Sony BMG Music Entertainment v. Tenenbaum

United States Court of Appeals
For the First Circuit

Nos. 10-1883, 10-1947, 10-2052

SONY BMG MUSIC ENTERTAINMENT, ET AL.,

Plaintiffs, Appellants/Cross-Appellees,

v.

JOEL TENENBAUM,

Defendant, Appellee/Cross-Appellant.

APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Nancy Gertner, U.S. District Judge]

Before

Lynch, Chief Judge,
Torruella and Thompson, Circuit Judges.

Paul D. Clement, with whom Jeffrey S. Bucholtz, Erin E.
Murphy, King & Spalding, LLP, Timothy M. Reynolds, Eve G. Burton,
Holme, Roberts & Owen, LLP, Matthew J. Oppenheim, and Jennifer L.
Pariser were on brief, for plaintiffs-appellants.
Jeffrey Clair, with whom Tony West, Assistant Attorney
General, Carmen Ortiz, United States Attorney, and Scott R.
McIntosh were on brief, for the United States as plaintiff-
appellant.
Charles R. Nesson and Jason Harrow for defendant-appellee.
Julie A. Ahrens, with whom Anthony T. Falzone, Stanford Law
School Center for Internet & Society, Michael Barclay, Corynne
McSherry, Electronic Frontier Foundation, Jason M. Schultz,
Samuelson Law, Technology & Public Policy Clinic, were on brief for
Electronic Frontier Foundation, amicus curiae.
September 16, 2011
 LYNCH, Chief Judge. Plaintiffs, the recording companies

Sony BMG Music Entertainment, Warner Brothers Records Inc., Arista

Records LLC, Atlantic Recording Corporation, and UMG Recordings,

Inc. (together, "Sony"), brought this action for statutory damages

and injunctive relief under the Copyright Act, 17 U.S.C. § 101 et

seq. Sony argued that the defendant, Joel Tenenbaum, willfully

infringed the copyrights of thirty music recordings by using file-

sharing software to download and distribute those recordings

without authorization from the copyright owners.

The district court entered judgment against Tenenbaum as

to liability. The jury found that Tenenbaum's infringement of the

copyrights at issue was willful and awarded Sony statutory damages

of $22,500 for each infringed recording, an award within the

statutory range of $750 to $150,000 per infringement that Congress

established for willful conduct. See 17 U.S.C. § 504(c).

Upon Tenenbaum's motion for a new trial or remittitur,

the district court skipped over the question of remittitur and

reached a constitutional issue. It reduced the damage award by a

factor of ten, reasoning that the award was excessive in violation

of Tenenbaum's due process rights. See Sony BMG Music Entm't v.

Tenenbaum, 721 F. Supp. 2d 85 (D. Mass. 2010).

The parties have cross-appealed. Sony argues the

district court erred, for a number of reasons, in reducing the

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jury's award of damages and seeks reinstatement of the full award.

It defends the liability and willfulness determinations.

Tenenbaum challenges both liability and damages. He

challenges the Copyright Act's constitutionality and the

applicability of the Copyright Act and its statutory damages

provision to his conduct. Tenenbaum also argues that the district

court committed various errors that require a new trial, and that

a further reduction of the damage award is required by the due

process clause.

The United States, intervening to defend the

constitutionality of the Copyright Act, argues that the district

court erred in bypassing the question of common law remittitur to

reach a constitutional issue.

We reject all of Tenenbaum's arguments and affirm the

denial of Tenenbaum's motion for a new trial or remittitur based on

claims of error as to the application of the Copyright Act and

error as to the jury instructions. However, the court erred when

it bypassed Tenenbaum's remittitur arguments based on excessiveness

of the statutory damages award and reached the constitutional due

process issue. We agree with the United States that the doctrine

of constitutional avoidance requires consideration of common law

remittitur before consideration of Tenenbaum's due process

challenge to the jury's award. We reverse the reduction in

damages, reinstate the original award, and remand for consideration

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of the common law remittitur question. We comment that this case

raises concerns about application of the Copyright Act which

Congress may wish to examine.

I.

Background

A. District Court Proceedings

Sony brought this action against Tenenbaum in August

2007, seeking statutory damages and injunctive relief pursuant to

the Copyright Act. Sony pursued copyright claims against Tenenbaum

for only thirty copyrighted works, even though it presented

evidence that Tenenbaum illegally downloaded and distributed

thousands of copyrighted materials.

Sony's complaint elected to seek statutory, not actual

damages, pursuant to 17 U.S.C. § 504(c). For each act of

infringement, § 504(c) establishes an award range of $750 to

$30,000 for non-willful infringements, and a range of $750 to

$150,000 for willful infringements.

Tenenbaum filed several pre-trial motions, including a

motion to dismiss Sony's complaint on the ground that the Copyright

Act is unconstitutional.1 After the United States intervened to

1
Tenenbaum argued that the statutory damages available
under 17 U.S.C. § 504(c) are excessive so as to violate due
process, and that the Copyright Act effectively creates an
unconstitutional delegation of prosecutorial functions by creating
a private right of action to enforce copyright protections. The
second argument is not made on appeal.

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defend the constitutionality of the Act, the district court

rejected Tenenbaum's motion without prejudice to allow Tenenbaum to

challenge the constitutionality of any award ultimately issued by

the jury. The district court also considered and rejected a fair

use defense put forth by Tenenbaum.

A five-day jury trial was held from July 27 to July 31,

2009. Following the conclusion of testimony, the district court

partially granted Sony's motion for judgment as a matter of law,

holding that Sony owned the thirty copyrights at issue and that

Tenenbaum infringed those copyrights through his downloading and

distribution activities. The court left to the jury the questions

of (1) whether Tenenbaum’s infringement was willful and (2) the

amount of statutory damages to be awarded. In instructing the

jury, the court informed it of the statutory range Congress had

established for willful and non-willful infringements and

articulated a non-exhaustive list of factors it could consider in

determining the damage award.

The jury found that Tenenbaum had willfully infringed

each of Sony's thirty copyrighted works. The jury returned a

damage award, within the statutory range, of $22,500 per

infringement, which yielded a total award of $675,000.

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 Tenenbaum filed a post-trial motion seeking a new trial

on various grounds2 or a reduction of the jury's award. Tenenbaum

argued that although the jury's award fell within the statutory

range prescribed by Congress, (1) common law remittitur was both

available to the court and appropriate in this case, and (2) the

award was excessive such that it violated due process. The court

rejected Tenenbaum's arguments for a new trial.

Regarding the size of the award, the court declined to

decide the common law remittitur issue, based on its assumption

that Sony would not agree to a reduction of the award and that

remittitur would only necessitate a new trial on the issue of

damages, and that even after a new trial the same issue of

constitutional excessiveness would arise, so, in its view decision

on the issue was inevitable. The court itself then found that the

award violated due process, over objections that it utilized an

impermissible standard, and reduced the award from $22,500 per

infringement to $2,250 per infringement for a total award of

$67,500.

2
He argued a new trial should be granted on the grounds
that the court had erred in rejecting Tenenbaum's fair use defense;
that the court erred in its evidentiary ruling to exclude portions
of a November 2005 letter from Tenenbaum in which he offered to
destroy any illegally downloaded files as part of settlement
negotiations; that the court's jury instructions were improper,
primarily because they informed the jury of the statutory range for
damages; and that statutory damages should not be available to Sony
because Sony never offered evidence that they suffered more than
nominal damages.

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B. Factual Background

We recite the underlying facts in the light most

favorable to the jury's verdict. Analysis Grp., Inc. v. Cent. Fl.

Invs., Inc., 629 F.3d 18, 20 (1st Cir. 2010).

1. The Music Recording Industry and Peer-to-Peer
Networks

Plaintiffs are several of the largest recording companies

in the United States, and engage in discovering, developing, and

marketing music recording artists and distributing the musical

works those artists record. They hold exclusive rights to copy and

distribute various music recordings under United States copyright

law, including the thirty recordings at issue in this case, and

their primary source of revenue is the sale of those recordings.

Plaintiffs only sell copies of their copyrighted

recordings for profit. They never sell licenses to their

copyrighted works that include rights to upload recordings to the

internet for public consumption. The value of such a blanket

license would be enormous, as the grant of such a license would

deprive the companies of their source of income and profits and

essentially drive them out of business.3

3
A representative of Universal Music Group testified, "If
the suggestion is that we could somehow give these [recordings] to
people and tell them, do with them what you will, we lose complete
control over our assets, we cannot make money off those assets, and
that defeats the whole purpose of our existence."

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 In the late 1990s, copyrighted music recordings,

including those held by the plaintiffs, began to appear on file-

sharing software called "peer-to-peer networks" without the

authorization of the copyright holders.

Peer-to-peer networks enable individuals both to make

digital files stored on their own computers available to other

network users and to download such files from the computers of

others. Files shared between users of these networks do not pass

through a central computer, but are instead exchanged directly from

one user's computer to another. Through the use of these peer-to-

peer networks, the unauthorized and illegal downloading and

distribution of copyrighted materials--especially music recordings-

-became commonplace. See Metro-Goldwyn-Mayer Studios Inc. v.

Grokster, Ltd., 545 U.S. 913, 919-20, 923 (2005) (describing

operation of peer-to-peer networks and noting that their advent has

likely resulted in copyright infringement on a "staggering" scale).

Because music recordings are loaded onto peer-to-peer networks in

digital form, recordings downloaded from peer-to-peer networks are

virtually indistinguishable from recordings purchased through

lawful means, making enforcement difficult.

The proliferation of these networks from 1999 onward and

the piracy they enable has had a significant negative impact on the

recording industry. Between 1999 and 2008, the recording industry

as a whole suffered a fifty percent drop in both sales and

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revenues, a figure plaintiffs attribute to the rise of illegal

downloading. This reduction in revenues has, in turn, diminished

recording companies' capacities to pursue, develop and market new

recording artists. It also affected the companies' employees. The

loss in revenues has resulted in a significant loss of industry

jobs. Sony BMG Music Entertainment and Warner Music Group, for

example, each have suffered a fifty percent reduction in workforce

since 2000.

