Case 1:18-cv-00950-LO-JFA Document 721 Filed 01/12/21 Page 1 of 6 PageID# 32123
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`Sony Music Entertainment, et al.
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`Plaintiffs,
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`V.
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`Cox Communications, Inc., et al.
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`Defendants.
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`Civil Action No. l:18-cv-00950
`Hon. Liam O'Grady
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`ORDER
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`This matter comes before the Court on the parties' post-trial briefs pursuant to the Court's
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`Jtme 2, 2020 Order. Dkt. 707. In that Order, the Court permitted Defendant Cox to submit post-
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`trial briefing supporting its contention that the damage award by the jury was improper because
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`certain works at issue were derivative of others; the Court also allowed Cox to submit its
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`calculation of appropriate statutory damages based on the number of unique works in the case.
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`Dkt. 707 at 52. The Court permitted Plaintiffs to produce evidence to rebut Cox's assertions. Id.
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`The Court also permitted the parties to submit argument concerning whether the works withdrawn
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`from another of Plaintiffs' cases, Warner Records, Inc. et al v. Charter Communications, Inc. (No.
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`l:19-cv-00874-RJB-MEH (D. Colo.), ECF No. 100, should be included in the determination of
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`damages. Id. Defendants have submitted their post-trial brief (Dkt. 711), and Plaintiffs have
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`submitted their response (Dkt. 718).
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`I. BACKGROUND
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`Members of the music industry, including record companies and publishers, filed this
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`action against Defendants Cox Communications, Inc. and CoxCom, LLC (collectively, “Cox”), an
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`Internet service provider and its parent company, on July 31, 2018. ' In its suit, Plaintiffs alleged
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`copyright infringement by Defendants’ subscribers during the period between February 1, 2013
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`and November 26, 2014 (the “claim period”). Plaintiffs accordingly sued Cox for contributory
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`copyright infringement and vicarious copyright infringement. Dkt.
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`l at 25—29. Plaintiffs claimed
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`this infringement occurred on peer-to-peer networks.
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`At trial, Plaintiffs presented to the jury a total of 10,017 copyrights that Defendants’
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`subscribers allegedly infringed upon during the claim period. The Court found during summary
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`judgment proceedings that Plaintiffs owned all of the copyrights in suit within the meaning of the
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`Copyright Act, and that Cox had sufficient knowledge of the alleged infringement to satisfy the
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`knowledge element of the contributory infringement claim.
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`At the close of evidence, Cox moved for judgment as a matter of law pursuant to Federal
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`Rule of Civil Procedure 50(a). The Court denied the motion, and the jury returned a verdict holding
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`Cox liable for both vicarious and contributory infringement of all 10,017 claimed works. Plaintiffs
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`elected statutory damages, and the jury awarded Plaintiffs $99,830.29 per work for a total of one
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`billion dollars in statutory damages.
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`After the jury returned its verdict, Cox moved the Court for post-verdict relief under
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`Federal Rules of Civil Procedure 50 and 59. The Court found no basis on which to disturb the
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`jury’s findings, and thus denied Cox’s Rule 59 Motion for a New Trial. Dkt. 707. The Court
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`granted Cox’s Rule 50 Renewed Motion for Judgment as a Matter of Law in part and denied it in
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`part. Id. at 52. In that portion of its Order, the Court permitted Cox to challenge the amount of
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`damages awarded to Plaintiff based on its argument that some of the 10,017 works in suit were
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`‘ The information in this section is consistent with this Court’s June 2 Order, Dkt. 707. Information that is not helpful
`to understanding the calculation of the number of works for which Plaintiffs will receive damages has been omitted.
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`2
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`derivative of others, and thus ineligible for a separate statutory damage award. The Court
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`instructed Cox to submit a new calculation of damages by eliminating the works Cox claimed were
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`derivative, and allowed Plaintiffs to respond to that new calculation and provide evidence to rebut
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`it. The parties’ post-trial briefings addressing this issue are now before the Court.
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`11.
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`DISCUSSION
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`The questions presented by the parties’ post-trial briefings are whether Cox forfeited the
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`right to challenge the number of works eligible for statutory damages by not raising the same
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`challenge at trial and whether the Court may do so if it involves only a ministerial action. At the
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`close of trial, thejury awarded Plaintiffs statutory damages for the works listed by Plaintiffs. Cox
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`argues that Plaintiffs should receive only one award for statutory damages per work, rather than
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`receiving redundant awards for works that are derivative of other works, as the Court found in its
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`June 20 post-trial Order, and that the re-calculation is a ministerial act. Dkt. 712. Plaintiffs argue
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`that this challenge was indeed forfeited because “Cox tried its case without providing the jury with
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`any evidentiary foundation to discern what, if any, relationship existed between any of the 6,734
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`sounds recordings on PX-l and any of the musical compositions on PX-2”, and determining the
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`duplicative works is not a ministerial act. Dkt. 718 at 5—6.
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`The Supreme Court has held that the Seventh Amendment guarantees the right to a jury
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`trial in the case of a copyright owner seeking statutory damages, and that the “right to a jury trial
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`includes the right to have a jury determine the amount of statutory damages, if any, awarded to the
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`copyright owner.” Felmer v. Columbia Pictures Television, Inc., 523 U.S. 340, 353, (1998)
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`(emphasis in original). The Court later clarified that holding by stating that it did not give the jury
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`any powers it did not already have; rather, Felmer established only that copyright actions are
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`typical civil actions, wherein the jury should determine questions of fact and the appropriate
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`amount of damages and the judge should answer questions of law. BMG Music v. Gonzalez, 430
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`F.3d 888, 892—93 (7th Cir. 2005).
