2007年9月15日星期六
AFFIRMED IN PART, VACATED IN PART, AND REMANDED
In short, the erroneous derivative work instruction had no operative effect on the jury's award and therefore was harmless. Accordingly, we reject Phelps & Associates' request for a new jury trial on damages based on the district court's erroneous instruction. B. Phelps & Associates also contends that it is entitled to a new trial on damages because of erroneous evidentiary rulings made by the district court during the course of trial. We have reviewed each of the court's rulings and conclude that the district court did not abuse its discretion. First, Phelps & Associates challenges the district court's admission of Galloway's receipts and ledger which he offered to prove expenses incurred in constructing his house, contending that these documents were inadmissible hearsay evidence. We conclude, however, that they could appropriately have been admitted under the business records exception, see Fed. R. Evid. 803(6), or the residual hearsay exception, see Fed. R. Evid. 807. Phelps & Associates also challenges the admission of a Mecklenburg County tax assessment, offered to prove the value of Galloway's property. It argues that the assessment contained undisclosed expert testimony, i.e., a real estate appraisal, subject to the gatekeeper provisions of Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). We conclude, however, that the assessment could appropriately have been admitted under the agency records exception to the hearsay rule, Fed. R. Evid. 803(8), which holds such documents sufficiently reliable because they represent the outcome of a governmental process and were relied upon for non-judicial purposes. Next, Phelps & Associates challenges the district court's admission of Galloway's own testimony on the value of his property. Lay opinion testimony, however, may appropriately be admitted if it is helpful to the jury; if it is based on the perception of the witness; and if it is not expert testimony under Federal Rule of Evidence 702. See Fed. R. Evid. 701. Courts indulge a common-law presumption that a property owner is competent to testify on the value of his own property. See, e.g., North Carolina State Highway Comm'n v. Helderman, 207 S.E.2d 720, 725 (N.C. 1974); Fed. R. Evid. 701 advisory committee's note ("[M]ost courts have permitted the owner or officer of a business to testify to the value or projected profits of the business, without the necessity of qualifying the witness as an [expert] . . . . The amendment does not purport to change this analysis"). Finally, Phelps & Associates complains that its expert witness should have been allowed to testify to rebut the tax assessment and Galloway's testimony on the value of his property. The expert proposed to testify on the reliability of the Mecklenburg County tax appraisal. The court listened to Phelps & Associates proffer of the expert's testimony out of the presence of the jury and concluded that it was "unhelpful" and "potentially misleading." The district court has broad discretion to regulate the admissibility of such testimony, and our review of the record indicates that the court did not abuse its discretion. See Hosp. Bldg. Co. v. Trustees of Rex Hosp., 791 F.2d 288, 291 (4th Cir. 1986). In sum, we reject Phelps & Associates' arguments for a new trial on damages and affirm the jury's verdict. III. After the jury returned its verdict, Phelps & Associates filed a motion under 17 U.S.C. §§ 502, 503(b) for injunctive relief (1) to prohibit the completion of the house; (2) to enjoin permanently the lease or sale of the house; and (3) to require the destruction or return of the infringing plans. The district court denied the motion and all of the relief requested, stating: After trial in this matter, the jury awarded the Plaintiff $20,000 in actual damages. The court finds that the Plaintiff has been made whole, and in its discretion, declines to order Defendant to destroy all copies of the plans at issue. Moreover, the court declines to enjoin further construction of the house, alteration of the house, or the future lease or sale of the house. Evidence at trial revealed that the house is substantially constructed and that only interior finish work remains to be done. Thus, there is no likelihood that completion of the house will result in further infringement. Taking into account equitable considerations, the court refuses to grant the relief requested by the Plaintiff. Phelps & Associates contends that in denying injunctive relief, the district court erred as a matter of law. It argues that the court denied injunctive relief simply because Phelps & Associates received damages and thereby had been made "whole." It maintains that "the mere fact that a copyright owner may recover damages does not negate his right to injunctive relief." See Lyons P'ship, LP v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001) (remanding for the entry of a permanent injunction and a determination of the amount of damages award). Phelps & Associates argues affirmatively that when copyright infringement has been proved and there is a threat of continuing infringement, the copyright holder is "entitled to an injunction." Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C. Cir. 1990); see also Harolds Stores, Inc. v. Dillard Dep't Stores, Inc., 82 F.3d 1533, 1555 (10th Cir. 1996); Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994); Nat'l Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 732 (8th Cir. 1986). Because Phelps & Associates says that it made that showing, it claims that it was entitled to injunctive relief. Insofar as Phelps & Associates suggests that it is entitled to injunctive relief, we reject the argument. See eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837, 1839 (2006). In eBay, the Supreme Court rejected any notion that "an injunction automatically follows a determination that a copyright has been infringed." 