Gamma v. Ean-Chea
Case Date: 01/05/1994
Court: United States Court of Appeals
Docket No: 1476,94thCong.,2d
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January 5, 1994 UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT ____________ Nos. 92-2016 92-2132 93-1504 93-1518 GAMMA AUDIO & VIDEO, INC., ET AL., Plaintiffs, Appellees, Cross-Appellants, v. EAN-CHEA D/B/A OVERSEAS VIDEO, ET AL., Defendant, Appellant, Cross-Appellees. ____________ ERRATA SHEET The opinion of this court issued on December 22, 1993, is amended as follows: Page 10, lines 6 and 13: Change "work" to "works." UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT ____________________ Nos. 92-2016 92-2132 93-1504 93-1518 GAMMA AUDIO & VIDEO, INC., ET AL., Plaintiffs, Appellees, Cross-Appellants, v. EAN-CHEA D/B/A OVERSEAS VIDEO, ET AL., Defendant, Appellant, Cross-Appellees. ____________________ APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS [Hon. Rya W. Zobel, U.S. District Judge] ___________________ ____________________ Before Torruella, Circuit Judge, _____________ Bownes, Senior Circuit Judge, ____________________ and Cyr, Circuit Judge. _____________ ____________________ William F. Spallina on brief for defendant appellant/cross- ___________________ appellee Ean-Chea, d/b/a Overseas Video. Philip S. Shaw, with whom Rafferty, Polich & Shaw was on _______________ ________________________ brief for plaintiffs appellees/cross-appellants Taing Tao, Meng I. Ung and Chen V. Ung and Marvin Feldman and Tetel & Feldman, ______________ _________________ P.C. on brief for plaintiff appellee/cross-appellant Gamma Audio ____ & Video, Inc. ____________________ December 22, 1993 ____________________ BOWNES, Senior Circuit Judge. These cross-appeals BOWNES, Senior Circuit Judge. _____________________ involve claims of copyright infringement under the Copyright Act of 1976, 17 U.S.C. 101, et seq. After a bench trial, __ ___ judgment was entered in favor of plaintiffs, Gamma Audio & Video, Inc., Taing Tao, Meng I. Ung and Cheng K. Ung (collectively "Gamma"), on their claim that defendant, Ean- Chea, unlawfully distributed two videotapes containing four episodes of the Cambodian language version of Jade Fox, a _________ popular Chinese language soap opera. In addition to obtaining a permanent injunction against Ean-Chea, Gamma was awarded $2,500 in statutory damages, as well as costs and attorney's fees. Both parties appeal from various aspects of the final judgment entered below and seek to recover appellate attorney's fees. We affirm the district court on all issues except one; we reverse the district court's finding that the four episodes of Jade Fox constitute one ________ "work" for purposes of computing statutory damages. Because we hold that four works were infringed, we vacate the district court's judgment ordering Ean-Chea to pay Gamma $2,500 for the infringement of only one work, and remand for a redetermination of damages. I. I. BACKGROUND BACKGROUND __________ Television Broadcasts Ltd. ("TVB") is a producer of Chinese language television programs and videotapes of those -2- 2 programs. The two programs at issue are Jade Fox and Hunters ________ _______ Prey. They consist, respectively, of twenty-four and twenty ____ one-hour episodes. Both are Chinese language "Kung Fu"-type serials created by TVB in Hong Kong and originally broadcast there. Although considerably more violent, the programs are of the same genre as American soap operas. It is unclear whether the episodes were originally broadcast daily or weekly. TVB holds a valid United States copyright in each of the programs. Through a series of four recorded licensing agreements, Gamma obtained three exclusive rights with respect to TVB's programs. Gamma obtained the right to dub TVB videotapes into Cambodian, to duplicate the dubbed versions, and to distribute by rental the Cambodian versions in thirty-seven states including Massachusetts. Gamma assigned all copyrights in the dubbed works to its licensor, Telefeature, Inc. At the time this action was commenced, neither Gamma nor anyone else had registered the copyrights in the derivative works created by Gamma. Shortly thereafter, Gamma entered into an exclusive licensing agreement with Taing Tao and his partners, the other individual plaintiffs. The agreement gave them the exclusive right to distribute, by rental to the public, the Cambodian language videotapes created by Gamma, in six states including Massachusetts. Ean-Chea owns and operates two -3- 3 video rental stores in Lowell, Massachusetts. The stores are named Overseas Video and Overseas Video II. Ean-Chea was the authorized distributor of the Cambodian versions of TVB's programs in Massachusetts for Gamma's predecessor. On February 9, 