FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DESIRE, LLC, a California limited No. 17-56641
liability company,
Plaintiff-Appellee, D.C. No.
2:16-cv-04295-
v. DMG-JEM
MANNA TEXTILES, INC., a New York
corporation; A.B.N., INC., DBA OPINION
Wearever, Inc., a New York
corporation; TOP FASHION OF N.Y.,
INC., a New York corporation; Pride
& Joys, Inc., a New York
corporation; 618 MAIN CLOTHING
CORP., DBA 10 Spot, DBA Madgra,
a New Jersey corporation,
Defendants-Appellants.
Appeal from the United States District Court
for the Central District of California
Dolly M. Gee, District Judge, Presiding
Argued and Submitted March 5, 2019
Pasadena, California
Filed February 2, 2021
2 DESIRE V. MANNA TEXTILES
Before: Kim McLane Wardlaw and Mark J. Bennett,
Circuit Judges, and William K. Sessions III, *
District Judge.
Opinion by Judge Bennett;
Partial Concurrence and Partial Dissent by Judge Wardlaw
SUMMARY **
Copyright
The panel affirmed in part, reversed in part, and vacated
a judgment in favor of the plaintiff and remanded for further
proceedings in a copyright infringement action.
The district court held, on summary judgment, that
plaintiff, a fabric supplier, owned a valid copyright in a floral
print textile design and that the design was entitled to broad
copyright protection. A jury returned a verdict for plaintiff,
finding that three defendants willfully infringed the design
and a fourth innocently infringed it. Plaintiff elected to
claim statutory damages in lieu of actual damages, and the
district court assessed five statutory damages awards.
Affirming in part, the panel concluded that plaintiff
owned a valid copyright. The panel held that regardless of
the design’s similarity to other designs, the design was
*
The Honorable William K. Sessions III, United States District
Judge for the District of Vermont, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
DESIRE V. MANNA TEXTILES 3
original because it was independently created. Further, the
design possessed the necessary “modicum of creativity” to
be entitled to a valid copyright. The panel also held that the
district court correctly extended broad copyright protection
to the design as a matter of law because the flowers and the
arrangement of those flowers was stylized, the design was
an original creation, and there is a wide range of expression
for selecting, coordinating, and arranging floral elements in
stylized fabric designs.
Reversing in part, the panel held that the district court
erred in permitting multiple awards of statutory damages.
The panel held that the district court correctly apportioned
joint and several liability among all defendants on the
grounds that (1) where an upstream defendant causes a
downstream defendant’s infringement, the upstream
defendant is a joint tortfeasor in, and therefore jointly and
severally liable for, the plaintiff’s harm caused by the
downstream defendant’s conduct; and (2) where a
downstream infringer’s conduct is not the legal cause of the
upstream defendant’s infringement, the downstream
infringer will not be responsible, jointly and severally, for
the upstream defendant’s wrongdoing. Nonetheless, the
Copyright Act permitted only one award of statutory
damages under 17 U.S.C. § 504(c)(1) because defendants
infringed only one work. The panel held that the Act did not
authorize the district court to issue multiple statutory
damages awards where one infringer was jointly and
severally liable with all other infringers, but the other
infringers were not completely jointly and severally liable
with one another. The panel vacated the district court’s
judgment awarding plaintiff multiple awards of statutory
damages and remanded for further proceedings.
4 DESIRE V. MANNA TEXTILES
Concurring in part and dissenting in part, Judge Wardlaw
dissented from the majority’s conclusion that plaintiff was
entitled to only one award of statutory damages against the
five defendants whom the jury concluded separately
infringed varying exclusive rights in copyright. Judge
Wardlaw wrote that it was unnecessary for the majority to
reach the question because none of the five separate,
independently liable, copyright infringers was actually
found jointly and severally liable with one another. Further,
the majority’s rule was contrary to controlling Ninth Circuit
precedent on statutory damages in copyright, was an atextual
reading of the Copyright Act, and created perverse
incentives for copyright litigation.
COUNSEL
Aaron L. Renfro (argued), Samuel G. Brooks, Melinda
Evans, and Scott P. Shaw, Call & Jensen APC, Newport
Beach, California, for Defendants-Appellants.
Stephen M. Doniger (argued) and Frank Gregory Casella,
Doniger Burroughs, Venice, California, for Plaintiff-
Appellee.
DESIRE V. MANNA TEXTILES 5
OPINION
BENNETT, Circuit Judge:
Desire, LLC (“Desire”) sued Manna Textiles, Inc.
(“Manna”), A.B.N., Inc. (“ABN”), Top Fashion of N.Y., Inc.
(“Top Fashion”), Pride & Joys, Inc. (“Pride & Joys”), and
618 Main Clothing Corp. (“618 Main”), as well as others
who are no longer parties, for copyright infringement. The
district court held, on summary judgment, that Desire owned
a valid copyright in the fabric design that was the subject of
the action (the “Subject Design”), and that the Subject
Design was entitled to broad copyright protection. The jury
returned a verdict for Desire, finding that Manna, ABN, and
Top Fashion willfully infringed the Subject Design, and that
Pride & Joys and 618 Main innocently infringed the Subject
Design. Desire elected to claim statutory damages in lieu of
actual damages, and the district court, based on a pretrial
ruling on the question, assessed five statutory damages
awards totaling $480,000 (with that entire amount assessed
jointly and severally against Manna).
On appeal, Manna, ABN, and Top Fashion challenge the
district court’s orders on summary judgment as well as its
holding that Desire is entitled to receive multiple awards of
statutory damages. Although we hold that the district court
did not err in granting summary judgment for Desire on the
validity of its copyright and the scope of the Subject
Design’s copyright protection, we disagree with the district
court’s holding that Desire is entitled to multiple statutory
damages awards. We therefore affirm in part, reverse in part,
vacate the judgment awarding Desire multiple awards of
statutory damages, and remand to the district court for
further proceedings.
6 DESIRE V. MANNA TEXTILES
I. FACTUAL BACKGROUND AND PROCEEDINGS
BELOW
Desire is a Los Angeles-based fabric supplier. Desire
purchased the Subject Design, which is a two-dimensional
floral print textile design identified as “CC3460,” and all
rights to the Subject Design from Cake Studios, Inc.
(“Cake”) for $475. Desire registered the Subject Design with
the United States Copyright Office on June 26, 2015.
A Cake designer “created [the Subject Design] using
their own imagery” in Adobe Photoshop. “CC3460 is an
original pattern created in Adobe Photoshop using an
original flower image created by [a Cake] designer which
was then imported into Photoshop so that the Photoshop
editing tools could be used to adjust, stylize and arrange the
floral elements into the original artwork that became
CC3460. There is no pre-existing artwork from Photoshop
in design CC3460.”
On October 15, 2015, Top Fashion, a women’s clothing
manufacturer, purchased four yards of fabric bearing the
Subject Design from Desire. Top Fashion used this fabric to
secure a garment order from Ashley Stewart, Inc. (“Ashley
Stewart”), a women’s clothing retailer. However, Top
Fashion and Desire had a dispute over the fabric price. Top
Fashion then showed the Subject Design to Manna, a fabric
supplier. Manna gave the Subject Design to its independent
designer, Matty Mancuso, who in turn sent the design to
Longwell Textile (“Longwell”) in China with instructions to
modify it. Upon receiving the modified design from
Longwell, Mancuso replied, “After looking at this—don’t
know if you change [sic] it enough?” A Longwell
representative responded: “I changed 30–40% on original,
pls kindly approve . . . .” Manna registered the design (the
DESIRE V. MANNA TEXTILES 7
“Accused Design”) with the United States Copyright Office
on December 1, 2015.
Between October 2015 and May 2016, Manna sold
fabric bearing the Accused Design to ABN, Top Fashion,
and Pride & Joys (the “Manufacturer Defendants”), all
women’s clothing manufacturers. These manufacturers
created garments from that fabric and sold them to women’s
clothing retailers 618 Main, Burlington Coat Factory Direct
Corp. (“Burlington”), and Ashley Stewart (the “Retail
Defendants”).
Thus, as alleged, Manna infringed Desire’s copyright by
selling fabric bearing the Accused Design to the
Manufacturer Defendants. The Manufacturer Defendants
then each allegedly committed a separate act of infringement
in their sales to the individual Retail Defendants, who in turn
allegedly committed acts of infringement in their sales to
consumers. However, Desire does not allege that the
Manufacturer Defendants infringed in concert, nor that the
Retail Defendants acted in concert to infringe Desire’s
copyright.
8 DESIRE V. MANNA TEXTILES
Below is a chart showing the three “chains” of
infringement that Desire alleged here.
In June 2016, Desire sued Manna, ABN, Top Fashion,
Burlington, and Ashley Stewart, and later added Pride &
Joys and 618 Main, alleging that all had willfully infringed
Desire’s copyright by manufacturing and/or selling fabric
and garments bearing the Accused Design.
All parties moved for summary judgment. The district
court partly granted Desire’s motion and denied defendants’
motion. The district court concluded that there were no
triable issues of fact as to (1) Desire’s ownership of the
Subject Design, rejecting defendants’ arguments that the
design was not original, or (2) whether Manna, ABN, and
Top Fashion had access to the Subject Design. The district
court also concluded that the Subject Design was entitled to
broad copyright protection. The court identified triable
issues of fact as to (1) whether the Accused Design was
substantially similar to the Subject Design; and (2) whether
defendants willfully infringed the Subject Design. The court
also held that if Desire prevailed, it would be potentially
entitled to a maximum of seven awards of statutory damages
with joint and several liability imposed as follows:
DESIRE V. MANNA TEXTILES 9
(1) Against Manna individually, for copying the Subject
Design and distributing fabric bearing the Accused
Design to the Manufacturer Defendants.
(2) Against Manna and Top Fashion jointly and
severally, for Top Fashion’s sale of infringing
garments to Ashley Stewart.
(3) Against Manna, Top Fashion, and Ashley Stewart,
jointly and severally, for Ashley Stewart’s display
and sale of infringing garments to consumers.
(4) Against Manna and ABN, jointly and severally, for
ABN’s sale of infringing garments to Burlington.
(5) Against Manna, ABN, and Burlington, jointly and
severally, for Burlington’s display and sale of
infringing garments to consumers.
(6) Against Manna and Pride & Joys, jointly and
severally, for Pride & Joys’s sale of infringing
garments to 618 Main.
(7) Against Manna, Pride & Joys, and 618 Main, jointly
and severally, for 618 Main’s display and sale of
infringing garments to consumers.
The jury returned a verdict in favor of Desire, finding
that Manna, ABN, and Top Fashion willfully infringed the
Subject Design, and that Pride & Joys and 618 Main
innocently infringed the Subject Design. 1 The jury awarded
statutory damages to Desire: $150,000 against Manna,
$150,000 against ABN, $150,000 against Top Fashion,
1
Burlington and Ashley Stewart settled before trial.