Shortly after peer-to-peer networks first appeared,

plaintiffs acknowledged the threat they posed to their industry and

initiated a broad campaign to address the illegal infringement of

copyrighted materials. They started educating the public that

downloading and distributing copyrighted songs over peer-to-peer

networks constituted illegal copyright infringement. Plaintiffs

also brought legal actions as part of their campaign, and initially

targeted the proprietors of peer-to-peer networks, not the

individuals who actually used those networks to illegally procure

and distribute copyrighted materials. See, e.g., id. at 940

(holding network may be held liable for copyright infringement

undertaken by third party network users where network promotes such

infringements even if network has other, legal uses). Although

these litigation efforts succeeded at shutting down particular

networks, individual infringers continued to engage in illegal

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conduct by finding new peer-to-peer networks through which to

download copyrighted songs.

Consequently, record companies began to identify and

pursue legal actions against individual infringers. The industry

identified Internet Protocol (IP) addresses of users known to be

engaged in a high volume of downloading and distributing

copyrighted materials, and initiated lawsuits against those users.

See Atl. Recording Corp. v. Heslep, No. 06-CV-132, 2007 WL 1435395

at *1-3 (N.D. Tex. May 16, 2007) (detailing recording industry's

litigation efforts). These suits began in 2002 and were widely-

publicized.4

2. Tenenbaum's Conduct

Tenenbaum was an early and enthusiastic user of peer-to-

peer networks to obtain and distribute copyrighted music

recordings. He began downloading and distributing copyrighted

works without authorization in 1999. In that year, he installed

the Napster peer-to-peer network on his desktop computer at his

family's home in Providence, Rhode Island. He used Napster both to

download digital versions of copyrighted music recordings from

other network users and to distribute to other users digital

4
We are aware of only one other action against an
individual that has proceeded to trial. See Capitol Records, Inc.
v. Thomas-Rasset, No. 06-1497, 2011 WL 3211362 (D. Minn. July 22,
2011).

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versions of copyrighted music recordings already saved on his own

computer.

Because it enabled copyright infringement, see A&M

Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001), the

Napster network was shut down in 2001. This did not stop Tenenbaum

from downloading and distributing copyrighted works; he instead

began using other peer-to-peer networks for the same illegal

purposes. These networks included AudioGalaxy, iMesh, Morpheus,

Kazaa, and Limewire. Tenenbaum shifted to these other networks

after Napster's termination despite his knowledge that Napster was

forced to close on account of a lawsuit brought against it for

copyright infringement.

Tenenbaum continued to download and distribute

copyrighted materials through at least 2007. During that time span

he accessed a panoply of peer-to-peer networks for these illegal

purposes from several computers. From 1999 until 2002, he

primarily downloaded and distributed copyrighted works to and from

his desktop computer at his family's home in Providence. He left

home to attend Goucher College in Baltimore, Maryland, in 2002, at

which point he began using a laptop to download and distribute

copyrighted works. Following his graduation from Goucher in 2006,

he began using a second laptop for these purposes in tandem with

his other computers. Over the duration of Tenenbaum's conduct, he

intentionally downloaded thousands of songs to his own computers

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from other network users. He also purposefully made thousands of

songs available to other network users. He did this in the period

after lawsuits were brought, and publicized, against individuals

who downloaded and distributed music without authorization. At one

point in time in 2004 alone, Tenenbaum had 1153 songs on his

"shared-directory" on the Kazaa network.5 Any of those files

within Tenenbaum's shared directory could be easily downloaded by

other Kazaa users. Although there was no way to determine the

exact number of times other users had downloaded files from

Tenenbaum's shared directory, it was frequent. Most of the

networks Tenenbaum used had a "traffic tab" that informed him of

the frequency with which other users were downloading his shared

files. Tenenbaum regularly looked at the traffic tab, and he

admitted it "definitely wasn't uncommon" for other users to be

downloading materials from his computer.

Tenenbaum knew that his conduct, both his downloading and

distribution, was illegal and received warnings the industry had

started legal proceedings against individuals. He received several

warnings regarding the potential liability his actions carried with

5
MediaSentry, the third party firm that Sony retained to
identify individuals engaged in the illegal downloading and
distribution of copyrighted recordings, discovered the 1153 songs
in Tenenbaum's Kazaa shared-directory on August 10, 2004.
MediaSentry then downloaded portions of 1148 of the 1153 files and
verified that the files were the actual songs identified in each
file's title, and that Tenenbaum had actually made copyrighted
materials available for unauthorized copying.

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them. While Tenenbaum was at Goucher college in 2002, his father,

Dr. Arthur Tenenbaum, called him to warn him that his use of peer-

to-peer networks to obtain and distribute music recordings was

unlawful. Dr. Tenenbaum knew that his son was illegally

downloading music because, prior to leaving for college, Tenenbaum

had showed his father the array of songs that could be downloaded

from the Kazaa network. After Dr. Tenenbaum became aware that

lawsuits were being brought against individuals who used file-

sharing programs to download and distribute music, he instructed

Tenenbaum not to continue to engage in such conduct. Dr. Tenenbaum

testified that, during their conversation, Tenenbaum did not appear

concerned about the consequences of his actions. Despite his

father's request, Tenenbaum continued his illegal activity.

Tenenbaum also received direct warnings from Goucher

College. Each year Tenenbaum received a Goucher student handbook

warning that using the college's network to download and distribute

copyrighted materials was illegal, but he did so anyway. The

handbook also warned that illegally downloading and distributing

music files could subject the copyright infringer to up to $150,000

of liability per infringement, alerting Tenenbaum to his potential

exposure for violating the law. The Fall 2003 handbook issued to

Tenenbaum at the start of his sophomore year cautioned:

To avoid the risk of potential lawsuits due to
copyright infringement, the college is
advising students to carefully restrict the
use of file sharing applications to material

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 that is legal to share. . . . Persons found to
be infringed may be held liable for
substantial damages and attorneys fees. The
law entitles a plaintiff to seek statutory
damages of $150,000 for each act of willful
infringement. . . . In addition, if you
violate copyright law by engaging in file
sharing, you may be subject to discipline and
other applicable college policy.

Tenenbaum received handbooks containing similar language during

each of his four years at Goucher, but was unfazed and continued.

Tenenbaum also knew the college took this seriously and

had itself acted to stop this illegal activity. By the end of his

undergraduate studies at Goucher, the school had implemented so

many technological restrictions on its network--which he knew were

designed to prevent illegal downloading of music files--that peer-

to-peer programs "wouldn't work at all."

The Tenenbaums' internet service provider at home in

Providence, Cox Communications, also warned against using the

internet to illegally infringe copyrighted materials. In 2003, for

example, the terms of service they offered to their customers

prohibited customers from using the internet service "to post,

copy, transmit or disseminate any content that infringes the

patents, copyrights, trade secrets, trademarks or proprietary

rights of any party." It further provided that "Cox assumes no

responsibility, and you assume all risks regarding the

determination of whether material is in the public domain or may

otherwise be used by you for such purposes."

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 In a September 2005 letter, plaintiffs themselves

informed Tenenbaum that he had been detected infringing copyrighted

materials and notified him that his conduct was illegal. The

letter stated: "We are writing in advance of filing suit against

you in the event that you have an interest in resolving these

claims."6 The letter urged Tenenbaum to consult with an attorney

immediately, and explained that the recording companies were

prepared to initiate a legal action against Tenenbaum because of

the severe impact of his actions on the industry:

Copyright theft is not a victimless crime.
People spend countless hours working hard to
create music -- not just recording artists and
songwriters, but also session players, backup
singers, sound engineers and other
technicians. In addition, the music industry
employ thousands of other people, such as CD-
plant workers, warehouse personnel, record
store clerks and developers of legitimate
online music services. They all depend on
sale of recordings to earn a living. So do
record companies, which routinely invest
millions of dollars to discover and sign
promising artists, and then to produce and
market their recordings. In addition, piracy
eats away at the investment dollars available
to fund new music and, in effect, erodes the
future of music.

The letter also instructed Tenenbaum to preserve any relevant

evidence including "the entire library of recordings that you have

6
Tenenbaum contacted Sony as a result of the letter.
While there were some settlement discussions, the parties were
unable to resolve the matter.

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made available for distribution as well as any recordings you have

downloaded . . . ."7

The letter from Sony resulted in a conversation between

Tenenbaum and his mother regarding his use of peer-to-peer

networks. During that conversation, Tenenbaum claimed that it was

"impossible . . . to know" who was responsible for the

infringements referenced in Sony's letter.

Despite these warnings and his knowledge that he was and

had been engaging in illegal activity which could subject him to

liability of up to $150,000 per infringement, Tenenbaum continued

the illegal downloading and distribution of copyrighted materials

until at least 2007--a full two years after receiving the letter

from Sony. He stopped his activity only after this lawsuit was

filed against him.

Strong evidence established that Tenenbaum lied in the

course of these legal proceedings in a number of ways. In his

initial responses to Sony's discovery requests, Tenenbaum

represented he "had no knowledge or recollection of online media

distribution systems used or any dates" of such use. He also

denied creating or using the "sublimeguy14@kazaa" account name that

7
After receiving this letter, Tenenbaum nonetheless took
his laptop computer for repairs and had its operating system
reinstalled and its hard drive reformatted. At trial, Tenenbaum
maintained that he only had work done on the computer because "the
thing wouldn't run," and that he instructed the computer repairman
not to tamper with the music files stored on his computer.

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he had used to access various peer-to-peer networks, and he denied

any knowledge of whether a peer-to-peer network had been installed

on his computer.

At trial, however, Tenenbaum admitted that each of these

statements he had made was false. He made numerous admissions in

his testimony as to the scope of his conduct from 1999 until 2007.

He admitted to installing peer-to-peer networks on his computer,

including Kazaa, Limewire, Audio Galaxy, iMesh, and Morpheus, so

that he could download and upload music with "the least amount of

wasted effort." He admitted that he created the

"sublimeguy14@kazaa" user account, downloaded songs from the

networks using that account, and placed materials in shared folders

on those networks so that other users could download the materials

onto their own computers. On some occasions, he believed he was

the first person to upload a particular music recording onto the

network. He testified that he placed between 600 and 5,000 songs

on the Goucher College peer-to-peer network for others to download.

He further testified that he also copied illegally downloaded songs

onto CDs and USB drives, both for personal use and to give to other

individuals. He also explicitly admitted liability for downloading

and distributing the thirty sound recordings at issue in the case.

