Court Dismisses for Improper Venue under TC Heartland

In a May 24, 2018 ruling, Judge Nathan S. Roman dismissed the plaintiffs’ patent infringement action for improper venue. The defendant conceded that it had committed acts of alleged infringement in the District, but argued that it was incorporated in Ohio and did not have “a regular and established place of business” in the District as required under the patent venue statute, 28 U.S.C. § 1400(b). So, the defendant argued, venue is improper in this District under the Supreme Court’s TC Heartland ruling.

Judge Roman first rejected the plaintiffs’ contention that the defendant waived the argument, noting it “is evident that prior to TC Heartland, filing a motion for improper venue based on an argument that Defendant was not incorporated in New York, would have been in direct contravention of Federal Circuit law.” As to the merits of the venue issue, in light of the defendant’s concession of alleged infringing acts in the District, and of the indisputable fact that the defendant is incorporated in Ohio, the Court noted that it need only resolve whether the defendant has a “regular and established place of business” in the District. In making that determination, Judge Nathan considered the impact of the defendant’s maintenance of storage units in New York. The Court rejected these units as a basis for jurisdiction, writing: 

First, the storage units identified by Plaintiffs are likely “physical places in the district” prong, insofar as they are “building[s] or []part[s] of a building set apart for any purpose” . . . . Plaintiffs also demonstrated that Defendant pays for these storage units, . . . leading to a conclusion that the storage units are “of the defendant” . . . . Nevertheless, the storage units are not “regular and established places of business”, because Plaintiffs have failed to demonstrate that Defendant “actually engage[s] in business from [either] location.” . . . The question is whether the storage units are “location[s] at which one carries on a business.” . . . They are not. While Defendant’s customer service reps may “typically” retrieve materials from the storage units to visit customers within this District, . . . , no “employee or agent of [Defendant actually] conduct[s] business at” the storage units, whatsoever . . . . Venue is improper.

Court Denies Waiver of Plaintiffs' Right to Seek Actual Copyright Damages

In a February 6, 2017 ruling, Judge Richard J. Sullivan rejected the defendant's claim that the plaintiffs waived their right to actual copyright infringement damages by failing to request them in their initial disclosures.  The Court wrote:

Although Plaintiffs “corrected” this disclosure a mere five days later . . . , Defendant argues that this purported correction was “void because Plaintiffs cannot reverse their prior election for statutory damages.” . . . None of the authority cited by Defendant supports a rule so strict that it would bar a plaintiff from recovering actual damages due to an election made in initial disclosures and corrected days later, particularly where Defendant has not articulated any prejudice. Rather, the closest examples cited by Defendant involve elections made much later in litigation. See Marano v. Aaboe, No. 05-cv-9375 (BSJ) (RLE), 2010 WL 6350785, at *4 (S.D.N.Y. Oct. 20, 2010) (plaintiff “elected to seek statutory damages instead of actual damages in his initial brief” in connection with an inquest on damages, which “came more than one year after a default judgment had been entered and more than six weeks after the conclusion of fact discovery on the issue of damages”), adopted by 2011 WL 1157553 (S.D.N.Y. Mar. 28, 2011); Homkow v. Musika Records, Inc., No. 04-cv-3587 (KMW), 2008 WL 508597, at *4 (S.D.N.Y. Feb. 26, 2008) (plaintiff “clearly elected to pursue statutory damages” by requesting such damages in his amended complaint and repeating that request in a submission made in connection with an inquest on damages after entry of default judgment). The Court sees no legal or logical basis for applying the “gotcha” rule envisioned by Defendant, and thus declines to find that Plaintiffs have “irreversibly” elected statutory damages by referencing such damages in their initial disclosures and quickly correcting that reference.

Judge Sullivan nevertheless ruled that "Plaintiffs’ failure to introduce any evidence of actual damages is a de facto election of statutory damages," and limited the Plaintiffs to recovering statutory damages only if Plaintiffs are able to prove infringement.