10 DESIRE V. MANNA TEXTILES
$20,000 against Pride & Joys, and $10,000 against
618 Main. Although the jury’s verdict form did not specify
joint and several liability for any of its damages awards, the
judgment read alongside the district court’s pretrial order on
the parties’ potential liability, establishes the parties’ joint
and several liability for each award: $150,000 against Manna
alone; $150,000 against ABN (jointly and severally with
Manna); $150,000 against Top Fashion (jointly and
severally with Manna); $20,000 against Pride & Joys (jointly
and severally with Manna); and $10,000 against 618 Main
(jointly and severally with Pride & Joys and Manna). The
parties do not dispute this.
Manna, ABN, Top Fashion, Pride & Joys, and 618 Main
(“Appellants”) timely appealed. 2
II. DISCUSSION
A. Standard of Review
“We review the district court’s grant of summary
judgment de novo.” Goodman v. Staples The Office
Superstore, LLC, 644 F.3d 817, 822 (9th Cir. 2011). We
review for abuse of discretion the district court’s rulings on
2
The record reflects that 618 Main and Pride & Joys have satisfied
the judgments entered against them. Payment of a judgment does not
foreclose an appeal. Milicevic v. Fletcher Jones Imps., Ltd., 402 F.3d
912, 915 (9th Cir. 2005). An exception to that rule exists where “there is
some contemporaneous agreement not to appeal, implicit in a
compromise of the claim after judgment.” Jones v. McDaniel, 717 F.3d
1062, 1069 (9th Cir. 2013) (quoting Milicevic, 402 F.3d at 915). No party
states that there was a contemporaneous agreement not to appeal when
the parties paid the judgments against them. 618 Main and Pride & Joys
joined the notice of appeal filed in the district court, they have not been
dismissed from the appeal, and we consider them parties and subject to
our jurisdiction.
DESIRE V. MANNA TEXTILES 11
motions in limine. Branch Banking & Tr. Co. v. D.M.S.I.,
LLC, 871 F.3d 751, 759 (9th Cir. 2017). We review
questions of statutory interpretation de novo. United States
v. Youssef, 547 F.3d 1090, 1093 (9th Cir. 2008) (per curiam).
B. The District Court Correctly Held that Desire
Owned a Valid Copyright.
Desire must prove its ownership of a valid copyright to
establish copyright infringement. Feist Publ’ns, Inc. v. Rural
Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). “To qualify
for copyright protection, a work must be original to the
author.” Id. at 345. “Original, as the term is used in
copyright, means only that the work was independently
created by the author (as opposed to copied from other
works), and that it possesses at least some minimal degree of
creativity.” Id.; see 1 M. Nimmer & D. Nimmer, Copyright
(“Nimmer”) §§ 2.01[A], [B] (2020). The parties do not
dispute that Desire’s copyright registration for the Subject
Design “constitute[s] prima facie evidence of the validity of
the copyright and of the facts stated in the certificate.”
17 U.S.C. § 410(c). To rebut the presumption of validity,
Appellants “must simply offer some evidence or proof to
dispute or deny [Desire]’s prima facie case . . . .” United
Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257
(9th Cir. 2011) (citations omitted).
Appellants’ challenge is based on Deborah Young’s
expert report, which concluded that “[t]he flower
motif/arrangement of Desire’s design is similar to numerous
floral motifs found in many prior art materials in the public
domain.” But Appellants misapprehend the appropriate
standard. The “similarity” of one design to another has no
bearing on whether Desire “independently created” the
subject design. Feist, 499 U.S. at 345.
12 DESIRE V. MANNA TEXTILES
Desire presented undisputed evidence that a Cake
designer “created [the Subject Design] using their own
imagery” in Adobe Photoshop, and used “no pre-existing
artwork from Photoshop.” That satisfies the test. See id.
(“Originality does not signify novelty; a work may be
original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of
copying.”); see also Nimmer § 2.01[A][2].
Appellants have also failed to introduce evidence that the
Subject Design lacked the necessary “modicum of
creativity” to be entitled to a valid copyright. Feist, 499 U.S.
at 346; see id. at 345 (“[T]he requisite level of creativity is
extremely low; even a slight amount will suffice. The vast
majority of works make the grade quite easily, as they
possess some creative spark, ‘no matter how crude, humble
or obvious’ it might be.” (quoting Nimmer § 1.08[C][1])).
Thus, the district court correctly held that Desire owned
a valid copyright in the Subject Design.
C. The District Court Correctly Extended Broad
Copyright Protection to the Subject Design.
The district court held that the Subject Design was
entitled to broad copyright protection as a matter of law
because the flowers and the arrangement of those flowers are
“stylized and not lifelike,” the Subject Design was an
original creation, and “there is ‘a wide range of expression’
for selecting, coordinating, and arranging floral elements in
stylized fabric designs.” We agree.
To establish copyright infringement, Desire must show
that Appellants copied the “constituent elements of the
[Subject Design] that are original,” Feist, 499 U.S. at 361,
which requires a showing that (1) Appellants had access to
DESIRE V. MANNA TEXTILES 13
the Subject Design, which is undisputed, and (2) “the two
works are substantially similar,” L.A. Printex Indus., Inc. v.
Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012),
abrogated on other grounds as recognized by Unicolors, Inc.
v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194, 1198 (9th
Cir. 2020). Before analyzing substantial similarity, we
determine whether a copyright is entitled to “thin” or
“broad” protection. Mattel, Inc. v. MGA Entm’t, Inc.,
616 F.3d 904, 913–14 (9th Cir. 2010). The scope of
protection depends on “the breadth of the possible
expression” of a work’s ideas. Id. at 913.
If there’s a wide range of expression . . . ,
then copyright protection is “broad” and a
work will infringe if it’s “substantially
similar” to the copyrighted work. If there’s
only a narrow range of expression . . . , then
copyright protection is “thin” and a work
must be “virtually identical” to infringe.
Id. at 913–14 (citations omitted); see also Satava v. Lowry,
323 F.3d 805, 812 (9th Cir. 2003) (concluding that a glass-
in-glass jellyfish sculpture was entitled to thin protection due
to the narrow range of expression).
In L.A. Printex, we held that the stylized floral pattern at
issue—“a repeating pattern of bouquets of flowers and three-
leaf branches”—was entitled to broad copyright protection
“[b]ecause there is ‘a wide range of expression’ for selecting,
coordinating, and arranging floral elements in stylized fabric
designs . . . .” 676 F.3d at 850 (quoting Mattel, 616 F.3d
at 913). “‘[T]here are gazillions of ways’ to combine petals,
buds, stems, leaves, and colors in floral designs on fabric, in
contrast to the limited number of ways to, for example, ‘paint
a red bouncy ball on black canvas’ or make a lifelike glass-
14 DESIRE V. MANNA TEXTILES
in-glass jellyfish sculpture.” Id. at 850–51 (quoting Mattel,
616 F.3d at 913–14).
Under L.A. Printex, the Subject Design is entitled to
broad copyright protection. Like the floral design at issue in
L.A. Printex, the Subject Design is a stylized floral design.
The flowers are “stylized and not lifelike,” and the Subject
Design “depicts not flowers as they appear in nature but an
artistic combination of floral elements that is sufficiently
original to merit copyright protection.” Id. at 850 n.4
(contrasting the stylized floral pattern at issue to the jellyfish
sculptures in Satava). The Subject Design’s floral elements
are subject to a wide range of expression. And as we have
already held, Appellants failed to create a genuine issue of
material fact on the Subject Design’s originality. See supra
Part II.B. Thus, Desire’s “original selection, coordination,
and arrangement” of floral elements in the Subject Design is
entitled to broad copyright protection as a matter of law. See
L.A. Printex, 676 F.3d at 850.
Appellants argue that the scope of the Subject Design’s
copyright protection was a question for the jury, but we have
squarely and repeatedly held that the district court must
determine the scope of a work’s copyright protection in the
first instance. See Mattel, 616 F.3d at 915 (determining the
scope of copyright protection for a doll “sculpt” as a legal
matter); Apple Comput., Inc. v. Microsoft Corp., 35 F.3d
1435, 1443 (9th Cir. 1994) (“[T]he court must define the
scope of the plaintiff’s copyright—that is, decide whether
the work is entitled to ‘broad’ or ‘thin’ protection.”).
Appellants also argue that elements of the Subject
Design that were “not original” should have been “filtered
out of the analysis” for purposes of the jury’s consideration
of whether the Accused Design infringed on Desire’s
copyright. But, again, Appellants failed to raise a genuine
DESIRE V. MANNA TEXTILES 15
issue of material fact on the question of the Subject Design’s
originality. Appellants assert that their expert would have
testified that the Subject Design was “essentially copied
from pre-existing works,” thus rendering the Subject Design
“unoriginal.” Not so. Young’s proffer merely stated that the
Subject Design is “similar to numerous floral motifs” found
in the “public domain.” That the Subject Design may not be
novel is immaterial to the question whether it is “original.”
Desire’s uncontested evidence established originality, and
the district court correctly afforded the Subject Design broad
copyright protection. 3
D. The District Court Erred in Permitting Multiple
Awards of Statutory Damages.
The district court concluded pretrial that Desire could
obtain a separate statutory damages award based on each
defendant’s infringements—seven possible awards (though
two defendants settled before trial reducing the number to
five). 4 The district court also concluded, based on the
summary judgment record, that “upstream infringers” could
be jointly and severally liable for the downstream infringers’
infringing conduct. 5 The five statutory damages awards
3
Because we conclude that Young’s proffered testimony did not
bear on the Subject Design’s originality, we also conclude that the
district court did not abuse its discretion in excluding those portions of
Young’s testimony comparing the Subject Design to other floral designs
in the public realm.
4
The settlement, in the district court’s view, eliminated award
numbers (3) and (5) listed above in Part I.
5
The dissent, incorrectly, believes this to be a “hypothetical finding”
because, it argues, “we review final judgments, not opinions or pre-trial
orders.” Dissent at p. 43 (citing Jennings v. Stephens, 574 U.S. 271, 277
(2015)). But the opinion in Jennings says nothing about pre-trial orders,
16 DESIRE V. MANNA TEXTILES
and we have repeatedly stated that “[a]n appeal from a final judgment
draws in question all earlier, non-final orders and rulings which
produced the judgment.” Litchfield v. Spielberg, 736 F.2d 1352, 1355
(9th Cir. 1984) (emphasis added). While the dissent posits that the
judgment is inconsistent with the order, it does not explain the supposed
inconsistency. Further, neither party on appeal treats this order as
hypothetical or seeks the solution proposed by the dissent. Both parties
addressed the question in their briefs and requested that this court
adjudicate the issue. Manna argued that the district court’s order
“conflates the tort principle of vicarious liability with the much broader
tort principle of joint and several liability” and asked the panel to reject
the district court’s conclusions. Desire in turn noted that if this court
agrees with its view (and that of the district court) that upstream
infringers should be liable for downstream infringements, it should
remand for the district court to enter judgment consistent with this ruling.