Before the trial, Tenenbaum also attempted to shift

responsibility for his conduct to other individuals by claiming

they could have used his computer in order to illegally download

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and distribute the copyrighted works. These individuals included

a foster child living in his family's home, burglars who had broken

into the home, his family's house guest, and his own sisters. His

sisters and others he blamed testified that they had never

illegally downloaded music and had no knowledge of who installed

the file sharing software on Tenenbaum's computer.

Finally, when asked at trial about his efforts to

attribute the blame for his actions to others, Tenenbaum admitted

his own responsibility: "I used the computer, I uploaded, I

downloaded music, this is what I did, that's how it is, I did it."

II.

Tenenbaum's Challenges to the Constitutionality
and Applicability of the Copyright Act

Tenenbaum presents three arguments that he is not subject

to the Copyright Act. First, Tenenbaum argues that the Copyright

Act is unconstitutional under Feltner v. Columbia Pictures

Television, Inc., 523 U.S. 340 (1998). Feltner held that the

Seventh Amendment entitles a defendant to have a jury determine the

amount of statutory damages under § 504(c), although Congress had

provided that judges, not juries, would render statutory damage

awards. He argues that Feltner somehow renders the statutory

damages provision unconstitutional until Congress chooses to amend

the statute.

Second, Tenenbaum argues that Congress did not intend the

Act to impose either liability or statutory damages where the

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copyright infringements at issue amount to what he calls "consumer

copying."

Third, Tenenbaum argues that statutory damages are

unavailable to Sony because, in his view, statutory damages, as a

matter of Congressional intent, cannot be awarded absent a showing

of actual harm, and he claims there was no harm.

We review such legal and constitutional questions de

novo. United States v. S. Union Co., 630 F.3d 17, 24 (1st Cir.

2010). None of these arguments has merit.

A. Constitutionality of the Copyright Act After Feltner

Tenenbaum did not clearly make the argument that Feltner

renders 504(c) unconstitutional to the district court, and so it is

waived. See Dillon v. Select Portfolio Servicing, 630 F.3d 75, 82

(1st Cir. 2011).

Even were the argument not waived, it is both wrong and

foreclosed by our circuit precedent. In Segrets, Inc. v. Gillman

Knitwear Co., 207 F.3d 56 (1st Cir. 2000), we considered Feltner’s

impact on a claim for statutory damages under § 504(c). We held

that Feltner required remand to the district court so that a jury

could determine both whether the infringements at issue were

willful and the proper measure of statutory damages, necessarily

rejecting any notion that statutory damages under § 504(c) were no

longer available after Feltner. Id. at 63. We followed the same

reasoning in Venegas-Hernandez v. Sonolux Records, 370 F.3d 183,

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191-94 (1st Cir. 2004) (interpreting and applying § 504(c) after

Feltner).

Our sister circuits have likewise concluded that Feltner

did not render § 504(c) unconstitutional. See, e.g., BMG Music v.

Gonzalez, 430 F.3d 888, 892-93 (7th Cir. 2005) (upholding statutory

damages award under § 504(c) despite claim that Feltner rendered

such an award unconstitutional); Columbia Pictures Television, Inc.

v. Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1192 (9th

Cir. 2001) (rejecting argument that Feltner rendered "statutory

damages provision of the Copyright Act . . . unconstitutional in

its entirety" and concluding Feltner "in no way implies that

copyright plaintiffs are no longer able to seek statutory damages

under the Copyright Act").

This conclusion is also required by Supreme Court

precedent. Where the Court has found a particular federal statute

to deprive defendants of jury rights in violation of the Seventh

Amendment,8 the Court has deemed the offending portions of the

statute inoperative while leaving the statute otherwise intact.

8
It is also clear that Congress continues to intend that
the Copyright Act be fully operational as to statutory damages
after Feltner. Congress amended § 504(c) after the Supreme Court
had decided Feltner. See Digital Theft Deterrence and Copyright
Damages Improvement Act of 1999, Pub. L. No. 106-160, 113 Stat.
1774 (amendment increasing the statutory damage boundaries).
"Congress is presumed to be aware of . . . [a] judicial
interpretation of a statute and to adopt that interpretation if it
re-enacts a statute without change." Forest Grove Sch. Dist. v.
T.A., 129 S. Ct. 2484, 2492 (2009) (quoting Lorillard v. Pons, 434
U.S. 575, 580 (1978)).

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See, e.g., Tull v. United States, 481 U.S. 412, 417 n.3 (1987)

(upholding enforceability of Clean Water Act even though "[n]othing

in the language of the . . . Act or its legislative history implies

any congressional intent to grant defendants the right to a jury

trial" and the Seventh Amendment required that defendants be given

such a jury trial right).

B. The Copyright Act and "Consumer-Copier" and Publisher-
Copier Copyright Infringement

Tenenbaum argues to us that Congress never intended for

the Copyright Act to impose liability or statutory damages against

what he calls "consumer copiers." That argument was not presented

to the district court and is waived.9

Even were the argument not waived, it must fail. We

start with the inaccuracy of the labels that Tenenbaum's argument

uses. Tenenbaum is not a "consumer-copier," a term he never

clearly defines. He is not a consumer whose infringement was

merely that he failed to pay for copies of music recordings which

he downloaded for his own personal use. Rather, he widely and

repeatedly copied works belonging to Sony and then illegally

distributed those works to others, who also did not pay Sony.

Further, he received, in turn, other copyrighted works for which he

9
Although in the district court Tenenbaum raised the
argument that the Copyright Act does not extend to consumer conduct
as a reason why the jury’s statutory damage award should be
reduced, he did not present the argument, as he does here, as a
basis to exempt his actions from liability altogether.

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did not pay. Nor can Tenenbaum assert that his was merely a "non-

commercial" use and distribution of copyrighted works as those

terms are used elsewhere in the Act.10 His use and distribution was

for private gain and involved repeated and exploitative copying.

Our analysis begins with the language of the Act, which

we "construe . . . in its context and in light of the terms

surrounding it." Succar v. Ashcroft, 394 F.3d 8, 23 (1st Cir.

2005) (quoting Leocal v. Ashcroft, 543 U.S. 1, 9 (2004)) (internal

quotation marks omitted). "It is well established that, when the

statutory language is plain, we must enforce it according to its

terms." Jimenez v. Quarterman, 555 U.S. 113, 118 (2009).

In addition to the factual inaccuracy of his labels,

Tenenbaum's argument that the Copyright Act immunizes his conduct

from liability is contradicted by the plain language of the

statute. The Copyright Act does not make the distinctions he urges

between "consumer" and "non-consumer" infringement of copyrighted

10
In the criminal infringement context, Congress has
extended liability to, inter alia, those who infringe "for purposes
of commercial advantage or private financial gain." 17 U.S.C.
§ 506. Congress has made it clear, however, that this designation
applies even absent direct monetary profit. See 17 U.S.C. § 101.
It has defined "financial gain" to include "receipt, or expectation
of receipt, of anything of value, including the receipt of other
copyrighted works." Id.
Under the "fair use" exception, which is not available to
Tenenbaum, what constitutes a commercial use has also been
interpreted broadly. See A&M Records, Inc. v. Napster, Inc., 239
F.3d 1004, 1015 (9th Cir. 2001) ("Direct economic benefit is not
required to demonstrate a commercial use. Rather, repeated and
exploitative copying of copyrighted works, even if the copies are
not offered for sale, may constitute a commercial use.").

-23-
materials by copying and distribution. Instead, the Act renders

those, like Tenenbaum, who use or distribute a copyrighted work

without authorization liable in copyright. Indeed, the Act does

not use the term "consumer" at all, much less as a term excluded

from the category of infringers. Rather, the statute refers to

"anyone" as potential infringers. 17 U.S.C. § 501(a).

The Act explicitly grants owners of "works of

authorship"11 exclusive rights to, inter alia, "reproduce the

copyrighted work in copies or phonorecords" and "distribute copies

or phonorecords of the copyrighted work to the public by sale or

other transfer of ownership, or by rental, lease, or lending." 17

U.S.C. § 106. By the plain language of § 106, copyright owners,

like Sony, have the exclusive right to reproduce copyrighted works

in copies or phonorecords and to distribute those copies or

phonorecords.

The Copyright Act contains no provision that could be

interpreted as precluding a copyright owner from bringing an action

against an infringer solely because the infringer was a consumer of

11
Sound recordings constitute "works of authorship" that
receive copyright protection. See 17 U.S.C. § 102(a)(7).
Tenenbaum implies that digital media should be treated
differently than conventional music recordings. However, 17 U.S.C.
§ 102(a) makes no such distinction, and in fact explicitly provides
that copyright protection exists "in original works of authorship
fixed in any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a
machine or device." (Emphasis added).

-24-
the infringed products or acted with a so-called noncommercial

purpose in his distribution of the works to others. Apart from the

reality that the facts of record support neither characterization,

17 U.S.C. § 501(a) provides that "anyone who violates any of the

exclusive rights of the copyright owner as provided by sections 106

through 122 . . . is an infringer of the copyright." (Emphasis

added). Further, under 17 U.S.C. § 501(b), "the legal or

beneficial owner of an exclusive right under a copyright is

entitled . . . to institute an action for any infringement of that

particular right committed while he or she is the owner of it."

(Emphasis added). Had Congress intended to limit copyright actions

against so-called "consumer infringers" as Tenenbaum hypothesizes,

it easily could have done so. See Ali v. Fed. Bureau of Prisons,

552 U.S. 214, 227-28 (2008). Instead, subject to exceptions not

relevant here, it extended liability to "anyone" who violates a

copyright owner's exclusive rights and allowed those owners to

pursue actions against "any infringement." 17 U.S.C. § 501

(emphasis added).

Moving from liability to damages, Tenenbaum's argument

that statutory damages are not available here is also refuted by

the plain statutory language. Section 504 provides that "an

infringer of copyright is liable for either . . . the copyright

owner's actual damages and any additional profits of the infringer

. . . or statutory damages." (Emphasis added). The statute does

-25-
not condition the availability of either set of damage calculations

on whether the offending use was by a consumer or for commercial

purposes or not.

Congress drew distinctions in the Copyright Act where it

meant to do so. For example, it distinguished between willful and

non-willful infringements, subjecting willful infringers to a

higher cap on statutory damage awards. See 17 U.S.C. § 504(c).