1991, Chea Sokhoeun, acting on Gamma's behalf, went to Overseas Video and rented tapes four through eleven of the Cambodian Jade Fox series. Because _________ each tape contained two episodes, the rented tapes covered episodes seven through twenty-two. On June 13, 1991 Gamma commenced this action in the United States District Court for the District of Massachusetts. The complaint contained six causes of action. Gamma alleged violations of the Copyright Act of 1976, 17 U.S.C. 101, et seq. (the "Copyright Act") and the Lanham __ ___ Act, 15 U.S.C. 1051 et seq. It also alleged four state-law __ ___ claims: unfair competition, conversion, tortious interference with advantageous business relations and a constructive trust. Gamma alleged that Ean-Chea was behind a massive pirating scheme, and requested millions of dollars in relief. Together with the complaint, Gamma submitted a one page document entitled "Motion For Seizure and Impoundment." By this motion, Gamma sought an ex parte order allowing it __ _____ "to seize and impound any and all video tapes which are owned or under the control of the defendants and which are -4- 4 Cambodian language versions of the TVB programs, produced under the authority of plaintiff Gamma Audio & Video, Inc. including any and all such videotapes on the premises of the respective stores of defendants." Simultaneously, Gamma moved for a temporary restraining order and preliminary injunction enjoining Ean-Chea from further acts of infringement and from disposing any potentially "incriminating" materials such as business records and advertising materials. This motion also asked that Ean-Chea deliver up ... to be impounded during the pendency of this action, all copies of the Gamma TVB Programs and all negatives, prints, matrices, master tapes, all business records relating to the sale and/or rental of video tapes of the Gamma TVB Programs, and all other materials including video recorders, automatic video tape rewinders, and television monitors (collectively "machines") used in the making of such infringing copies and all advertising and materials used in the promotion thereof. Gamma was authorized to visit Ean-Chea's video stores, in the company of a U.S. Marshal or Deputy Sheriff, "for the purposes of inspection, inventorying, and photographing materials alleged to infringe," and to carry out the impoundment. District Judge Mazzone granted the motion for seizure and impoundment and a T.R.O. and ordered Gamma to post a bond in the amount of $2,500. On June 24, 1991, District Judge Zobel, to whom the case was assigned, heard -5- 5 argument on Gamma's motion for a preliminary injunction and granted it. In the meantime, on June 14, the individual plaintiffs and their attorneys, accompanied by a local deputy sheriff, went to Overseas Video to carry out the seizure and impoundment. The raid yielded nine videotapes containing episodes three through twenty of Hunters Prey, which were _____________ found in a cardboard box behind the front counter, three high-speed commercial videotape duplicating machines, and a notebook containing business records of Overseas Video that reflected the shipment to Montreal of an unauthorized copy of a program called Serpentine Romance. __________________ Six months later, on December 13, 1991, Ean-Chea moved for an order compelling Gamma to return the impounded video equipment and tapes. On January 13, 1992, Judge Zobel granted the motion, to which no opposition had been submitted. On January 17, however, Gamma moved for reconsideration; and on February 26 Judge Zobel granted Gamma's motion for reconsideration and then denied Ean-Chea's motion for return of the impounded material. On April 28, Gamma elected to recover statutory as opposed to actual damages, on its claim of copyright infringement. The next day it voluntarily dismissed counts two through six of its complaint, leaving only the copyright claim to be tried. By this time, Gamma realized that the -6- 6 copyrights in all but four episodes of Jade Fox, numbers _________ thirteen through sixteen, as well as the copyright in Serpentine Romance had not been registered prior to the ___________________ commencement of the lawsuit, and therefore could not support an action seeking statutory damages. These episodes therefore dropped out of the case, leaving only the four episodes of Jade Fox and the seized videotapes of Hunters ________ _______ Prey, as subjects of this litigation. ____ On May 11, 1992, at the close of a four-day bench trial, the trial judge stated her findings of fact. In sum, the court found that Gamma had established infringement with respect to episodes thirteen through sixteen of Jade Fox, but ________ had failed to carry its burden of proving infringement with respect