We decline to resolve the case on an issue raised by neither party. See
United States v. Sineneng-Smith, 140 S. Ct. 1575, 1579 (2020) (noting
that as a general rule parties “are responsible for advancing the facts and
argument entitling them to relief” (citation omitted)).
The district court’s conclusion that “seven statutory damages awards
are available with joint and several liability imposed consistent with this
Order” is unequivocal. Once the jury found defendants liable and
determined statutory damages, the awards were no longer “theoretical”
and judgment was entered, consistent with the court’s order finding
defendants jointly and severally liable. Nothing in the record indicates
that the district court modified this order prior to entering judgment. Cf.
City of L.A., Harbor Div. v. Santa Monica Baykeeper, 254 F.3d 882, 885
(9th Cir. 2001) (noting that district courts may “reconsider, rescind, or
modify an interlocutory order for cause” provided the “court has
jurisdiction over the case” (emphasis omitted) (citation omitted)).
Accordingly, we part ways with the dissent: the district court imposed
joint and several liability in its order, contingent on the jury’s finding of
damages, and this order was “draw[n] in question” on appeal by the final
judgment, see Litchfield, 736 F.2d at 1355.
DESIRE V. MANNA TEXTILES 17
against Manna, ABN, Top Fashion, 618 Main, and Pride &
Joys are at issue on appeal. 6
Appellants contend first that the district court adopted an
erroneous view of joint and several liability. Rather than
focusing, as the district court did, on whether individual
defendants contributed to one another’s tortious acts,
Appellants argue that joint and several liability attaches
when two or more defendants contribute to the harm the
plaintiff suffers, even if they do so independently. 7 Under
this approach, because all defendants contributed to Desire’s
injuries (that is, the “loss of compensation resulting from the
infringement”), all are jointly and severally liable with one
another according to Appellants. And because all defendants
are (thus) jointly and severally liable, the Copyright Act
permits only one award of statutory damages.
In the alternative, Appellants assert that, even if the
district court correctly formulated joint and several liability,
it was error to hold that the Copyright Act permits multiple
awards of statutory damages when joint and several liability
is not complete. We disagree with Appellants’ argument on
joint and several liability, but agree with their interpretation
of the Copyright Act.
6
Under the district court’s allocation, Manna could be liable for the
entire $480,000, Top Fashion for $150,000, ABN for $150,000, Pride &
Joys for $30,000, and 618 Main for $10,000 (though, of course, Desire
could not collect more than $480,000).
7
As discussed above, Pride & Joys and 618 Main, in the same
distribution chain, were jointly and severally liable with each other for
$10,000, though neither was, for example, jointly and severally liable
with Top Fashion, which was in a different distribution chain.
18 DESIRE V. MANNA TEXTILES
1. The district court correctly apportioned joint
and several liability among the defendants.
The district court stated, “where an upstream defendant
causes, whether directly or indirectly, a downstream
defendant’s infringement, the upstream defendant is a joint
tortfeasor in, and therefore jointly and severally liable for,
the plaintiff’s harm caused by the downstream defendant’s
conduct.” The district court also concluded that “where a
downstream infringer’s conduct is not the legal cause of the
upstream defendant’s infringement, the downstream
infringer will not be responsible, jointly and severally, for
the upstream defendant’s wrongdoing.” The district court’s
conclusions were correct.
“If the independent tortious conduct of two or more
persons is a legal cause of an indivisible injury,” joint and
several liability may apply. Restatement (Third) of Torts:
Apportionment Liab. § 17 (2000). “The requirement is only
that the independent tortious acts ‘concur’ to cause an injury
that is not divisible based on the causal contribution of the
tortfeasors.” Id. § A18 cmt. b. A divisible injury is one for
which “[d]amages can be divided by causation.” Id. § 26(b).
To determine whether an injury is divisible, the factfinder
must determine whether “the evidence provides a reasonable
basis” to determine “that any legally culpable conduct of a
party . . . was a legal cause of less than the entire damages
for which the plaintiff seeks recovery” and “the amount of
damages separately caused by that conduct.” Id. “When two
or more persons have joined in or contributed to a single
infringement of a single copyright, each is jointly and
severally liable; [and in such] circumstances, in a single
infringement action . . . .” Nimmer § 14.04[E][2][d][i]
(footnote omitted); see, e.g., Adobe Sys. Inc. v. Blue Source
Grp., Inc., 125 F. Supp. 3d 945, 973 (N.D. Cal. 2015).
DESIRE V. MANNA TEXTILES 19
Appellants argue that all defendants are jointly and
severally liable for all infringements in the action because all
the downstream infringers contributed to Desire’s injuries in
the form of the compensation Desire otherwise would have
recouped from the use of its copyrighted design. Thus,
Appellants contend that Desire suffered one indivisible
injury for all the infringements flowing from Manna’s source
infringement, and that each defendant is jointly and severally
liable for all infringements, regardless of whether an
infringement occurred in a defendant’s independent chain of
distribution. We disagree.
Appellants’ formulation of joint and several liability
rests on a flawed understanding of the injury that stems from
copyright infringement. In Appellants’ view, each separate
act of downstream infringement contributed to a single
indivisible injury: the loss of compensation that Desire
would have otherwise realized from the use of its
copyrighted design. But we have recognized that the
“rewards” that Congress intended to secure for the owner of
a copyright “need not be limited to monetary rewards.”
Worldwide Church of God v. Phila. Church of God, Inc.,
227 F.3d 1110, 1119 (9th Cir. 2000). Indeed, “[t]he
copyright law does not require a copyright owner to charge
a fee for the use of his works . . . . It is not the role of the
courts to tell copyright holders the best way for them to
exploit their copyrights . . . .” Sony Corp. of Am. v. Universal
City Studios, Inc., 464 U.S. 417, 446 n.28 (1984).
Thus, we think that a view of “harm” or “injury” cabined
only to Desire’s loss of compensation is inconsistent with the
Copyright Act. Rather, we think correct the district court’s
formulation of joint and several liability, which considers
which defendants were responsible for which acts of
infringement.
20 DESIRE V. MANNA TEXTILES
Desire’s damages were divisible. Each upstream
infringer was a “but for” cause of all downstream
infringements in its chain of distribution, because absent the
upstream infringer’s distribution, no downstream infringer
would have received any infringing item. Since the district
court could determine which group of defendants legally
caused each set of infringements, it divided the
infringements into seven sets: (1) Manna’s distribution to
Pride & Joys, ABN, and Top Fashion (only Manna liable);
(2) Top Fashion’s sale to Ashley Stewart (Manna and Top
Fashion jointly and severally liable); (3) Ashley Stewart’s
display and sale to consumers (Manna, Top Fashion, and
Ashley Stewart jointly and severally liable); (4) ABN’s sale
to Burlington (Manna and ABN jointly and severally liable);
(5) Burlington’s display and sales to consumers (Manna,
ABN, and Burlington jointly and severally liable); (6) Pride
& Joys’s sale to 618 Main (Manna and Pride & Joys jointly
and severally liable); and (7) 618 Main’s display and sales
to consumers (Manna, Pride & Joys, and 618 Main jointly
and severally liable).
Here, there was no evidence any downstream infringer
was the “but for” cause of any upstream infringement in the
other chains of distribution, or, in the case of the Retail
Defendants, the “but for” cause of Manna’s sale to any
Manufacturer Defendant. 8 The district court properly found
8
In a case like this, where one purchases infringing goods with
knowledge of the goods’ infringing character, a court could find the
purchaser was a legal cause of the infringing act of distribution and
contributorily liable for it. See Ellison v. Robertson, 357 F.3d 1072, 1076
(9th Cir. 2004) (“One who, with knowledge of the infringing activity,
induces . . . infringing conduct of another may be liable as a contributory
copyright infringer.” (alterations, internal quotation marks, and citation
omitted)).
DESIRE V. MANNA TEXTILES 21
on summary judgment that while some defendants could be
jointly and severally liable with some other defendants, not
all defendants could be jointly and severally liable with all
other defendants. 9
This conclusion does not end our inquiry. Though we
agree that the district court correctly determined joint and
several liability, we hold the district court erred in awarding
Desire multiple statutory damages awards totaling $480,000.
2. The Copyright Act permits only one award of
statutory damages here.
The Copyright Act permits a copyright owner to elect an
award of statutory damages in lieu of actual damages and
profits. 17 U.S.C. § 504(c)(1) (“Section 504(c)(1)”). Section
504(c)(1) permits an owner to recover “an award of statutory
damages for all infringements involved in the action, with
respect to any one work, for which any one infringer is liable
individually, or for which any two or more infringers are
liable jointly and severally.” Id. Section 504(c)(1) limits
statutory damages awards to $150,000 for willful
infringement and $30,000 for innocent infringement. Id.
§ 504(c)(1), (2). “The number of awards available under this
provision depends not on the number of separate
That said, it does not appear that Desire ever pursued a theory of
contributory infringement based on the purchase of articles bearing the
infringing design. And even if Desire had done so, it would not alter our
conclusion that joint and several liability is incomplete, as there is no
evidence that any purchaser contributed to acts of infringement in other
chains of distribution.
9
For example, 618 Main was not a “but for” cause of Manna’s
distribution to Top Fashion. Thus, 618 Main was not jointly and
severally liable with Top Fashion.
22 DESIRE V. MANNA TEXTILES
infringements, but rather on (1) the number of individual
‘works’ infringed and (2) the number of separate infringers.”
Friedman v. Live Nation Merch., Inc., 833 F.3d 1180, 1189–
90 (9th Cir. 2016). There is no dispute that Appellants
infringed one work, the Subject Design. The pertinent
question, then, is whether the Act authorized the district
court to issue multiple statutory damages awards where one
infringer is jointly and severally liable with all other
infringers, but the other infringers are not completely jointly
and severally liable with one another. The answer is no.
a. The text of Section 504(c)(1) limits
Desire to one award of statutory
damages.
As in all statutory interpretation, “our inquiry begins
with the statutory text, and ends there as well if the text is
unambiguous.” BedRoc Ltd., LLC v. United States, 541 U.S.
176, 183 (2004). “[W]hen the statutory language is
unambiguous, the plain meaning controls.” Afewerki v.
Anaya Law Grp., 868 F.3d 771, 778 (9th Cir. 2017) (internal
quotation marks and citation omitted). We conclude that the
plain meaning of Section 504(c)(1) precludes multiple
awards of statutory damages when, as here, there is only one
work infringed by a group of defendants that have partial
joint and several liability amongst themselves through a
prime tortfeasor that is jointly and severally liable with every
other defendant.
The Act clearly provides for an award of statutory
damages for all infringements of a single work “for which
any two or more infringers are liable jointly and severally.”
17 U.S.C. § 504(c)(1) (emphasis added). This is such a case.
Manna is jointly and severally liable with ABN, Top
Fashion, Pride & Joys, and 618 Main. See supra Part I. And
“an award” clearly means one award. Thus, as every district
DESIRE V. MANNA TEXTILES 23
court to consider this statute and this question has concluded
(besides the district court in this case), “[f]or any two or
more jointly and severally liable infringers, a plaintiff is
entitled to one statutory damage award per work.” Arista
Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d 313, 316
(S.D.N.Y. 2011); see also, e.g., Clever Factory, Inc. v.
