United States Court of Appeals,
Eleventh Circuit.
Nos. 95-5432, 96-4414.
Pat JORDAN, Plaintiff-Appellant,
v.
TIME, INCORPORATED, Defendant-Appellee.
Pat JORDAN, Plaintiff-Appellee,
v.
TIME, INCORPORATED, Defendant-Appellant.
April 25, 1997.
Appeals from the United States District Court for the Southern
District of Florida. (No. 94-6509-CIV), Federico A. Moreno, Judge.
Before CARNES, Circuit Judge, and FAY and CLARK, Senior Circuit
Judges.
PER CURIAM:
Appellant Pat Jordan filed a copyright infringement suit
against appellee Time, Incorporated ("Time") when Sports
Illustrated reprinted an article authored by Jordan without prior
consent. Time made two offers of judgment, Fed.R.Civ.P. 68, which
Jordan rejected. After Time admitted liability, the district court
conducted a jury trial solely on the issue of damages. The jury
returned a verdict awarding Jordan actual damages, but rejecting
Jordan's claim for a portion of Time's profits and his claim that
the infringement was willful. Following the jury verdict, Jordan
elected to pursue statutory damages. 17 U.S.C. § 504(c)(1) (1994).
The district court awarded damages to Jordan. Both sides then
filed motions for attorneys' fees and costs. The district court
denied the motions. On appeal, Jordan argues the jury instructions
on the issue of damages were erroneous. Time cross appeals from
the district court's denial of its motion for attorneys' fees and
costs. Having timely elected to receive statutory damages from the
court, Jordan is precluded from appealing any question related to
actual damages. As to Time's cross appeal, because Fed.R.Civ.P. 68
requires a district court to impose costs, we reverse the district
court's order denying Time's motion and remand the matter to the
district court for further proceedings.
Pat Jordan is a professional author who has written over forty
articles for Sports Illustrated magazine ("SI"). In 1971, Jordan
authored an article about a former professional baseball pitcher
named Robert "Bo" Belinsky, which SI published in its March 6,
1972, edition. The article was published pursuant to an agreement
entered between Jordan and SI. Under the terms of the agreement,
Jordan would submit certain articles to SI and SI would have first
publication rights. Following SI's first publication of the
Belinsky article, Jordan was the registered owner of the existing
copyrights to the article.
In 1993, SI celebrating its 40th anniversary, reprinted the
article without obtaining Jordan's prior consent or offering to
purchase republication rights. Based on SI's allegedly unlawful
republication of Jordan's article, Jordan filed a copyright
infringement suit against Time, the publisher of SI. Pursuant to
Rule 68 of the Federal Rules of Civil Procedure, Time made an offer
of judgment to Jordan in the amount of $15,000.00, plus attorneys'
fees and costs, if any. Subsequently, Time increased its offer of
judgment to $20,000.00. Jordan rejected both offers.
After Time admitted liability for copyright infringement, the
district court held a three day jury trial solely on the issue of
damages. The jury returned a verdict awarding Jordan $5,000.00 in
actual damages, but rejecting Jordan's claim for a portion of
Time's profit and his claim that the infringement was willful.
Following the jury verdict, but before final judgment was entered,
Jordan elected to recover statutory damages. 17 U.S.C. § 504(c)(1)
(1994). The district court awarded Jordan $5,500.00 in damages,
but similarly rejected Jordan's claims for a share of Time's
profits and that the infringement was willful. The district court
then entered final judgment in the case. Jordan appeals from this
final judgment.
Both parties filed motions for attorneys' fees and costs.
Jordan argues that as the "prevailing party" he is entitled to
attorneys' fees and costs under 17 U.S.C. § 505 (1994). Time
contends that since Jordan did not obtain a judgment more favorable
than the ones contained in Time's offers of judgment, Jordan must
pay Time's attorneys' fees and costs. Fed.R.Civ.P. 68. The
district court "exercis[ing] its power of equitable discretion"
denied both motions.1 Time cross appeals from the district court's
order denying its motion for attorneys' fees and costs.
On appeal, Jordan asserts he is entitled to a new trial
because the district court erroneously instructed the jury. More
specifically, Jordan contends the district court erred in
instructing the jury that any profits recoverable under the
1
Jordan does not appeal the district court's denial of his
motion for attorneys' fees and costs.