126 S.Ct. at 1840 (reversing the Federal Circuit, which had articulated "a 'general rule,' unique to patent disputes, 'that a permanent injunction will issue once infringement and validity have been adjudged'"). The Supreme Court reaffirmed the traditional showing that a plaintiff must make to obtain a permanent injunction in any type of case, including a patent or copyright case: A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be dis-served by a permanent injunction. Id. at 1839. Moreover, the Court reiterated that even upon this showing, whether to grant the injunction still remains in the "equitable discretion" of the court. Rejecting Phelps & Associates' claim to an automatic injunction or an "entitlement" to one, we now apply traditional equity principles to each of Phelps & Associates' requests for injunctive relief to determine whether the district court abused its discretion. A. Phelps & Associates' first request, that Galloway be enjoined from completing the house, appears to be moot. At oral argument, the parties represented that the house had been completed. B. Phelps & Associates' second request for equitable relief, that Galloway be enjoined from leasing or selling the completed house, is argued with the following syllogism: First, the completed house is an infringing copy of Phelps & Associates' copyrighted work. See 17 U.S.C. § 101. Second, as the copyright holder, Phelps & Associates has the exclusive right to lease or sell its copyrighted work. See id. § 106(3). Therefore, Galloway may never lease or sell the house without infringing Phelps & Associates' copyright. See id. § 501(a). Because it is likely that Galloway will lease or sell his house, it is likely that he will infringe Phelps & Associates' copyright, and this likely infringement should be foreclosed by a permanent injunction. We agree with Phelps & Associates' argument that an award of damages that fully compensates a plaintiff for all damages suffered does not categorically preclude injunctive relief. The damages in this case were awarded for past conduct and the injunctive relief requested is forward-looking, addressing claimed future injury. Although future injury of an economic nature can often be reflected in an award of damages, the requested injunction to prohibit a future lease or sale of Galloway's house could not have been addressed by an economic award. When and in what market condition Galloway would be leasing or selling his house cannot be surmised with the necessary certainty for a damages award. Accordingly, such injury, if redressable, would either be "irreparable" or any damages, "inadequate." See eBay, 126 S.Ct. at 1839. Therefore, injunctive relief is not foreclosed by the award of damages in this case. The bigger question is whether a future lease or sale of a house, the construction of which has already been subject to a copyright infringement action, will cause an injury for which the Copyright Act provides a remedy in addition to that already provided for the construction of the house. Phelps & Associates claims that such a lease or sale of the house would constitute an additional copyright infringement in that it would violate its exclusive right to lease and sell conferred by 17 U.S.C. § 106(3) (providing that copyright owner has exclusive rights to sell, rent, lease, or lend copies). It contends that while it would ordinarily be entitled to profits resulting from any such lease or sale, the inability to determine profits at the present time leaves it no recourse but to seek equitable relief. In sum, Phelps & Associates argues that it is entitled to the perpetual stream of profits from the infringing copy - presumably for the 95-year life of the copyright, see 17 U.S.C. § 302(c) - and that an injunction is the only practical way to ensure that it may capture that stream of profits. While the lease or sale of an infringing copy is generally a violation of the exclusive rights given to a copyright holder, the "first sale doctrine" of 17 U.S.C. § 109(a) creates an exception as it applies to the particular copy in this case, Galloway's house. Section 109(a) provides that "notwithstanding [the copyright holder's exclusive rights], the owner of a particular copy . . . lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy." The construction of the Galloway house, as an infringement of Phelps & Associates' copyright, has been subjected to the remedies of the Copyright Act in this action. Accordingly, Galloway may, after satisfying the judgment for his unlawful construction of the house, "sell or otherwise dispose" of it without further liability to Phelps & Associates. Contending that the first sale doctrine does not apply in this case, Phelps & Associates focuses our attention on the requirement of § 109(a) that the first sale be "lawfully made" or be authorized by it. It argues that since Galloway's house was not a copy "lawfully made," any future lease or sale of the house would be an infringement. In other words, Phelps & Associates contends that the tainted original acquisition and use of the Bridgeford Residence design permanently disables the alienability of Galloway's house until Phelps & Associates, as copyright holder of the house's design, releases its claim. While Phelps & Associates' argument would be well taken with respect to any lease or sale that was threatened or occurred before the judgment in this case, see Palmetto Builders & Designers, Inc. v. Uni-real, Inc., 342 F. Supp. 2d 468, 473 (D.S.C. 2004), its bringing of this action and obtaining relief from the district court for the construction of the house provides authorization that satisfies § 109(a). When the district court entered judgment that awarded Phelps & Associates damages and infringer's