Davis v. EI DuPont de Nemours & Company

• Decision Date: 20 January 1966
• Citation: 249 F. Supp. 329
• Parties: Donald DAVIS, Plaintiff, v. E. I. DuPONT de NEMOURS & COMPANY, Batten, Barton, Durstine & Osborn, Inc., Columbia Broadcasting System, Inc., Talent Associates, Ltd., David Susskind, Jacqueline Babbin and Audrey Gellen, Defendants.
• Court: U.S. District Court — Southern District of New York

249 F. Supp. 329

Donald DAVIS, Plaintiff, v. E. I. DuPONT de NEMOURS & COMPANY, Batten, Barton, Durstine & Osborn, Inc., Columbia Broadcasting System, Inc., Talent Associates, Ltd., David Susskind, Jacqueline Babbin and Audrey Gellen, Defendants.

United States District Court S. D. New York.

January 20, 1966.

O'Brien, Driscoll & Raftery, New York City, for plaintiff; Paul D. O'Brien and Milton M. Rosenbloom, New York City, of counsel.

Coudert Brothers, New York City, for defendants; Carleton G. Eldridge, Jr., and Eugene L. Girden, Stephen S. Singer, New York City, of counsel.

FEINBERG, District Judge.

This proceeding grows out of a 1960 telecast of "Ethan Frome," which was shown on 162 television stations. The court has already held that the telecast infringed plaintiff Donald Davis's copyright in a dramatization of Edith Wharton's classic novel. Davis v. E. I. DuPont de Nemours & Co., 240 F.Supp. 612 (S.D. N.Y.1965). The proceeding now to fix damages raises the ultimate issue of what damages would be "just" under the applicable section of the Copyright Act, 17 U.S.C.A. § 101(b).

Davis v. E. I. DuPont de Nemours & Co., supra, contains a full discussion of the tangled copyright history of various versions of "Ethan Frome," the abortive negotiations before the offending telecast and the nature of the copyright infringement. The findings set forth in that opinion will not be repeated but should be regarded as incorporated herein. The facts that should be singled out in this proceeding to fix damages are, briefly, as follows. Defendants are E. I. DuPont de Nemours & Company ("DuPont"), sponsor of the infringing telecast; Batten, Barton, Durstine & Osborn, Inc. ("BBDO"), DuPont's advertising agency; Columbia Broadcasting System, Inc. ("CBS"), the network over which the program was televised; Talent Associates, Ltd. ("Talent"), producer of the telecast; David Susskind ("Susskind"), the Talent officer in charge of the production; and Jacqueline Babbin ("Babbin") and Audrey Gellen ("Gellen"), Talent employees who prepared the script. The infringing telecast occurred on February 18, 1960, as "The DuPont Show of the Month" over the facilities of CBS. Not more than twenty per cent of the program was pre-recorded on video tape; the balance was broadcast live. In the two months prior to the telecast, plaintiff Davis formally notified defendants twice that if they went ahead with the proposed television performance of "Ethan Frome" without his consent, they would be committing a deliberate copyright infringement.

CBS transmitted the infringing program from New York over 162 stations each of which telecast the program to its own specific audience. Almost all of the stations showed the program simultaneously. The fact that a few did not¹ has been ignored by the parties in urging their respective contentions and will be disregarded by the court. Each station was located in a different city; the locations ranged across the entire nation.² The total viewing audience for the program was over 17 million people.³ Each local station broadcast not only the infringing program but also commercials transmitted to it by CBS for which the station received payment.⁴ DuPont, through its advertising agency, BBDO, retained and exercised ultimate power to determine the content of the program. DuPont sought nationwide coverage for the program through its dealings with CBS.⁵ CBS made arrangements with those of its affiliated stations which agreed to broadcast the program when it was received from CBS. Each station had the choice of rejecting the proposed program.⁶ A few stations were owned and operated by CBS;⁷ the others were independently owned and operated, but were contractually affiliated with CBS.⁸

The damage issues here are raised within the legal framework of 17 U.S.C. § 101(b), which, in its present form, is an ambiguous hodgepodge of improvisations. This section states as follows:

If any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable:

