767 F.2d 357 (7th Cir. 1985), 83-3072, Deltak, Inc. v. Advanced Systems, Inc.

Docket Nº:83-3072.
Citation:767 F.2d 357
Party Name:819 DELTAK, INC., Plaintiff-Appellant, v. ADVANCED SYSTEMS, INC., Defendant-Appellee.
Case Date:July 18, 1985
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 357

767 F.2d 357 (7th Cir. 1985)


DELTAK, INC., Plaintiff-Appellant,


ADVANCED SYSTEMS, INC., Defendant-Appellee.

No. 83-3072.

United States Court of Appeals, Seventh Circuit

July 18, 1985

Argued Oct. 30, 1984.

As Amended on Denial of Rehearing Sept. 17, 1985.

Page 358

David C. Hilliard, Pattishall, McAuliffe & Hofsetter, Chicago, Ill., for plaintiff-appellant.

Gareth G. Morris, Gen. Counsel, Advanced Systems, Inc., Arlington Heights, Ill., for defendant-appellee.

Before CUDAHY and COFFEY, Circuit Judges, and GRANT, Senior District Judge. [*]

CUDAHY, Circuit Judge.

Plaintiff Deltak, Inc., brought this copyright infringement action against defendant Advanced Systems, Inc. ("ASI"). In an Order of February 5, 1982, the district court entered summary judgment for Deltak on the issue of ASI's liability for copyright infringement. On August 16 and 17, 1983, a bench trial was held on the issue of damages. The district court filed a searching opinion on October 20, 1983, finding that Deltak had failed to prove either its lost profits or ASI's additional revenues, and awarding no damages. 574 F.Supp. 400 (N.D.Ill.1983). Deltak now appeals the damages determination. ASI takes no appeal on liability. Although we accept a number of aspects of the district court's analysis, we vacate and remand on the issue of damages.


Deltak and ASI are among the largest firms in the business of selling textbooks and audio and videotapes used to teach data processing and other computer related skills. Each firm's materials are, according to the district court, highly substitutable for those of the other. During the relevant period, 1980-81, Deltak's marketing materials included a package entitled the Career Development System (the "CDS"). The complete CDS kit (the "Kit") included a videotape, a book titled In-House Education Guide, a manual of forms and a "Task List." The Task List "is a large glossy pamphlet.... On the left-hand side of each page of the Task List is a list of data-processing tasks that a company might want to teach its programmers, and on the right-hand side a list of the specific teaching materials that Deltak sells for each task." 574 F.Supp. at 402.

It is the left-hand list that ASI copied. ASI paid two consultants $3,000 to create the infringing document, which combined Deltak's CDS task designations with a list of ASI's teaching materials.

The consultants duplicated the left-hand side of the CDS Task List, using the identical language in which Deltak had described the tasks and arranging the task descriptions in the same order as Deltak; but on the right-hand side of each page, instead of listing the Deltak

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materials suitable to perform each task the authors of the infringing document listed ASI teaching materials.

574 F.Supp. at 402. The infringing document was developed in response to requests from ASI customers who wanted a way to key tasks on the Deltak List to ASI's materials. ASI intended that its salespeople and marketing representatives would show the document to customers to enable them to pick ASI materials with which to train their programmers in Deltak specified tasks. ASI produced either 42 or 50 copies of the document, compare 574 F.Supp. at 402 with id. at 404, and, in August, 1980, distributed 15 of them without charge to customers of Deltak, each of which was also an actual or potential customer of ASI.

This suit was brought in December of 1980 under the Copyright Act of 1976, 17 U.S.C. Sec. 101 et seq., alleging copyright infringement. (A pendant state-law claim has been abandoned.) After suit was brought, ASI began retrieving the copies, and by February, 1981, none of the infringing documents remained in the possession of customers. In May, 1981, the district court granted a preliminary injunction, and it later granted summary judgment to Deltak on the issue of liability. ASI does not contest this ruling that it infringed Deltak's copyright. ASI

copied the exact language in which the CDS Task List described each task and the exact sequence in which the tasks were listed, which was not a random sequence. The copying was deliberate, it was done by a substantial corporation that should have known better, and the documents submitted into evidence in connection with the deposition of ASI's Miss Sorn show consciousness of probable violation of the copyright laws.