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`Whether Plaintiffs are entitled to statutory damages for derivative works is a question of
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`law, and one that has been answered in the negative by case law persuasive to the Court. See
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`Xoom, Inc. v. Imageline, Inc, 323 F .3d 279, 287 (4th Cir. 2003), abrogated by Reed Elsevier, Inc.
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`v. Muchnick, 559 US. 154, 130 S. Ct. 1237, 176 L. Ed. 2d 18 (2010) (“Although parts ofa
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`compilation or derivative work may be regarded as independent works for other purposes, for
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`purposes of statutory damages, they constitute one work.” (internal quotations omitted)). However,
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`Plaintiffs assert that the question of which works are derivative is a question of fact that should be
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`lefi to the jury, and that Cox has forfeited its opportunity to present evidence concerning that issue.
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`Cox did not present evidence of the supposed relationship between the sound recordings
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`and musical compositions at trial. However, it did present this argument in its Motion for Summary
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`Judgment of August 2019. Dkt. 329 at 44—45.
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`Sony successfully argued in its opposition to Defendants’ Motion for Summary Judgment,
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`Dkt. 392, that whether any of the sound recordings in PX-l were derivative of any of the musical
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`compositions in PX—2 presented factual questions that a jury was required to answer. The Court
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`denied the Motion for Summary Judgment because issues of material fact remained that were
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`proper for determination at trial by the jury. Dkt. 586 at 24. The Court clearly signaled in so
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`finding that it was aware that it might be required to rule on Cox’s motion that separate awards
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`were impermissible as a matter of law. Trial then proceeded and Cox put forth no testimony
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`regarding the duplicative works.
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`Instead it proposed a jury instruction on the issue at the close of
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`evidence. At the ensuing jury instruction conference the Court inquired how thejury would make
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`such a decision and Cox pointed to PX-l and PX-2, two compilations containing the lists of the
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`recordings and musical compositions, although no testimony about the overlap was introduced or
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`a summary exhibit introduced. Cox proposed that the jury make this determination of duplicate
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`works without the benefit of expert testimony or even a Summary Chart under Federal Rule of
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`Evidence 1006. The Court denied the request, finding it unreasonable for the jury to cull through
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`13,000 titles of works and try to analyze their similarities or dissimilarities without any guidance
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`from testimony in the record. The jury found all 10,017 copyrighted works infringed as stated
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`above, and awarded plaintiff 1 billion dollars.
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`In post-trial rulings, the Court determined that although there was conflicting
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`caselaw, duplicative awards were impermissible under the Copyright Act. It then asked the parties
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`to consider what effect its ruling should have on the jury verdict. The court also incorrectly
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`assumed that the calculation of the number of duplicative works would be a ministerial act using
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`evidence in the trial record. Sony in its brief, correctly and forcefully points out that this analysis
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`is not ministerial, using Cox’s own brief as compelling evidence. Cox submitted three relevant
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`schedules in its brief in support of a reduction in the number of works and each is indeed complex.
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`Cox admits that sound recordings in PX-l may not be derivative of the musical compositions
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`appearing in PX-2. The many steps Cox performed in its analysis required examining the names
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`of the artist, the name of the album, ownership information, and publication date. Performing this
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`analysis required Cox to make judgment calls on whether works were derivative by giving the
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`above factors different weight. These are questions of fact that must be answered by a jury. The
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`Court was therefore wrong that this re-calculation could be made on the trial record by the Court
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`performing a ministerial act. Cox’s failure to present evidence to the jury that it had infringed on
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`only 7,579 works resulted in the jury’s determination that Cox had infringed on 10,017 works.
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`Dkt. 712 at 1; Dkt. 669 at 2.
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`Cox’s brief in footnote 10 makes clear that even if the jury had been asked to make this
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`factual determination by requiring them to comb through the thousands ofentries on the PX—l and
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`PX-2 lists, they would have been unable to determine which ofthem were derivative ofeach other.2
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`Clearly. the number of derivative works in play in this case was a question for the jury. The jury
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`answered that question with the information available, and C ox did not provide the information to
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`thejury that it has provided to the Court in its post-trial brief.
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`[11.
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`CONCLUSION
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`For the foregoing reasons. the Court finds that the jury’s detertnination of the number of
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`works infringed stands. Cox’s failure to present evidence of its own caiculation to the jury at trial
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`is determinative.
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`A separate judgment Order shall enter forthwith.
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`It is SO ORDERED.
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` January L31, 2021
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`Alexandria, Virginia
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`United States
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`istrict Judge
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`3 “At trial. asked by the Court to explain why Cox witness Christian 'i‘regillis could not just “add up the number of
`sound recordings and musical compositions.” Plaintiffs“ counsel successfully precluded the Tregillis testimony by
`arguing,
`in part, that Tregillis' review of only PX-l and PX-l meant that he had "net looked at
`the underlying
`registration[s], [so] he can‘t do that analysis.” Ex. A (Trial Tr. 269?:6-I8}. But as counsel knew, Plaintiffs’ expert
`McCabe had done precisely "that analysis.“ comparing l’X-l and PX-2 for the overlapping unique titles and using the
`registration certificates only to “disambiguate" the small number of works with non-unique titles. See supra at 7.
`Later.
`in opposing Cox's motion for JMOL, Plaintiffs argued that "there are simply too many separate musical
`compositions that happen to have the same title to have any certainty" as to which recordings derive from which
`compositions without going outside the record evidence. ECF 699 at IT. n.10. As Plaintiffs knew from McCabe‘s
`analysis, only a handful of the compositions in suit share the same title. See Ex. D (McCabe Rpt., Apr. 10. 2019). 'j,
`42-43 {noting that “automated matching“ of recordings and compositions of the two lists of works in suit worked for
`all but "approximately 10%" of the works in suit): see nt’so at. 'T 37 {cross-referencing for musical compositions on
`“track")."
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