Warner Bros. Entertainment v. Dave Grossman Creations, Inc.

13 F. Supp. 3d 963, 2014 WL 1303677, 2014 U.S. Dist. LEXIS 44306
CourtDistrict Court, E.D. Missouri
DecidedMarch 31, 2014
DocketCase No. 4:06CV546 HEA
StatusPublished

This text of 13 F. Supp. 3d 963 (Warner Bros. Entertainment v. Dave Grossman Creations, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Missouri primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Warner Bros. Entertainment v. Dave Grossman Creations, Inc., 13 F. Supp. 3d 963, 2014 WL 1303677, 2014 U.S. Dist. LEXIS 44306 (E.D. Mo. 2014).

Opinion

OPINION, MEMORANDUM AND ORDER

HENRY EDWARD AUTREY, District Judge.

This matter is before the Court on Plaintiffs’ Claim for Damages and Request for Entry of Final Judgment, and Plaintiffs’ Motion for Summary Judgment. For the reasons set forth below, Plaintiffs’ Claim for Damages is granted. The request for Entry of Final Judgment will be granted, and Plaintiffs’ Motion for Summary Judgment on their trademark claims is granted.

Plaintiffs brought this action alleging they are the legal and/or beneficial owners of all copyrights, trademarks, commercial use and merchandising rights, publicity rights and related rights associated with the motion pictures “Gone With the Wind” and “Wizard of Oz” and multiple Tom & Jerry animated motion pictures.1 Plaintiffs further alleged Defendants have infringed their copyright and trademark rights, have engaged in unfair competition, and are trading on the goodwill of Plaintiffs.

The Court granted summary judgment to Plaintiffs on their copyright claims, and entered an injunction against Defendants from continuing to infringe the copyrights. [965]*965Defendants appealed the entry of the injunction.

On July 5, 2011, 644 F.3d 584, the United States Court of Appeals for the Eighth Circuit issued an opinion which affirmed in large part this Court’s grant of summary judgment to Plaintiffs on the issue of copyright infringement and the resulting permanent injunction.

Plaintiffs now seek a money judgment on the copyright infringement and summary judgment on their trademark and unfair competition claims.

Copyright Damages

Section 504 of the Copyright Act provides:

(a) In General — Except as otherwise provided by this title, an infringer of copyright is liable for either—
(1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b); or
(2) statutory damages, as provided by subsection (c).
(b) Actual Damages and Profits — The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the in-fringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the in-fringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.
(c) 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, 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 $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
(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 $150,000. 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 copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment who, or such institution, library, or archives itself, which infringed by reproducing the work in copies or phonorecords; or (ii) a public broadcasting entity which or a person who, as a regular part of the nonprofit activities of a public broadcasting entity (as defined in section 118(f)) infringed by performing a pub[966]*966lished nondramatic literary work or by reproducing a transmission program embodying a performance of such a work.

17 U.S.C. § 504(a), (b) and (c)(1) and (2).

The statutory damages provision of the Copyright Act has both deterrent and compensatory components. Cass County Music Co. v. C.H.L.R., Inc., 88 F.3d 635, 643 (8th Cir.1996).

[Statutory damages for copyright infringement are not only “restitution of profit and reparation for injury,” but also are in the nature of a penalty, “designed to discourage wrongful conduct.” “The discretion of the court is wide enough to permit a resort to statutory damages for such purposes. Even for uninjurious and unprofitable invasions of copyright the court may, if it deems it just, impose a liability within statutory limits to sanction and vindicate the statutory policy.”

Id. at 643 (quoting F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 233, 73 S.Ct. 222, 97 L.Ed. 276 (1952)) (footnote and emphasis omitted).

Within the above stated statutory limits, the assessment of damages is within a court’s discretion. See F.W. Woolworth, 344 U.S. 228, 231-32, 73 S.Ct. 222 (1952). Statutory damages are “designed to discourage wrongful conduct” and “vindicate the statutory policy.” Id. at 233, 73 S.Ct. 222.

This Court finds statutory damages of 10,000.00 per infringement to be reasonable, considering: the factual history of this case, including Defendants’ failure to provide accurate records in order for Plaintiffs to determine the profits made for the infringements; Defendants’ undisputed continued infringement after the initiation of this suit; the need for specific deterrence of the Defendants’ further copyright violations; the need for general deterrence for others who may consider engaging in copyright violations; and comparative awards of statutory damages by other federal district courts confronted with similar violations.

Plaintiffs seek recovery of Defendants’ entire gross revenue because Defendants have failed to provide Plaintiffs with records needed for Plaintiffs to ascertain the actual profits received as a result of Defendants’ infringement. Alternatively, Plaintiffs seek statutory damages. Defendants argue that they earned a total of $70,390.10 as a result of the use of Plaintiffs’ images.

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13 F. Supp. 3d 963, 2014 WL 1303677, 2014 U.S. Dist. LEXIS 44306, Counsel Stack Legal Research, https://law.counselstack.com/opinion/warner-bros-entertainment-v-dave-grossman-creations-inc-moed-2014.