Overton v. Health Communications, Inc. et al

Filing 146

ORDER regarding damages. Signed by District Judge William M. Conley on 3/9/12. (Attachments: # 1 amended proposed jury instructions) (krj)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

PATRICK OVERTON,
ORDER
Plaintiff,
10-cv-701-wmc
v.
HEALTH COMMUNICATIONS, INC.,
CHICKEN SOUP FOR THE SOUL PUBLISHING, LLC.,
AMERICAN GREETINGS CORP.,
CHICKEN SOUP FOR THE SOUL ENTERPRISES, INC.,
CHICKEN SOUP FOR THE SOUL, LLC.,
JOHN T. CANFIELD a/k/a/ JACK CANFIELD and
MARK VICTOR HANSEN,
Defendants.

This order addresses plaintiff Patrick Overton’s claimed right to have the jury
render alternative verdicts on statutory and actual damages for alleged copyright
infringement. This issue was brought to the court’s attention by the parties’ proposed
jury instructions and proposed special verdict forms, and discussed at the March 6, 2012,
final pretrial conference. Having now received supplemental briefing from both sides on
the issue, the court finds that Mr. Overton may require the jury to render alternative
damage awards.
From the parties’ submissions and its own research, the court notes that there
appears to be no definitive answer as to the plaintiff’s right to proceed in this manner.
On the one hand, the notion of allowing a jury to render alternative damage awards from
which a plaintiff may then choose has, to this court’s knowledge, no counterpart in the

law.1 On the contrary, a plaintiff is normally asked to choose its theory of recovery
before submission to the jury. Moreover, there is certainly a risk of jury confusion as to
how to separate these two damages calculations, and at least a hint of potential prejudice
to the defendants, who may be required to argue two or more potentially inconsistent
theories of defense to plaintiff’s damage claims at the same time.
On the other hand, the plain language of 17 U.S.C. § 504(c)(1) unambiguously
allows a plaintiff to elect statutory or actual damages “at any time before final judgment
is rendered.” Moreover, the U.S. Supreme Court held definitively in Feltner v. Columbia
Pictures Television, Inc., 523 U.S. 340 (1998), that the Seventh Amendment provides the
right to jury trial on all issues pertinent to an award of statutory damages in a copyright
infringement action. Id. at 347-48.2
Requiring Mr. Overton to elect before trial, or even just before jury deliberations,
among the two forms of damage would arguably frustrate the statute, or the Supreme
Court directive, or both. If plaintiff affirmatively elects statutory damages, the caselaw
suggests that he waives the right to later elect actual damages. Twin Peaks Productions, Inc.
v. Publications Intern., Ltd., 996 F.2d 1366, 1380 (2nd Cir. 1993) (“Once a plaintiff has
elected statutory damages, it has given up the right to seek actual damages”). This seems

1

Other than, perhaps, the Anti-Cybersquatting Consumer Protection Act (ACPA), 15
U.S.C. § 1117(d), which provides that the “plaintiff may elect, at any time before final
judgment is rendered by the trial court, to recover, instead of actual damages and profits,
an award of statutory damages.”
2
Finding that statutory copyright law, including the right to statutory damages, is
sufficiently analogous to traditional common-law causes of action to invoke the Seventh
Amendment.
2

to violate his right to elect actual damages up to the point of final judgment. See Kiva
Kitchen & Bath Inc. v. Capital Distrib. Inc., 319 Fed. Appx. 316, 320 (5th Cir. 2009).3 If
plaintiff elects to proceed with his actual damages claim, then he is waiving the
possibility of having his statutory damages decided by a jury. Feltner, 523 U.S. at 347 n.
5 (“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.”).
As a practical matter, the best way to satisfy the dictates of the copyright statute
and Feltner is to require the jury to enter alternative verdicts. The court notes that at
least three other courts, though not within the Seventh Circuit, have followed this
approach. See Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267, 273 (6th Cir.
2009) (“Following five days of testimony, the jury rendered a verdict in Bridgeport's
favor, finding UMG liable for $22,245 in actual damages and $88,980 in statutory
damages. Bridgeport then elected statutory damages and the district court entered
judgment in Bridgeport's favor.”); Kiva Kitchen, 319 Fed. Appx. at 320 (“[O]ur review of
the case law suggests that a plaintiff is authorized to make an informed election of
remedy even after the jury has rendered a verdict, with knowledge of the amount of both

3

This ignores the possibility of asking the jury to stay on for a third-stage of trial on
actual damages or to reconvene a second jury for this purpose. The court is not prepared
to embrace either of these options.
3

awards.”); Cotter v. Christus Gardens, Inc., No. 99-5996, 2000 WL 1871698, at *2 (6th
Cir. Dec. 12, 2000) (“The jury . . . awarded Cotter $100,000 in statutory damages.
Alternatively, the jury awarded Cotter $153,355 in actual damages.).
The court has amended the proposed jury instructions in an attempt to set out, as
clearly as possible, the jury’s role in deciding alternative damages. The amended jury
instructions are attached to this order. The parties will have an opportunity to address
these instructions at the end of the first day of trial.
Entered this 9th day of March, 2012.
BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge

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