Court Finds Personal Jurisdiction Based on Sales Through Amazon.com

In a July 8, 2016 ruling, Judge Lorna G. Schofield upheld personal jurisdiction at the motion to dismiss stage based in part on allegations that the defendants, who were based in Michigan, sold their allegedly infringing goods in New York through the Amazon.com Marketplace.  Construing New York's long-arm statute, CPLR § 302, Judge Schofield wrote:

The Complaint also alleges that Defendants sold goods that were shipped to New York
via Amazon.com. This conduct provides an alternative basis for personal jurisdiction over Defendants. Regularly offering and selling goods via an online marketplace such as Amazon.com can provide a basis for personal jurisdiction under CPLR § 302(a), even though Defendants do not control their Amazon.com “storefront” or its interactivity to the same extent that they control their own highly interactive website. . . . For internet sellers who use an internet storefront like Amazon, courts generally distinguish between two categories. First are commercial vendors who use it “as a means for establishing regular business with a remote forum.” . . . Jurisdiction is proper as to these defendants. In the second category are occasional sellers who use an internet service once to sell goods to the highest bidder who happens to be in the forum state. . . . Jurisdiction is improper as to these sellers assuming no additional contacts with the forum state. Defendants here are alleged to fall into the first category. They allegedly conduct their business of selling infringing garments on the Amazon platform; their sales are nationwide and include New York.  Consequently, jurisdiction is proper under § 302(a).

 The Court further found that the assertion of jurisdiction would comport with due process, and denied the motion to dismiss, ruling that "the allegations in the Complaint make a prima facie showing of personal jurisdiction over Defendants under CPLR § 302(a)(1), within the constitutional limits of due process."

Court Dismisses Copyright Infringement Claim Based on Choice of Law Provision in Contract

In a June 21, 2016 ruling, Judge Jesse M. Furman dismissed the plaintiff's copyright claim because of a choice of law provision in the parties' contract calling for the application of English law.  The plaintiff publishes a website with copyrighted content.  Subscribers are licensed to use it by being provided with a user name and password.  The defendant subscribed, but then allowed a number of its employees to use the single licensed user name and password.  The parties' agreement had a choice of law provision providing:

Where you visit, register and/or subscribe to a [Metal Bulletin] Site . . . these Terms (and any dispute or claim arising out of or in connection with these terms, including non-contractual disputes or claims), to the maximum extent permissible under the law of the territory that you are located in, will be governed by the laws of England and Wales and will be subject to the non-exclusive jurisdiction of the English courts.

The plaintiff sued the defendant in the Southern District, asserting U.S. copyright infringement and breach of contract claims.  Judge Furman dismissed the copyright claim based on the parties' choice of law provision.  In dismissing the claim, the Court reasoned:

As an initial matter, there is no question that [the plaintiff's] copyright claim falls within the scope of the parties’ choice-of-law clause. That clause provides broadly that English law applies to the Terms and, significantly, to “any dispute or claim arising out of or in connection with these terms, including non-contractual disputes or claims.” (Terms § 22.1). Where, as here, a defendant is alleged to have infringed a copyright by exceeding the scope of a license, “the copyright owner bears the burden of proving that the defendant’s copying was unauthorized under the license.” . . . Thus, the question of whether [the defendant] infringed [the plaintiff's] copyrights will necessarily turn, at least in part, on the Terms. . . . It follows that [the plaintiff's] copyright claim arises “in connection with” the Terms and thus falls within the scope of the choice-of-law clause.

Judge Furman also rejected the plaintiff's contention that the clause -- which the plaintiff drafted -- was somehow unenforceable, noting the high burden required to support such a contention.

Court Denies Preliminary Injunction in Trademark Infringement Action

In a June 17, 2016 ruling, Judge Coleen McMahon denied the plaintiff's motion for a preliminary injunction against trademark infringement, and ordered the plaintiff to show cause why the entire action should not be dismissed.  Despite two registration's for the plaintiff's mark with the PTO, the Court found that the mark was essentially a copy of the flag of the former Kingdom of Laos.  Judge McMahon ruled that "[i]t is axiomatic that a design comprising a flag cannot be trademarked."  The Court rejected the plaintiff's argument that the former Kingdom had abandoned the flag in 1975, similarly finding that under the PTO's Trademark Manual of Examining Procedures, "'former flags of existing countries, states or municipalities are refused.'"  Without a protectible mark, Judge McMahon noted that none of the plaintiff's claims appeared to state a claim for relief, and issued the order to show cause as to why they should not be dismissed.

Court Finds Registration of Domain Name Not Use in Commerce of a Trademark

In an April 12, 2016 ruling, Judge John G. Koetl ruled that a party’s registration of a domain name was not considered the use of a trademark in commerce, and so the party that actually first used the mark in commerce in connection with the offering and sale of goods was the legal owner of the mark. Judge Koetl wrote:

Without an offering of goods or services identified with the mark, a website that displays the . . . mark and contains simply a welcome page is insufficient to establish that the mark was used to identify goods to the public.

