Cite as 562 F.2d 1157 (1977)
ficient deterrent helped to convince the Court to hold that “in lieu” recovery, not cumulative recovery, was available.
Nor does Shapiro hold that cumulative recovery is available under the Act. In Shapiro, the trial court had determined that, although ascertainable, damages were non-existent and profits were de minimus and consequently, the copyright owner was entitled to no monetary recovery. The Ninth Circuit affirmed these findings of fact and, reasoning from Woolworth, held that although the trial court had the discretion to apply “in lieu” damages, its refusal to do so was not error.
The trial court, relying on Sheldon v. Metro-Goldwyn Corp., 309 U.S. 390, 60 S.Ct. 681, 84 L.Ed. 825 (1940), had concluded that if either profits or damages are ascertainable, then “in lieu” damages are inappropriate. We disagreed with that conclusion. In passing we stated that
since the opinion in Woolworth, Sheldon does not stand for the proposition that where both profits and damages can be ascertained the court should award the higher but not both and should decline to resort to the “in lieu” provision.
367 F.2d at 240.
This statement merely acknowledges the Woolworth dicta which indicates that the trial court has discretion to award “in lieu” damages even though both profits and damages have been proved. Again, we must note that this court was dealing not with the propriety of cumulative versus alternative recovery, but rather with the availability of “in lieu” damages. The question of whether only the higher of the two ascertainable elements may be awarded was not before the court; the court simply held that even with ascertainable profits and damages, “in lieu” damages still may be granted.[1]
II.
Statutory “In Lieu” Damages.
In the case now before us the district court, after the jury had been dismissed, refused to exercise its discretion to hear additional testimony on the applicability of “in lieu” damages. It ruled that “in lieu” damages should have been submitted previously to the jury and consequently it declined to consider the propriety of such an award. We reverse this determination and hold that, after the plaintiffs have had an opportunity to prove profits, the district court should consider the propriety of “in lieu” damages, although an award of such damages will be within its discretion.
We so hold because the issue of “in lieu” damages is properly addressed to the court, not the jury. Section 101(b) expressly directs the court to use its discretion in the determination of “in lieu” damages.[2] The jury plays no role in this determination, because “the court’s conception of what is just in the particular case, considering the nature of the copyright, the circumstances of the infringement, and the like, is made the measure of the damages to be paid….” Westermann Co. v. Dispatch Printing Co., 249 U.S. 100, 106, 39 S.Ct. 194, 196, 63 L.Ed. 499 (1919) (emphasis added). See F. W. Woolworth Co. v. Contemporary Arts, Inc., supra.
- ↑ In addition, subsequent to Shapiro, this circuit affirmed an award of only the larger of damages and profits. Runge v. Lee, 441 F.2d 579 (9th Cir.), cert. denied, 404 U.S. 887, 92 S.Ct. 197, 30 L.Ed.2d 169 (1971). In Runge, the trial court elected to award compensatory damages in the amount of $80,000.00 instead of the profits of the infringer which amounted to $64,253.00. This court held that such an election was within the trial court’s discretion, citing Universal Pictures, with no mention of Shapiro.
- ↑ Section 101(b) of 17 U.S.C. states in part:
[O]r 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 hereinafter stated … 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 the 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….”