Kingsbridge Int’l, Inc., No. 3:11-1187, 2014 WL 2711986,
at *2 (M.D. Tenn. June 16, 2014); Agence Fr. Presse v.
Morel, 934 F. Supp. 2d 584, 590 (S.D.N.Y. 2013);
McClatchey v. Associated Press, No. 3:05-cv-145, 2007 WL
1630261, at *4 (W.D. Pa. June 4, 2007); Bouchat v.
Champion Prods., Inc., 327 F. Supp. 2d 537, 553 (D. Md.
2003), aff’d on other grounds sub nom. Bouchat v. Bon-Ton
Dep’t Stores, Inc., 506 F.3d 315 (4th Cir. 2007).
Desire and the dissent argue, though, that all defendants
must be jointly and severally liable for all the infringements
for the statute to limit a plaintiff to a single statutory
damages award. But not only is that interpretation contrary
to the plain and unambiguous meaning of the statute, it
would also run afoul of the canon of statutory interpretation
that “courts should disfavor interpretations of statutes that
render language superfluous.” Conn. Nat’l Bank v. Germain,
503 U.S. 249, 253 (1992).
Nothing in the Act’s text requires complete joint and
several liability to limit the plaintiff to “an award.”
Requiring complete joint and several liability among all
defendants “would render the word ‘any’ [in ‘for which any
two or more infringers are liable jointly and severally’]
superfluous, or alternatively, would rewrite the statute to
impose a single award only where ‘all infringers are liable
jointly and severally.’” McClatchey, 2007 WL 1630261,
24 DESIRE V. MANNA TEXTILES
at *4 (first emphasis added). 10 Section 504(c)(1)’s use of the
word “any” means that if all infringers in the action were
jointly and severally liable with at least one common
infringer (here Manna) all defendants should be treated as
one unit. “The intent of this statute . . . appears to be to
constrain the award of statutory damages to a single award
10
The dissent’s statutory analysis runs counter to its own
interpretation of “any.” See dissent at p. 50–51. We agree with the dissent
(and the Supreme Court) that “the word ‘any’ has an expansive meaning,
that is, one or some indiscriminately of whatever kind.” Dissent at p. 50
(emphasis added) (quoting United States v. Gonzales, 520 U.S. 1, 5
(1997)). Thus, in Gonzales, the Supreme Court noted that the phrase
“any other term of imprisonment” encompassed all terms of
imprisonment, not only those in federal prison. Gonzales, 520 U.S. at 5.
Similarly, our interpretation of “any” to include a group of defendants
that have partial joint and several liability amongst themselves through a
prime tortfeasor that is jointly and severally liable with every other
defendant is the correct expansive meaning. It includes the most
expansive type of joint and several liability (partial), rather than limiting
the definition to only complete joint and several liability. Further, the
dissent is incorrect when it notes that “it matters which specific acts of
infringement each defendant is jointly and severally liable for,” dissent
at p. 51, because it reads out the word “all” that precedes “infringemts
involved.” The phrase “all infringements” signals to the court that it does
not matter how many or which specific infringements each defendant is
liable for in a single workthere will still be one award per work.
The error of this interpretation becomes clear when applied to
individually liable infringers, see Arista Records, 784 F. Supp. 2d at 316
(“Congress intended for the Copyright Act to treat jointly and severally
liable infringers the same way that the statute treats individually liable
infringers.”). Courts would now be similarly required to focus on which
specific infringements each individual infringer is liable for to determine
the number of awards. This would shift the focus away from individual
liability for “all infringements involved in the action, with respect to any
one work.” 17 U.S.C. § 504(c)(1). Plaintiffs could recover an award for
every specific act of infringement where there are multiple individually
liable defendants—instead of one statutory award for each individually
liable defendant “with respect to any one work.” Id. (emphasis added).
DESIRE V. MANNA TEXTILES 25
per work, rather than allowing a multiplication of damages
based on the number of infringements.” Agence Fr. Presse
v. Morel, 934 F. Supp. 2d 547, 580 (S.D.N.Y. 2013),
superseded in part by Agence Fr. Presse, 934 F. Supp. 2d
584.
Though our inquiry as to the meaning of the statute both
begins and ends with the text, we note that the statutory
damages award is an alternative to an actual damages award,
and the election is always at the option of the copyright
owner. Other statutory schemes might also be logical. But it
makes sense that Congress, rather than creating a statute that
awarded a windfall, instead created a statute that allowed
actual damages plus costs and attorneys’ fees or (if actual
damages are too small to afford a meaningful deterrent) a
statutory damages award of up to $150,000 plus costs and
attorneys’ fees. When the defendants have infringed more
than one work, a plaintiff may seek additional awards of
statutory damages. Likewise, additional groups of jointly
and severally liable defendants may be subject to separate
awards of statutory damages, but only if no defendant in a
group (as to which a separate award is sought) is jointly and
severally liable with a member of another group. 11
11
Here, for example, if Manna were not involved at all and Pride &
Joys, ABN, and Top Fashion had independently infringed, there could
be three awards, even though Pride & Joys, ABN, and Top Fashion were
each jointly and severally liable with others in their separate distribution
chains. See Agence Fr. Presse, 934 F. Supp. 2d at 579 (“[I]f a group
(‘two or more’) of infringers have engaged in any number of
infringements for which all are jointly and severally liable, the statute
again mandates a single statutory award of damages per work
infringed.”). This view treats groups of jointly and severally liable
defendants that are not jointly and severally liable with other groups
identically to individually liable infringers. See Arista Records, 784 F.
26 DESIRE V. MANNA TEXTILES
Desire posits that our decision in Columbia Pictures
Television v. Krypton Broadcasting of Birmingham, Inc.
(Columbia I), 106 F.3d 284 (9th Cir. 1997), rev’d on other
grounds sub nom. Feltner v. Columbia Pictures Television,
Inc., 523 U.S. 340 (1998), dictates that we hold that Section
504(c)(1) permits separate statutory damages awards in
situations like this. We disagree.
In Columbia I, we affirmed an $8.8 million judgment
comprised of 440 statutory damages awards and based on
440 separately infringed worksagainst a single individual.
See Columbia Pictures Television, Inc. v. Krypton Broad. of
Birmingham, Inc. (Columbia II), 259 F.3d 1186, 1190 (9th
Cir. 2001). 12 The district court initially determined that
defendant Feltner, the owner of a company that owned three
television stations, was vicariously liable for these television
stations’ displaying Columbia’s copyrighted television
episodes. 13 Columbia I, 106 F.3d at 288. Before the district
Supp. 2d at 316 (“[T]he Court is confident that Congress intended for the
Copyright Act to treat jointly and severally liable infringers the same
way that the statute treats individually liable infringers.” (emphasis
omitted)).
12
The Supreme Court reversed our decision in Columbia I because
it found the Seventh Amendment guaranteed Feltner a jury trial on the
total amount of statutory damages. Columbia II, 259 F.3d at 1190–91.
On remand the jury awarded Columbia $31.68 million, and Feltner again
appealed to this court. Id. at 1191.
13
Plaintiff Columbia separately licensed the three stations to
broadcast episodes of television shows as to which it owned the
copyrights. Columbia I, 106 F.3d at 288. When the stations became
delinquent in paying royalties, Columbia terminated (or attempted to
terminate) the licenses, but the stations continued broadcasting the
television shows and Columbia sued. Id. “During the course of the
litigation, Columbia dismissed all claims against all defendants with the
DESIRE V. MANNA TEXTILES 27
court (and on appeal), Feltner argued unsuccessfully that the
number of awards should be reduced because the stations
were all owned under a common owner. Id. at 294 n.7.
Specifically, he argued that when calculating damages,
multiple television stations displaying identical television
episodes should count as a single work per episode. The
district court disagreed, concluding that separate displays of
identical television episodes 14 by different stations qualified
as separate works. Columbia II, 259 F.3d at 1190
(explaining that “the district court determined that Feltner
infringed 440 separate ‘works’”). We “generally affirmed
the district court’s rulings” in Columbia I, and when the case
returned to us on remand from the Supreme Court, we
remanded back to the district court “on the sole question of
the amount of money to award Columbia.” Id. at 1190–91.
After a jury trial on the amount of damages, the jury awarded
Columbia $31.68 million, and we again affirmed. 15 Id. at
1189. Ultimately, Feltner, the owner and only defendant on
trial, was responsible for 440 separate awards based on 440
works. We emphasized this in Columbia II, noting that “the
Copyright Act . . . permits an award of statutory damages
exception of the copyright claims against Feltner.” Columbia II, 259 F.3d
at 1190. The district court then found Feltner “vicariously and
contributorily liable for the copyright infringement committed by the
defendant stations” for the separate copyright infringements. Id. The
district court held Feltner was liable for 664 separate infringements of
Columbia’s copyrighted works.
14
There were about 149 unique episodes of one television show that
were shown by two stations. It does not appear from the record that the
infringing episodes shown by the third television station overlapped with
the other two stations.
15
The jury awarded approximately “$72,000 for each of the
440 works infringed, which [was] within the statutory damages range for
willful infringement.” Columbia II, 259 F.3d at 1191.
28 DESIRE V. MANNA TEXTILES
‘for all infringements involved in the action, with respect to
any one work.’” Id. at 1190 (quoting 17 U.S.C. § 504(a)(1)).
There, Feltner once again asserted that because two of the
stations were joint tortfeasors, an episode should count as
only “one work” when each station separately aired the same
episode. Id. at 1194. We rejected this view because “his
connection with each of the stations . . . simply ma[de]
Feltner a joint tortfeasor with each stationit [did] not make
each station a joint tortfeasor with respect to the other.” Id.
(citing Columbia I, 106 F.3d at 294). Thus, what we rejected
in Columbia II was an argument that separate acts of
infringement of the same television episode by different
televisions stations result in only one infringed work simply
because there was a common owner of the stations.
But no one here has argued that the defendants’ separate
infringing acts of the pattern design resulted in multiple
infringed works. As the dissent notes, “it was undisputed that
there was only one ‘work’ at issue.” Dissent, at p. 41. Nor is
Manna an owner of the downstream infringers whose
liability stemmed only from its corporate relationship with
those infringers. Rather, unlike Feltner, Manna is a prime
tortfeasor in all three distribution chains. The underlying
question herehow does the Copyright Act treat multiple
acts of separate infringements of one workwas never
directly considered in Columbia I or Columbia II because the
district court ruled there were 440 statutory awards from
DESIRE V. MANNA TEXTILES 29
664 separate infringements of 440 separate works. 16 These
cases thus shed little light on the issue here. 17
We also disagree with Desire that Friedman, and in
particular its discussion of a hypothetical posed in Nimmer
(the “Nimmer Hypothetical”), the leading treatise on
copyright law, supports multiple statutory damages awards
here. In Friedman, we expanded on Columbia I, but stopped
16
The district court’s ruling of 440 infringed works affirmed in
Columbia I and II also impliedly supports our read of the statute. While
Feltner was initially found liable for 664 separate acts of infringement,
the district court then held after a bench trial that Columbia was only
entitled to 440 statutory awards, or one award per work infringed. See
Columbia I, 106 F.3d at 296 (finding “the district court’s award of
$20,000 per work infringed [was] well within the statutory limits”
(emphasis added)). On remand, the jury also only considered Feltner’s
liability from 440 works and awarded a total amount that was “equal to
a per work infringed award that [was] well within the statutory range for
willful infringement.” Columbia II, 259 F.3d at 1195. Here, however,
Manna is liable for $480,000, well outside the $150,000 “statutory range
for willful infringement” per work infringed. Id. This further cuts against
the dissent’s view that multiple awards are available.