Court Upholds Sufficiency of Patent Infringement Complaint Under Iqbal

In a March 16, 2016 ruling, Judge Shira A. Scheindlin denied the defendant's motion to dismiss a complaint alleging willful direct, induced and contributory infringement. Applying the Iqbal standard for all three types of infringement, Judge Scheindlin found the allegations of direct infringement adequate, writing:

Allegations that plead that “a specific product [] allegedly infringes [the] patent by virtue of certain specific characteristics” meet the Iqbal plausibility standard. A plaintiff is not required to list which of the claims in the patent have been infringed in its pleading; as the Federal Circuit has recently reiterated, “a plaintiff need not even identify which claims are being infringed.”

With regard to the induced infringement claim, the Court found:

The Complaint also contains details regarding the printed instructional material and website instructions provided by [the defendant] instructing its customers as to how to use the [accused system] in a manner that allegedly directly violates the ‘641 Patent. This level of detail is sufficient to survive a motion to dismiss.

Judge Scheindlin also upheld the pleading of the contributory infringement claim, noting:

As explained above, [the plaintiff] has sufficiently pled direct infringement and that [the defendant} was aware of the ‘641 Patent. [The plaintiff] also alleges that the [accused system] and its various components have no substantial noninfringing use. While [the defendant] argues that [the plaintiff's] general allegation to that effect is insufficiently particular to satisfy Iqbal, “numerous post-Iqbal cases have not required detailed factual allegations in support of a plaintiff’s claim that a defendant’s product lacks substantial noninfringing uses.”

The Court did, however, find the claim for willful infringement to be inadequately pled, ruling:

The facts pled here offer a plausible risk that [the defendant] was infringing the ‘641 Patent by selling the [accused system] — and this is why [the plaintiff's] other claims survive [the defendant's] motion to dismiss. But these allegations do not rise to the much higher level of objectively reckless risk of infringement. Without additional facts to support a conclusion that the risk of infringement was highly likely, [the plaintiff] has failed to meet its burden.

Judge Scheindlin did all the plaintiff to file an amended complaint bolstering the willful infringement facts, if possible.

Court Denies Stay Pending PTAB's Consideration of Petition to Institute IPR

In a March 3, 2016 ruling, Judge Katherine Polk Failla denied the defendant's motion for a stay of the plaintiff's patent infringement claims pending the PTAB's decision on whether to institute an IPR.  The deciding factor in the Court's ruling was the parties' relationship as competitors, leading the Court to conclude that "in spite of Defendants’ contention that Plaintiff is the more powerful entity, Plaintiff nonetheless faces prejudice as the current patent-holder."  Judge Failla concluded by noting that "if the PTO later institutes IPR proceedings, the Court may be in a better position to revisit a potential stay, and Defendants may renew their motion at that time."

Court Refuses to Remand Complaint Finding Likelihood of Copyright Preemption

In a February 16, 2017 ruling, Judge Katherine B. Forrest declined to remand a complaint alleging claims for unjust enrichment, conversion and restitution, and an accounting arising from the defendant's exploitation of a taped ice skating performance by the plaintiff, finding that the Copyright Act likely preempted the claims.  First, the Court found that the taped performance was subject to copyright protection on either of two grounds, "that the motion picture recording of [the plaintiff's] performance is a work entitled to copyright protection," and that the plaintiff's ice skating performance is "akin to a choreographed dance" which is entitled to protection.  Judge Forrest further found that the plaintiff's claims, which are based on the defendant's use and exploitation of the recorded performance, essentially allege that the defendant violated the plaintiff's reproduction and distribution rights "that are encompassed within the bundle of rights afforded to copyright owners,"  Lastly, the Court concluded that the plaintiff's claim "does not contain an extra element in addition to reproduction or distribution," which would avoid copyright preemption.