to the seized Hunters Prey tapes. ____________ The court then requested additional submissions by counsel for both parties on two issues. First, whether Ean- Chea's unauthorized distribution of the Cambodian version of four episodes of Jade Fox could support a judgment for ________ statutory damages. Second, whether each of the four infringed episodes entitled Gamma to a separate award of statutory damages. The court held that Ean-Chea had wilfully infringed upon Gamma's exclusive right to distribute the video images of the Chinese language version of Jade Fox in ________ Massachusetts, and that Gamma could therefore recover -7- 7 statutory damages. It then found that Gamma could recover only one award of statutory damages for the infringement. Meanwhile, on June 8, 1992, Ean-Chea had moved for the return of its high-speed duplicating machines and notebook, and for payment of the $2,500 bond posted by Gamma. On July 3 the court ordered that the materials be returned, but declined to order payment of the bond.1 On July 15 Gamma moved for costs under the Copyright Act, including attorney's fees, and on December 12, 1992, Ean-Chea cross- moved for attorney's fees. In an opinion dated April 2, 1993, the district court ruled upon Gamma's motion for costs and attorney's fees, and Ean-Chea's cross-motion for attorney's fees. The court awarded Gamma its costs and determined that Gamma, as the "prevailing party," was eligible for an award of attorney's fees. It also found that Gamma was entitled to a fee award because Ean-Chea was a willful infringer. The court denied Ean-Chea's cross-motion for fees. These appeals ensued. II. II. DISCUSSION DISCUSSION __________ On their respective appeals each party makes several arguments. Ean-Chea maintains that: (1) as a matter ____________________ 1. The articles are still in Gamma's possession pursuant to an order of attachment. -8- 8 of law, Gamma could not obtain a judgment for statutory damages because the copyrights in the Cambodian language episodes of Jade Fox were not registered; (2) Gamma violated ________ Ean-Chea's rights guaranteed by the Fourth Amendment in its search of the premises of Overseas Video; (3) there was a lack of statutory authority for seizing the duplicating machines and notebook; and (4) the district court erred in finding Gamma to be the "prevailing party" under the Copyright Act, and that Ean-Chea was in fact the prevailing party. On its cross-appeal, Gamma contends that: (1) the district court erred in finding that Ean-Chea had not unlawfully copied the Hunters Prey videotapes; (2) the ____________ district court erred in limiting Gamma to a single award of statutory damages; and (3) the district court abused its discretion in determining Gamma's attorney's fees award. We review the district court's findings of fact for clear error, and its conclusions of law de novo. See Lenn v. __ ____ ___ ____ Portland Sch. Comm., 998 F.2d 1083, 1087 (1st Cir. 1993). ____________________ Mixed questions of law and fact are also reviewed under a clearly erroneous standard. I.C.C. v. Holmes Transp., Inc., ______ ____________________ 983 F.2d 1122, 1128 (1st Cir. 1993). -9- 9 A. A. Ean-Chea's Appeal Ean-Chea's Appeal _________________ As its first ground on appeal Ean-Chea argues that Gamma could not obtain a judgment for statutory damages with respect to the unlawful distribution of episodes thirteen through sixteen of the Cambodian language version of Jade Fox ________ because the copyrights in those episodes were not registered. Gamma argues that Ean-Chea infringed upon the registered copyrights in the registered Chinese language version of those episodes, and that it could enforce those copyrights. The questions before this court are twofold: (1) did Ean- Chea infringe upon rights that flow from the copyrights in the Chinese language version of Jade Fox; and (2) could Gamma ________ enforce those rights. As the district court recognized, two sets of copyrights are at issue in this litigation, those in the underlying works - the Chinese language episodes of Jade Fox, ________ and those in the derivative works2 created by Gamma - the Cambodian language episodes of Jade Fox. See 17 U.S.C. ________ ___ 102(a) ("[c]opyright protection subsists ... in original ____________________ 2. "A `derivative work' is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a `derivative work'." 