FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
LOUIS VUITTON MALLETIER, S.A.,
Plaintiff-Appellee,
v. No. 10-15909
AKANOC SOLUTIONS, INC.; MANAGED D.C. No.
SOLUTIONS GROUP, INC.; STEVEN 5:07-cv-03952-JW
CHEN,
Defendants-Appellants.
LOUIS VUITTON MALLETIER, S.A.,
Plaintiff-Appellant,
No. 10-16015
v.
AKANOC SOLUTIONS, INC.; MANAGED D.C. No.
5:07-cv-03952-JW
SOLUTIONS GROUP, INC.; STEVEN
OPINION
CHEN,
Defendants-Appellees.
Appeal from the United States District Court
for the Northern District of California
James Ware, Chief District Judge, Presiding
Argued and Submitted
April 11, 2011—San Francisco, California
Filed September 9, 2011
Before: Alex Kozinski, Chief Judge, Michael Daly Hawkins
and Ronald M. Gould, Circuit Judges.
Opinion by Judge Gould
17239
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17243
COUNSEL
J. Andrew Coombs (argued), Annie S. Wang, Glendale, Cali-
fornia, for plaintiff-appellee-cross-appellant Louis Vuitton
Malletier, S.A.
David A. Gauntlett, James A. Lowe (argued), and Raymond
K. Chan, Irvine, California, for defendants-appellants Akanoc
Solutions, Inc. and Steven Chen, and defendants-cross-
appellees Managed Solutions Group, Inc.
OPINION
GOULD, Circuit Judge:
Louis Vuitton Malletier, S.A., sued Managed Solutions
Group, Inc. (“MSG”), Akanoc Solutions, Inc., and Steven
Chen (collectively “Defendants”)1 for contributory copyright
and trademark infringement, contending that Defendants were
liable for their role in hosting websites that directly infringed
Louis Vuitton’s trademarks and copyrights. After a trial, a
jury found Defendants liable and awarded damages against
each defendant. In response to Defendants’ motion for judg-
ment as a matter of law, the district court set aside the jury’s
verdict and award against MSG. The district court otherwise
denied the motion.
1
For convenience, we refer throughout this opinion to the three defen-
dants collectively as “Defendants” and to Akanoc and Chen as “Appel-
lants.” Defendant MSG is not an appellant, but is a cross-appellee.
17244 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
Appellants Akanoc and Chen appeal the jury verdict, con-
tending that the district court erred in instructing the jury and
in denying their post-trial motion for judgment as a matter of
law. Louis Vuitton cross-appeals the district court’s order
granting judgment as a matter of law in favor of MSG. We
have appellate jurisdiction under 28 U.S.C. § 1291. Among
other questions, we must decide whether the district court
properly instructed the jury on awarding damages as to each
defendant. Concluding that there was error, we vacate the
damage awards and remand to the district court with instruc-
tions to enter an award consistent with this opinion. In all
other respects, we affirm.2
I. Facts and Procedural History
Louis Vuitton is the sole and exclusive United States dis-
tributor of its merchandise, which includes a variety of luxury
goods bearing its trademarks and copyrighted designs. To
guard the reputation and exclusivity of its brand and to other-
wise maintain its rights, Louis Vuitton polices its intellectual
property, including its trademarks and copyrights, through
various monitoring and enforcement strategies.
In late 2006, Louis Vuitton discovered websites selling
goods that it believed infringed its copyrights and trademarks.
The websites did not sell merchandise directly; instead, they
listed an email address that interested parties could use to ini-
tiate a transaction. Upon further investigation Louis Vuitton
discovered that the websites were using IP addresses assigned
to defendants MSG and Akanoc.
2
Appellant’s unopposed motion for judicial notice of additional authori-
ties is granted with respect to Roadshow Films Pty. Ltd. v. iiNet Limited
(No. 3) (2010) 2010 FCA 24 (Austl.); H.R. Rep. No. 98-997 (1984); and
S. Rep. No. 104-177 (1995), but denied with respect to the amicus brief
filed by the Electronic Frontier Foundation, Public Citizen, and Public
Knowledge in Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010).