profits, if any, and that declined to order the destruction or other disposition of the house, the house became a lawfully made copy. This is because the illegal character of the copy was fully redressed by the remedies requested and granted with respect to the making of the copy. Just as a converter of property obtains good title to the converted property after satisfying a judgment for conversion, so does an infringer obtain good title to the physical copy after satisfaction of the judgment under the Copyright Act. See Restatement (Second) of Torts § 222A, cmt. c ("When the defendant satisfies the judgment in the action for conversion, title to the chattel passes to him, so that he is in effect required to buy it at a forced judicial sale"). The Second Circuit reached this very conclusion in the context of a patent or copyright: [T]he "first sale" which terminates the exclusive right to vend patented or copyrighted objects need not be a truly voluntary one, but can consist of some reasonable and recognized form of compulsory transfer, such as a judicial sale or court-compelled assignment. In such cases the ultimate question embodied in the "first sale" doctrine - "whether or not there has been such a disposition of the article that it may fairly be said that the patentee (or copyright proprietor) has received his reward for the use of the article" - is answered in the affirmative . . . . If rationalization is needed, this can be in terms of involuntary "sale," of a presumed "consent" by the proprietor or patentee to the rights and remedies that are normally applicable to material objects in the course of trade. . . . [W]e [ ] reject plaintiff's extreme position that copyrighted goods are immune from the normal remedies . . . until the proprietor has had one truly voluntary "sale." Platt & Munk Co. v. Republic Graphics, Inc., 315 F.2d 847, 854 (2d Cir. 1963) (citations omitted); see also Bourne v. Walt Disney Co., 68 F.3d 621, 632-33 (2d Cir. 1995) (holding that certain licenses can be a "first sale" authorizing owner of copy to sell it); McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 921-23 (Fed. Cir. 1995) (holding that patent holder's nonpayment of debts is authorization to sell patented copies). The legislative history of the Copyright Act of 1976 similarly suggests that the copyright owner need not voluntarily authorize a sale for the first sale doctrine to apply. "To come within the scope of Section 109(a), a copy . . . must have been 'lawfully made under this title,' though not necessarily with the copyright owner's authorization. For example, any resale of an illegally 'pirated' phonorecord would be an infringement, but the disposition of a phonorecord legally made under the compulsory licensing provisions of section 115 would not." H.R. Rep. No. 94-1476, at 79 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5693 (emphasis added). Thus, under the first sale doctrine, an infringer is entitled to sell, or otherwise dispose of any copy that the court does not order destroyed or otherwise disposed of, without further obligation, once he satisfies the judgment that remedied the infringement, even if the copy was originally pirated. By bringing an infringement action against Galloway, Phelps & Associates essentially sold him its interest in the house in exchange for the appropriate remedies under the Copyright Act. Once those remedies have been sought and a judgment has been rendered, the copyright holder loses his right to sell that particular manifestation of his copyright. Phelps & Associates argues that this understanding of the first sale doctrine amounts to a judicially-created compulsory license, which is disfavored. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 446 n.28 (1984). The reliance on Sony, however, is misplaced. The remedies under the Copyright Act do not resemble a license because the Copyright Act remedies are far broader than simply requiring a defendant to make license payments. Under the Copyright Act, a copyright holder is entitled to both actual damages - the market price of the license - and disgorgement of the infringer's profits, which might be immensely greater than the price of a license. See 17 U.S.C. § 504. Moreover, the infringer takes the risk that the district court will order, in its discretion, the destruction or other disposition of the infringing article. See id. § 503(b). In the garden-variety piracy case, such orders are routinely issued. See, e.g., Loud Records, LLC v. Lambright, Civ. No. 1:05-0171, 2006 U.S. Dist. LEXIS 38016 (S.D. W. Va., March 30, 2006); Graduate Mgmt. Admission Council v. Raju, 267 F. Supp. 2d 505 (E.D. Va. 2003); Microsoft Corp. v. Grey Computer, 910 F. Supp. 1077 (D. Md. 1995). Given the risks attendant to infringement, the interest in having potential infringers negotiate with copyright holders is adequately secured. See Walker v. Forbes, Inc., 28 F.3d 409, 412 (4th Cir. 1994) ("By stripping the infringer not only of the licensing fee but also of the profit generated as a result of the use of the infringed item, the law makes clear that there is no gain to be made from taking someone else's intellectual property without their consent"). The alternative to giving Galloway rights under the first sale doctrine of § 109(a) would inappropriately expand the scope of Copyright Act remedies in circumstances such as those before us. A house or building, as an expression of the architect's copyrighted plans, usually has a predominantly functional character. This functional character was the reason American copyright law, pre-Berne Convention, denied protection to constructed architectural works altogether. See 1 Nimmer & Nimmer, supra, § 2.08[D][2], at 2-126 ("an architectural structure ordinarily constitutes a 'useful article' . . . . For that reason, such structures remained unprotected by