17 U.S.C. 101. -10- 10 works ... fixed in any tangible medium of expression ... from which they can be reproduced"); 17 U.S.C. 103(b) (derivative works are separately copyrightable). Gamma owns the copyrights in the derivative works, and TVB owns the copyrights in the underlying works. Any of the exclusive rights comprised in a copyright may be transferred in whole or in part. See 17 U.S.C. 201(d)(1). ___ By virtue of the licensing agreements, Gamma obtained certain exclusive rights emanating from the copyrights in the underlying works. Thus, Gamma owns exclusive rights flowing from both sets of copyrights. It is undisputed, however, that the copyrights in Gamma's derivative works are unregistered. Accordingly, Gamma cannot recover statutory damages, the only remedy it sought, for the infringement of its exclusive rights arising under these unregistered copyrights.3 Instead, Gamma may only recover statutory damages if Ean-Chea's unauthorized rental of the Jade Fox videotapes infringed upon exclusive _________ rights held by Gamma pursuant to the registered copyrights in the underlying works. ____________________ 3. To maintain an action for statutory damages, the copyrights in the infringed works must be registered. 17 U.S.C. 412; Melville B. Nimmer and David Nimmer, 3 Nimmer ______ on Copyright, 14.04[E], at 14-59 (1993) (hereinafter _____________ "Nimmer"). -11- 11 Ean-Chea maintains that it only infringed upon rights held by Gamma arising out of the unregistered copyrights in the derivative works. We disagree. Although a derivative work may be separately copyrighted, that copyright does not affect the copyright in the underlying work. The statute provides that [t]he copyright in a ... derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in _________________ such a work is independent of, and does _________________________________________ not affect ... any copyright protection _________________________________________ in the preexisting material. ___________________________ 17 U.S.C. 103(b) (emphasis added); see 1 Nimmer, ___ ______ 3.04[A], at 3-17 to -18 (1993). Thus the copyright in a derivative work only protects the original elements contributed by the author of the derivative work, in this case the Cambodian language soundtrack created by Gamma. Any elements that the author of the derivative work borrowed from the underlying work, such as the video images in the Chinese language episodes of Jade Fox, remain protected by the _________ copyrights in the underlying work. We are led inexorably to the conclusion that Ean-Chea infringed upon copyrights in the underlying works by renting out episodes of the Cambodian version of Jade Fox which contained video images protected by ________ the registered copyrights in the Chinese version of Jade Fox. ________ -12- 12 Next we determine whether Gamma may recover for this infringement. Under the Copyright Act, the copyright owner of a derivative work "has a cause of action for infringement by reason of the substantial copying from the derivative work of material which originally appeared in the underlying work." 1 Nimmer 3.05, at 3-30. This means that, if the copyright ______ owner in a derivative work is the exclusive licensee of certain rights in the underlying work, it becomes the copyright owner of the underlying work for the purpose of exercising those rights. Id.; 17 U.S.C. 201(d)(2) ___ (transferee of any exclusive right is entitled "to all of the protection and remedies accorded to the copyright owner"). In the present case, Gamma is the exclusive licensee of the right to distribute, in Massachusetts, the video images of the Chinese production of Jade Fox, in _________ conjunction with a Cambodian language soundtrack. See 17 ___ U.S.C. 106 (exclusive rights include rights to copy the work, prepare derivative works, and distribute the work to the public by rental, sale or lease). Accordingly, Gamma may recover for Ean-Chea's infringement. 17 U.S.C. 501(b) ("[t]he 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"). It is irrelevant that what was -13- 13 actually distributed by Ean-Chea was the derivative and not the underlying work. See 1 Nimmer 3.05, at 3-31; see also ___ ______ ___ ____ G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 _________________ ________________________ (2d Cir.), cert. denied, 342 U.S. 849 (1957) (performance of _____ ______ play in which copyright registration had expired constituted infringement of the registered copyright in the underlying story from which play was derived); Grove Press, Inc. v. __________________ Greenleaf Publishing Co., 247 F. Supp. 518 (E.D.N.Y. 1965) _________________________ (copying of unregistered English language translation of French language novel infringed upon the registered copyright in the underlying French language story). Taking a somewhat scattershot approach to brief writing, Ean-Chea identifies a host of infirmities with respect to the seizure and impoundment order obtained and executed by Gamma at the outset of this litigation. Ean-Chea appears to argue that: (1) in executing the orders signed by Judge Mazzone, Gamma