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17245
MSG and Akanoc were in the “web hosting” business.
Chen managed both MSG and Akanoc, which were based in
San Jose, California. According to Defendants, MSG leased
servers, bandwidth, and some IP addresses to Akanoc.
Akanoc, in turn, operated the servers and otherwise ran the busi-
ness.3 Akanoc leased packages of server space, bandwidth,
and IP addresses to its customers.4 Some of Akanoc’s custom-
ers were located outside the United States. According to Louis
Vuitton, the customers who directly infringed the trademarks
and copyrights were based in China.
From 2006 to 2007, Louis Vuitton sent Defendants at least
eighteen Notices of Infringement (“NOIs”) documenting
trademark and copyright infringement occurring on numerous
websites hosted by Defendants. The NOIs demanded that
Defendants either remove the infringing content from their
servers or require their customers to do so. Louis Vuitton
received no response from Defendants. Although Defendants
asserted that they took regular steps to curb any infringement
by websites using their servers, Defendants were not able to
identify any action taken in response to the notices sent by
Louis Vuitton, and the websites continued to operate using
servers and IP addresses owned by Defendants.
Louis Vuitton sued Defendants in the Northern District of
California, alleging contributory copyright and trademark
infringement under federal law. Louis Vuitton contended that
Defendants had actual knowledge of the websites’ activities,
that Defendants knowingly avoided learning the full extent of
the infringing activities and deliberately disregarded Louis
Vuitton’s notifications, that Defendants knowingly enabled
the infringing conduct by hosting the websites and willfully
3
Louis Vuitton disputes this characterization, but presented no evidence
at trial that MSG’s role extended beyond ownership and leasing of assets.
4
According to Akanoc, many of these customers acted as “resellers”
who sold Akanoc’s services to third parties. Even if true, that fact would
not alter our analysis.
17246 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
permitting websites to display the products, and that Louis
Vuitton suffered irreparable harm and damage as a result of
Defendants’ conduct.
The case went to trial and the jury returned a verdict for
Louis Vuitton, holding Akanoc, MSG, and Chen liable for
contributory infringement of thirteen of Louis Vuitton’s trade-
marks, and of two of Louis Vuitton’s copyrights. The jury
also found that Defendants acted willfully. The jury awarded
$10,500,000 in statutory damages for willful contributory
trademark infringement of the thirteen trademarks against
each defendant, for a total of $31,500,000. The jury also
awarded $300,000 in statutory damages for willful copyright
infringement of the two copyrights against each defendant, for
a total of $900,000.
After the verdict, Defendants moved for judgment as a mat-
ter of law, requesting among other things that the court dis-
card the jury verdict. The district court granted the post-trial
motion as to MSG, concluding that there was no evidence
indicating that MSG sold domain names, operated the servers,
or did anything more than own and lease the hardware oper-
ated by Akanoc and Chen. The district court denied the
motion as to Akanoc and Chen, awarded statutory damages,
and entered a permanent injunction restricting them from
engaging in similar conduct. Akanoc and Chen timely
appealed. Louis Vuitton cross-appealed the district court’s
order granting judgment as a matter of law in favor of MSG.
II. Standards of Review
We review de novo whether jury instructions misstate the
law. Wall Data Inc. v. L.A. Cnty. Sheriff’s Dep’t, 447 F.3d
769, 784 (9th Cir. 2006). We review the district court’s for-
mulation of jury instructions for abuse of discretion. Id. We
have consistently held that “an error in instructing the jury in
a civil case does not require reversal if the error was ‘more
probably than not harmless.’ ” Lambert v. Ackerley, 180 F.3d
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17247
997, 1008 (9th Cir. 1999) (en banc) (quoting Coursen v. A.H.
Robins Co., 764 F.2d 1329, 1337 (9th Cir. 1985)).