17
Desire and the dissent, see dissent at p. 45, both argue that we are
constrained by footnote 7 in Columbia I, in which we wrote that
“[b]ecause the stations were not jointly and severally liable with each
other, Feltner’s liability vis-a-vis the stations merely renders him jointly
and severally liable for each station’s infringements—it does not convert
the stations’ separate infringements into one.” 106 F.3d at 294 n.7. But
that footnote “neither directly addressed the statutory text nor engaged
in detailed analysis of the issue.” Agence Fr. Presse, 934 F. Supp. 2d
at 582. Cf. Miranda B. v. Kitzhaber, 328 F.3d 1181, 1186 (9th Cir. 2003)
(per curiam) (“[W]here a panel confronts an issue germane to the
eventual resolution of the case, and resolves it after reasoned
consideration in a published opinion, that ruling becomes the law of the
circuit . . . .” (emphasis added) (citation omitted)). And the district court
here did not find that multiple infringements of the Subject Design
translated into separate infringements of multiple works.
30 DESIRE V. MANNA TEXTILES
a step short of addressing the issue presented in this appeal.
We determined that one statutory damages award was
appropriate when the defendant had sold infringing products
to 104 retailers the plaintiff had not joined as defendants. We
reasoned that the “holding in Columbia [I] was explicitly
premised on the fact that each of the downstream infringers
for whom the plaintiff received a separate damages award
was a defendant in the case.” 833 F.3d at 1191. Thus,
Section 504(c)(1)’s provision of separate
statutory damage awards for the infringement
of each work “for which any two or more
infringers are liable jointly and severally”
applies only to parties who have been
determined jointly and severally liable in the
course of the liability determinations in the
case for the infringements adjudicated in the
action. A plaintiff seeking separate damages
awards on the basis of downstream
infringement must join the alleged
downstream infringers in the action and
prove their liability for infringement.
Id. at 1192. In Friedman, we avoided answering the question
of how Section 504(c)(1) applies when the plaintiff joins
both the common primary source infringer and the
downstream infringers as defendants, when the downstream
infringers are not jointly and severally liable with each
other. 18 Here, we conclude that in those circumstances, only
one award of statutory damages is permissible.
18
Desire incorrectly interprets Friedman to stand for the proposition
“that if a downstream infringer is added to an action and its infringement
is proven, then a separate award of statutory damages is appropriate.”
DESIRE V. MANNA TEXTILES 31
Nor do we find persuasive Desire’s reliance on the
Nimmer Hypothetical, in which D distributed the plaintiff’s
copyrighted motion picture to A, B, and C, who in turn
publicly performed that motion picture. Nimmer
§ 14.04[E][2][d]. As stated in Nimmer, “[a]lthough A, B, and
C are not jointly or severally liable each with the other,
D will be jointly and severally liable with each of the
others.” Id. § 14.04[E][2][d][i]. In those circumstances,
according to Nimmer, “three sets of statutory damages may
be awarded, as to each of which D will be jointly liable for
at least the minimum of $750.” Id.
Although we acknowledge that the Nimmer
Hypothetical supports Desire’s position, we decline to adopt
its conclusions. Nimmer offers no basis, except for a citation
to Columbia II, for the proposition that multiple statutory
damages awards are appropriate. But we have already
explained that Columbia II does not determine the outcome
of this case. And Nimmer never discusses how multiple
statutory damages awards in the circumstances here adhere
to the text of the statute. As several district courts have noted,
“subsequent decisions have rejected outright . . . the Nimmer
hypothetical, finding [it] inapplicable to situations involving
large numbers of infringements.” Arista Records, 784 F.
Supp. 2d at 318; see also Arista Records, 784 F. Supp. 2d
at 320 (discussing the Nimmer Hypothetical and concluding
that “allowing Plaintiffs to recover multiple awards per work
based on the number of direct infringers is untenable”);
Bouchat, 327 F. Supp. 2d at 553 (“While it may well be
possible to distinguish the Nimmer example from the
situation present[,] . . . [i]t suffices to state that the Court
Friedman merely held that joinder of an infringer was a prerequisite to
seeking a separate statutory damages award—not that it was sufficient
on its own.
32 DESIRE V. MANNA TEXTILES
would not follow [Nimmer’s] conclusion to reward Bouchat
with more than 350 separate statutory damage awards.”). We
agree with those district court decisions.
b. Multiple awards of statutory damages
here would produce an absurd result
not intended by Congress.
The result we reach here is the only one consistent with
the plain text of the statute, and we need go no further. That
being said, the interpretation of Section 504(c)(1) that Desire
and the dissent urge, and the district court adopted, produces
an absurd result. See Rowland v. Cal. Men’s Colony,
506 U.S. 194, 200 (1993) (invoking “the common mandate
of statutory construction to avoid absurd results”).
Specifically, requiring complete joint and several liability
among all defendants in order to limit the plaintiff to one
award for one work would lead to disparate treatment of
infringers depending on the relationship between
downstream infringers. Cf. Friedman, 833 F.3d at 1191
(rejecting the mass-marketing exception in part because
“such an exception would mean reading the statute in two
different ways depending on how many down-the-line
violations there were”).
If Manna, ABN, Top Fashion, and Pride & Joys had
acted in concert to sell infringing materials to downstream
retailers (and thus were each jointly and severally liable),
each would be shielded from multiple statutory damages
awards by operation of the statute’s plain language. 19 Yet
because Manna acted separately with each downstream
19
See Bon-Ton Dep’t Stores, 506 F.3d at 329 (“Because NFLP and
the licensee were at fault together for the licensee’s violation, they are
liable jointly and severally for any damages the violation caused.”).
DESIRE V. MANNA TEXTILES 33
infringer, Manna and each of the next-level downstream
infringers would be subject to multiple statutory damages
awards, under the dissent’s interpretation of the statute. It is
illogical that an infringer should face greater liability for
participating in an infringement activity in a less culpable
manner. 20
The district court’s interpretation would also lead to
potentially astronomical statutory damages awards contrary
to the purpose of Section 504(c)(1). 21 Friedman recognized
that Section 504(c)(1) should not be read to “lead[] to
extremely unlikely results, with direct infringers becoming
liable for astronomical sums in cases with large numbers of
downstream infringers unrelated to each other.” 833 F.3d
at 1192; see also id. (noting that “[t]his risk has become
particularly acute in the internet era, where rapid peer-to-
peer file sharing has enabled mass piracy of books, films,
music, and other copyrighted materials”). Adopting the
district court’s interpretation “could lead to awards of
statutory damages that are massively disproportionate when
compared to the actual harm caused by the infringing
defendants.” Agence Fr. Presse, 934 F. Supp. 2d at 580; see
20
Under the rule proposed by Desire, if all defendants here
conspired, Manna would be liable only once, but because downstream
infringers did not act together, Manna is to face multiple awards of
statutory damages. Logic would suggest instead that the broader the
conspiracy, the more extensive the co-conspirator liability, not the
reverse. But again, regardless of the comparative logic of the two
approaches, the statute Congress wrote dictates the result here.
21
The dissent misses the point here, see dissent at p. 48–49. This is
not a “mass-marketing” concern rejected by Friedman, dissent at p. 48–
49, nor have we substituted our “own policy preferences for those of
Congress,” dissent at p. 55–56. We are motivated by the very same
concern that drove our court’s holding in Friedman. See 833 F.3d
at 1192.
34 DESIRE V. MANNA TEXTILES
also Arista Records, 784 F. Supp. 2d at 317 (“The absurdity
of this result is one of the factors that has motivated other
courts to reject [the district court’s] damages theory.”);
McClatchey, 2007 WL 1630261 at *4 (finding persuasive
the Bouchat court’s conclusion that the result would be
“absurd” (quoting Bouchat, 327 F. Supp. 2d at 553)).
As awarded by the district court, Manna is jointly and
severally liable for awards totaling $480,000. Manna
asserted in its trial briefing that its profits from infringing
sales did not exceed $5,000 (though the district court noted
that the exact amounts of Manna’s profits were not in
evidence). Assuming for argument’s sake that Manna’s
representation is accurate, the district court’s order makes
Manna liable for nearly one hundred times its profits. And
while we have here “only” three chains of infringement
resulting in five or seven awards of statutory damages, the
problem of disproportionate awards would increase
exponentially in a case like Friedman, where a plaintiff
could recover thousands (or more) in statutory damages
awards where infringing content is widely distributed over
the internet. See Friedman, 833 F.3d at 1192 (“As the district
court rightly recognized, the broad reading of Columbia [I]
Friedman urges leads to extremely unlikely results, with
direct infringers becoming liable for astronomical sums in
cases with large numbers of downstream infringers unrelated
to each other.”).
c. Permitting multiple awards of
statutory damages here would
frustrate the purposes of the Copyright
Act.
Finally, we believe the district court’s approach to be
contrary to the purposes of the Act. “Statutory damages are
available in order to effectuate two purposes underlying the
DESIRE V. MANNA TEXTILES 35
remedial provisions of the Copyright Act: to provide
adequate compensation to the copyright holder and to deter
infringement.” Frank Music Corp. v. Metro-Goldwyn-
Mayer Inc., 886 F.2d 1545, 1554 (9th Cir. 1989). “Statutory
damages are intended as a substitute for profits or actual
damage,” Frank Music Corp. v. Metro-Goldwyn-Mayer,
Inc., 772 F.2d 505, 520 (9th Cir. 1985), and should not
provide copyright owners a windfall. Congress specifically
limited the amount of statutory damages available per award
and limited a plaintiff to a single award no matter how many
infringements an individual defendant or group of jointly
and severally liable defendants committed.
We are mindful of the fact that under the approach we
adopt today, a plaintiff might achieve the result Desire seeks
by suing separate infringers in separate actions, arguably
frustrating the purposes of the Act as well. We still think our
approach is preferable to the alternative, for several reasons.
First, we think that even if this is a risk, it is outweighed
by the vastly disproportionate damages awards that would
flow from a contrary interpretation of Section 504(c)(1).