Court Finds Computer Program to Be a Work-for-Hire

In a February 3, 2016 ruling, Judge Colleen McMahon declined to dismiss the plaintiff’s copyright infringement claim, finding that the defendant’s computing programming services under a written agreement constituted a “work-for-hire” under the Copyright Act. Judge McMahon found that the defendant’s work was specially commissioned pursuant to a written agreement designating the work as a “work-for-hire.” On the issue of whether the work fit into one of the nine statutory categories for which the work-for-hire doctrine applies, the Court found that the computer programs written by the defendant were either compilations or contributions to collective works. Specifically, the Court wrote:

Here, [the defendant] created and combined a number of different computer programs to create [the plaintiff’s] new software system. This new system was comprised of various elements including an open source framework, compression software, a multi-protocol library written by [the defendant’s associate], a "referral" program, anti-fraud software, routing algorithms, and code for an entirely new . . . website. . . .The system as a whole is properly deemed a compilation of computer programs. Alternatively, the source code for each program can be deemed a contribution to the "collective work" that is [the plaintiff’s] system. Thus, [the defendant’s] work falls into one of the nine categories enumerated in [17 U.S.C.] § 101(2).

Court Denies Extraterritorial Application of Lanham Act

In a February 1, 2016 ruling, Judge Jed S. Rakoff issued a decision explaining his reasoning for the dismissal of the plaintiff’s trademark action seeking to find that the holder of a presumptively valid foreign trademark had abandoned the mark. The plaintiff and defendant had originally been commonly owned. After a corporate reorganization, the plaintiff became an exclusive licensee of the defendant’s trademarks outside the United States. The plaintiff began this action contending that the defendant had abandoned the foreign marks under the Lanham Act by failing to exercise any control, including quality control, over the marks. Judge Rakoff ruled that

as a matter of law, . . . the Lanham Act may not be applied extraterritorially to adjudicate the validity or ownership status of foreign trademarks. This is because it is firmly settled that “[a] trademark has separate legal existence under each country’s laws, and trademark rights exist in each country solely according to that nation’s laws.” . . . Consistent with that principle, courts in this Circuit have repeatedly held that determination of the validity of foreign trademarks in their foreign applications is not just a matter of choice of law but that, rather, United States courts are simply not in the business of adjudicating foreign trademark rights in such circumstances.

Court Permits Discovery of Foreign Sales of Infringing Goods Made in the United States

In a November 25, 2015 ruling, Judge Laura Taylor Swain permitted the plaintiff in this patent infringement action to seek discovery of the amount of the defendant's foreign sales of allegedly infringing goods manufactured in the United States.  The Court wrote that "[l]ong-established Federal Circuit precedent recognizes that, when an allegedly infringing product is produced in the United States and subsequently sold by the manufacturer to foreign buyers, the foreign sales are relevant to the determination of damages suffered as a result of the domestic act of infringement." Judge Swain rejected the defendant's argument that the Federal Circuit's recent tightening of the extra-territoriality of patent rights prevented the discovery sought, finding that none of the defendant's "cited authorities demonstrates that discovery of foreign sales information – which is relevant to [the plaintiff's] claim for damages for allegedly infringing activities in the United States since it has, at a minimum, implications for the valuation of the invention – is precluded by the presumption against extraterritoriality."

Court Finds "Clever" Invention Claims Patent-Ineligible Subject Matter

In a November 18, 2015 ruling, Judge Colleen McMahon found the plaintiff's patent for routing a long distance call invalid as merely claiming an abstract idea.  Judge McMahon described the claimed invention as:

For example, suppose I am the end user. My service provider assigns me the number 555- 222-1234; I tell the service provider that, when I dial those digits, I want to be connected to my best friend (the recipient), who lives in Ohio, and whose telephone number is 614-555-1213. When I dial the assigned incoming telephone number (555-222-1234) from my personal telephone number (987-654-3210)- which number is recognized via some unclaimed but well known device like Caller ID - the call is forwarded directly to my best friend's home telephone number (614-555-1213). I need not input any additional information in order to get the call routed to its intended recipient.

The Court then noted that:

 The claim is directed to a well-known activity that is almost as old as telephony itself making a long distance telephone call. What plaintiff did was figure out a way to make such a call more cheaply, by dialing a ten digit local number and nothing more. He combined two activities that have long been performed, by humans and by machines -- caller ID and call forwarding- such that the recipient of a local call (area code plus seven digit number) uses some type of caller ID to recognize who the incoming caller is, and then forwards the incoming call to its intended recipient by associating the assigned incoming telephone number with a particular recipient's telephone number. Neither caller ID nor the method by which the call actually gets forwarded to its intended recipient (over what telephone network, using what switching facilities) is claimed. No physical aspect of this process is claimed. What is claimed is the idea of dialing only ten digits, at which point some unspecified intermediary will identify both the caller and the intended recipient of the call and connect them.