United States copyright law from passage of the current [Copyright] Act until enactment of an amendment, the Architectural Works Copyright Protection Act"). This is the same reason that Congress manifested an expectation that injunctions will not be routinely issued against substantially completed houses whose designs violated architectural copyrights. H.R. Rep. No. 101-735, at 13-14 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6944 (explaining that buildings "are the only form of copyrightable subject matter that is habitable"). Those considerations are at their strongest when the architectural structure is completed and inhabited, as here. Moreover, such an injunction would be overbroad, as it would encumber a great deal of property unrelated to the infringement. The materials and labor that went into the Galloway house, in addition to the swimming pool, the fence, and other non-infringing features, as well as the land underneath the house, would be restrained by the requested injunction. As such, the injunction would take on a fundamentally punitive character, which has not been countenanced in the Copyright Act's remedies. See Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 931 (7th Cir. 2003) (noting that the Copyright Act does not authorize punitive damages); cf. 17 U.S.C. §§ 504, 505 (specifying the remedies available under the Copyright Act). In a similar vein, the requested injunction would undermine an ancient reluctance by the courts to restrain the alienability of real property. See, e.g., Williams v. First Fed. Sav. & Loan Ass'n, 651 F.2d 910, 919 n.18 (4th Cir. 1981); Jiggets v. Davis, 28 Va. 368 (1829); Howard v. Earl of Shrewsbury, (1867) 2 Ch. App. 760. While Galloway has title to the house that is free and clear of restrictions arising from his infringement, he has not obtained any rights in the house's design. His ownership is limited to the house as a single manifestation of the design. Like the owner of a book, he will have the power to lease or sell the house, but not to copy its design in another house or engage in any other activity that remains the exclusive right of the copyright holder. See Red Baron-Franklin Park, Inc. v. Taito Corp., 883 F.2d 275, 280 (4th Cir. 1989) (first sale doctrine diminished copyright holder's distribution right, but not other exclusive rights such as the right of publication). In short, Phelps & Associates retains its copyright, albeit not the one-house manifestation of it. See 2 Nimmer & Nimmer, supra, § 8.12[B][1][d] ("the first sale inquiry examines ownership of the tangible property in which the copyrighted work has been embodied, not ownership of the copyright itself"). For all of these reasons, we affirm the district court's order denying an injunction against the future lease or sale of Galloway's house. C. Finally, Phelps & Associates contends that the district court erred as a matter of law in refusing to grant injunctive relief to require the return or destruction of the infringing plans. See 17 U.S.C. § 503(b). Again, any relief granted in equity is at the discretion of the district court, and a petitioner cannot claim that it was entitled to injunctive relief. See eBay, 126 S.Ct. at 1839. Nonetheless, the district court, without the benefit of eBay, may have denied equitable relief categorically, rather than basing its analysis on the traditional principles of equity. In denying Phelps & Associates' motion for an injunction, the district court stated: The court finds that the Plaintiff has been made whole, and in its discretion, declines to order Defendant to destroy all copies of the plans at issue. Being made whole in the circumstances of this case, however, could only have referred to the jury award of damages for the cost of a license and its finding that Galloway realized no profits for disgorgement. It could not have related to other questions, such as the existence of infringing plans or future acts of infringement. To explain its ruling, the court stated only, Evidence at trial revealed that the house is substantially constructed and that only interior finish work remains to be done. Thus, there is no likelihood that completion of the house will result in further infringement. It does not follow, however, that because the plans were not needed to complete the house, they should not therefore be returned or destroyed, as authorized by 17 U.S.C. § 503(b). The risk of future infringement includes the possible use of plans to build another house, publication of the plans, or other violations of the exclusive rights conferred by 17 U.S.C. § 106. See Serv. & Training, Inc. v. Data Gen. Corp., 963 F.2d 680, 690 (4th Cir. 1992) (affirming the entry of a preliminary injunction against further unauthorized use and copying of copyrighted software). When Phelps & Associates requested the return or destruction of the infringing plans, the district court was obligated to consider the traditional factors for equitable relief. Yet it appears that the court did not do so. At most, it stated without explanation that it declined "in its discretion . . . to order defendant to destroy all copies of the plans at issue." Considering the court's ruling in the context of the admonitions given in eBay, we cannot conclude that the district court properly performed its equitable functions. See eBay, 126 S.Ct. at 1839. Therefore, we vacate that portion of its order as an abuse of discretion. In sum, while we affirm the jury's verdict and the district court's order refusing to enjoin the future leasing or sale of Galloway's house, we remand this case for further consideration, in light of eBay, of Phelps & Associates' request for injunctive relief with respect to the return or destruction of the infringing plans. AFFIRMED IN PART, VACATED IN PART, AND REMANDED
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