Where Congress wanted the Act to draw distinctions based

on the nature of the use it also did so explicitly, such as with

the fair use defense. See 17 U.S.C. § 107 (providing for fair use

limitation on owner's exclusive rights and identifying the "purpose

and character of the use" including "whether such use is of a

commercial nature or is for nonprofit educational purposes" as a

factor to consider in determining applicability of fair use

limitation).12

Further, where Congress intended to create other

exceptions for solely personal or non-commercial use, it did so

expressly. In two amendments which do not apply here, it drew such

distinctions: (1) the Sound Recording Act of 1971, Pub. L. No.

92-140, 85 Stat. 391, which fully extended federal copyright

protections to sound recordings but exempted certain reproductions

of sound recordings made for personal use, and (2) the Audio Home

12
Tenenbaum does not claim on appeal that his conduct falls
under the fair use doctrine.

-26-
Recording Act of 1992 (AHRA), Pub. L. No. 102-563, 106 Stat. 4237,

codified at 17 U.S.C. § 1001 et seq., which provided some

exemptions in other situations from copyright liability for

infringements "based on the noncommercial use by a consumer."13 17

U.S.C. § 1008.14 These statutes refute Tenenbaum's argument.

Because Congress has enumerated a set of express

exceptions, rules of statutory interpretation instruct that

Congress intended to make no other exceptions than those specified.

See Tenn. Valley Auth. v. Hill, 437 U.S. 153, 188 (1978) (finding

under maxim expressio unius est exclusio alterius that enumerated

exceptions are the sole exceptions intended within the Endangered

Species Act); see also Russello v. United States, 464 U.S. 16, 23

(1983) ("[W]here Congress includes particular language in one

section of a statute but omits it in another section of the same

Act, it is generally presumed that Congress acts intentionally and

purposely in the disparate inclusion or exclusion.") (quoting

13
See Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417, 430 n.11 (1984) (declining to express an opinion on
scope of 1971 Act's exceptions for noncommercial uses).
14
To take the point further, although the AHRA created
immunity for some unauthorized, noncommercial uses of copyrighted
materials, Congress explicitly declined to extend immunity to
individuals who use home computers to copy copyrighted materials.
See 17 U.S.C. § 1001(3); see also Recording Indus. Ass'n of Am. v.
Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1078 (9th Cir. 1999)
("Under the plain meaning of the [AHRA's] definition of digital
audio recording devices, computers (and their hard drives) are not
digital audio recording devices because their 'primary purpose' is
not to make digital audio copied recordings.").

-27-
United States v. Wong Kim Bo, 472 F.2d 720, 722 (5th Cir. 1972))

(internal quotation marks omitted).

The clarity of the statutory text compels the rejection

of Tenenbaum's arguments. When a statute speaks with clarity to an

issue, "judicial inquiry into the statute’s meaning, in all but the

most extraordinary circumstance, is finished." Estate of Cowart v.

Nicklos Drilling Co., 505 U.S. 469, 475 (1992). It is not within

the province of the courts to rewrite Congressional statutes: that

task is "for Congress to accomplish by further legislation."

United States v. Harriss, 347 U.S. 612, 620 (1954); see also Logan

v. United States, 552 U.S. 23, 26-27 (2007) (refusing to stray from

statutory text).

Asking us to ignore the text and the plain meaning of the

statute, Tenenbaum argues Congress was unaware that suits like this

could be brought and so could not have intended the statute to

apply here. The argument is wrong both on the law and on the

facts.

Congress did contemplate that suits like this were within

the Act. Congress last amended the Copyright Act in 1999 to

increase the minimum and maximum awards available under § 504(c).

See Digital Theft Deterrence and Copyright Damages Improvement Act

of 1999, Pub. L. No. 106-160, 113 Stat. 1774. At the time,

Congress specifically acknowledged that consumer-based,

noncommercial use of copyrighted materials constituted actionable

-28-
copyright infringement. Congress found that "copyright piracy of

intellectual property flourishes, assisted in large part by today's

world of advanced technologies," and cautioned that "the potential

for this problem to worsen is great." H.R. Rep. No. 106-216, at 3

(1999). Indeed, the legislative history directly addresses this

concern:

By the turn of the century the Internet is
projected to have more than 200 million users,
and the development of new technology will
create additional incentive for copyright
thieves to steal protected works. The advent
of digital video discs, for example, will
enable individuals to store far more material
than on conventional discs and, at the same
time, produce perfect secondhand copies. . . .
Many computer users are either ignorant that
copyright laws apply to Internet activity, or
they simply believe that they will not be
caught or prosecuted for their conduct. Also,
many infringers do not consider the current
copyright infringement penalties a real threat
and continue infringing, even after a
copyright owner puts them on notice that their
actions constitute infringement and that they
should stop the activity or face legal action.
In light of this disturbing trend, it is
manifest that Congress respond appropriately
with updated penalties to dissuade such
conduct. H.R. 1761 increases copyright
penalties to have a significant deterrent
effect on copyright infringement.

Id.15

15
Tenenbaum argues that the 1999 Amendment pre-dated the
widespread use of peer-to-peer networking sites, and observes that
the 1999 Digital Theft Deterrence Act was first introduced in May
1999, a full month before the launch of Napster's file sharing
network. Again, the factual premise is wrong. The Act was not
signed into law until December 1999, at which point Napster was
itself operational.

-29-
 Even earlier, in 1997, Congress had explicitly amended

the criminal component of the Copyright Act to make clear that

criminal liability for copyright infringement can be imposed even

if an infringer's use of a copyrighted material is noncommercial.

See No Electronic Theft Act (NET Act), Pub. L. No. 105-147, 111

Stat. 2678. The NET Act was enacted in response to United States

v. LaMacchia, 871 F. Supp. 535 (D. Mass. 1994), in which a court

had barred prosecution of a student charged with wire fraud because

even though he enabled others to download copyrighted software

applications at no cost, he received no commercial gain from his

activities and the criminal statute precluded prosecution where

there was no commercial benefit conferred.

Congress made clear that it enacted the NET Act to

"criminalize[] computer theft of copyrighted works, whether or not

the defendant derives a direct financial benefit from the act(s) of

misappropriation, thereby preventing such willful conduct from

destroying businesses, especially small businesses, that depend on

licensing agreements and royalties for survival." H.R. Rep. 105-

339, at 5 (1997).

Moreover, Congress had in 1997 already acknowledged the
advent of "audio-compression" technologies that "permit[]
infringers to transmit large volumes of CD-quality music over the
internet" in enacting the No Electronic Theft Act, Pub. L. No. 105-
147, 111 Stat. 2678. See H.R. Rep. No. 105-339, at 4 (1997).

-30-
 Tenenbaum's argument that we may ignore the plain

language of the statute and Congressional intent because relatively

few lawsuits were brought against those in his position also goes

nowhere. Again, both the factual and legal contentions are wrong.

Even if we assume that copyright owners have historically

chosen first to litigate against the providers of new technologies

of reproduction and dissemination rather than the users of those

new technologies, see Tussey, Technology Matters: The Courts, Media

Neutrality, and New Technologies, 12 J. Intell. Prop. L. 427

(2005), that may best be explained by the owners using a cost-

benefit analysis, and says nothing about Congressional intent.

Historically, the costs of prosecuting infringement actions against

individual users could be thought by owners to have exceeded the

benefits. That the copyright owners have turned to litigation

against individual infringers only underscores that the balance of

the copyright holder's cost-benefit analysis has been altered as

peer-to-peer networks and digital media become more prevalent.

In any event, the argument is legally irrelevant. The

Supreme Court has expressly instructed that courts apply the

Copyright Act to new technologies. In Sony Corp. of America v.

Universal City Studios, Inc., 464 U.S. 417 (1984), the Court

instructed that courts must "[a]pply[] the copyright statute, as it

now reads, to the facts as they have been developed" even though

Congress might ultimately "take a fresh look at this new

-31-
technology, just as it so often has examined other innovations in

the past." Id. at 456.

The Supreme Court has made clear that it is particularly

important for courts to take this tack when faced with novel

Copyright Act issues. "[F]rom its beginning, the law of copyright

has developed in response to significant changes in technology,"

and as "new developments have occurred in this country, it has been

the Congress that has fashioned the new rules that new technology

made necessary." Id. at 430-31. We reject Tenenbaum's invitation

to usurp Congress's legislative authority and to disregard binding

Supreme Court precedent.

C. Statutory Damages under 17 U.S.C. § 504 and Actual Harm

Tenenbaum next argues that the statutory damages

provision is nonetheless inapplicable because, in his view, as a

matter of law there can be no statutory damages where "harm caused

by a particular defendant has not been proved." Again, he is wrong

both as a matter of law and on the facts of record.

The district court properly rejected Tenenbaum's

proffered interpretation of § 504. Section 504 clearly sets forth

two alternative damage calculations a plaintiff can elect: actual

damages and statutory damages. See 17 U.S.C. § 504(a) (providing

that "an infringer of copyright is liable for either . . . the

copyright owner's actual damages and any additional profits of the

infringer . . . or statutory damages") (emphasis added).

-32-
 Under § 504(b), a plaintiff may elect to receive "the

actual damages suffered by him or her as a result of the

infringement, and any profits of the infringer that are

attributable to the infringement and are not taken into account in

computing the actual damages."

Alternatively, under § 504(c), "the copyright owner may

elect, at any time before final judgment is rendered, to recover,

instead of actual damages and profits, an award of statutory

damages for all infringements involved in the action, with respect

to any one work." (Emphasis added). The statute makes clear that

statutory damages are an independent and alternative remedy that a

plaintiff may elect "instead of actual damages."

Section 504's text reflects Congress's intent "to give

the owner of a copyright some recompense for injury done him, in a

case where the rules of law render difficult or impossible proof of

damages or discovery of profits." Douglas v. Cunningham, 294 U.S.

207, 209 (1935). The Supreme Court explained that before statutory

damages were available, plaintiffs, "though proving infringement,"

would often be able to recover only nominal damages and the

"ineffectiveness of the remedy encouraged willful and deliberate

infringement." Id. The Supreme Court has since reaffirmed that

"[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.

-33-
Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 233 (1952)

(upholding statutory damage award of $5,000 for infringement even

when actual damages of only $900 were demonstrated); see also L.A.