Judge McMahon then found that:

 Defendant argues that the claims of the '156 patent are directed to the patent ineligible abstract idea. I agree. Defendant, in an effort to shoehorn this case into as many of the above fact-patterns as it possibly can, says that the abstract idea is "a call routing system that employs a two-dimensional lookup table such that calls are routed to intended recipients based on the call-in number being dialed and the identity of the caller." I think it is simpler to say that the claims in suit are directed to the idea of "connecting two people via long distance telephony using caller ID and call forwarding." However you put it, it is clear, on the basis of the precedents discussed above, that this patent is directed to an abstract idea.

Although the Court characterized the invention as both "clever" and "an elegant solution," Judge McMahon nevertheless concluded that the claimed invention lacked any inventive concept, and merely claimed patent-ineligible subject matter.

Court Finds Lack of Subject Matter Jurisdiction Over Invalidity Claim After Plaintiff Dismissed its Infringement Claim

In a November 10, 2015 ruling, Judge Jed S. Rakoff dismissed the defendant's declaratory judgment counterclaim of invalidity for lack of subject matter jurisdiction when the plaintiff dismissed its infringement claim after an adverse Markman construction.  The plaintiff also offered a covenant not to sue that was effective as to future claims against the defendant unless the adverse claim construction was reversed.  Judge Rakoff found that the covenant not to sue eliminated subject matter jurisdiction over the invalidity counterclaim, writing:

In light of the parties' joint stipulation of non-infringement and plaintiff's covenant not to sue on the [patent-in-suit] barring a change in the law of the case, there is no live controversy between the parties as to infringement and defendants have no immediate interest in the validity of defendants' . . . Patent as long as that remains so. While defendants might gain such an interest if plaintiff both appeals the Court's Markman Order and persuades the Federal Circuit of what it could not persuade this Court, there is no certainty that plaintiff will even take an appeal. Plaintiff has not committed to doing so and defendants themselves recognize that plaintiff very well may choose not to, asserting that plaintiff is posturing in threatening to appeal. . . . A controversy this speculative simply cannot be considered to have the "sufficient immediacy" needed to invoke the Declaratory Judgment Act. As such, this Court does not have jurisdiction to entertain the invalidity claim.

Judge Rakoff also ruled that even if the Court had jurisdiction, the Court would decline in its discretion to exercise it given the lack of any immediate controversy.  Judge Rakoff found that "that it would be imprudent and a potential waste of both the parties' and judicial resources for the Court to proceed to determine the validity of the [patent-in-suit], when plaintiff has categorically dropped its infringement allegations barring a reversal of the Court's construction of the term" at issue.

Court Finds Unjust Enrichment Claim Raises Federal Question Under Patent Act

In an October 29, 2015 ruling,Judge Jesse M. Furman found federal question jurisdiction over the plaintiff's unjust enrichment claim which depended on the defendant's infringement of the plaintiff's patent.  The plaintiff administers a number of patent license pools, and the defendant took a license under one of the pools.  After the defendant stopped paying royalties, the plaintiff sued in state court for breach of contract and unjust enrichment.  The defendant removed to this Court, and the plaintiff moved to remand.  Plaintiff's unjust enrichment theory was that the defendant "'benefited by acting as if it had a patent pool license . . ., i.e., that it was "under the umbrella of the protection of the [relevant] Contract"'" and 'it [did] so at the expense of [the plaintiff] which had nonetheless provided this umbrella of protection but was not adequately compensated for doing so.'"  Judge Furman found that "to prevail on that claim, [the plaintiff] must necessarily prove infringement of one or more of the patent in the patent pool," "[t]hat is, the only way [the plaintiff] can prove that [the defendant] benefited at its expense is by showing that it used (and therefore infringed) a patent in the pool."  The Court noted that that "fact distinguishes [the plaintiff's] claim from breach of contract cases found not to raise federal patent questions because the claims turned on interpretation or application of a term in the contract, and infringement or non-infringement was not the determining factor," and denied the plaintiff's motion to remand.

Court Finds Pre-Suit Product Testing Covered by Work Product Privilege

In an October 22, 2015 ruling, Judge Jed S. Rakoff found that the work product privilege applies "to documents regarding plaintiffs' testing of defendant's accused products" before the plaintiffs filed this patent infringement action.  The defendant argued that the test results comprised mere data that could not be protected as work product.  The Court rejected this argument, finding that "'[b]oth facts and opinions are protected by the work product privilege.'"

