United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER ON MOTIONS IN
N. Parrish United States District Court Judge
Judge Jill N. Parrish Tiffanie Rushton infringed Rachel
Nunes's copyright to her novel, A Bid for Love.
The only issues remaining for trial are whether the
infringement was willful within the meaning of 17 U.S.C.
§ 504(c)(1) and the amount of statutory damages to be
awarded to Nunes. Before the court are eight motions to
exclude evidence filed by Nunes and one motion to exclude
evidence filed by Rushton. The court shall first address the
standards applicable to the willfulness and statutory damages
issues. The court will then address each motion in turn.
copyright infringer may be held liable for statutory damages.
17 U.S.C. § 504(a). Ordinarily, statutory damages may be
awarded “in a sum of not less than $750 or more than
$30, 000.” Id. § 504(c)(1). But if the
copyright owner proves that the infringement “was
committed willfully, ” statuary damages may be awarded
in an amount not to exceed $150, 000. Id. §
504(c)(2). Both willfulness and the amount of statutory
damages are jury questions. Feltner v. Columbia Pictures
Television, Inc., 523 U.S. 340, 355 (1998).
order to show that infringement was willful, the plaintiff
must prove that the defendant either knew that his or her
conduct constituted copyright infringement or recklessly
disregarded the possibility that his or her conduct
constituted copyright infringement. See Bryant v. Media
Right Prods., Inc., 603 F.3d 135, 143 (2d Cir. 2010);
Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d
980, 991 (9th Cir. 2017); Yellow Pages Photos, Inc. v.
Ziplocal, LP, 795 F.3d 1255, 1272 (11th Cir. 2015); 4
Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 14.04[B][a] (Rev. Ed. 2017).
the jury is free to consider a number of factors when
determining the amount of a statutory damage award. The
Supreme Court has recognized that the statutory damages
clause of the Copyright Act affords the “necessary
flexibility to do justice” when it is difficult or
impossible to calculate actual damages. F. W. Woolworth
Co. v. Contemporary Arts, 344 U.S. 228, 232-33 (1952);
see also Douglas v. Cunningham, 294 U.S. 207, 209
(1935) (reasoning that the statutory damages provision was
adopted “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”). The Court further recognized
that even in cases where infringement does not damage the
copyright holder or enrich the infringer, a statutory award
is appropriate to vindicate the policies animating the
Copyright Act, including “to discourage wrongful
conduct.” Wo olworth Co., 344 U.S. at 233.
courts have further enumerated factors that a jury may
consider when awarding statutory damages. A district court in
the First Circuit, for example, instructed a jury that it
could consider, among other things:
the nature of the infringement; the defendant's purpose
and intent, the profit that the defendant reaped, if any,
and/or the expense that the defendant saved; the revenue lost
by the plaintiff as a result of the infringement; the value
of the copyright; the duration of the infringement; the
defendant's continuation of infringement after notice or
knowledge of copyright claims; and the need to deter this
defendant and other potential infringers.
Sony BMG Music Entm't v. Tenenbaum, 660 F.3d
487, 503-04 (1st Cir. 2011). The Fourth Circuit similarly
held that a jury was correctly instructed that it could
consider any actual damages as well as
any evidence that the defendants have a history of copyright
infringement; any evidence that the defendants are apparently
impervious to either deterrence or rehabilitation; the extent
of the defendant's knowledge of the copyright laws; any
misleading or false statements made by the defendants; . . .
and any factor which the jury believes evidences the
defendants knew, had reason to know, or recklessly
disregarded the fact that its conduct constituted copyright
Superior Form Builders, Inc. v. Dan Chase Taxidermy
Supply Co., 74 F.3d 488, 496 (4th Cir. 1996) (alteration
in original). Finally, the Second Circuit has held that when
determining the amount of statutory damages to award for
copyright infringement, courts consider: (1) the
infringer's state of mind; (2) the expenses saved, and
profits earned, by the infringer; (3) the revenue lost by the
copyright holder; (4) the deterrent effect on the infringer
and third parties; (5) the infringer's cooperation in
providing evidence concerning the value of the infringing
material; and (6) the conduct and attitude of the parties.
Bryant v. Media Right Prods., Inc., 603 F.3d 135,
144 (2d Cir. 2010); see also Marshall v. Marshall,
No. 08 CV 1420 LB, 2012 WL 1079550, at *26 (E.D.N.Y. Mar. 30,
2012), aff'd, 504 Fed.Appx. 20 (2d Cir. 2012)
(ruling that “‘statutory damages cannot be
divorced from economic reality' and ‘should bear
some relationship to actual damages suffered'”
summary, the jury has broad discretion to consider many
factors when fixing the amount of a statutory damages award,
including (1) the amount of any actual damages to the
copyright holder or any profits obtained by the infringer,
(2) any difficulties in proving either damages or profits,
(3) the infringer's state of mind, (4) the nature of and
circumstances surrounding the infringement, (5) the conduct
and attitude of the parties in relation to the infringement,
and (6) deterrence.
MOTION TO EXCLUDE SETTLEMENT OFFERS AND NEGOTIATIONS
to Rule 408 of the Federal Rules of Evidence, Nunes moves to
exclude evidence of any settlement offers and any conduct or
statements made during settlement negotiations. Rule 408
excludes offers to compromise a claim as well as conduct or
statements made during compromise negotiations “either
to prove or disprove the validity or amount of a disputed
claim or to impeach by a prior inconsistent statement.”
Any settlement offers made in this case fall squarely within
this rule. Settlement negotiations could only be relevant to
the amount of the statutory damages award. Rule 408 prohibits
the use of settlement negotiations to prove the amount of
statutory damages to award.
cases cited by Rushton to support her argument that evidence
of settlement negotiations should be introduced at trial are
not persuasive. First, Rushton cites Warner Bros. Inc. v.
Dae Rim Trading, Inc., 877 F.2d 1120 (2d Cir. 1989). In
that case, the Second Circuit noted that the defendant had
offered to settle the case and held that “the overall
history of the litigation” justified the district
court's decision to award $100 in statutory damages.
Id. at 1122, 1126. But the Second Circuit never
considered Rule 408, and it appears that the parties in that
case never raised it. Warner Bros. cannot be
persuasive authority on a point of law it did not
contemplate. Moreover, the district court in Warner
Bros. decided the issue of statutory damages, not a
jury. Second, Rushton cites Fortgang v. Pereiras
Architects Ubiquitous LLC, No. CV163754ADSAYS, 2018 WL
1832184, at *4 (E.D.N.Y. Mar. 9, 2018). But that case only
held “that Rule 408 does not bar consideration of
settlement discussions in the context of determining whether
attorneys' fees are appropriate under Section 505 of the
Copyright Act.” Id. at *4. It says nothing
about submitting evidence of settlement negotiations to a
jury when determining the amount of statutory damages.
court, therefore, concludes that Rule 408 prohibits a jury
from considering evidence of settlement offers and settlement
negotiations when setting the amount of statutory damages.
The court GRANTS Nunes's motion to exclude this evidence.
MOTION TO EXCLUDE EVIDENCE ...