Westermann Co. v. Dispatch Printing Co., 249 U.S. 100, 106 (1919)

(finding the language chosen by Congress "shows that something

other than actual damages is intended--that another measure is to

be applied in making the assessment").16

Tenenbaum's argument also rests on the faulty assertion

that Sony did not offer evidence of the harm it suffered as a

result of Tenenbaum's conduct. Tenenbaum downloaded the thirty

copyrighted works at issue and distributed those works to

innumerable network users. Sony presented extensive testimony

regarding the loss in value of the copyrights at issue that

resulted from Tenenbaum's conduct, and the harm of Tenenbaum's

actions to itself and the recording industry, including reduced

income and profits, and consequent job loss to employees.

III.

Tenenbaum's Challenges to the Jury Instructions

Tenenbaum challenges the district court's jury

instructions on several grounds, all but one of which were not

preserved for appeal, and all of which fail.

16
The statute at issue in L.A. Westermann Co. v. Dispatch
Printing Co., 249 U.S. 100 (1919), contained the phrase "in lieu of
actual damages." By contrast, 17 U.S.C. § 504(c) provides that
statutory damages are available "instead of actual damages and
profits." The point is the same.

-34-
 We review preserved challenges to jury instructions de

novo, and "look to the challenged instructions in relation to the

charge as a whole, 'asking whether the charge in its entirety--and

in the context of the evidence--presented the relevant issues to

the jury fairly and adequately.'" Kennedy v. Town of Billerica,

617 F.3d 520, 529 (1st Cir. 2010) (quoting Goodman v. Bowdoin

Coll., 380 F.3d 33, 47 (1st Cir. 2004)). Even if the instructions

were erroneous, we reverse only if the error "is determined to have

been prejudicial based on a review of the record as a whole."

Mass. Eye & Ear Infirmary v. QLT Phototherapeutics, Inc., 552 F.3d

47, 72 (1st Cir. 2009).

Absent adequate objections to the instructions, our

review is for plain error, which requires that Tenenbaum show (1)

that there was error, (2) that it was plain, (3) that it likely

altered the outcome, and (4) that it was sufficiently fundamental

to threaten the fairness, integrity or public reputation of the

judicial proceedings. Gray v. Genlyte Grp., Inc., 289 F.3d 128,

134 (1st Cir. 2002); Estate of Keatinge v. Biddle, 316 F.3d 7, 16

(1st Cir. 2002). "The standard is high, and 'it is rare indeed

for a panel to find plain error in a civil case.'" Diaz-Fonseca v.

Puerto Rico, 451 F.3d 13, 36 (1st Cir. 2006) (quoting Chestnut v.

City of Lowell, 305 F.3d 18, 20 (1st Cir. 2002) (en banc) (per

curiam)).

-35-
A. Tenenbaum's Preserved Challenge to the District Court's
Instruction as to the Statutory Damage Range Under
§ 504(c)

Tenenbaum's only preserved instructional challenge is

that the district court erred by instructing the jury about the

range of statutory damages available to Sony under § 504(c).17 The

district court instructed the jury that "[t]he Copyright Act

entitles a plaintiff to a sum of not less than $750 and not more

than $30,000 per act of infringement (that is, per sound recording

downloaded or distributed without license) as you consider just."

The court further instructed: "If you find that the defendant's

infringement of a copyrighted work was willful, the Copyright Act

entitles a plaintiff to a sum of not less than $750 and not more

than $150,000 per act of infringement (that is, per sound recording

downloaded or distributed without license), as you consider just."

The court then instructed as to a set of non-exhaustive factors

that the jury might wish to consider in issuing its award,

including:

the nature of the infringement; the
defendant's purpose and intent, the profit
that the defendant reaped, if any, and/or the

17
The statutory damage range was also set forth on the jury
verdict form. "District courts have 'considerable discretion about
the formulation, nature, and scope of the issues' on a special
verdict form." Uphoff Figueroa v. Alejandro, 597 F.3d 423, 434
(1st Cir. 2010) (quoting 9B Wright, Miller & Kane, Federal Practice
and Procedure § 2506, at 119 (2d ed. 1995)). Because we conclude
that the district court did not err in instructing the jury of the
statutory damage range under § 504(c), Tenenbaum's like challenge
to the jury verdict form also fails.

-36-
 expense that the defendant saved; the revenue
lost by the plaintiff as a result of the
infringement; the value of the copyright; the
duration of the infringement; the defendant's
continuation of infringement after notice or
knowledge of copyright claims; and the need to
deter this defendant and other potential
infringers.

Tenenbaum does not object to that portion of the instructions.

Tenenbaum argues that the statutory damage range should

not have been disclosed to the jury and that the instructions

presented the statutory damage range "unmoored from the overall

statutory scheme and the context of other cases." Tenenbaum

proposes that instead the district court should only have

instructed the jury to return an award the jury deemed "just" and

then the court should have adjusted the award to fall within the

statutory range after the jury made its determination. This

argument is, of course, at considerable tension with Tenenbaum's

argument that damages within the statutory range are

unconstitutional.

The instruction given as to the statutory damage range

was an accurate statement of the law and clearly informed the jury

of the range of damages it could award under § 504(c). As such

there was no error. See United States v. Mardirosian, 602 F.3d 1,

10 (1st Cir. 2010) (upholding jury instructions because they

"provided a clear, accurate description of the substantive law").

It is commonplace for courts to explicitly instruct

juries of the maximum and minimum statutory damage awards permitted

-37-
under § 504(c). See, e.g., In re Frye, No. 08-1055, 2008 WL

8444822, at *3 (B.A.P. 9th Cir. Aug. 19, 2008) (noting jury awarded

the statutory maximum under § 504(c)); Yurman Design, Inc. v. PAJ,

Inc., 93 F. Supp. 2d 449, 462 (S.D.N.Y. 2000) (noting plaintiff

elected to seek statutory damages, "and the jury was provided

instructions concerning such damages"), rev'd in part on other

grounds, 262 F.3d 101 (2d Cir. 2001). Several model federal jury

instructions also explicitly enumerate the range of statutory

damages under 504(c). See, e.g., 3B K. O'Malley, J. Grenig & W.

Lee, Federal Jury Practice and Instructions--Civil § 160.93 (5th

ed. 2011) (including within model the instruction that "plaintiff

. . . has elected to recover 'statutory damages' instead of

plaintiff's actual damages and profits" and that "[u]nder the

Copyright Act, plaintiff . . . is entitled to a sum of not less

than $750 or more than $30,000 as you consider just"); Ninth

Circuit Manual of Model Civil Jury Instructions § 17.25 (including

within model the instruction that the "amount you may award as

statutory damages is not less than $750, nor more than $30,000 for

each work you conclude was infringed"); Holbrook & Harris, ABA

Model Jury Instructions: Copyright, Trademark, and Trade Dress

Litigation § 1.7.7 (2008) (same). Each set of model jury

instructions also notes that the maximum statutory damage award

under § 504(c) is increased if the defendant's copyright

infringement is determined to be willful. Cf. Fraser v. Major

-38-
League Soccer, L.L.C., 284 F.3d 47, 62 (1st Cir. 2002) (noting that

district court's instructions tracked ABA model jury instructions

in rejecting objection to instructions).

There is no viable argument that the instruction violated

Congressional intent. Where Congress has sought to prevent juries

from knowing that their awards will be reduced to be within

statutory caps, it has explicitly said so in the relevant statute.

See, e.g., 42 U.S.C. § 1981a(c)(2) (providing that "the court shall

not inform the jury of the limitations" on awards of damages in

intentional employment discrimination cases under Title VII).

There is no such prohibition here.

Tenenbaum nonetheless argues that because Congress

initially enacted the statute on the understanding that judges, not

juries, would award statutory damages, it must be error to tell the

jury what the limits are.18 He also argues that the Supreme Court

"failed to provide any structure for guiding the jury's use of the

wide power shifted to it" within its holding in Feltner that the

Seventh Amendment entitles a defendant to have a jury determine the

amount of § 504(c) damages. Feltner, however, raises no objection

to a jury's being informed of the statutory range. In any case,

this argument is simply a variant of Tenenbaum's claim that Feltner

18
Citing psychological studies but not law, Tenenbaum
argues that informing the jury of the statutory damage range was
reasonably likely to have had an "anchoring effect" that
erroneously skewed the jury's award determination.

-39-
somehow renders § 504(c) inoperable, which we have already

rejected.

Moreover, after Feltner, had Congress wished to prevent

juries from being informed of the bottom and top ranges of

permissible statutory damages, it easily could have done so.

Instead, Congress amended the statute after Feltner to expand the

range of damages, and did so without placing any limitation as to

how courts should instruct juries in such cases. See Digital Theft

Deterrence and Copyright Damages Improvement Act of 1999, Pub. L.

No. 106-160, 113 Stat. 1774.

The district court's instructions on the range of

statutory damages were not erroneous, let alone prejudicial.

B. Tenenbaum's Remaining Challenges to the Jury Instructions

Tenenbaum raises a series of unpreserved additional

objections to the jury instructions which we review for plain

error.

1. The Unpreserved Challenge that the District Court
Should Have First Determined then Instructed the
Jury on the Court's Assessment of Constitutional
Limits on the Award

Tenenbaum argues that the district court erred by only

instructing the jury as to the statutory boundaries for the damages

award and failing, sua sponte, to inform the jury of the

constitutional boundaries for the award. Tenenbaum asked for no

such instruction, and the argument is waived. Even had the

argument not been waived, there was no error.

-40-
 Inherent in his argument is the proposition that before

a case goes to the jury, the trial court must make its own

assessment of the constitutional limits on damages and so instruct

the jury. That is exactly backwards. See St. Louis, I.M. & S. Ry.

Co. v. Williams, 251 U.S. 63, 66-67 (1919) (considering

constitutional limits on statutory damage award after jury issued

award). Tenenbaum's proposal itself could raise Seventh Amendment

concerns about judicial usurpation of the jury's function. There

was no error.

2. The Unpreserved Argument that the District Court
Was Required to Instruct the Jury Not to Consider
Injury Suffered by Other Recording Companies or
Injuries Caused by Copyright Infringers Other Than
Tenenbaum

The district court properly instructed the jury on

Tenenbaum's conduct and the plaintiffs' harms the jury could

consider in making its determination. It specifically listed the

nature of Tenenbaum's infringement, Tenenbaum's purpose and intent,

the "revenue lost by the plaintiff as a result of the

infringement," the duration of the infringement, and the

defendant's continuation of infringement after learning of the

copyright claims.

Tenenbaum argues that the district court sua sponte

should have provided additional instruction to focus the jury.

