It’s never a good idea to buy something, take it to an artist, and say, “Please make some changes to this, and then make it similar — but not the same — as what I’m giving you.” Unfortunately, that’s part of the fact pattern for defendant in Desire, LLC vs. Manna Textiles (“Manna”) was tried in the Central District of California, and appealed to the Ninth Circuit.
The defendant Manna actually bought a few yards of a textile design from the plaintiff, but then retained someone else to change it slightly in order to sell to other clothing manufacturers.
The district court was straightforward with determining that there was access, substantial similarity, and copying. There was smoking gun evidence among the documents produced during discovery, including an email exchange between the independent designer defendant Manna had hired and the company that came up with the new design: “After looking at this—don’t know if you change [sic] it enough?” The designer responded, “I changed 30–40% on original, pls kindly approve . . . .”
So, once again, another defendant had fallen into the “urban legend”: they supposed that if “enough” changes are made, the copyist can avoid copyright infringement, where “enough” is some magical percentage or number of changes. Nope. Works can be seen as “substantially similar” despite shaving off a little here and there — but that’s only part of a test to determine if there’s copying. Evidence of outright copying, like the emails, in this case, make the plaintiff’s job much easier.
The testimony of the plaintiff’s designer revealed that he had made the design on Photoshop and put it together himself, from scratch — and the process was documented. So, that helped to show the design was sufficiently original.
With substantial similarity, access, and the actual copying now established in one fell swoop, attention turned to the awarding of damages.
The jury had found all of the defendants to be jointly and severally liable. “Joint and several liability” means that each of the defendants and all of the defendants are responsible to pay for the judgment; any or all of them are liable. The plaintiff/judgment creditor can collect all that’s owed from one or all of the defendant/judgment debtors, in whatever amounts are found and available. The debtors are not entitled to share in the debt in proportion to how many they are, or their relative fault, or any other way. So, it’s just as bad to be the only defendant as it is to be in a group of defendants if they are jointly and severally liable.
The Ninth Circuit disagreed, finding that the defendants, in this case, should not be held jointly and severally liable. There were various degrees of liability here. The vast majority should be blamed on Manna as the original, upstream copying party. The downstream parties didn’t necessarily know that the design was copied. They should also be held liable, but the plaintiff had chosen to go with statutory damages for infringement instead of actual damages. These downstream infringers were not necessarily willful (entitling the plaintiff to greater statutory damages), and might not have been as culpable as Manna.
The other damages issue was the district court’s determination that the defendants should be held liable for multiple awards of statutory damages — because each of the defendants took the single work, made copies, and distributed it. The jury agreed with the plaintiff that each defendant should be responsible for a maximum amount of $150,000 per infringement.
The Ninth Circuit disagreed, holding that the copyright statute was not designed to give a windfall to the plaintiff. Statutory damages are supposed to be a replacement for actual damages, so it wouldn’t make sense that a plaintiff could be awarded multiple damages for a single work.
In making the contrary argument at the outset, the plaintiffs pointed to a decision in which 440 television episodes of a television show were infringed on, across three different television stations. The court awarded 3 (# of stations) multiplied by 440 (# of episodes) multiplied again by $150,000, for a total of $32 million in damages. (Ouch.)
The 9th Circuit held that the difference between that case and this one is that “Columbia separately licensed the three stations to broadcast episodes of television shows as to which it owned the copyrights.”
Manna concluded by claiming it was doing the court a favor by seeking multiple awards in one case, as opposed to filing multiple lawsuits. The court disputed this, saying cases can be consolidated and that multiple lawsuits would result in the same award overall. The court also balked at supporting what it called an absurd result that did not reflect the will of Congress.
The majority of the panel found that the award should be limited to one statutory damage up to $150,000 for willful infringement because only one work or license was infringed, even if it was infringed by multiple parties.
I think the Ninth Circuit majority (despite the detailed dissent opinion) gave us a close, accurate reading of the statute. I don’t really have a moral, other than simply “don’t copy.” And if you do, don’t make a paper or a digital trail, detailing your thinking process while you engaged in copyright infringement.
Recommended reading: Our post about vicarious infringement here.
Mark S. Kaufman
Kaufman & Kahn
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