violated Ean-Chea's Fourth Amendment right to be free from unreasonable searches and seizures; (2) 503(a) of the Copyright Act does not authorize the seizure of videotape duplicating machines; (3) 509 does not authorize the seizure of books and records (i.e., Ean- ____ Chea's notebook); and (4) although 509 authorizes the seizure of videotape duplicating machines, Gamma failed to follow the procedures set forth therein. -14- 14 Ean-Chea has, generously speaking, provided a superficial briefing of the above issues, often dedicating no more then three or four conclusory sentences to a topic before moving on. For this and other reasons we reject all of the above contentions. First we confront Ean-Chea's constitutional claim arising under the Fourth Amendment. While there appears to be some support for the substance of this argument, see ___ Paramount Pictures Corp. v. Doe, 821 F. Supp. 82, 90-91 __________________________ ___ (E.D.N.Y. 1993) (proposed seizure and impoundment order in copyright case must specify with particularity the premises to be searched and the articles to be seized or run afoul of Fourth Amendment), Ean-Chea failed to present this argument to the district court and is thus precluded from raising it on appeal. See McCoy v. Massachusetts Institute of ___ _____ _____________________________ Technology, 950 F.2d 13, 22 (1st Cir. 1991), cert. denied, __________ _____ ______ 112 S. Ct. 1939 (1992) ("theories not raised squarely in the district court cannot be surfaced for the first time on appeal"). The next argument raised by Ean-Chea, which implicates the scope of 503(a)4, was not presented at oral ____________________ 4. Section 503(a) provides as follows: At any time while an action under this title is pending, the court may order the impounding, on such terms as it may deem reasonable, of all copies or phonorecords claimed to have been made or used in violation of the copyright owner's -15- 15 argument, takes up a mere handful of sentences in its brief, and is wholly unaccompanied by any developed argumentation. We have consistently admonished litigants that they cannot simply present this court with a shopping list of arguments and then expect us to both develop and address each one. Ean-Chea's argument with respect to 503(a) is presented in such a cursory and mechanical fashion as to render it unpreserved on appeal. See, e.g., Cohen v. Brown Univ., 991 ___ ____ _____ ___________ F.2d 888, 903 (1st Cir. 1993) ("Litigants cannot preserve an issue for appeal by raising a pennant and then moving on to another subject"); Ryan v. Royal Ins. Co. of America, 916 ____ ___________________________ F.2d 731, 734 (1st Cir. 1990) ("issues adverted to on appeal in a perfunctory manner, unaccompanied by some developed argumentation, are deemed to have been abandoned"). Ean-Chea's argument premised upon 509 is off base. Although he spends a considerable amount of space on this point, Ean-Chea fails to realize that 509 has no bearing on the matter before us. Section 509(a) provides a list of articles that may be seized and forfeited to the United States in criminal prosecutions brought to enforce ________ ____________________ exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced. 17 U.S.C. 503(a). This provision establishes a discretionary power to order impoundment. Midway Mfg. Co. v. _______________ Omni Video Games, Inc., 668 F.2d 70, 72 (1st Cir. 1981). ______________________ -16- 16 violations of the Copyright Act. The procedures referred to by Ean-Chea, set forth in 509(b), apply only to seizures and forfeitures described by subsection (a) of 509. See 17 ___ U.S.C. 509(b). Because 509 is limited to criminal actions, it is of no use to Ean-Chea in the present case. Next, Ean-Chea appeals the attorney's fees component of the district court's judgment. The focus of Ean-Chea's discontent with the fee allowance in the present case is that the district court determined that Gamma and not he was the "prevailing party" below. Section 505 of the Copyright Act provides as follows: In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party .... [T]he court may also award a reasonable attorney's fee to the prevailing party as part of the costs. 