Again, the argument is waived. Even were it not waived, the court

did not err. Tenenbaum appears to be arguing that the jury also

-41-
had to be told it could not consider damages resulting from the

illegal downloading and distribution of copyrighted materials

suffered by other recording companies besides the named plaintiffs

or from other unrelated filesharing by others.19 This is a

hypothetical concern, not a real one in this case.

Tenenbaum purports to rely on language in Philip Morris

USA v. Williams, 549 U.S. 346, 357 (2007), that where there is a

significant risk that the jury might take into account harm caused

to non-party victims by the defendant, "a court, upon request, must

protect against that risk." (Emphasis added). Tenenbaum made no

such request to the trial court.20 Nor does he point to any

19
He argues that because Sony offered testimony regarding
the harmful effects all filesharing, not just Tenenbaum's
infringements, has had on the recording industry at large, and not
only the named plaintiffs, the court was required to instruct the
jury sua sponte to "consider only harms by the named defendant that
flowed to the named plaintiffs."
20
Tenenbaum has twice waived this argument. First, we
reject his assertion that he preserved it by offering the following
proposed jury instructions: "While there may be evidence relating
to other downloading and sharing, the only issue of infringement or
fair use that is before you concerns these . . . songs . . . .
[Y]ou may only award damages, if any, as to those . . . songs."
This did not inform the court that Tenenbaum sought an instruction
regarding harm done by other infringers or suffered by other
recording companies given that Tenenbaum engaged in other
downloading and sharing beyond the thirty songs at issue. See Linn
v. Andover Newton Theological Sch., Inc., 874 F.2d 1, 5 (1st Cir.
1989) ("If there is a problem with the instructions, the judge must
be told precisely what the problem is, and as importantly, what the
attorney would consider a satisfactory cure.")
Moreover, after the court gave the jury its instructions,
Tenenbaum raised no objection on these grounds whatsoever. "[E]ven
if the initial request is made in detail, the party who seeks but
did not get the instruction must object again after the

-42-
authority that requires a court to provide a Philip Morris-type

instruction sua sponte.

Philip Morris does not help him, in any event. There was

not a substantial risk of the jury's going astray. The court's

entirely correct instruction foreclosed that risk. The jury was

never urged to consider damages (1) caused by other copyright

infringers or (2) suffered by other recording companies. Indeed,

in his closing argument, Tenenbaum's counsel made clear that "it's

what Joel did that is here in issue and [the question is] what's

appropriate in response to what Joel did," and Sony's counsel

likewise stated that applying damages for "what Joel did" was

"exactly what we want you to do." The court's jury instructions as

a whole focused exclusively on Tenenbaum's actions and the

resulting harm to the plaintiffs.

3. The Unpreserved Argument that the District Court
Was Sua Sponte Required to Additionally Instruct
that Statutory Damages Could Not Be Awarded Unless
They Were Related to Actual Damages

The district court did instruct the jury to issue an

award within the statutory range that it deemed to be just, and

highlighted a number of factors it could use for guidance.

Tenenbaum argues that the district court erred by failing, sua

sponte, to add an additional instruction that as a matter of law

instructions are given but before the jury retires for
deliberations." Gray v. Genlyte Grp., Inc., 289 F.3d 128, 134 (1st
Cir. 2002).

-43-
statutory damages cannot be awarded unless reasonably related to

actual damages.

Tenenbaum's argument fails the first step of the plain

error analysis. His proposed instruction itself would have been

error. In § 504, Congress drew a plain distinction between actual

and statutory damages, making it clear that the availability of

statutory damages is not contingent on the demonstration of actual

damages. See 17 U.S.C. § 504. Statutory damages are available

even for "uninjurious and unprofitable invasions of copyright."

F.W. Woolworth Co., 344 U.S. at 233.

We join our sister circuits, who have rejected similar

objections to jury instructions. See New Form, Inc. v. Tekila

Films, Inc., 357 F. App'x 10, 11-12 (9th Cir. 2009) ("There is no

required nexus between actual and statutory damages under 17 U.S.C.

§ 504(c)."); Superior Form Builders, Inc. v. Dan Chase Taxidermy

Supply Co., 74 F.3d 488, 496-97 (4th Cir. 1996); see also Lowry's

Reports, Inc. v. Legg Mason, Inc., 302 F. Supp. 2d 455, 460 (D. Md.

2004) (rejecting argument that court should have instructed the

jury "that the amount of statutory damages should bear a reasonable

relationship to actual damages").

-44-
 4. The Unpreserved Argument that the District Court
Erred in Instructing the Jury that Finding Willful
Infringement Under § 504 Only Requires a Finding
that a Defendant Knowingly Infringed Copyrighted
Materials

Finally, Tenenbaum challenges the district court's

instruction that "willful infringement" "means that a defendant had

knowledge that his actions constituted copyright infringement or

acted with reckless disregard for the copyright holder's rights."

The argument is wrong and is based on a misreading of the statute.

Tenenbaum argues that, as used in § 504, a "willful

infringement" must require more than a showing that the defendant

had knowledge his actions constituted copyright infringement. He

argues this must be so because non-willful infringement itself

requires the defendant to have had such knowledge. As a result,

merely requiring that an infringement be "knowing" to be "willful"

would eliminate the distinction between non-willful and willful

infringements that Congress sought to create in enacting § 504.

Tenenbaum's argument rests on the false premise that

knowledge is an element of non-willful copyright infringement under

the Copyright Act. To the contrary, the Act contains no

requirement that a particular violation of copyright be knowing to

constitute a non-willful infringement.21 See 17 U.S.C. § 501; see

21
17 U.S.C. § 504(c)(2)'s so-called "innocent infringement"
provision does not lend support to Tenenbaum's theory that
knowledge is an element for non-willful infringement under the Act.
A defendant cannot prove that he or she qualifies for a reduction
of damages under § 504(c)(2) merely by showing that he or she

-45-
also Fitgerald Publ'g Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1113

(2d Cir. 1986) ("Under § 501(a) intent or knowledge is not an

element of infringement.").

We join our sister circuits who have unanimously and

routinely found that an infringement is willful under § 504 if it

is "knowing." See, e.g., Bridgeport Music, Inc. v. UMG Recordings,

Inc., 585 F.3d 267, 278 (6th Cir. 2009) (rejecting challenge to

jury instruction that, under § 504(c), "[a]n infringement is

willful when a defendant engaged in acts that infringed a copyright

and knew that those actions may infringe the copyright")

(alteration in original); Zomba Enters., Inc. v. Panorama Records,

Inc., 491 F.3d 574, 584 (6th Cir. 2007); Lyons P'ship, L.P. v.

Morris Costumes, Inc., 243 F.3d 789, 799-800 (4th Cir. 2001). Cf.

Yurman Design, Inc., 262 F.3d at 111 (finding plaintiff is "not

required to show that the defendant had knowledge that its actions

constitute[d] an infringement" for infringement to be willful under

§ 504(c) so long as defendant recklessly disregarded the risk of

infringement)(citation omitted)(internal quotation marks omitted).

The district court correctly instructed the jury. There

was no error as to the finding of liability against Tenenbaum.

lacked knowledge that his or her actions constituted copyright
infringement. Rather, a plaintiff may still recover the full
measure of statutory damages available for non-willful infringement
even against an unknowing infringer if the infringer had "reason to
believe that his or her acts constituted an infringement of
copyright." 17 U.S.C. § 504(c)(2) (emphasis added).

-46-
 IV.

The District Court's Bypassing of Common Law Remittitur and
Reducing the Award on Disputed Constitutional Grounds

After handling the trial with great skill, the district

court committed reversible error when, after the jury awarded

statutory damages, it bypassed the issue of common law remittitur,

and instead resolved a disputed question of whether the jury's

award of $22,500 per infringement violated due process, and decided

itself to reduce the award. The court declined to adhere to the

doctrine of constitutional avoidance on the ground that it felt

resolution of a constitutional due process question was inevitable

in the case before it. A decision on a constitutional due process

question was not necessary, was not inevitable, had considerable

impermissible consequences, and contravened the rule of

constitutional avoidance. That rule had more than its usual import

in this case because there were a number of difficult

constitutional issues which should have been avoided but were

engaged.

Facing the constitutional question of whether the award

violated due process was not inevitable. The district court should

first have considered the non-constitutional issue of remittitur,

which may have obviated any constitutional due process issue and

attendant issues. Had the court ordered remittitur of a particular

amount, Sony would have then had a choice. It could have accepted

the reduced award. Or, it could have rejected the remittitur, in

-47-
which case a new trial would have ensued. See 11 Wright, Miller &

Kane, Federal Practice and Procedure § 2815, at 160 (2d ed. 1995).

In reaching and deciding that due process constitutional

question, the district court also unnecessarily decided several

related constitutional issues. The court determined that the

statutory damage award was effectively a punitive damage award for

due process purposes and applied the factors set forth in BMW v.

Gore, 517 U.S. 559 (1996), to assess its constitutionality. The

court declined to apply the Williams standard the Supreme Court had

previously applied to statutory damage awards. See Tenenbaum, 721

F. Supp. 2d at 103. The district court's tack also led to

unnecessary resolution of Seventh Amendment issues. The decision

to reduce the jury's award without offering Sony a new trial

implicitly presupposed that, in reducing a statutory damage award

issued by a jury, a court need not offer plaintiffs the option of

a new jury trial in order to comport with the Seventh Amendment.

The United States, concerned with defending the

constitutionality of the Copyright Act and its statutory damage

provision, argues that the district court erred by unnecessarily

reaching Tenenbaum's constitutional challenge to the award and

bypassing the question of common law remittitur.22 The United

22
On appeal, both Tenenbaum and Sony argue error, but
neither challenges the district court's decision to bypass the
question of common law remittitur. They instead focus on whether
the court chose the correct due process standard to evaluate
whether the award was so excessive as to violate the constitution.

-48-
States alternatively argues that, if the due process issue were

reached, the district court was required to apply the Williams due

process standard. The United States points out an inferior federal

court may not displace the Supreme Court's on point holding. The

United States also raises Seventh Amendment concerns.

We agree with the position of the United States that the

district court erred when it prematurely reached a constitutional

question of whether the jury's award was excessive so as to violate

due process. We reverse the reduction of the award, reinstate the

original jury verdict and award, and remand for consideration of

the common law remittitur question.

A. District Court Damages Proceedings

We provide a more detailed review of the relevant

district court proceedings.

