UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 94-2139
SUPERIOR FORM BUILDERS, INC.
Plaintiff- Appellee,
v.
DAN CHASE TAXIDERMY SUPPLY
COMPANY, INCORPORATED; DAN CHASE,
Defendants- Appellants,
and
LILLY CHASE,
Defendant.
Appeal from the United States District Court
for the Eastern District of Virginia, at Norfolk.
Rebecca B. Smith, District Judge.
(CA- 93- 940- N)
Argued: July 12, 1995
Decided: January 29, 1996
Before NIEMEYER, MICHAEL, and MOTZ, Circuit Judges.
_________________________________________________________________
Affirmed by published opinion. Judge Niemeyer wrote the opinion,
in which Judge Michael and Judge Motz joined.
_________________________________________________________________
COUNSEL
ARGUED: Earle Duncan Getchell, Jr., MCGUIRE, WOODS, BAT-
TLE & BOOTHE, Richmond, Virginia, for Appellants. Gregory
Albert Giordano, SHUTTLEWORTH, RULOFF, GIORDANO &
KAHLE, P.C., Virginia Beach, Virginia, for Appellee. ON BRIEF:
Amy T. Holt, Frank G. LaPrade, III, MCGUIRE, WOODS, BATTLE
& BOOTHE, Richmond, Virginia, for Appellants. Lawrence H.
Woodward, Jr., SHUTTLEWORTH, RULOFF, GIORDANO &
KAHLE, P.C., Virginia Beach, Virginia; F. Prince Butler, GRIFFIN,
BUTLER, WHISENHUNT & KURTOSSY, Arlington, Virginia, for
Appellee.
_________________________________________________________________
OPINION
NIEMEYER, Circuit Judge:
The principal issue presented in this appeal is whether animal man-
nequins used by taxidermists to mount animal skins are copyrightable.
The controversy centers around whether these mannequins are "useful
articles" or "sculptural works" within the meaning of the Copyright
Act, and if useful, whether their sculptural features are conceptually
separable and thus copyrightable. We also must decide evidentiary
and damage issues arising from the trial in the district court.
Because these animal mannequins were designed to portray the
appearance of animals through artistic features introduced by the
author in their creation, we hold that they are not"useful articles" as
defined in the Copyright Act and that therefore copyright protection
is available for them. Because we also reject the assignments of error
attributed to the evidentiary and damage rulings, we affirm.
I
Superior Form Builders, Inc. ("Superior Form"), through its owner
and president, Tommy Knight, creates and markets animal manne-
quins for mounting animal skins. Employing traditional sculpturing
techniques, Knight creates the mannequins, using casts of actual ani-
mal carcasses as models. He begins by applying clay to an armature
made of wood and actual animal bones and shaping the desired ani-
mal in a particular pose and with precise anatomical features. From
the clay sculpture, he makes a fiberglass mold and uses it to produce
2
polyurethane forms, i.e. the animal mannequins. The mannequins
contain special receptacles for artificial eyes,"ear butts" for the
proper placement of animal ears, and pre- molded features for the
application of artificial teeth.
Knight considers his mannequins to be a form of artistic expression
and has entered several of his unadorned mannequins in art contests.
Some have won awards.
Knight registered each of his mannequins with the United States
Copyright Office and then assigned the copyrights to his company,
Superior Form. Superior Form issued its first catalog with Knight's
mannequins in December 1991.
In January 1992, Dan Chase Taxidermy Supply Co., Inc. ("Chase
Taxidermy"), a Superior Form competitor, ordered four mannequins
from Superior Form's catalog: an otter, two raccoons in different
poses, and a deer. Dan Chase, the president and chief executive offi-
cer of Chase Taxidermy, used the name of a fictional company in
placing the order because he feared that Superior Form would not
send the forms otherwise. Chase Taxidermy also used pseudonyms in
the past to obtain animal mannequins from other companies.