Second, the risk is not unique to our interpretation. Even
under the approach advocated by Desire and adopted by the
district court, only one statutory damages award is available
for each group of completely jointly and severally liable
defendants. A plaintiff could still sue each defendant
separately to increase its potential recovery, regardless that
the separately sued defendants participated in the same
course of infringing conduct. See Friedman, 833 F.3d
at 1191 (“Any downstream infringements cannot be
‘involved in the action’ unless the alleged infringers
responsible for those infringements were joined as
defendants in the case, and the particular alleged
infringements involving them adjudicated.”). Thus, the
36 DESIRE V. MANNA TEXTILES
presence of infringers not joined in the case will not defeat a
plaintiff’s ability to increase his recovery by engaging in
separate lawsuits.
Third, if an enterprising plaintiff tried to sue jointly and
severally liable defendants in different actions to evade the
single-statutory-damages-award limit, those defendants
could argue to the jury that their liability for statutory
damages should be materially lessened. See Bryant v. Media
Right Prods., Inc., 603 F.3d 135, 144 (2d Cir. 2010)
(observing that a statutory damages award may account for
the infringer’s “expenses saved, and profits earned,” “the
revenue lost by the copyright holder,” and “the deterrent
effect on the infringer and third parties,” among other
factors); Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d
983, 992 (9th Cir. 2009) (“If statutory damages are elected,
the jury has wide discretion in determining the amount of
statutory damages to be awarded, constrained only by the
specified maxima and minima. The jury is guided by what is
just in the particular case, considering the nature of the
copyright, the circumstances of the infringement and the like
. . . .” (internal quotation marks, citations, and alterations
omitted)).
And fourth, a court could consolidate such multiple
actions (if brought in the same district) in a single action
under Federal Rule of Civil Procedure 42(a). 22 And if the
claims are brought in different districts, a defendant could
seek transfer under 28 U.S.C. § 1404(a), which permits a
22
The dissent, citing no case law or treatise, asserts that this would
be a violation of the Rules Enabling Act and wonders how the district
courts will “work around [our] mess.” Dissent at p. 55. But the out-of-
circuit district courts that have considered the issue (remember no other
circuit has adopted the dissent’s statutory interpretation of Section 504)
have managed these past thirteen years.
DESIRE V. MANNA TEXTILES 37
district court to transfer venue in a civil action “[f]or the
convenience of parties and witnesses, in the interest of
justice.” A plaintiff attempting to avoid consolidation or
transfer by suing individual defendants seriatim would likely
run up against the three-year statute of limitations for
copyright infringement claims. See 17 U.S.C. § 507(b). 23
But even if we are wrong in our appraisal of the multiple-
lawsuit risk, as our approach is the only one consistent with
the text of Section 504(c)(1), it is not our job to reweigh the
merits of the several possible approaches. “Whatever merits
these . . . policy arguments may have, it is not the province
of this [c]ourt to rewrite the statute to accommodate them.”
Artuz v. Bennett, 531 U.S. 4, 10 (2000).
Desire also contends that multiple statutory damages
awards may be necessary to realize the goals of the
Copyright Act by fully compensating a plaintiff and
deterring all infringers in an action. But this argument is
unavailing for three reasons: First, Section 504(c)(1) already
provides for the factfinder to consider the number of direct
infringers and the number of infringements of the
copyrighted work when determining the amount of statutory
damages. See Dream Games of Ariz., 561 F.3d at 992.
Second, it is the copyright holder’s choice to pursue statutory
damages rather than actual damages and profits under
17 U.S.C. § 504(b). If statutory damages are inadequate to
fully compensate the injured party, it may elect actual
23
According to the dissent “[i]t will instead become commonplace
for plaintiffs to bring a separate lawsuit against each defendant” to
maximize the number of statutory damages awards. Dissent at p. 53. But
if this were the case it would have already happened in every circuit in
which district courts have considered the issue we face, especially
because no other circuit (that we are aware of) requires plaintiffs to join
downstream defendants in the action.
38 DESIRE V. MANNA TEXTILES
damages instead. And third, and most important, if Desire’s
position is superior from a public policy perspective, it is for
Congress alone to amend the statute. See Artuz, 531 U.S. at
10.
III. CONCLUSION
We affirm the district court’s grant of summary
judgment as to the ownership and scope of copyright
protection, as well as the district court’s exclusion of
Young’s testimony. We reverse the district court’s grant of
summary judgment as to the number of statutory damages
awards available, vacate the judgment awarding Desire
multiple awards of statutory damages, and remand for
further proceedings consistent with this opinion.
Each party shall bear its own costs on appeal.
AFFIRMED IN PART, REVERSED IN PART,
VACATED, AND REMANDED.
WARDLAW, Circuit Judge, concurring in part and
dissenting in part:
I respectfully dissent from the majority’s conclusion that
Desire is entitled to only one award of statutory damages
against the five defendants whom the jury concluded
separately infringed varying exclusive rights in copyright. 1
The majority ranges far afield to reach a conclusion that is
not only contrary to controlling Ninth Circuit precedent on
1
I concur with the majority’s conclusions in Parts II.B–C of the
majority opinion that Desire owned a valid copyright in the Subject
Design and that the design was entitled to broad copyright protection.
DESIRE V. MANNA TEXTILES 39
statutory damages in copyright but also creates perverse
incentives for copyright litigation. After today’s decision, a
copyright plaintiff can seek only one award of statutory
damages when it joins in a single lawsuit members of
independently infringing distribution chains that trace back
to a common infringing source. But if the plaintiff brings
separate lawsuits against each infringer, or if it simply cuts
the common source defendant at the top of the chain out of
the case, a separate statutory damages award is available
against each defendant.
This rule makes little sense. And worse still, it was
entirely unnecessary for the majority to reach the question
because none of the five separate, independently liable,
copyright infringers in this case was actually found jointly
and severally liable with another. Thus, the majority creates
law with enormous implications for copyright owners
litigating to protect their rights, in a case where the critical
issue—whether only one award of statutory damages is
allowable where one infringer is found jointly and severally
liable for the downstream infringers’ conduct, but the
downstream infringers are not jointly and severally liable
with each other—is not even before us.
I. No Defendant Was Held Jointly and Severally Liable
for the Copyright Infringement of Another
Defendant.
The judgment entered on September 29, 2017, following
the jury verdict, does not hold any party jointly and severally
liable for any other party’s statutory damages. The district
court expressly rejected a “[proposed] amended judgment”
that included language finding joint and several liability.
Nor did the special verdict form address joint and several
liability or secondary infringement; nor were those questions
the subject of a single jury instruction.
40 DESIRE V. MANNA TEXTILES
The issue of multiple awards of statutory damages arises
from the district court’s September 22, 2017, pre-trial “Order
re Plaintiff’s Entitlement to Separate Statutory Damages
Awards” (the Statutory Damages Order). In that order, the
district court applied well-established principles of
contributory liability and our decisions in Friedman v. Live
Nation Merch., Inc., 833 F.3d 1180 (9th Cir. 2016), and
Columbia Pictures Television v. Krypton Broad. of
Birmingham, Inc., 106 F.3d 284 (9th Cir. 1997), rev’d on
other grounds sub nom. Feltner v. Columbia Pictures
Television, Inc., 523 U.S. 340 (1998), to conclude that
because this is a case “where separate infringements for
which two or more defendants are not jointly liable are
joined in the same action, separate awards of statutory
damages would be appropriate.” See Columbia Pictures,
106 F.3d at 294 (quoting H.R. Rep. No. 94-1476, at 162
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5778). But
while the order reflects how the district court expected to
apply joint and several liability after trial, the court never
actually held that Manna, or any of the other defendants, is
jointly and severally liable for payment of the statutory
damages awarded against another defendant.
Under 17 U.S.C. § 504(c)(1), a copyright owner may
elect to recover
an award of statutory damages for all
infringements involved in the action, with
respect to any one work, for which any one
infringer is liable individually, or for which
any two or more infringers are liable jointly
and severally, in a sum of not less than $750
or more than $30,000 as the court considers
just.
DESIRE V. MANNA TEXTILES 41
In the event of willful infringement, “the court in its
discretion may increase the award of statutory damages to a
sum of not more than $150,000.” Id. § 504(c)(2). As we
have previously explained, the number of statutory damages
awards available under § 504(c)(1) “depends not on the
number of separate infringements, but rather on (1) the
number of individual ‘works’ infringed and (2) the number
of separate infringers.” Friedman, 833 F.3d at 1189–90.
Here, it was undisputed that there was only one “work”
at issue: Desire’s copyrighted CC3460 floral print textile
design. It was also undisputed at the time of the Statutory
Damages Order that there were seven defendants who were
each alleged to have directly and independently infringed the
copyrighted work. 2 At the top of the distribution chain sat
Manna, a fabric supplier that intentionally reproduced the
copyrighted design and distributed the infringing product to
three women’s clothing manufacturers—ABN, Pride &
Joys, and Top Fashion—who occupied the middle rung of
the chain. The manufacturers, in turn, created garments out
of the infringing fabric and sold them to the retailer
defendants—Ashley Stewart, Burlington, and 618 Main—
who then distributed and publicly displayed the infringing
garments.
2
An infringer is “[a]nyone who violates any of the exclusive rights
of the copyright owner” granted by the Copyright Act. 17 U.S.C.
§ 501(a); see A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013
(9th Cir. 2001) (noting that direct copyright infringement occurs when
“the alleged infringers violate at least one exclusive right granted to
copyright holders under 17 U.S.C. § 106”). Those exclusive rights
include the reproduction, preparation of derivative works, distribution,
public performance, and public display of the copyrighted material.
17 U.S.C. § 106.
42 DESIRE V. MANNA TEXTILES
By the time of trial, Ashley Stewart and Burlington had
settled and were no longer part of the case. For the
remaining five defendants, the jury adjudicated liability and
concluded that Manna, ABN, and Top Fashion were willful
infringers, and that Pride & Joys and 618 Main had
innocently infringed. It awarded the maximum $150,000 in
statutory damages against each of the willful infringers,
$20,000 against Pride & Joys, and $10,000 against
618 Main.
The jury was not asked to find any party jointly and
severally liable. That is because the district court, in the pre-
trial Statutory Damages Order, had decided that it would
determine joint and several liability itself, depending on the
jury’s verdict. The pretrial order expressly noted that it was
delineating the statutory damages that were “theoretically
available” depending on what was proved at trial, and that
after the jury returned its verdict, “the Court w[ould] then
apply joint and several liability as discussed [in the Statutory
Damages Order] to allocate damages in accordance with
section 504(c)(1).”
But the district court never did that allocation. Indeed,
Desire, the party that would benefit from a finding of joint
and several liability, did not seek joint and several liability
against the defendants. The majority treats the Statutory
Damages Order as though it applied to the jury verdict
without any further action by the district court. Majority Op.
at 10. But it is clear from the face of the Statutory Damages
Order that it was not self-executing. As the order explains,
it set forth the framework that “the Court w[ould] then
apply” after the jury’s determination of liability. (emphasis
added). In other words, the order expressly contemplated
that the district court would take some affirmative post-
verdict action to apply joint and several liability principles
DESIRE V. MANNA TEXTILES 43
to the defendants in this case, if warranted by the trial
evidence. It is undisputed that the district court never did so.