After the jury verdict awarding Sony $22,500 per

infringement, Tenenbaum filed a motion for a new trial or

remittitur pursuant to Federal Rule of Civil Procedure 59. Absent

a grant of a new trial, he sought remittitur to the statutory

minimum. Tenenbaum argued the court should use the standard that

remittitur is appropriate where the result of the award is "grossly

Tenenbaum argues the Gore factors provide the correct due process
analysis and that even the reduced award violates due process under
that standard. Sony argues that the Williams due process standard
must apply, that under it the original award issued by the jury
never violated due process, and that the district court erred in
reducing the award.

-49-
excessive, inordinate, shocking to the conscience of the court, or

so high that it would be a denial of justice to permit it to

stand." Correa v. Hosp. S.F., 69 F.3d 1184, 1197 (1st Cir. 1995)

(quoting Segal v. Gilbert Color Sys., Inc., 746 F.2d 78, 81 (1st

Cir. 1984)) (internal quotation marks omitted). Tenenbaum

separately argued the award was unconstitutionally excessive under

the standard for reviewing punitive damage awards articulated in

Gore.

Sony opposed, arguing there was no factual basis for a

remittitur given both the evidence and that the evidence had to be

taken in the light most favorable to the prevailing party. See E.

Mountain Platform Tennis, Inc. v. Sherwin-Williams Co., 40 F.3d

492, 502 (1st Cir. 1994). It also argued that the district court

lacked authority to displace a jury verdict which was in the

statutory range set by Congress and that to hold otherwise would

violate the Seventh Amendment. With regard to Tenenbaum's due

process arguments, Sony argued that Williams set forth the proper

standard, and not Gore. Sony also argued that under either the

Williams or Gore standards, the award was not unconstitutionally

excessive.

The United States took a different approach. It took no

position on whether Tenenbaum had met the standard for remittitur

(or a new trial). Rather, the United States stated that the canon

of constitutional avoidance required the district court to first

-50-
consider the question of common law remittitur, regardless of

whether the award merited remittitur or not. If the court did

address the constitutional question, the United States argued that

the standard set forth in Williams was appropriate and that the

court should reject the Gore guideposts for assessing punitive

damages because punitive damages are a distinct remedy from

statutory damages. The United States also took the position that

an award within the Copyright Act's statutory damage range

comported with due process.

At the hearing on Tenenbaum's motion, the court asked

counsel for plaintiffs to hypothesize as to what his clients'

position would be if the court were to order a reduction or

remittitur of the award. Understandably, plaintiffs' counsel did

not take a firm position; he said his clients would have to

consider the amount and other factors but thought it unlikely such

a remittitur would be acceptable. If there were a remittitur,

then, he said, the court could not reach the due process question

of an excessive award because to do so would deprive plaintiffs of

their Seventh Amendment right to a jury trial. Plaintiffs also

argued that on the evidence, there was no basis for remittitur.

At that hearing, the United States repeated its position

that the court was required to decide the remittitur question first

in order to avoid any constitutional issues and that if plaintiffs

rejected remittitur, the remedy was a new trial; the court could

-51-
not go on to decide a constitutional due process issue as to the

award. If the court did decide a constitutional due process issue

as to the excessiveness of the award, the government argued, it was

required to apply Williams, which had not been overruled.

Rejecting the position of the United States, the court

bypassed remittitur, reached a constitutional due process issue,

and ruled the award excessive under Gore. It reduced the award

from $675,000 to $67,500 and did not give plaintiffs the option of

a new trial.

The court stated its reason for bypassing the decision on

common law remittitur. It treated plaintiffs' statements at the

hearing as foreclosing any possibility of plaintiffs accepting

remittitur, regardless of what amount the court might set for the

award and despite plaintiffs' stated and careful reservations on

the point. See Tenenbaum, 721 F. Supp. 2d at 88. From this, the

court reasoned that a new trial was inevitable; it then assumed

that a jury would inevitably award a damages sum which would lead

Tenenbaum to again raise a constitutional excessiveness challenge,

and that the court which heard the new trial would then have to

consider those and other objections again.23 Id. From these

23
These reasons are based on assumptions, not facts. Sony
could not have decided its course of action if remittitur were
allowed unless it knew the amount. Further, if Sony chose a new
trial on damages, no one knows what sum a new jury would award, or
whether that award would be challenged as excessive.

-52-
assumptions, the court reasoned it might as well decide those

issues then and there.24 Id.

B. The District Court Erred by Unnecessarily Reaching and
Deciding the Question of Whether the Jury's Award Was
Unconstitutionally Excessive

The principle of constitutional avoidance, rooted in

Article III as well as in principles of judicial restraint, and in

this case implicating the Due Process Clause and the Seventh

Amendment right to jury trial, governs both this court and the

district court and requires that we vacate and remand.

It is bedrock that the "long-standing principle of

judicial restraint requires that courts avoid reaching

constitutional questions in advance of the necessity of deciding

them." Lyng v. Nw. Indian Cemetery Protective Ass'n, 485 U.S. 439,

445 (1988); see also Camreta v. Greene, 131 S. Ct. 2020, 2031

(2011) (noting rule that courts must avoid resolving constitutional

questions unnecessarily). "[P]rior to reaching any constitutional

questions, federal courts must consider nonconstitutional grounds

for decision." Buchanan v. Maine, 469 F.3d 158, 172 (1st Cir.

2006) (quoting Gulf Oil Co. v. Bernard, 452 U.S. 89, 99 (1981))

(internal quotation marks omitted). No valid reason justified

24
The district court also attempted to justify its decision
to bypass remittitur by making certain rulings on the merits of the
constitutional issue. For example, the district court reasoned
that the "differences between the [Gore and Williams] approaches
are, in practice, minimal[,]" a disputed issue. Sony BMG Music
Entm't v. Tenenbaum, 721 F. Supp. 2d 85, 101 (D. Mass. 2010).

-53-
abandonment of this doctrine in this case. The abandonment of the

rule instead thrust the case into a thicket of constitutional

issues it was not necessary to enter.

It was not necessary for the district court to reach the

constitutional question of whether the jury's award of $22,500 per

infringement was so excessive as to violate due process. If the

district court had ordered remittitur, there would have been a

number of possible outcomes that would have eliminated the

constitutional due process issue altogether, or at the very least

materially reshaped that issue.

The issue of whether the award violated due process and

the Seventh Amendment issue would both have been eliminated if

remittitur had been ordered and Sony had accepted the remitted

award. Alternatively, if remittitur had been ordered but Sony had

declined the remitted award, a new trial would have ensued. The

jury could have issued an award that would not have led Tenenbaum

to again seek a reduction on either common law remittitur or due

process grounds.

Even if Sony had declined any remitted award given and

opted for a new trial, even if a different jury issued a comparable

award, and even if Tenenbaum once again moved to reduce the award

on constitutional grounds, it was still premature for the court to

reach the constitutional question before that process had been

carried out. A new trial could have materially reshaped the nature

-54-
of the constitutional issue by altering the amount of the award at

issue or even the evidence on which to evaluate whether a

particular award was excessive.

In this way, reaching the constitutional question before

ordering remittitur not only contravened the doctrine of

constitutional avoidance, it also led the court to address

questions that had not yet been fully developed. Federal courts do

not answer such hypothetical questions. See Aetna Life Ins. Co. v.

Haworth, 300 U.S. 227, 241 (1937) (Under Article III, judicial

power is constrained to "real and substantial controvers[ies]

admitting of specific relief through a decree of a conclusive

character, as distinguished from an opinion advising what the law

would be upon a hypothetical state of facts"); see also Bisbal-

Ramos v. City of Mayaguez, 467 F.3d 16, 27 (1st Cir. 2006)

(vacating district court's reduction of compensatory damages,

remanding so that court may issue remittitur, and refusing to

address constitutionality of punitive damage award because, upon

remand, plaintiff might opt for a new trial and "it would be

premature . . . to approve a punitive damages award based on the

compensatory award from the first trial").

The path the court chose unnecessarily embroiled it in

several issues of a constitutional dimension. The first was

whether the due process standard for statutory damage awards

articulated by the Supreme Court in Williams was applicable. The

-55-
next was whether, if there was leeway and reason to bypass the

Williams standard, the Gore standard, some combination of Williams

and Gore, or some other standard should be used to evaluate whether

the statutory damage award violated due process. We briefly

describe the two due process standards to demonstrate the nature of

the question to be avoided.

In Williams, the Supreme Court considered a challenge to

an Arkansas statute that subjected railroads to penalties of "not

less than fifty dollars, nor more than three hundred dollars and

costs of suit," for each offense of charging passengers fares that

exceeded legal limits. See Williams, 251 U.S. at 64 (quoting Act

April 4, 1887 (Laws 1887, p. 227; Kirby's Digest, 1904, § 6620);

Act March 4, 1915 (Laws 1915, p. 365; Kirby & Castle's Digest,

1916, § 8094)) (internal quotation marks omitted). After the St.

Louis, I.M. & S. Railroad collected a fare from two passengers of

66 cents more than the law allowed, the passengers brought suit

pursuant to the statute. 251 U.S. at 63. Each passenger obtained

a judgment of 75 dollars plus fees--an award, like the jury's award

at issue here, well within the statutory range. Id. The railroad

challenged the statutory award as unconstitutionally excessive

under the Due Process Clause. Id.

The Court acknowledged that the Due Process Clause

"places a limitation upon the power of the states to prescribe

penalties for violations of their laws," but noted that "States

-56-
still possess a wide latitude of discretion in the matter." Id. at

66. This is so, the court reasoned, because "the power of the

State to impose fines and penalties for a violation of its

statutory requirements is coeval with government; and the mode in

which they shall be enforced, whether at the suit of a private

party, or at the suit of the public, and what disposition shall be

made of the amounts collected, are merely matters of legislative

discretion." Id. (quoting Mo. Pac. Ry. Co. v. Humes, 115 U.S. 512,

523 (1885)) (internal quotation marks omitted).

Given the latitude conferred upon legislatures to impose

statutory penalties, the Court rejected the railroad's due process

argument. The Court articulated that a statutory damage award

violates due process only "where the penalty prescribed is so

severe and oppressive as to be wholly disproportioned to the

offense and obviously unreasonable." Id. at 66-67.