We review de novo a district court’s decision to grant or
deny judgment as a matter of law. Mangum v. Action Collec-
tion Serv., Inc., 575 F.3d 935, 938 (9th Cir. 2009).
III. Discussion
A. The Cross-Appeal
[1] Louis Vuitton contends that the district court erred
when it set aside the jury’s verdict against MSG. We disagree.
The jury’s verdict as to MSG was not supported by “substan-
tial evidence.” See Johnson v. Paradise Valley Unified Sch.
Dist., 251 F.3d 1222, 1227 (9th Cir. 2001) (“Substantial evi-
dence is evidence adequate to support the jury’s conclusion.
. . .”).
[2] With regard to both contributory copyright and trade-
mark infringement, the district court’s verdict form asked the
jury to determine whether each defendant, while knowing that
its customers were using its services to directly infringe Louis
Vuitton’s intellectual property rights, “had reasonable means
to withdraw its services so that they could not be used to
directly infringe but continued to provide its services.” We
agree with the district court that no evidence presented at trial
showed that MSG operated the servers that hosted the direct
infringers’ websites. Even assuming that the direct infringers
could be construed as MSG’s customers, Louis Vuitton pre-
sented no evidence that MSG had reasonable means to with-
draw services to the direct infringers.
B. Appellants’ Motion for Judgment as a Matter of Law
[3] Appellants Akanoc and Chen urge that the district court
erred in denying their post-trial motion for judgment as a mat-
ter of law. But Appellants give no reasoned argument to sup-
17248 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
port their one-sentence conclusory assertion. It would be
permissible to conclude that this issue is not properly pre-
sented, and as a consequence to decline to review it. See
United States v. Loya, 807 F.2d 1483, 1486-87 (9th Cir. 1987)
(“Issues raised in a brief which are not supported by argument
are deemed abandoned.”); Leer v. Murphy, 844 F.2d 628, 634
(9th Cir. 1988) (“We will only review an issue not properly
presented if our failure to do so would result in manifest
injustice.”). However, in reviewing the particular issues of
substantive law raised by Appellants as described below, we
have concluded that the jury had sufficient facts before it to
find Appellants liable as a matter of law, and therefore the
district court did not err in denying Appellants’ motion for
judgment as a matter of law.
C. Jury Instructions
1. Contributory Trademark Infringement
To prevail on its claim of contributory trademark infringe-
ment, Louis Vuitton had to establish that Appellants contin-
ued to supply its services to one who it knew or had reason
to know was engaging in trademark infringement.” Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).
Because Appellants provided services rather than a product,
Louis Vuitton also needed to establish that Appellants had
“[d]irect control and monitoring of the instrumentality used
by a third party to infringe” Louis Vuitton’s marks. Lockheed
Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984
(9th Cir. 1999) (holding that the court must consider “the
extent of control exercised by the defendant over the third
party’s means of infringement”).
[4] Appellants contend that the district court did not
instruct the jury about the proper scope of the “means of
infringement.” According to Appellants, the servers and inter-
net services they provided and operated were not the “means
of infringement”; instead, they maintain, the websites selling
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17249
the infringing goods were the sole means of infringement.
Appellants claim that the jury instructions failed to distinguish
between the servers or services provided by Appellants and
the websites maintained by Appellants’ customers. But web-
sites are not ethereal; while they exist, virtually, in cyber-
space, they would not exist at all without physical roots in
servers and internet services. As the district court held, Appel-
lants “physically host websites on their servers and route
internet traffic to and from those websites. This service is the
Internet equivalent of leasing real estate.” Louis Vuitton Mal-
letier, S.A. v. Akanoc Solutions, Inc., 591 F. Supp. 2d 1098,
1112 (N.D. Cal. 2008). Appellants had control over the ser-
vices and servers provided to the websites. Stated another
way, Appellants had direct control over the “master switch”
that kept the websites online and available. The district court
did not abuse its discretion by formulating jury instructions
that referred to the servers and services provided by Appellants.5
See Wall Data Inc., 447 F.3d at 784.