574 F.Supp. at 402-03.


Section 504(a) of the Copyright Act, 17 U.S.C. Sec. 504(a), allows recovery of damages in accordance with two distinct approaches. "Statutory damages" are available under section 504(c), but only if the copyright is timely registered. 17 U.S.C. Sec. 412. Statutory damages are limited to $10,000, unless the infringement was willful, in which case these damages are available up to $50,000. Neither statutory damages, which the district court would "have [had] no hesitation in awarding," 574 F.Supp. at 403, nor attorney's fees pursuant to section 505, are available here because, as the parties agree, Deltak did not so register its copyright.

Section 504(a) also provides that the copyright owner may recover his or her "actual damages and any additional profits of the infringer, as provided by subsection (b)." Subsection (b) provides as follows:

(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 infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

17 U.S.C. Sec. 504(b).

At trial, Deltak presented testimony regarding both these theories of damage recovery under section 504(b). There was evidence that ASI had gross revenues of $392,580 during the infringement period from sales to the 15 customers who received the infringing document. The trial court found that 48% of those revenues were profit to ASI, while the remainder were costs that must be subtracted from gross revenues. 574 F.Supp. at 412. However, the district court was unable to determine what portion of the gross revenues were due to the infringement and what portion were due to other factors such as lawful marketing methods. 574 :F.Supp. at

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411-12. 1 The court reasoned that although ASI's

revenues from the 15 customers who received the document did rise in the infringement period to an extent not fully explained by any of the evidence presented at trial; ... it would exceed the bounds of permissible speculation to base a damage award on the hypothesis that the infringing document boosted ASI's revenues.

574 F.Supp. at 411. This analysis seemingly placed the burden of distinguishing profits due to the infringement from "the elements of profit attributable to factors other than the copyrighted work," 17 U.S.C. Sec. 504(b), on the owner instead of on the infringer. See H.R. REP. NO. 1476, 94th Cong., 2d Sess. 161, reprinted in 1976 U.S.CODE CONG. & AD.NEWS 5659, 5777. However, this questionable analysis is not before us because Deltak has, for reasons not clear to this court, elected not to appeal this portion of the district court's judgment. Deltak Br. at 3 n. *.

Deltak does, however, appeal the district court's judgment that it suffered no actual damages as a result of the infringement. It does not contend that its actual damages should be measured by any lost profits on sales of teaching materials to the customers lost because of the infringement. Instead, Deltak contends, as it did below, that its damages should be computed by multiplying $4925, which the district court "accepted" as a reasonable estimate of the profit per CDS Kit realized by Deltak for a small increase in production and sales, or $5000, the list price of the Kit, by fifty, the number of copies of the infringing document that were made by ASI. (For purposes of this appeal we are accepting 50 as the number of documents produced.)

There are three factual premises on which actual damages could be so awarded. First, it could be that, but for the infringement, Deltak would have sold fifty more copies to various customers (other than ASI). Second, ASI might have purchased (and hence Deltak sold) fifty copies so as not to have infringed. Third, when ASI reproduced the fifty infringing copies, it was manufacturing assets and thereby damaging Deltak to the extent of the value of use of the assets in terms of acquisition costs saved by ASI.

The trial court found that the first premise could not support recovery, 574 F.Supp. at 404, and Deltak does not appeal on this basis. The copies created by ASI could only have prevented sales by Deltak to those customers who received them. The fifteen distributed copies were all given to customers who already had a copy of the Deltak Task List. These customers had permission from Deltak to make copies of the List for the use of employees at their plant locations. There was no evidence that even one of these customers would have purchased an additional copy of the List from Deltak instead of making one itself. Given the evidence of the steep purchase price of the List, there are strong grounds for inferring that the customer would not have purchased an additional copy of it.

Deltak's argument on appeal is primarily directed toward the third premise, but also challenges the trial court's denial of the second premise. Deltak Br. at 10. We will first consider this third argument concerning the value of use of manufactured assets. Deltak...

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