Moreover, we review final judgments, not opinions or
pre-trial orders. See Jennings v. Stephens, 574 U.S. 271, 277
(2015) (“This Court, like all federal appellate courts, does
not review lower courts’ opinions, but their judgments.”).
The judgment in this case reads as follows:
IT IS ORDERED AND ADJUDGED that
Plaintiff Desire, LLC recover of Defendants:
Manna Textiles, Inc. $150,000
A.B.N., Inc. $150,000
Top Fashion of N.Y., Inc. $150,000
Pride & Joys, Inc. $20,000
618 Main Clothing Corp. $10,000
On its face, the judgment limits Desire to collecting only
the specified amounts from each defendant. Nothing in the
judgment holds any defendant jointly and severally liable for
another’s damages.
The majority contends that the pre-trial statutory
damages order was “draw[n] in” to the judgment. Majority
Op. at 15 n.5. Of course, the majority is correct that pre-trial
orders generally merge into a final judgment. See Am.
Ironworkers & Erectors, Inc. v. N. Am. Constr. Corp.,
248 F.3d 892, 897 (9th Cir. 2001). But when a judgment is
inconsistent with a pre-trial order, the judgment must
44 DESIRE V. MANNA TEXTILES
control. It is the judgment, not the pre-trial order, that
ultimately “define[s] the rights and liabilities of the parties.”
Jennings, 574 U.S. at 277 (“[A] rule that . . . makes the
opinion part of the judgment, is peculiar . . . .”). An order
issued before trial therefore cannot modify a judgment
entered after trial.
For all its mighty strivings, the majority cannot make the
judgment say something it does not. Because we cannot
make a joint and several liability finding ourselves on
appeal, the proper course would be to remand for the district
court to either correct its judgment—if the omission of joint
and several liability was a mere oversight, see Fed. R. Civ.
P. 60(a)—or for the district court to adjudicate joint and
several liability in the first instance and enter judgment
accordingly. Instead, the majority incorrectly interprets
§ 504(c)(1), and then applies that misinterpretation to its
hypothetical finding of joint and several liability.
II. The Majority’s Interpretation of § 504(c)(1) Runs
Directly Contrary to Controlling Ninth Circuit
Precedent.
The majority’s analysis should have started and stopped
with our precedential decisions in Columbia Pictures and
Friedman.
In Columbia Pictures, we held that “where separate
infringements for which two or more defendants are not
jointly liable are joined in the same action, separate awards
of statutory damages would be appropriate.” 106 F.3d at 294
(quoting H.R. Rep. No. 94-1476, at 162 (1976), reprinted in
1976 U.S.C.C.A.N. 5659, 5778). There, after a bench trial
on statutory damages, the district court found that the
infringement of Columbia Pictures Television’s copyright in
certain television series by three television stations joined in
DESIRE V. MANNA TEXTILES 45
the action, along with their owner, as defendants, were
“separate acts of infringement” subject to separate awards of
statutory damages. Id. We affirmed, because the three
stations broadcasting the infringing television episodes were
not “joint tortfeasors.” Id.
We also upheld the district court’s conclusion that the
station owner defendant was vicariously and contributorily
liable for the three television stations’ separate displays of
the copyrighted television shows and was therefore jointly
and severally liable with each station. Id. at 288, 294 & n.7;
see also Friedman, 833 F.3d at 1190 (explaining the holding
of Columbia Pictures). We rejected the defendant owner’s
argument that only one and not multiple sets of statutory
damages was appropriate, reasoning that “[b]ecause the
stations were not jointly and severally liable with each other,
[the owner’s] liability vis-a-vis the stations merely renders
him jointly and severally liable for each station’s
infringements—it does not convert the stations’ separate
infringements into one.” 3 Columbia Pictures, 106 F.3d
at 294 n.7.
3
The majority all but concedes that this part of the Columbia
Pictures opinion is in direct conflict with its conclusion that only one
statutory damages award is available in this case. It attempts to brush
past the passage as dicta, quoting an out-of-circuit district court’s
characterization of it as “neither directly address[ing] the statutory text
nor engag[ing] in detailed analysis of the issue.” Majority Op. at 29 n.17
(quoting Agence France Presse v. Morel, 934 F. Supp. 2d 547, 582
(S.D.N.Y. 2013)). But Footnote 7 is clearly not dicta—it provided the
entire reasoning for rejecting one of the defendant’s arguments. See
United States v. Rivera-Corona, 618 F.3d 976, 986 (9th Cir. 2010)
(Fisher, J., concurring) (“A proposition necessary to the holding cannot
be dicta.”). While the out-of-circuit district court in Agence France
Presse may have been free to decline to follow Footnote 7, the panel
46 DESIRE V. MANNA TEXTILES
As in Columbia Pictures, if the district court here had
found Manna jointly and severally liable for all the
downstream separate infringements, that would not convert
the subsequent separate infringements into one because the
downstream defendants are not joint tortfeasors. It does not
matter that Manna is also liable for its own distinct, separate
violation of Desire’s copyright because it copied the fabric
design and distributed those copies.
Five years ago, in Friedman, we reaffirmed the holding
in Columbia Pictures, reiterating that the three statutory
damages awards in that case were appropriate because the
three downstream television stations there “were each jointly
and severally liable with the [station owner] defendant but
not with each other.” 833 F.3d at 1190. In Friedman,
defendant Live Nation had distributed goods bearing
copyrighted images to 104 different retailers, who then also
infringed the copyrighted works. Id. at 1183–84. The
district court rejected the plaintiff’s effort to seek
104 separate statutory damages awards, reasoning that doing
so would “lead to an absurd result.” Id. at 1191. While it
recognized that Columbia Pictures was “binding precedent”
holding that separate awards were appropriate in this
circumstance, the district court nonetheless concluded that
Columbia Pictures should not be applied to a “mass-
marketing campaign” like the one there. Id.
We squarely rejected the district court’s rationale for
disallowing separate statutory damages awards. We held
that Columbia Pictures “is the law of this circuit, and
majority here is bound by it. See Miller v. Gammie, 335 F.3d 889, 900
(9th Cir. 2003) (en banc).
DESIRE V. MANNA TEXTILES 47
nothing in the opinion—or in the text of the statute itself—
admits of a ‘mass-marketing’ exception.” 4 Id.
We also noted with approval that the facts of Columbia
Pictures were “analogous” to the hypothetical discussed by
Professor Nimmer in his leading treatise on copyright law—
a hypothetical the majority finds unpersuasive. Id. at 1190–
91. As Professor Nimmer explains, “[i]f each defendant is
liable for only one of the several infringements that are the
subject of suit, then each defendant will be liable for a
separate set of statutory damages (each with its own
minimum).” 4 M. Nimmer & D. Nimmer, Nimmer on
Copyright § 14.04[E][2][d][i] (2020) (hereinafter Nimmer).
The Nimmer Hypothetical is predicated on a single
complaint that alleges infringement of the public
performance right in a motion picture against three
independent operators of movie theaters—A, B, and C—
who unlawfully publicly performed the plaintiff’s movie. Id.
Nimmer states that “if A, B, and C have no relationship with
one another, there is no joint or several liability as between
them, so that each is liable for at least a minimum $750
statutory damage award.” Id. Adding to this hypothetical,
Nimmer addresses a slightly different scenario where “D,
without authority, distributed plaintiff’s motion picture to A,
B, and C,” and concludes that “[a]lthough A, B, and C are
not jointly and severally liable each with the other, D will be
jointly and severally liable with each of the others.” Id.
Thus, as here, three sets of statutory damages are awardable:
4
We ultimately held in Friedman that a plaintiff can seek separate
statutory damages awards only if it joins the alleged downstream
infringers in the action and proves their liability. Friedman, 833 F.3d
at 1192. That holding is not at issue here because Desire joined each of
the downstream infringers as defendants in this case.
48 DESIRE V. MANNA TEXTILES
one against A+D, jointly and severally; one against B+D,
jointly and severally; and one against C+D, jointly and
severally. 5 Id.
To summarize, our court in Columbia Pictures and
Friedman endorsed the Nimmer Hypothetical, rejected the
idea of a “mass-marketing exception,” and adopted a simple
rule: separate statutory damages awards are appropriate
when separate downstream infringers are not jointly and
severally liable with each other, even though an upstream
defendant might be jointly and severally liable with each of
them. Friedman, 833 F.3d at 1090–91; Columbia Pictures,
106 F.3d at 294. Under this rule, the outcome of this case is
straightforward. Because the downstream infringers—
ABN, Pride & Joys, Top Fashion, and 618 Main—separately
infringed and are not jointly and severally liable with each
other, Desire is entitled to separate statutory damages
awards.
Instead of following Columbia Pictures and Friedman,
the majority swerves off in the opposite direction. While
acknowledging that “the Nimmer Hypothetical supports
Desire’s position,” the majority simply “decline[s] to adopt
its conclusions.” Majority Op. at 31. But the Nimmer
Hypothetical cannot be so blithely cast aside. We previously
described it as “analogous” to Columbia Pictures, a case the
majority is not free to ignore. Friedman, 833 F.3d at 1190.
Instead, the majority writes that allowing separate
awards would “lead to potentially astronomical statutory
5
Unlike here, in the Nimmer Hypothetical, D is not separately
alleged to have committed an independent act of copyright infringement,
so D’s participation in the movie distribution profits does “not create a
fourth set of statutory damages.” Nimmer § 14.04[E][2][d][i].
DESIRE V. MANNA TEXTILES 49
damages awards contrary to the purpose of Section
504(c)(1).” Majority Op. at 33. If this refrain sounds
familiar, that is because it is the same “mass-marketing”
concern we rejected in Friedman. Friedman, 833 F.3d
at 1191. The majority grounds its concerns about
“astronomical” damages on the exact same out-of-circuit
authority that we faulted the district court for relying on in
Friedman. Compare Majority Op. at 34–34 (“agree[ing]”
with Arista Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d
313, 318 (S.D.N.Y. 2011), and Bouchat v. Champion Prods.,
Inc., 327 F. Supp. 2d 537, 553 (D. Md. 2003)), with
Friedman, 833 F.3d at 1191 (chastising the district court for
relying on Arista Records and Bouchat because the
reasoning of those cases is contrary to Columbia Pictures).
The majority cannot escape the fact that the relationship
between the parties here is precisely the same as it was in
Columbia Pictures. The downstream defendants here each
directly infringed the copyright by violating various of
Desire’s exclusive rights in its copyrighted work, as the
stations did in Columbia Pictures. Manna, in the majority’s
view, is jointly and severally liable for those infringements, 6
just as the Columbia Pictures defendant was jointly and
severally liable for the stations’ infringements. Id. And the
downstream defendants here, like the stations in Columbia
Pictures, are not jointly and severally liable with each other.
On these facts, multiple statutory damages awards are
available. Friedman, 833 F.3d at 1190; Columbia Pictures,
106 F.3d at 294 & n.7.
The only thing differentiating this case from Columbia
Pictures is that Manna also committed its own intentional
6
It bears repeating that there has never actually been a finding of
joint and several liability in this case.