[5] Appellants also contend that the jury instructions were
erroneous because, in their view, “contribution to infringe-
ment must be intentional for liability to arise.” We disagree.
Plaintiffs asserting contributory trademark infringement
claims must prove that defendants provided their services
with actual or constructive knowledge that the users of their
services were engaging in trademark infringement. See
Inwood Labs., 456 U.S. at 854; Perfect 10, Inc. v. Visa Int’l
5
It is not clear whether Appellants also challenge the district court’s
instruction on the ground that it did not require the jury to find “monitor-
ing” in addition to “direct control.” Lockheed, 194 F.3d at 984. Because
that question was not clearly presented in Appellants’ briefs, we need not
discuss it here. Moreover, any error in the formulation of the jury instruc-
tions with respect to the “monitoring” element was harmless given the
jury’s finding that Appellants willfully contributed to direct trademark
infringement.
17250 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
Serv. Ass’n, 494 F.3d 788, 807 (9th Cir. 2007). An express
finding of intent is not required.6
2. Contributory Copyright Infringement
Appellants claim the jury instructions on contributory
copyright infringement were erroneous because they “omitted
both the elements of intent and material contribution.”
Although we agree that the instructions deviated from the
Ninth Circuit Model Jury Instructions, we reject Appellants’
arguments. See McDowell v. Calderon, 130 F.3d 833, 840
(9th Cir. 1997) (explaining that model jury instructions are
not “blessed with any special . . . precedential authority”).
[6] We have never held that an express finding of intent is
necessary to support liability for contributory copyright
infringement. To the contrary, we have held that “intent may
be imputed” as a result of “a service provider’s knowing fail-
ure to prevent infringing actions.” Amazon.com, 508 F.3d at
1172. The district court was not required to instruct the jury,
as Appellants suggest, to make a separate finding that Appel-
lants’ knowing action evinced intent to contribute to copyright
infringement. See A&M Records, Inc. v. Napster, 239 F.3d
1004, 1020 (9th Cir. 2001) (“Contributory liability requires
that the secondary infringer ‘know or have reason to know’ of
direct infringement.”). Appellants also argue that the jury
instructions should have required an express finding of mate-
rial contribution. We disagree.
6
Appellants also contend that the jury instructions erroneously allowed
the jury to find willful contributory infringement based on Appellants’
intent that others infringe Louis Vuitton’s trademarks. This argument fails
because it is premised on the idea, which we reject, that non-willful con-
tributory infringement requires a finding of intent. Thus, even if intent
were an element of contributory trademark infringement, Appellants do
not explain why the district court’s failure to include it in its instructions
was not harmless in light of the jury’s finding that Appellants willfully
contributed to direct infringement.
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17251
[7] Material contribution turns on whether the activity in
question “substantially assists” direct infringement. Ama-
zon.com, 487 F.3d at 729. There is no question that providing
direct infringers with server space satisfies that standard. In
Visa, 494 F.3d at 799-800, we held as a matter of law that
defendants did not materially contribute to infringement
because “[t]hey d[id] not operate the servers on which [the
infringing images] reside[d].” The opposite is true here.