17 U.S.C. 505. "Under the Copyright Act, the `prevailing party is one who succeeds on a significant issue in the litigation that achieves some of the benefits the party sought in bringing the suit.'" Video Views, Inc. v. Studio __________________ ______ 21, Ltd., 925 F.2d 1010, 1022 (7th Cir.), cert. denied, 112 ________ _____ ______ S. Ct. 181 (1991) (quoting Warner Bros., Inc. v. Dae Rim ___________________ _______ Trading, Inc., 877 F.2d 1120, 1126 (2d Cir. 1989) (citation _____________ omitted)). We review de novo the district court's __ ____ determination that Gamma met the "prevailing party" test. -17- 17 Domegan v. Ponte, 972 F.2d 401, 406 (1st Cir. 1992), vacated _______ _____ _______ on other grounds, 113 S. Ct. 1378 (1993) (citing cases). _________________ Although prevailing party determinations are often reviewed under an abuse of discretion standard, see McDonald v. ___ ________ Secretary of Health and Human Services, 884 F.2d 1468, 1474 ________________________________________ (1st Cir. 1989), such is not the case where, as here, no facts are in dispute and application of the "prevailing party" test presents a pure question of law warranting plenary review. Domegan, 972 F.2d at 406-07 n.8. _______ Ean-Chea argues that Gamma did not "prevail" because, prior to trial, it voluntarily dismissed the five non-copyright claims contained in the complaint, conceded that it was not entitled to statutory damages on twelve episodes of Jade Fox whose copyrights had not been registered ________ prior to the commencement of this action, and failed to prove infringement with respect to the Hunters Prey videotapes. _____________ Although all of this is true, Gamma did succeed on its infringement claim with respect to episodes thirteen through sixteen of Jade Fox. While we recognize that Gamma _________ downscaled its case as the litigation proceeded, in light of its victory vis- -vis the four episodes of Jade Fox, we have ________ little trouble in concluding that Gamma succeeded on a "significant issue in the litigation." See Langton v. ___ _______ Johnston, 928 F.2d 1206, 1226 (1st Cir. 1991) (significance ________ -18- 18 must be viewed in light of "the scope and tenor of the litigation as a whole"). Furthermore, by virtue of its success, Gamma was awarded $2,500 in statutory damages, and Ean-Chea was permanently enjoined from further acts of infringement. This restriction on Ean-Chea's future behavior marks a clear change in the legal relationship between the parties enuring to Gamma's benefit. In addition, the monetary judgment recovered by Gamma on the merits of its claim is more than sufficient to qualify it as a "prevailing party." See, e.g., ___ ____ Farrar v. Hobby, ____ U.S. ____, ____, 113 S. Ct. 566, 573 ______ _____ (1992) (civil rights plaintiff who won only nominal damages of one dollar still "prevailing party" and thus eligible for attorney's fee award). Ean-Chea points to the poor winning percentage posted by Gamma and concludes that Gamma cannot possibly be a "prevailing party." We disagree. In the first place, the voluntarily dismissed claims were not copyright claims and thus not germane to the determination of whether Gamma was a "prevailing party" under the Copyright Act. More importantly, this court has firmly rejected a "mathematical approach" to the "prevailing party" determination. See Domegan, 972 F.2d ___ _______ at 407 n.9. In any event, it is well settled that "the degree of the plaintiff's overall success goes to the reasonableness" and not the allowability of an attorney's fee -19- 19 award. Farrar, ____ U.S. at ____, 113 S. Ct. at 574 (quoting ______ Texas State Teachers Assn. v. Garland Independent School ____________________________ ___________________________ Dist., 489 U.S. 782, 793 (1989)). We affirm the district _____ court's determination that Gamma was the "prevailing party," and hence eligible for a fee award. We have considered Ean-Chea's remaining arguments and find them to be without merit. B. B. Gamma's Cross-Appeal Gamma's Cross-Appeal ____________________ As its first ground for appeal Gamma argues that the district court clearly erred by finding that it failed to prove that Ean-Chea had either reproduced or distributed the videotapes of Hunters Prey. ____________ We start with the proposition that the plaintiff in a copyright action carries the burden of proof. Concrete ________ Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, _____________ ____________________________ 605 (1st Cir. 1988); Motta v. Samuel Weiser, Inc., 768 F.2d _____ ____________________ 481, 483 (1st Cir.), cert. denied, 474 U.S. 1033 (1985). To _____ ______ carry this burden a plaintiff must prove each of the elements of copyright infringement: (1) ownership of the copyright; and (2) copying by the defendant. Id. It is undisputed that ___ Gamma satisfied the first prong of this test, and Gamma argues that it met the second through circumstantial evidence presented at trial. We have recognized that, in a copyright action, -20- 20 proof by direct evidence of copying is generally not possible since the actual act of copying is rarely witnessed or recorded. Normally, there is no physical proof of copying other than the offending object itself. Copying therefore is generally established by showing that the defendant