Gore and its progeny address the related but distinct

issue of when a jury's punitive damage award is so excessive as to

violate due process. See Gore, 517 U.S. at 574. The Court,

animated by the principle that due process requires that civil

defendants receive fair notice of the severity of the penalties

their conduct might subject them to, id., identified three factors

to guide a court's consideration of whether a punitive damage award

is so excessive as to deprive a defendant of due process: (1) the

degree of reprehensibility of the defendant's conduct, id. at 575-

-57-
80, (2) the ratio of the punitive award to the actual or potential

harm suffered by the plaintiff, id. at 580-83, and (3) the

disparity between the punitive award issued by the jury and the

civil or criminal penalties authorized in comparable cases, id. at

583-85.

In Copyright Act award cases, there are many questions

regarding the relationship between Gore's guideposts for reviewing

punitive damage awards and the Williams standard for reviewing

statutory damage awards. One is the relationship between the

purposes of statutory damages under the Copyright Act as opposed to

the purpose of punitive damages. Another concerns the limits or

contours of possible ranges of awards under the different

standards. Further, both Williams and Gore concerned limitations

on state-authorized awards of damages, and did not concern

Congressionally set awards of damages, which Congress is authorized

to do under its Article I powers. This fact in turn raises

concerns about intrusion into Congress's power under Article 1,

Section 8 of the Constitution.

We note that in Gore, the Supreme Court did not overrule

Williams. See Rivers v. Roadway Express, Inc., 511 U.S. 298, 312

(1994) (hierarchical relationship of Supreme Court to lower courts

mandates that where "the Court has spoken, it is the duty of other

courts to respect that understanding of the governing rule of

law"). Nor has the Supreme Court to date suggested that the Gore

-58-
guideposts should extend to constitutional review of statutory

damage awards. The concerns regarding fair notice to the parties

of the range of possible punitive damage awards present in Gore are

simply not present in a statutory damages case where the statute

itself provides notice of the scope of the potential award. And

the only circuit court of which we are aware to directly address

the issue declined to apply Gore in this context and instead

applied the Williams test. See Zomba Enters., Inc. v. Panorama

Records, Inc., 491 F.3d 574, 587 (6th Cir. 2007). Cf. Parker v.

Time Warner Entm't Co., 331 F.3d 13, 22 (2d Cir. 2003) (suggesting,

in dicta, that Gore might govern due process review of statutory

damage awards).

Had the district court ordered remittitur and not reached

the constitutional question, it would not have needed to consider

these issues or determine the relevant standard for assessing the

constitutionality of a Copyright Act statutory damage award.

A decision based on remittitur, under which a new trial

must be granted if plaintiffs do not accept the remitted award,

also would have avoided another complicated constitutional

question, which we describe briefly.

That issue arises under the Seventh Amendment, and is

whether a statutory damage award under the Copyright Act may be

-59-
reduced without offering the plaintiffs a new trial.25 Neither this

court nor the Supreme Court has directly addressed the issue, but

the Court's Feltner decision must be taken into account.

The usual rule for a general damage award is that a court

may not reduce a jury's verdict and effectively impose a remittitur

without affording a plaintiff "the option of a new trial when it

enter[s] judgment for the reduced damages." Hetzel v. Prince

William Cnty., 523 U.S. 208, 211 (1998); see also Dimick v.

Schiedt, 293 U.S. 474, 486-87 (1935) (affirming remittitur power of

courts but noting that where a verdict is set aside, the parties

retain their right to have a jury determine the measure of

damages); Kennon v. Gilmer, 131 U.S. 22, 29 (1889) (finding that

under the Seventh Amendment a court has no authority to reexamine

facts determined by a jury, or to enter "according to its own

estimate of the amount of damages which the plaintiff ought to have

recovered . . . an absolute judgment for any other sum than that

assessed by the jury"). Citing Hetzel, we have held a trial

court's reduction in compensatory damages must, to avoid Seventh

Amendment error, allow the plaintiff a new trial. Bisbal-Ramos,

467 F.3d at 26 (reversing and remanding for consideration of

25
The Seventh Amendment provides that, "In Suits at common
law, where the value in controversy shall exceed twenty dollars,
the right of trial by jury shall be preserved, and no fact tried by
a jury, shall be otherwise re-examined in any Court of the United
States, than according to the rules of the common law." U.S.
Const. amend. VII.

-60-
remittitur where trial court had reduced compensatory damages

without offering plaintiffs new trial).

By contrast, there is law indicating that a punitive

damage award may be reduced on due process grounds (without

offering plaintiffs a new trial) without running afoul of the

Seventh Amendment. The Supreme Court's punitive damages

jurisprudence suggests as much, but the question has not been

directly addressed by the Court. See State Farm Mut. Auto. Ins.

Co. v. Campbell, 538 U.S. 408 (2003) (finding punitive damage award

violated due process); Gore, 517 U.S. 559 (same). Some circuits,

including our own, have found that "a court may reduce an excessive

award of punitive damages without giving the plaintiff the option

of a new trial." Bisbal-Ramos, 467 F.3d at 27 (collecting cases);

see also Mendez-Matos v. Municipality of Guaynabo, 557 F.3d 36, 52

(1st Cir. 2009) ("If we find an award 'grossly excessive,' we may

ascertain the amount of punitive award that is appropriate and

order the district court to enter judgment in such amount."). But

neither Bisbal-Ramos nor Mendez-Matos decided the question as to a

statutory damages award.26

In bypassing remittitur and reducing the jury's award

without offering Sony a new trial, the district court assumed that

26
Additionally, some courts have suggested that even under
Gore, a court must give plaintiff the option of a new trial when it
reduces a punitive damages award on due process grounds. See S.
Union Co. v. Irvin, 563 F.3d 788, 790 (9th Cir. 2009); Lee v.
Edwards, 101 F.3d 805, 813 (2d Cir. 1996).

-61-
statutory damage awards should be treated largely as punitive, not

compensatory, awards for Seventh Amendment purposes. But statutory

damages, unlike punitive damages, have both a compensatory and

punitive element. See 17 U.S.C. § 504(c); Feltner, 523 U.S. at 352

("[A]n award of statutory damages [under § 504(c)] may serve

purposes traditionally associated with legal relief, such as

compensation and punishment."); F.W. Woolworth Co., 344 U.S. at

233 ("The statutory rule, formulated after long experience, not

merely compels restitution of profit and reparation for injury but

also is designed to discourage wrongful conduct.").

Further, the Supreme Court's analysis of a different

Seventh Amendment issue in Cooper Industries, Inc. v. Leatherman

Tool Group, Inc., 532 U.S. 424, 437 (2001) suggests that punitive

damage awards do not implicate the Seventh Amendment for reasons

that do not apply to statutory damage awards. In Cooper, the Court

observed that the Seventh Amendment provides only that "no fact

tried by a jury, shall be otherwise re-examined in any Court of the

United States, than according to the rules of the common law,"

U.S. Const. amend. VII (emphasis added), and reasoned that "the

level of punitive damages is not really a 'fact' 'tried' by the

jury," Cooper Indus., 532 U.S. at 437 (quoting Gasperini v. Ctr.

for Humanities, Inc., 518 U.S. 415, 459 (1996) (Scalia, J.,

dissenting)) (internal quotation mark omitted). But statutory

damage awards are different. In Feltner, the Supreme Court

-62-
determined that "the Seventh Amendment provides a right to a jury

trial on all issues pertinent to an award of statutory damages

under § 504(c) of the Copyright Act, including the amount itself."

Feltner, 523 U.S. at 355.

The point here is not for us to decide these issues, but

merely to describe them to show the importance of adherence to the

doctrine of constitutional avoidance. The courts of appeals are

likewise bound by that doctrine, and we are required to apply it

here.27

27
Sony rather weakly asserts remittitur is not available
where, as here, an award falls within a prescribed statutory range.
We do not take as given the questionable proposition that in
enacting the Copyright Act, Congress intended to eliminate the
common law power of the courts to consider remittitur. Common law
remittitur has roots deep in English and American jurisprudence.
See Honda Motor Co. v. Oberg, 512 U.S. 415, 424-26 (1994); Dimick
v. Schiedt, 293 U.S. 474, 482-83 (1985) (citing Blunt v. Little,
Fed. Cas. No. 1,578, 3 Mason 102 (1822) (Story, J.)). We see no
reason to think Congress meant to override this aspect of the
common law.
In the post-Feltner amendment of the Copyright Act, Congress
said nothing evidencing an intent to eliminate remittitur. See
Digital Theft Deterrence and Copyright Damages Improvement Act of
1999, Pub. L. No. 106-1060, 113 Stat. 1774. Congress is presumed
to legislate incorporating background principles of common law
unless it indicates to the contrary. See Bd. of Trs. of Leland
Stanford Junior Univ. v. Roche Molecular Sys., Inc., 131 S. Ct.
2188, 2196 (2011) (rejecting statutory interpretation that
conflicts with "two centuries of patent law"); Astoria Fed. Sav. &
Loan Ass'n v. Solimino, 501 U.S. 104, 109 (1991) ("Congress is
understood to legislate against a background of common-law
adjudicatory principles."). Further, the principle of remittitur
is embodied in Federal Rule of Civil Procedure 59. Thus, the
district court's decision not to consider remittitur as requested
appears to be contrary to Congressional intent.

-63-
 V.

Conclusion

This was a difficult and contentious case and the parties

received a fair trial from an admirably patient and able district

judge.

We affirm the finding of liability against Tenenbaum and

in favor of plaintiffs. We affirm the injunctive relief. We have,

inter alia, rejected Tenenbaum's arguments that the Copyright Act

is unconstitutional under Feltner, 523 U.S. 340, that the Act

exempts so-called "consumer copying" infringement from liability

and damages, that statutory damages under the Act are unavailable

without a showing of actual harm, that the jury's instructions were

in error, and his various trial error claims.

We vacate the district court's due process damages ruling

and reverse the reduction of the jury's statutory damages award.

We reinstate the jury's award of damages and remand for

consideration of plaintiff's motion for common law remittitur based

on excessiveness.28

If, on remand, the court allows any reduction through

remittitur, then plaintiffs must be given the choice of a new trial

or acceptance of remittitur.

28
If the district court determines that the jury's award
does not merit common law remittitur, the court and the parties
will have to address the relationship between the remittitur
standard and the due process standard for statutory damage awards,
should the issue continue to be raised.

-64-
So ordered.

Costs are awarded to plaintiffs.

-65-