Copyright Act must be "directly attributable" to the infringement,
and not "remotely" or "speculatively" attributable to the
infringement.2 Because Jordan elected to pursue statutory damages,
he is now estopped from appealing the jury's award of actual
damages.
Under 17 U.S.C. § 504(a), a copyright owner may choose between
two types of damages: actual damages and profits or statutory
damages. The election between actual and statutory damages is to
be made "at any time before final judgment is rendered." 17 U.S.C.
§ 504(c). In our case, the jury awarded Jordan $5,000.00 in actual
damages. Jordan then timely opted for statutory damages, and the
district court awarded Jordan $5,500.00.
The Second Circuit has stated that "[o]nce a plaintiff has
elected statutory damages, it has given up the right to seek actual
damages and may not renew that right on appeal by cross-appealing
to seek an increase in the actual damages." Twin Peaks Productions
v. Publications Intern., 996 F.2d 1366, 1380 (2d Cir.1993). We
agree with the Second Circuit. A plaintiff is precluded from
electing statutory damages and then appealing the award of actual
damages; plaintiff does not get two bites of the apple. The
language of the statute is clear and precise: "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...."
2
The gravamen of the appellant's contention on the charge to
the jury is that the words "directly attributable" describe and
raise a different standard than the word "attributable." We find
this contention foreclosed by the election of statutory damages
and alternatively without merit.
17 U.S.C. § 504(c). Under this option, a plaintiff may proceed as
Jordan did, but once a timely election is made to receive statutory
damages all questions regarding actual and other damages are
rendered moot.
In its cross appeal, Time argues that Fed.R.Civ.P. 68 mandates
a district court to award attorneys' fees and costs, "[i]f the
judgment finally obtained by the offeree is not more favorable than
the offer, the offeree must pay the costs incurred after the making
of the offer." Thus, Time argues the district court erred when it
used its "power of equitable discretion" to deny Time's motion for
attorneys' fees and costs.
We have been unable to locate any case in this circuit, which
has delineated the proper standard for reviewing district court
decisions applying Rule 68 of the Federal Rules of Civil
Procedure.3 We believe that the mandatory language of the rule
leaves no room for district court discretion. When a proper Rule
68 offer is made and the other requirements of the rule are met,
the district court must award costs measured from the time the
offer was served. As such, the proper interpretation of Rule 68 is
a legal question which we review de novo. Sims v. Trus Joist
MacMillan, 22 F.3d 1059, 1060 (11th Cir.1994). However, any
disputed facts concerning the events surrounding a Rule 68 offer
are reviewed for clear error. See Herrington v. County of Sonoma,
12 F.3d 901, 906 (9th Cir.1993) ("[I]ssues involving construction
of Rule 68 offers are reviewed de novo, [while] disputed factual
3
The parties did not cite any authority suggesting the
appropriate standard of review.
findings concerning the circumstances under which the offer was
made are usually reviewed for clear error.") (quoting Erdman v.
Cochise County, 926 F.2d 877, 879 (9th Cir.1991)).
Reviewing Time's cross appeal of the district court's order
de novo, we reverse. Time made two offers of judgment in the
amounts of $15,000.00 and $20,000.00. Jordan rejected both offers.
The jury awarded Jordan $5,000.00 in actual damages and after
electing statutory damages the district court entered judgment in
the amount of $5,500.00. Both the jury's award and the statutory
damage award are less favorable than the offers made by Time. Rule
68 states in pertinent part "[i]f the judgment finally obtained by
the offeree is not more favorable than the offer, the offeree must
pay the costs incurred after the making of the offer." (emphasis
added). The language contained in Rule 68 is mandatory; the
district court does not have the discretion to rule otherwise.
Thus, the district court erred when it used its "equitable
discretion" to deny Time's motion for attorneys' fees and costs.
Jordan must pay the costs incurred by Time after the making of its
offer. We reverse the district court's order and remand the matter
to the district court for a determination of Time's costs. Costs
as used herein includes attorneys' fees. Under Marek v. Chesny,
473 U.S. 1, 9, 105 S.Ct. 3012, 3016-17, 87 L.Ed.2d 1 (1985), Rule
68 "costs" include attorneys' fees when the underlying statute so
prescribes. The Copyright Act so specifies, 17 U.S.C. § 505.
CONCLUSION
For the foregoing reasons, the final judgment is AFFIRMED and
the order denying Time's motion for costs is REVERSED. The case is
REMANDED to allow the district court to calculate the amount of
costs (including attorneys fees).