Akanoc’s servers are “an essential step in the infringement
process.” Id. at 812 (Kozinski, C.J., dissenting). The district
court did not err by narrowing the instruction on material con-
tribution to the only genuine question as to that element—
whether Appellants provided their services to direct infring-
ers. See also Napster, 239 F.3d. at 1022 (holding that “Nap-
ster materially contribute[d] to the infringing activity”
because, “[w]ithout the support services defendant provides,
Napster users could not find and download the music they
want with the ease of which defendant boasts” (internal quo-
tation marks removed) (alteration in original)).7
[8] Appellants further contend that the jury instructions
erroneously allowed the jury to find that Appellants engaged
in willful infringement based solely on a finding of knowing
contribution to direct infringement. Appellants object that
under this formulation, a finding of willfulness requires proof
of no element beyond those of contributory copyright
infringement. But appellants do not explain what additional
element should be required. The district court’s formulation
accurately reflected the law. “[A] finding of ‘willfulness’ in
[the copyright] context can be based on either ‘intentional’
behavior, or merely ‘reckless’ behavior.” In re Barboza, 545
F.3d 702, 707 (9th Cir. 2008). “To prove ‘willfulness’ under
the Copyright Act, the plaintiff must show (1) that the defen-
dant was actually aware of the infringing activity, or (2) that
7
We also reject Appellants’ challenges to the sufficiency of the evi-
dence. The jury heard substantial evidence that Appellants knowingly pro-
vided their services to direct infringers.
17252 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
the defendant’s actions were the result of ‘reckless disregard’
for, or ‘willful blindness’ to, the copyright holder’s rights.”
Island Software & Computer Serv., Inc. v. Microsoft Corp.,
413 F.3d 257, 263 (2d Cir. 2005).
D. Damages
1. Contributory Trademark Infringement
a. Statutory Damages
[9] Appellants contend that 15 U.S.C. § 1117(c) does not
authorize statutory damages against contributory infringers.
Section 1117(c) provides for statutory damages for the use of
counterfeit marks:
In a case involving the use of a counterfeit mark . . .
in connection with the sale, offering for sale, or dis-
tribution of goods or services, the plaintiff may elect,
at any time before final judgment is rendered by the
trial court, to recover, instead of actual damages and
profits under subsection (a) of this section, an award
of statutory damages for any such use in connection
with the sale, offering for sale, or distribution of
goods or services in the amount of—
(1) not less than $1,000 or more than $200,000 per
counterfeit mark per type of goods or services sold,
offered for sale, or distributed, as the court considers
just; or
(2) if the court finds that the use of the counterfeit
mark was willful, not more than $2,000,000 per
counterfeit mark per type of goods or services sold,
offered for sale, or distributed, as the court considers
just.
15 U.S.C. § 1117(c). Appellants assert that statutory damages
cannot be awarded against contributory infringers because the
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17253
statute defines infringement in terms of the unauthorized
“use” of a counterfeit mark. But § 1117(c) does not require
defendants to “use . . . [the] counterfeit mark.” It applies so
long as the “case involves such use.” Id. (emphasis added). At
bottom, Appellants urge us to hold that a defendant may avoid
the consequences of contributory liability (i.e., statutory dam-
ages) simply by claiming that the infringing acts (the unautho-
rized uses) were committed by others. But holding a
defendant liable for the unauthorized acts of another is a pri-
mary purpose of the doctrine of contributory trademark liabil-
ity.
Appellants contend that § 1117, read “as a whole,” lays out
“an integrated scheme” for recovery of damages. Under
Appellants’ proposed reading of the statute, damages for con-
tributory infringement involving the use of a counterfeit mark
may only be awarded under § 1117(b), which requires courts
“assessing damages under subsection (a)” to treble the award
if the violation consists of “providing goods or services neces-
sary” to the commission of an intentional, knowing use of a
counterfeit mark. § 1117(b)(2). Appellants ignore, however,
that “a plaintiff may eschew actual damages under § 1117(a)
and elect to seek statutory damages under § 1117(c).” K&N
Eng’g, Inc. v. Bulat, 510 F.3d 1079, 1082 (9th Cir. 2007).
