majority believes still controls. More recent decisions have without exception favored cumulative recovery, however. See F. W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 238, 78 S.Ct. 222, 97 L.Ed. 276 (1952); Thomas Wilson & Co. v. Irving J. Dorfman Co., 488 F.2d 409, 418 (2 Cir. 1970); Alouf v. Expansion Products, Inc., 417 F.2d 767, 768 (2 Cir. 1969); Peter Pan Fabrics, Inc. v. Jobela Fabrics, Inc., 329 F.2d 194, 196 (2 Cir. 1964); Baldwin Cooke Co. v. Keith Clark, Inc., 420 F.Supp. 404, 405–06 (N.D.Ill.1976); L. L. White Metal Casting Corp. v. Joseph, supra, 387 F.Supp. at 1357; Fedtro, Inc. v. Kravex Manufacturing Corp., 313 F.Supp. 990, 995 (E.D.N.Y.1970); Ziegelheim v. Flohr, 119 F.Supp. 324, 329 (E.D.N.Y.1954); Trebonik v. Grossman Music Corp., 163 U.S.P.Q. 352, 361–62 (N.D.Ohio 1969); Gelles-Widmer Co. v. Milton Bradley Co., 132 U.S.P.Q. 30, 35 (N.D.Ill.1961), aff’d, 313 F.2d 148 (7 Cir. 1963).[1]
In the Woolworth case the lower court had awarded statutory “in lieu” damages and attorneys’ fees for infringement of a statute. The Supreme Court found that there had been an adequate showing of profits by the infringer to enable assessment of that liability. “As to the other ingredient in computing liability, damages suffered by the copyright proprietor, the record is inadequate to establish an actually sustained amount.” 344 U.S. at 230, 73 S.Ct. at 224. Nonetheless, the Court approved the “in lieu” damages award because cumulative recovery is provided by the Copyright Act. Thus the Court stated:
“[A] rule of liability which merely takes away profits from an infringement would offer little discouragement to infringers. It would fall short of an effective sanction for enforcement of the copyright policy. The statutory rule, formulated after long experience, not merely compels restitution of profit and reparation for injury but also is designed to discourage wrongful conduct.” 344 U.S. at 233, 73 S.Ct. at 225.
The majority argues that Woolworth should not be viewed as controlling precedent in this case because it did not specifically deal with the issue of cumulative or alternative recovery. But the above-quoted language indicates that the Court believed that recovery of more than just profit is necessary. While in that case, damages could not be ascertained so that “in lieu” damages were appropriate, the conclusion is inescapable that where damages can be ascertained, they must be awarded in addition to profits in order to obtain the deterrent effect sought by the Court. As the Supreme Court recognized, the damage provision of the Copyright Act aims at more than just compensation of the copyright owner. It also served to prevent unjust enrichment by the infringer and to deter infringement. I agree with the Second Circuit that fulfillment of these purposes requires cumulative recovery. See Thomas Wilson & Co. v. Irving J. Dorfman Co., supra, 433 F.2d at 413–14; Peter Pan Fabrics, Inc. v. Jobela Fabrics, Inc., supra, 329 F.2d at 196. It follows that plaintiffs in this case should be entitled to recover both damages and profits, if the latter can be proven.
Universal Pictures Co. v. Harold Lloyd Corp., supra, was decided before the Woolworth case. It relied, instead, on Sheldon v. Metro Goldwyn Pictures Corp., 309 U.S. 390, 400, 60 S.Ct. 681, 84 L.Ed. 825 (1940) and Underwood Typewriter Co. v. E. C. Stearns & Co., 227 F. 74, 82 (2 Cir. 1915). This Court has already concluded that the Sheldon case was superseded by Woolworth. As the Court said in Shapiro, Bernstein & Co. v. 4636 S. Vermont Ave., Inc., 367 F.2d 236, 240 (9 Cir. 1966):
- ↑ Commentators generally endorse the cumulative over alternative recovery. See, e. g., L. Ambur, Copyright Law and Practice 1117 (1936); A. Weil, Copyright Law 467 (1917); Price, Monetary Remedies Under the United States Copyright Code, 27 Ford.L.Rev. 555, 564 (1959); Note, Remedies for Copyright Infringement, 23 Ark.L.Rev. 464, 466 (1969); Note, Monetary Recovery Under the Copyright, Patent, and Trademark Acts, 45 Texas L.Rev. 953, 962 (1967). But cf. 2 Nimmer § 151 at 667–69; Caplan, The Measure of Recovery in Actions for the Infringement of Copyright, 37 Mich.L.Rev. 564, 586 (1939); Comment, A New Look at Section 101(b) of the Copyright Act, 32 U.Chi.L.Rev. 98, 107–09 (1969).