Judge Rakoff also ordered the plaintiffs to produce a privilege log despite their argument "that doing so 'would disclose counsel's pre-filing investigation, mental processes, and work-product, and would identify potential non-testifying expert consultants in violation of Rule 26.'"  Judge Rakoff wrote:

Thus, plaintiffs' novel argument is that the privilege log itself would be privileged.  This borders on the frivolous.  Rule 26(b)(5) does not end with the caveat, "if the party feels like it."  It is in no way optional.  Nor does it matter that plaintiffs feel the creation of a privilege loge would be "burdensome and wasteful."

Court Denies Emotional Distress Damages for Copyright Infringement

In an October 19, 2015 ruling, Judge Paul A. Englemayer ruled that emotional distress damages are not recoverable for copyright infringement.  The pro se plaintiff had asserted a separate claim for "mental anguish," contending that "he has 'suffered from feelings of distress, anxiety and depression, which interferes with his creative ability, hinders his inspiration to write and consequently stagnates his income'" because of the defendants' infringement of his song.  Judge Engelmayer construed "this allegation, although presented as a claim for liability, to describe a category of alleged damages," and ruled that "such damages fall outside the remedies statutorily authorized for copyright infringement."

Court Declines to Find Spoliation in Destruction of Counterfeit Books

In an October 2, 2015 ruling, Magistrate Judge Gabriel W. Gorenstein declined to find spoliation by a defendant who destroyed certain counterfeit books before the start of copyright litigation. The defendant had previously settled a copyright infringement action by the same plaintiffs for the sale of counterfeit books. The settlement agreement in the prior litigation did not impose any preservation obligations if the defendant came to possess counterfeit books post-settlement. The defendant in fact did so, and destroyed some of the counterfeit books before the start of this current action. Judge Gorenstein rejected the argument that the previous lawsuit imposed an obligation on the defendant to preserve all counterfeit books in its possession. The Court reasoned:

Plaintiffs perhaps envision a regime under which any tortfeasor is required to preserve all evidence of their wrongdoing indefinitely. That is not the law that governs spoliation, however. Instead, a prerequisite to the duty to preserve is that there be an actual litigation or “reasonably foreseeable” litigation. . . . Given the circumstances that existed at the time the destruction of books occurred, we cannot find that litigation over the counterfeit books defendants found in their possession – not only the ones that had never been sold but even the relative few that had been returned from purchasers – was “reasonably foreseeable.”

Judge Gorenstein further found that the plaintiffs’ pre-litigation demand letter that the defendant preserve evidence did not trigger a preservation obligation because the letter “did not list any specific acts of infringement or even provide a list of titles that were at issue,” and that “to be effective in alerting a party to the potential institution of litigation, the letter must give some specifics as to the particular claim that will be made.”

Court Declines to Find Abandonment of Registered Mark

In an October 1, 2015 ruling, Judge Valerie Caproni found that the use of the federally-registered “Highline” mark for certain financial services in the phrases “Highland Capital Management” and “Highline Capital Management, LLC” was sufficient use of the mark in commerce to prevent abandonment. In dismissing the defendant’s counterclaim to invalidate the mark, the Court ruled that because the plaintiff “is an investment management firm that manages capital, the addition of the words ‘Capital’ or ‘Capital Management, LLC’ is ‘purely descriptive’ and ‘does not affect the origin-indicating function of the mark.’ The addition of ‘Capital’ and ‘Management’, instead, simply flesh out exactly what financial services are offered by” the plaintiff.

Court Rules Question of Copyright Infringement Statutory Damages Is for the Jury

In a September 28, 2015 ruling, Judge Gregory H. Woods held, after granting summary judgment of copyright infringement, that the amount of statutory damages was a question for the jury. Given the particular facts of this case, Judge Woods noted the open legal question of whether statutory damages are recoverable for infringement of both a musical composition and of a sound recording of that composition. The Court discussed a split in the District on that question, but suggested that it would adopt the view that a sound recording is a derivative work of a musical composition, precluding the separate recovery of statutory damages. Judge Woods also noted the legal uncertainty about whether a copyright holder can recover actual damages of a copyrighted “work,” and then recover statutory damages for the same “work” (albeit of a derivative work). Because of factual issues as to both of these legal questions, Judge Woods did not need to reach a definitive conclusion about them.