b. Likelihood of Confusion
[10] The district court instructed the jury that “[t]here is a
likelihood of confusion . . . when the offending mark is a
counterfeit mark, or a mark virtually identical to a previously
registered mark coupled with the intent to pass off or borrow
from established good will.” Appellants urge that this instruc-
tion misstates the law. They cite our decision in Kendall-
Jackson Winery, Ltd. v. E. & J. Gallo Winery, where we held
“that proof of intent to cause confusion is entitled to great
weight, not that it creates a presumption of confusion that
shifts the burden of proof to the other party.” 150 F.3d 1042,
1052 n.11 (9th Cir. 1998) (citing Fuddruckers, Inc. v. Doc’s
17254 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
B.R. Others, Inc., 826 F.2d 837, 844-45 (9th Cir. 1987)). But
the district court’s instruction specified that the presumption
arises when intent to cause confusion is coupled with the use
of a counterfeit mark or a mark virtually identical to a previ-
ously registered mark. This formulation accurately tracks the
law. We have approvingly cited Judge Learned Hand’s for-
mulation of the presumption:
[T]he late comer who deliberately copies the dress of
his competitors already in the field, must at least
prove that his effort has been futile . . . . He may
indeed succeed in showing that it was; that, however
bad his purpose, it will fail in execution; if he does,
he will win . . . . But such an intent raises a presump-
tion that customers will be deceived.
HMH Publ’g Co. v. Brincat, 504 F.2d 713, 720 n.12 (9th Cir.
1974) (quoting My-T-Fine Corp. v. Samuels, 69 F.2d 76, 77
(2d Cir. 1934)). See also Brookfield Commc’ns, Inc. v. W.
Coast Entm’t Corp., 174 F.3d 1036, 1056 (9th Cir. 1999) (“In
light of the virtual identity of marks, if they were used with
identical products or services likelihood of confusion would
follow as a matter of course.”).
c. Definition of “Counterfeit Mark”
[11] To claim statutory damages under 15 U.S.C.
§ 1117(c), Louis Vuitton had to prove that the goods traf-
ficked by the direct infringers were “counterfeit” as that term
is defined in § 1116(d). Section 1116(d) specifies that a coun-
terfeit mark for purposes of § 1117(c) is “a counterfeit of a
mark that is registered on the principal register in the United
States Patent and Trademark Office for such goods or services
sold, offered for sale, or distributed and that is in use, whether
or not the person against whom relief is sought knew such
mark was so registered.” § 1116(d)(1)(B)(i). Appellants con-
tend that the district court erred because the jury instructions
did not define the term “counterfeit mark.”
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17255
[12] This contention has no merit. Section 1116(d) requires
that the mark in question be (1) a non-genuine mark identical
to the registered, genuine mark of another, where (2) the gen-
uine mark was registered for use on the same goods to which
the infringer applied the mark, Idaho Potato Comm’n v. G &
T Terminal Packaging, Inc., 425 F.3d 708, 721 (9th Cir.
2005). The district court’s Closing Instructions and Supple-
mental Instruction Number 1 adequately explained this
requirement.
[13] Appellants further urge that there was no evidence to
support a finding that six of the marks were counterfeit. We
reject this challenge to the sufficiency of the evidence. Sub-
stantial evidence supports the jury’s verdict. See Johnson, 251
F.3d at 1227 (“A jury’s verdict must be upheld if it is sup-
ported by substantial evidence.”).
2. The Damage Awards
Under 17 U.S.C. § 504(c), the statutory maximum for will-
ful copyright infringement is $150,000 “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.”
Under 15 U.S.C. § 1117(c)(2), the statutory maximum for
willful trademark infringement involving counterfeit marks
now is $2,000,000 “per counterfeit mark per type of goods or
services sold, offered for sale, or distributed, as the court con-
siders just.” But the statutory maximum at the outset of litiga-
tion in this case was $1,000,000, not $2,000,000, and the
parties agreed to abide by the lower amount. The jury
awarded statutory damages of $10,500,000 per defendant for
willful contributory infringement of thirteen of Louis Vuit-
ton’s trademarks and $300,000 per defendant for willful con-
tributory infringement of two of Louis Vuitton’s copyrights.
§§ 504(c), 1117(c)(2). The district court held that these
awards did not violate the statutory maximums, noting that
the total award “amounts to approximately $807,692 per
17256 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
trademark per Defendant and $150,000 per copyright per
Defendant.” The court did not specify whether the awards
were separate awards for which Appellants were separately
liable, or if Appellants were jointly and severally liable for the
full amount.