50 DESIRE V. MANNA TEXTILES
direct infringement, for which it alone is solely liable. But
Manna’s additional separate infringement provides no
justification for reducing the number of potential statutory
damages awards.
III. The Plain Language of § 504(c)(1) Allows
Multiple Awards of Statutory Damages When
Separate Infringements Are Found.
Even if it were not bound by our controlling precedent in
Columbia Pictures and Friedman, the majority’s holding is
contrary to the text of § 504(c)(1). We read the language of
the statute “in [its] context and with a view to [its] place in
the overall statutory scheme.” FDA v. Brown & Williamson
Tobacco Corp., 529 U.S. 120, 133 (2000) (quoting Davis v.
Mich. Dep’t of Treasury, 489 U.S. 803, 809 (1989)); see
Wilderness Soc’y v. U.S. Fish & Wildlife Serv., 353 F.3d
1051, 1060 (9th Cir. 2003) (en banc).
Section 504(c)(1) provides “an award of statutory
damages for all infringements” of a single work “for which
any one infringer is liable individually, or for which any two
or more infringers are liable jointly and severally.” At issue
here is the meaning of “for which any two or more infringers
are liable jointly and severally.” (emphasis added).
“Any,” is an adjective used to denote choice from
multiple people or things. See Any, Webster’s New Int’l
Dictionary (3d ed. 2002) (defining “any” as “one
indifferently out of more than two; one or more: not none—
used as a function word to indicate a positive but
undetermined number or amount”). Courts have interpreted
“any” in a manner consistent with this dictionary definition.
See United States v. Gonzales, 520 U.S. 1, 5 (1997) (“Read
naturally, the word ‘any’ has an expansive meaning, that is,
one or some indiscriminately of whatever kind.” (internal
DESIRE V. MANNA TEXTILES 51
quotation marks omitted)); see also Ali v. Fed. Bureau of
Prisons, 552 U.S. 214, 219–20 (2008).
In § 504(c)(1), the word “any” modifies the phrase “two
or more infringers are liable jointly and severally.” Read
most naturally, “any two or more infringers are liable jointly
and severally” means an undetermined number of the
infringers who have been held jointly and severally liable.
Thus, “any” signals that a court must identify the jointly and
severally liable infringers of the work amongst all of the
defendants in the action.
Next, the “any” phrase is preceded by “for which,” a
prepositional phrase that modifies “all infringements
involved in the action, with respect to any one work.” The
statute therefore requires the court to identify the infringers
that are jointly and severally liable with respect to the
“infringements involved in the action.” In other words, it
matters which specific acts of infringement each defendant is
jointly and severally liable for, not just that a defendant is
jointly and severally liable for some infringement in the case.
Thus, the court must separate the defendants into groups
based on the separate infringers and works infringed, with
each group containing all of the defendants who are jointly
and severally liable for a given set of infringements
committed.
After these groups have been determined, the statute
provides “an award” of statutory damages against each
individually liable infringer or against each distinct group of
jointly and severally liable infringers. Put another way, the
statute provides an award for each separate infringer,
whether that is an individually liable infringer or a group of
defendants who are jointly and severally liable for a given
set of infringements. Here, that would mean that Desire
could recover five statutory damages awards: one for each
52 DESIRE V. MANNA TEXTILES
group of infringers that is potentially jointly and severally
liable for the separate direct infringements committed by the
five defendants remaining in the case. 7
This result is consistent with the effect of joint and
several liability, a concept that identifies which defendants
are responsible for paying the full amount of plaintiff’s
damages, not the total amount of damages to which the
plaintiff is entitled. See Restatement (Third) of Torts:
Apportionment Liab. § 10 (“When . . . some persons are
jointly and severally liable to an injured person, the injured
person may sue for and recover the full amount of
recoverable damages from any jointly and severally liable
person.”); id. § 10 cmt. b (“[T]he risk that one or more of the
parties liable to the plaintiff is insolvent is placed on the
other jointly and severally liable defendant(s), rather than on
the plaintiff.”).
It is also consistent with the structure of the statute,
which indisputably permits a separate statutory damages
award for each separate infringer. See Friedman, 833 F.3d
at 1190. Thus, even the majority agrees that Desire could
have recovered five statutory damages awards had it simply
brought five separate lawsuits against the five remaining
defendants. Majority Op. at 35–37.
7
The majority’s holding rests in large part on a counterfactual
argument: to permit a plaintiff to recover a separate statutory damages
award against each distinct group of jointly and severally liable
defendants would render superfluous the word “any” in § 504(c)(1).
Majority Op. at 23. But interpreting § 504(c)(1) to permit multiple
statutory damages awards in this case does not render the word “any”
superfluous. As explained, the word “any” makes clear that courts must
determine which defendants are jointly and severally liable for each
separate act of infringement.
DESIRE V. MANNA TEXTILES 53
Rather than adopting this straightforward construction,
the majority interprets § 504(c)(1) to create a trap for the
unwary. By joining the five remaining defendants in a single
case, the majority holds, Desire unwittingly reduced the
number of statutory damages awards it could recover from
five to one. Specifically, the majority reads § 504(c)(1) to
provide that whenever one defendant is jointly and severally
liable with its downstream defendants for all downstream
infringements, irrespective of whether those downstream
defendants are jointly and severally liable with each other,
the plaintiff can recover only one statutory damages award.
Majority Op. at 22–25. Here, that means that because
Manna is jointly and severally liable with each of the other
defendants (in the majority’s view), none of which is jointly
and severally liable with any other party, Desire can obtain
only one statutory damages award against all defendants,
jointly and severally.
The majority’s holding will have broad implications for
copyright litigation in the Ninth Circuit. After today, no
plaintiff will make the same “mistake” as Desire. It will
instead become commonplace for plaintiffs to bring a
separate lawsuit against each defendant, maximizing the
number of statutory damages awards available while
peppering the courts with individual cases that would be
more efficiently tried together. Or perhaps plaintiffs will
simply avoid suing the defendant at the top of the
distribution chain—often the most culpable party—so they
can join claims against several downstream infringers in a
single action and receive separate awards. This is certainly
not how copyright litigation—or really, litigation in
general—is supposed to work. See United Mine Workers of
Am. v. Gibbs, 383 U.S. 715, 724 (1966) (“Under the
[Federal] Rules [of Civil Procedure], the impulse is toward
entertaining the broadest possible scope of action consistent
54 DESIRE V. MANNA TEXTILES
with fairness to the parties; joinder of claims, parties and
remedies is strongly encouraged.”).
Recognizing this absurdity, the majority argues that the
risk of separate suits is “outweighed by the vastly
disproportionate damages that would flow from a contrary
interpretation of Section 504(c)(1).” Majority Op. at 35–37.
But again, we have already rejected the idea that there is a
“mass-marketing exception” to the rule of separate statutory
damages awards. Friedman, 833 F.3d at 1191. The majority
is not free to resurrect a horrible that we have already laid to
rest, particularly as a justification for introducing a
nonsensical rule into the law of our circuit. 8
The majority also points to several supposed practical
limitations that it speculates will make it difficult for
plaintiffs to bring separate suits. Majority Op. at 35–37. It
offers no guarantee, however, and its reasoning is suspect.
8
The majority cites various district court decisions that declined to
interpret § 504(c)(1) to permit multiple statutory damages awards in
circumstances similar to those presented here because of the potential for
astronomical damage awards. Majority Op. at 33–34. However, these
courts were not bound by our ruling in Friedman that the number of
downstream infringers does not affect our interpretation of the statute.
833 F.3d at 1191. They were also not bound by Friedman’s requirement
that an alleged infringer be joined and proven liable for infringement in
an action to support a separate statutory damages award. Id. at 1191–92;
see Agence France Presse, 934 F. Supp. 2d at 550 (the plaintiff sued the
distributor of the infringing photographs and none of the distributees);
McClatchey v. Associated Press, No. 305-CV-145, 2007 WL 1630261,
at *2 (W.D. Pa. June 4, 2007) (same); Arista Records, 784 F. Supp. 2d
at 315 (the plaintiff sued the operators of the system used to infringe and
none of the individuals who used the software to infringe). Thus, in those
jurisdictions, unlike ours, a plaintiff could easily multiply the number of
statutory damages awards available by alleging downstream
infringements without the obstacle of joining and proving liability
against the alleged downstream infringers.
DESIRE V. MANNA TEXTILES 55
For example, the majority posits that under Federal Rule of
Civil Procedure 42(a), a district court could consolidate
separate actions into a single suit, which would have the
effect of limiting the plaintiff to one statutory damages
award. But using Rule 42(a) to reduce the number of
statutory damages awards available would seem to run afoul
of the Rules Enabling Act’s command that the Federal Rules
“shall not abridge, enlarge or modify any substantive right.”
28 U.S.C. § 2072(b). In any event, it would be foolish to
think that copyright plaintiffs will not at least try to bring
separate suits, leaving our circuit’s already overburdened
district court judges to figure out whether there is a way to
work around the majority’s mess.
Finally, the majority expresses concern that permitting a
plaintiff to recover multiple statutory damages awards in
these circumstances would make a defendant like Manna
liable for many times its actual profits. Majority Op. at 34.
But “[e]ven for uninjurious and unprofitable invasions of
copyright the court may, if it deems it just, impose a liability
within statutory limits to sanction and vindicate the statutory
policy.” F. W. Woolworth Co. v. Contemporary Arts, Inc.,
344 U.S. 228, 233 (1952); see also New Form, Inc. v. Tekila
Films, Inc., 357 F. App’x 10, 12 (9th Cir. 2009) (rejecting
the “incorrect premise that statutory damages must be
tethered to actual damages”). Because a plaintiff need not
prove any actual damages to obtain a statutory damages
award, and may recover statutory damages even for
unprofitable infringement, it is well settled that the
defendant’s actual profits do not control a plaintiff’s ability
to recover statutory damages under § 504(c)(1). 9 The
9
To the extent the majority is concerned that “an infringer [w]ould
face greater liability for participating in an infringement activity in a less
culpable manner,” Majority Op. at 33, the Copyright Act already
56 DESIRE V. MANNA TEXTILES
majority has substituted its own policy preferences for those
of Congress.
* * *
The district court did not issue a judgment or any other
order concluding that any defendant was jointly and
severally liable for the infringing acts of any other, so it’s
unclear what the majority thinks it’s reversing on its novel
theory that where one infringer is jointly and severally liable
with every other defendant, but the remaining defendants are
not with each other, only one award of statutory damages is
available under § 504(c)(1). Moreover, the majority’s
opinion conflicts with our court’s binding precedent
rejecting the very theory it adopts and is itself an atextual
reading of the statute. I therefore respectfully dissent on the
question of statutory damages.
accounts for differing levels of culpability by distinguishing willful from
innocent infringers and limiting the amount of statutory damages that can
be imposed against innocent infringers, see 17 U.S.C. § 504(c)(1), (c)(2).