had access to the copyrighted work and that the offending and copyrighted articles are "substantially similar." Concrete Machinery Co., 843 F.2d at 605. "Copying is ________________________ demonstrated when someone who has access to a copyrighted work uses material substantially similar to the copyrighted work in a manner which interferes with a right protected by 17 U.S.C. 106." Ford Motor Co. v. Summit Motor Products, ______________ _______________________ Inc., 930 F.2d 277, 291 (3d Cir. 1991) (footnote omitted). ____ Among the rights protected by 106 are the rights to copy and distribute the copyrighted work. Both access and substantial similarity are undisputed in the present case, and there was no question that the videotapes of Hunters Prey found in Ean-Chea's store ____________ were piratical copies.5 Ean-Chea, however, disclaimed any knowledge of the Hunters Prey tapes found at his store, and ____________ denied that he had ever copied or distributed tapes of Hunters Prey. Ean-Chea testified that a customer must have ____________ rented the tapes at another video store and accidentally returned them to Overseas Video. ____________________ 5. "Piratical" copies are copies made without authorization of the copyright owner. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 162, reprinted in 1976 U.S.C.C.A.N. 5659, 5785. _________ __ -21- 21 The function of the district court acting as fact- finder was to determine, by weighing all of the evidence, if Gamma had met its ultimate burden of persuasion. The court concluded that it had not. The court found that "[t]he only direct evidence with respect to Hunters Prey is that at the ____________ time of the raid there were ... 10 or 11 tapes, in a box near the counter." Viewing this evidence along with the circumstantial evidence, which consisted primarily of the fact that videotape copy machines were found at Ean-Chea's store, the district court found that either of two conclusions were possible: either (1) appellant had copied tapes of Hunters Prey and/or held them out for distribution; ____________ or (2) the tapes belonged to another store and some customer erroneously returned them to Ean-Chea's store. According to the district court, the latter "is an equally believable version on the basis of the evidence ...." Id. ___ Taken as a whole the court found that the evidence was ambiguous to the extent that it was "not prepared to draw the inference" that Gamma wished it to draw, namely, that Ean-Chea either copied or distributed videotapes of Hunters _______ Prey. ____ Although the evidence could have supported a finding of infringement, the district court credited a plausible, lawful explanation for the presence of the tapes at Ean-Chea's store. It is established beyond cavil that the -22- 22 trial judge is in the best position to assess the credibility of witnesses, see Wainwright v. Witt, 469 U.S. 412, 428 ___ __________ ____ (1985) (assessing the credibility of witnesses is peculiarly within the trial judge's province), and great deference must be given to a trial court's findings based on credibility determinations. Rodriguez-Morales v. The Veterans _________________ ______________ Administration, 931 F.2d 980, 982 (1st Cir. 1991). "Where ______________ there are two permissible views of the evidence, the interpretation assigned by the fact-finder must be adopted." Id. Given the restricted nature of our review of the ___ district court's findings of fact, we cannot say that it clearly erred in finding that Gamma failed to carry its burden of proving that Ean-Chea had either made unauthorized copies or unauthorized rentals of videotapes of Hunters Prey. ____________ Gamma argues that it is entitled to four awards of statutory damages for Ean-Chea's willful infringement of episodes thirteen through sixteen of Jade Fox. Under the ________ Copyright Act a party may seek an award of statutory damages "in lieu" of actual damages. 17 U.S.C. 504(c). Section 504(c) provides for an award of statutory damages "for all infringements involved in the action, with respect to any one _______________________ work," and further provides that for "purposes of this ____ subsection, all the parts of a compilation or derivative work -23- 23 constitute one work." 17 U.S.C. 504(c)(1) (emphasis added). The district court gave Gamma a single award of statutory damages. Although Ean-Chea was found to have infringed upon the copyrights in four separate episodes of Jade Fox, the court found that these episodes constituted one ________ "work" for purposes of computing statutory damages. Since the district court's findings on this issue were substantially influenced by its choice of a different legal standard than we apply, its determination on this mixed