* * * * *

(b) * * * To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only, and the defendant shall be required to prove every element of cost which he claims, or in lieu of actual damages and profits, such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but in case of a newspaper reproduction of a copyrighted photograph, such damages shall not exceed the sum of $200 nor be less than the sum of $50, and in the case of the infringement of an undramatized or nondramatic work by means of motion pictures, where the infringer shall show that he was not aware that he was infringing, and that such infringement could not have been reasonably foreseen, such damages shall not exceed the sum of $100; and in the case of an infringement of a copyrighted dramatic or dramatico-musical work by a maker of motion pictures and his agencies for distribution thereof to exhibitors, where such infringer shows that he was not aware that he was infringing a copyrighted work, and that such infringements could not reasonably have been foreseen, the entire sum of such damages recoverable by the copyright proprietor from such infringing maker and his agencies for the distribution to exhibitors of such infringing motion picture shall not exceed the sum of $5,000 nor be less than $250, and such damages shall in no other case exceed the sum of $5,000 nor be less than the sum of $250, and shall not be regarded as a penalty. But the foregoing exceptions shall not deprive the copyright proprietor of any other remedy given him under this law, nor shall the limitation as to the amount of recovery apply to infringements occurring after the actual notice to a defendant, either by service of process in a suit or other written notice served upon him.

First. In the case of a painting, statue, or sculpture, $10 for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees;

Second. In the case of any work enumerated in section 5 of this title, except a painting, statue, or sculpture, $1 for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees;

Third. In the case of a lecture, sermon, or address, $50 for every infringing delivery;

Fourth. In the case of a dramatic or dramatico-musical or a choral or orchestral composition, $100 for the first and $50 for every subsequent infringing performance; in the case of other musical compositions $10 for every infringing performance; (Emphasis added.)

The parties have stipulated that because the "rules of law and evidence render difficult proof of plaintiff's actual damages, if any, and proof of profits, if any, of the defendants" due to the infringing telecast, plaintiff relies solely upon the "in lieu of" provisions quoted above,⁹ commonly referred to as the statutory damage provisions. Accordingly, plaintiff does not claim and has not proved actual damages or profits and seeks to recover only such damages under the above quoted statutory language "as to the court shall appear to be just." Plaintiff argues that this amount is $211,500, computed in a manner set forth below, and, in any event, can be no less than $40,500. Defendants contend that damages can be no higher than $8,150 and should be fixed at a lower figure.

The basic issues before the court are: (1) whether the 1960 telecast by 162 stations was one "infringement" by these defendants or 162, thereby determining whether the minimum statutory damage is $250 or $40,500; (2) if there was only one infringement, whether the maximum damage is the $5,000 limit set forth in 17 U.S.C. § 101(b), or whether this is inapplicable because defendants had "actual notice" of the copyright claim; and (3) in any event, at what figure "just" damages should be fixed.

I

The statutory damage provisions provide a minimum of $250 and a maximum of $5,000 for each infringement. Plaintiff contends that there were 162 infringements of his copyright and therefore the minimum damage must be 162 times $250, or $40,500. Defendants claim that there was only one infringement of the copyright and the applicable minimum is accordingly only $250. Whether a simultaneous network telecast by many stations constitutes more than one infringement is remarkably unclear. As is so often the case in copyright actions, although the issue raised is far reaching in import, there are few, if any, decisions on point and none containing any extended discussion of the problem.¹⁰

Any careful analysis of the issue must begin with close examination of section 101(b). That section states that any person who infringes a copyright shall be liable to pay to the copyright proprietor damages due to "the infringement" as well as profits made by the infringer "from such infringement," or in lieu of actual damages and profits, such damages as appear just to the court. The limits on the "in lieu of," or statutory, damages are that they shall in no "case" exceed $5,000 or be less than $250, with an exception as to the maximum to be discussed below. The law is clear that an award as statutory damages of any amount from $250 to $5,000 for an infringement is within the discretion of the trial court.¹¹ In situations where repetitive infringement of a copyrighted work is probable, the statute suggests amounts ("yardstick amounts") to guide the court in the exercise of its discretion. Thus, the yardstick amounts for "a dramatic composition" like the Davis play infringed here are $100 for the first and $50 "for every subsequent infringing performance." Clearly, then, the statutory scheme...