[14] With respect to copyright, “when statutory damages
are assessed against one defendant or a group of defendants
held to be jointly and severally liable, each work infringed
may form the basis of only one award, regardless of the num-
ber of separate infringements of that work.” Columbia Pic-
tures Television v. Krypton Broad. of Birmingham, Inc., 106
F.3d 284, 294 (9th Cir. 1997), rev’d on other grounds, Feltner
v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998)).
Statutory damages for copyright infringement are authorized
by 17 U.S.C. § 504(c), but the text of the statute specifies that
a successful plaintiff may receive “an award of statutory dam-
ages for all infringements involved in the action, with respect
to any one work, for which any one infringer is liable individ-
ually, or for which any two or more infringers are liable
jointly and severally.” § 504(c)(1). The committee notes clar-
ify:
Where the infringements of one work were commit-
ted by a single infringer acting individually, a single
award of statutory damages would be made. Simi-
larly, where the work was infringed by two or more
joint tortfeasors, the bill would make them jointly
and severally liable for an amount in the [statutory]
range. However, 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.
17 U.S.C. § 504, Notes of Committee on the Judiciary, H.R.
Rep. No. 94-1476 (1976). Stated another way, a plaintiff may
receive a single statutory award for all infringements of any
one copyrighted work from either (1) any one defendant,
LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS 17257
where that defendant is separately liable or (2) multiple defen-
dants, where those defendants are jointly and severally liable.
[15] The verdict form invited the jury to specify a separate
statutory damage award against each defendant, and then to
calculate the total amount of the award for copyright dam-
ages. In the absence of further guidance explaining the statu-
tory requirement, this was error. There was no legal basis for
multiplying the award by the number of defendants. Cf. 18
C.J.S. Copyright § 127 (2011) (“Only a single award of statu-
tory damages within the statutory limits may be made for all
infringements involved in the action with respect to any one
work, except where multiple defendants are not jointly lia-
ble.”) (footnotes omitted). As Appellants point out, the district
court’s total award for copyright infringement is $600,000 for
two copyrighted works, an amount that is double the statutory
maximum of $150,000 per work. Statutory damages reach a
maximum based on the number of protected works, not the
number of defendants.
[16] With respect to damages for contributory trademark
infringement, logic compels the same result. Like 17 U.S.C.
§ 504(c), 15 U.S.C. § 1117(c) entitles a plaintiff to an award,
not multiple awards. A learned treatise counsels that “[t]he
body of case law developed to interpret the similar statutory
damages provision in copyright law should prove helpful in
applying the counterfeit statutory damages option.” J. Thomas
McCarthy, McCarthy on Trademarks & Unfair Competition
§ 30:95 (4th ed. 1996) (footnotes omitted). Louis Vuitton
cites no authority to the contrary. When combined, the awards
of $10,500,000 per defendant exceed the statutory maximum.
[17] Because it is clear from the jury verdict form that the
jury found each defendant liable for $10,500,000 in calculated
statutory damages for contributory trademark infringement
and $300,000 in calculated statutory damages for contributory
copyright infringement, a new trial on the issue of damages
is unnecessary. Instead, the damages as established by the
17258 LOUIS VUITTON MALLETIER v. AKANOC SOLUTIONS
jury may be implemented by making Akanoc and Chen
jointly and severally liable for single awards in those
amounts.
E. Conclusion
For the reasons expressed above, we affirm the district
court on all issues of liability raised by the appeal and cross-
appeal. But we vacate the judgment and remand with instruc-
tions that the district court award statutory damages in the
amount of $10,500,000 for contributory trademark infringe-
ment and $300,000 for contributory copyright infringement,
for which Akanoc and Chen shall be jointly and severally lia-
ble. The parties shall bear their own costs.
VACATED AND REMANDED WITH INSTRUC-
TIONS.