

therein there was no evidence of actual damawes. Like-

Wise, in the present case, there Was no evidence of actual

damages. Nor. can the two cases be distinguished, as the

Court: suggests (R. 277-8), because the plaintiff” herein

‘in its complaint specifically demanded, in addition 40 an

Injunction, attorney's fees and costs, both damiiges and

profits in such amount ‘as to the court shall appear

proper «= * Be hy .*

In the Sammons case, sapra, plaintiff

likewise in’ its complaint sought’ statutory damages in

addition to an injunetion.

What the Court of Appeals has really done herein is to

depart-from its decision in the Sammons case, wherein it

followed the Darilla decision and has thus brought itself

in. conflict with that deeision of ‘the Second Circuit.

It is-clear from the foregoing. ae respectfully submit, .

that both Courts below have misconstrued and misapplied: -

Section LOT(b) of the Copvright Ae and that their dee.

sions are in confliet With the decisions’ of this Court and

of Courts of Appeals ot other Cirenits, |

POINT II

The ‘‘in lieu” clause of Section 101(b) of the. Copy-

right Act is not intended as a penalty, but has.been

so applied herein. | | :

‘The award ot) maximum statutory damages against

‘defendant, under the circumstances: of this Case,

amounted to the imposition of a penalty,

learly

Although it was conceded that defendant was in the

“innocent position of a bystander’’ and was not a delib.

erate infringer, had no knowledge before notice of plain-

tiff’s copyright and ceased dealing in the ‘accused article

promptly upon receiving such notice or even prior thereto:

and ,although defendant's total gross profits from the

sale of the alleged infringing article were only $899.16:

and although there was no proof of actual damages to

the plaintiff, either in an amount exceeding the amount

of such profits or in- any amount whatever; nevertheless,

the Distriet Court ‘in its discretion’? made an award of

statutory damages against the defendant in the maximum

amount of $5,000 with an attorney’s fee of $2,000 and

the Court. of Appealshas, by a novel ealeulation and

theory, upheld that award, with an additional attorney's

fee of $500.

There is, in the cireumstances of this ease, no rational

hasis for either the award or its affirmance, or for such

Siowesnstie ee fees. Section 101(b) of the Copv-

right Act: specifically provides, in respect of statutory

damages, that such damages ‘shall’ not he regarded as a

penalty’. It has heen stated repeatedly and in numerous

cases that the ‘‘in ‘lieu’ clause is not intended as a

penalty and that damages are not to he awarded as based

upon the idea of punishment. (See, for instance. the.

following eases: Sheldon ¥. Metro-Goldwun € ‘orp., supra,

at page 399; Douglas y. Cunningham, supra, at page 204:

Westermann Co. vy. Dispatch Printing Co., supra, at pages

107-9; Davilla vy. Brunswick-Balke Collender Co... supra,

at page 570: Turner & Dahnken vy. Crowley, 9 Cir, 25° F.

749, 754 (1918).) ae |

The -District> Court Judge seems to have had the

erroneous impression that the statutory damage provision

Was predicated upon the theory that such.damages are

punitive and plaintiff's counsel concurred in this errone.

ous view (R, 34). ° .

_* -

Sas

ay ; f r

The only plausible explanation. of this award of statu-

tory damages in ‘the \aiicimum amount against defendant

appears to be found in the hostility manifested against

defendant throughout che ‘suit by the Distriet Judge.’

‘This may well have been caused. or furthered by the wholly

unwarranted invectives directed at defendant by plaintiff *s

counsel,” f oy at

The Court of Appeals overlooked said remarks of

_ plaintiff's eounsel as being yrompted by -“exeess of zeal

p Se

in. & hotly contested. trial’’. It recognized that certain of

the remarks of the trial Judge in the course of ‘the pro--—

cooding were ‘*hoth unseemly and unealled for’? and

‘would better have een. left unsaid, and are better not

yuoted’’ (R. 279-80), In these expressions, in. and. of

themselves, the Court. of Appeal found: no’ reversible

error (R. 280) and that point is not before this Court.

But that is quite apart from the question of whether such

“expressions are indigative of the punitive nature of the

award. : ,

‘For example, see Record. at p. 11.and alse at pp. 125, 127, 130,

138-43, 148, 150-1, 155, 158, 160, 163-4. 175, 181, 189-202/ 208-f2.

222, 237-8: also, ‘note how the trial juage opened the door wide for

plaintiff for rebuttal with assurances. te, defendant's cotinsel that he

would be given the “same latitude” and would “not he ‘foreclosed if

he had any other evidence” (R. 181-2) and how later, the trial judge

excluded defendant's most faite ac rebuttal evidence regarding the

authenticity and date of tts grey plaster model (R. 229, cf seq.).

I? rexample, sve Record, })h. 33-5 ancl 45, .

CONCLUSION

The judgment of the Court of Appeals for the First

Circuit should be reversed, with costs and disburse-

ments to defendant, and the judgment of the District

Court for the District of Massachusetts should be

modified, with costs and disbursements to defendant, |

so as to limit plaintiff’s recovery to the amount of

defendant’s profits, without counsel fee.

‘Respectfully submitted,

~~ -Martix A. Scuenck.

; KENNETH W. Greena WALT,

| Atlorneys for Petitioner.

Joun H, Barper,

Of Counsel.

Dated: October, 1952.

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