COMMENTS AND VIEWS SUBMITTED TO THE COPYRIGHT OFFICE ON THE DAMAGE PROVISIONS OF THE COPYRIGHT LAW

I have read Mr. Strauss' study on damage provisions with a great deal of interest. A few comments have come to mind.

In my judgment a good deal more ought to be said on the subject of attorney fees than is given at page 31. I understand that in the second circuit it is almost standard practice to make some kind of award in copyright cases. In the seventh circuit the court has displayed no such tendency. I think I am correct in saying that there have been substantial other differences of opinion between the courts, although the matter is of course discretionary and hence somewhat difficult to analyze in terms of conflicts between the courts. There is also another angle on this item is it sound to take a complacement attitude with respect to the logic of attorney fees awards? I wonder why the Congress should single out copyrights, patents, trademarks, and antitrust cases in this respect while leaving to other claimants (e.g. personal injury claimants) no statutory opportunity for recovery? Don't essentially all the arguments apply as much to other cases as they do to those singled out? Conversely, it seems to me that the study might well contain some justification for the provision in copyright cases.

Certainly all of us who have faced questions of damages under the copyright law have had our headaches-and can agree with Mr. Strauss' various suggestions that portions of the law to be clarified. I wonder, however, if some discussion might be made of an arrangement along the lines of the Duffy bill (p. 24) but including attorney fees in a single short all-inclusive statute. I realize that the Duffy bill. if enacted, would add up to this in conjunction with the attorney fees statute. My point is, however, that the law in its present form flips and flops and winds all about itself in a hopeless hodgepodge because of an apparent desire for precision-and then leaves the big items (attorney fees) wholly discretionary. Why not be done with the whole thing by a simple statute based on discretion? Perhaps this is not possible-but it does seems to be one alternative that might bear consideration.

[Below] are the answers to the questions of pages 31 and 32 of the Strauss study. I think you will find that they give a pretty good notion of my present thinking and that no additional comment is required at this time. Needless to say the thoughts expressed are tentative to a degree and I would have an open mind to the thoughts of others on the subjects. Also, I assume that in the case of certain pressure groups (e.g., retailers, newspapers, etc.) concessions would have to be made to expediency. These are not reflected in the aswers.

"1. Should actual damages and the infringer's profits be cumulative or alternative?"

Analytically a case can be made for either approach. Under section 4921 R.S. (prior to the 1946 amendment) the patent law provided for both damages and profits and it is my understanding that awards were made on this basis. Since 1946 the statute has provided for damages only, and then only in an amount "not less than a reasonable royalty." My present reaction is that we ought to face up to the fact that there can be no positively correct way to handle this matter and that the matter can best be handled by giving the court ample discretion in one way or another.

"2. Should the law continue to provide for minimum and maximum amounts as statutory damages in lieu of actual damages and profits?"

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Actual damages and profits are bound to be troublesome in many cases, either because they are too small to be meaningful or because the element of certainty is lacking (on this latter point the copyright cases could take a leaf from the book of the antitrust law cases such as Bigelow v. RKO, 327 U.S. 251). It follows that the courts must have the opportunity by one means or another-to increase the award to a value adequate to compensate for the infringement and assure that the infringer is not in effect licensed.

"3. (a) Should statutory damages be allowable when (i) actual damages are ascertainable? (ii) profits are ascertainable? (iii) both are ascertainable?"

My present feeling is that we only create problems by using the "in lieu" approach, or otherwise linking statutory damages to the actual damages and profits. It would seem that the whole matter could best be handled by giving the courts adequate room to make a discretionary award and avoid conditions to the award.

"(b) If so, should statutory damages be allowable (i) in the discretion of the court, or (ii) at the plaintiff's option?"

It seems to me that-whatever the term applied-the award not based on actual damages or profits should be in the discretion of the court. It should not be the

option of any party.

"4. Should the present minimum amount of statutory damages ($250) be retained, increased, or reduced?"

My feeling is that the minimum should be reduced to zero.

"5. Should a special minimum amount of statutory damages be provided, and if so in what amount, for (a) Newspaper reproduction of a copyrighted photograph (present minimum of $50)?"

It seems to me that a good deal of the present difficulty with the damage provisions is the result of singling out various supposedly special cases. My present feeling is that, if politically possible, we should be rid of all the special figures and rely upon judicial discretion.

"6. Should the present maximum amount of statutory damages ($5,000) be retained, increased, or reduced?"

It is easier to make out a case for a maximum than a minimum. Again, however, my present feeling is that judicial discretion is the best way to handle the matter. 7. Should a special maximum amount of statutory damages be provided, and if so what amount, for ***."

Same answer as 5, above.

"8. Should the maximum limitation on statutory damages not be applicable to (a) Infringements occurring after actual notice to the defendant, as provided in the present law?"

Here again my feeling is that judicial discretion is the best way to handle the matter, leaving the courts with either no maximum or a sufficiently high maximum that they can take into account the matter of notice, the profit motive, and other acts and factors bearing reasonably on the award.

"9. Within the minimum and maximum limits, should the law continue to specify, as it now does, an amount per infringing copy or per infringing performance? If so, should the amounts be those now specified in section 101(b)?”

If possible, I would like to avoid any statutory figure per copy or per performance. "10. (a) Should innocent secondary infringers (vendors, printers, and other processors) be absolved from liability (i) for actual damages, (ii) for profits, (iii) for statutory damages?"

If possible I would treat secondary infringers just as anyone else because it has been my experience that they are not ordinarily nearly as innocent as their claims suggest. In any event this is certainly a factor a court can consider with respect to a discretionary award and if actual profits and damages are large it seems to me to be the strongest case for not honoring the plea of the secondary infringer that it is really innocent.

"11. For the purpose of assessing statutory damages, should multiple infringements be treated as a single infringement: ** *."

The multiple infringement problem is a good example of the futility of attempting to be too specific on an award. Surely we can all agree that simultaneous broadcasts from a small network may be less entitled to a large award figure than a single broadcast when the station is the leading station in a large metropolitan area. I would eliminate the whole problem by giving the courts an ample range of discretion.

"12. Should the present provisions of section 116 for the mandatory allowance of full costs, with the court having discretion to award a reasonable attorney's fee, be retained?"