question of law and fact is entitled to less deference on review than would be accorded a pure finding of fact. See ___ United States v. Howard, 996 F.2d 1320, 1327 (1st Cir. 1993); _____________ ______ see also Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, ___ ____ ___________________ ____________ 1215 n.5 (2d Cir. 1972) (rejecting "clearly erroneous" standard when reviewing whether work was created "for hire" under 24 of Copyright Act). Our discussion is guided by the Second Circuit's recent decision in Twin Peaks Productions v. Publications ________________________ ____________ Intern., 996 F.2d 1366 (2d Cir. 1993). The issue in Twin _______ ____ Peaks was whether eight separately written teleplays (or _____ videotapes of eight televised episodes)6 of the television program Twin Peaks constituted eight works or a single work __________ ____________________ 6. The court indicated that its holding applied whether written teleplays or videotaped television episodes were at issue. Twin Peaks, 996 F.2d at 1381. __________ -24- 24 under 504(c). The district court found that the infringement of each episode warranted its own award of statutory damages, and the court of appeals affirmed. The eight Twin Peaks episodes, as the Second ___________ Circuit explained, "represent a current television genre in which one or more plots continue from one episode to another." Id. at 1381. In fact, Twin Peaks carried the ___ ___________ point of the basic plot - who killed Laura Palmer - throughout its first season. On the issue of statutory damages, the court stated: The author of eight scripts for eight television episodes is not limited to one award of statutory damages just because he or she can continue the plot line from one episode to the next and hold the viewers' interest without furnishing a resolution. We might well have a different situation if a book written as a single work was then adapted for television as a group of episodes, for example, the six-part television adaptations of John LeCarre's "Tinker, Tailor, Soldier, Spy" and "Smiley's People." Even in such circumstances, though there would be but one book infringed, there might be separate awards for infringement of each televised episode. Id. The Second Circuit found that Twin Peaks was an easy ___ ___________ case, and that the eight teleplays or televised episodes clearly constituted eight separate works. While our case strongly resembles Twin Peaks, we pause here to assay some __________ differences. -25- 25 First, the copyrights in episodes thirteen through sixteen of Jade Fox were registered on a single registration ________ form, while the eight episodes of Twin Peaks were "separately __________ copyrighted." Id. Second, there was no evidence submitted as ___ to whether the scripts for episodes thirteen through sixteen of Jade Fox were separately written, whereas the eight ________ episodes of Twin Peaks were based upon separately written __________ teleplays. Id. ___ We take a step back, at this juncture, to discuss some background concerning statutory damages in copyright actions. Unlike the Copyright Act of 1909, under which statutory damages were available for "each infringement that was separate," Robert Stigwood Group, Ltd. v. O'Reilly, 530 ____________________________ ________ F.2d 1096, 1102 (2d Cir. 1976), the present Copyright Act "shifts the unit of damages inquiry from number of infringements to number of works." Twin Peaks, 996 F.2d at __________ 1381. The House Report concerning 504(C)(1) makes it clear that, although the minimum and maximum amounts [of statutory damage awards] are to be multiplied where multiple "works" are involved in the suit, the same is not true with respect to multiple copyrights, multiple owners, multiple exclusive rights, or multiple registrations. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 162, reprinted in _________ __ 1976 U.S.C.C.A.N. 5659, 5778. -26- 26 The term "work," is undefined under the Copyright Act. Although the Twin Peaks court did not undertake the __________ task of supplying a definition, one court of appeals has posited that "separate copyrights are not distinct works unless they can `live their own copyright life.'" Walt ____ Disney Co. v. Powell, 897 F.2d 565, 569 (D.C. Cir. 1990) ___________ ______ (quoting Stigwood 530 F.2d at 1105).7 The test set forth in ________ Walt Disney is a functional one, with the focus on whether ___________ each expression (or in our case, television episode) has an independent economic value and is, in itself, viable. See ___ Walt Disney, 897 F.2d at 569; see also 3 Nimmer 14.04[E], ___________ ___ ____ ______ at 14-64. The district court's determination that all four episodes of Jade Fox were one "work" for the purpose of |