Chase Taxidermy used the four Superior Form mannequins to de-
velop its own forms, making few or no modifications. After regis-
tering the mannequins as its own with the Copyright Office, Chase
Taxidermy offered these mannequins for sale in its 1992- 93 catalog
and in each edition thereafter, with its own copyright notice attached.
Chase Taxidermy advertises that it is the largest taxidermy supply
company in the world and offers over 3,000 forms for sale through
its catalog. Although Chase Taxidermy developed many of its forms
from competitors' mannequins, it represented in its initial catalogs
that "each manikin in this catalog is legally copyrighted according to
the law of the United States of America and any infringement will be
vigorously prosecuted." In later catalogs, it warned, "Beware of look-
a- likes," and explained:
Practically everyone recognizes the fact that we are being
copied by the desperate "copy cats" working overtime in an
attempt to deceive the public and violate the rights of others.
3
In September 1993, Superior Form filed suit against Chase Taxi-
dermy and Dan Chase alleging that the defendants (hereinafter
"Chase") had infringed Superior Form's copyrights on the four animal
mannequins that Chase had purchased from Superior Form. Lilly
Chase, Dan Chase's wife, was also named a defendant, but she was
subsequently dismissed because the court lacked personal jurisdiction
over her. Superior Form's complaint sought equitable relief, statutory
damages of $400,000, and attorneys fees and costs. Chase moved for
summary judgment on the ground that Superior Form's mannequins
are not copyrightable because they are "useful articles" that do not
have separable and independent sculptural features. The district court
denied the motion, ruling as a matter of law that the taxidermy man-
nequins are copyrightable since they have no utilitarian function other
than portraying the appearance of an animal and that such a portrayal
is "unquestionably a permanent artistic object."
The case proceeded to trial before a jury on the issues of whether
Chase infringed Superior Form's copyrights and whether the infringe-
ment was willful. The jury returned a special verdict, finding in favor
of Superior Form on all issues and awarding Superior Form the maxi-
mum statutory damages of $100,000 on each of the four works that
Chase had copied. The district court denied Chase's motion for a new
trial and, following a hearing, awarded Superior Form $74,104.50 in
attorneys fees and costs. The court found that Chase had been
involved in similar infringement suits for years and that only "sub-
stantial awards of damages as well as attorney's fees will deter Mr.
Chase from continuing this willful and outrageous conduct." From the
judgment entered, Chase appeals.
II
We turn first to the question of whether the Copyright Act affords
Superior Form copyright protection for its animal mannequins.
The Copyright Act provides copyright protection for"original
works of authorship fixed in any tangible medium of expression,"
including "sculptural works." 17 U.S.C. § 102(a)(5). Copyright pro-
tection, which gives authors the exclusive right to use, publish, and
sell their work, is intended "to promote the Progress of Science and
useful Arts." See U.S. Const. art. I,§ 8, cl. 8.
4
The copyright is the author's right to prohibit the copying of the
author's intellectual invention, i.e. the originality of an author's
expression. Since individual expressions of ideas inevitably vary, the
originality inherent in each author's expression is the essence of the
proprietary interest protected. See Feist Publications, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 346 (1991). Originality requires "inde-
pendent creation plus a modicum of creativity." Id. Copyright protec-
tion is available even if the quantum of originality is minimal. Id. at
348.
But the public has a corollary interest against any grant of an unde-
serving monopoly. Thus, while the Copyright Act affords protection
for originality inherent in authorship, it retains in the public domain
the right to discover facts and exchange ideas freely. Thus, copyright
protection does not extend to ideas or facts, see 17 U.S.C. § 102(b),
even if such facts were discovered as the product of long and hard
work. A copyright "rewards originality, not effort." Feist, 499 U.S. at
364. It follows, therefore, that while authors are free to adopt ideas,
narrate facts, and copy an original, they are not free "to copy the
copy." Bleistein v. Donaldson Lith. Co., 188 U.S. 239, 249 (1903).
Accordingly, an animal sculpture, even if realistic, is copyrightable
as long as the work represents the author's creative effort. See, e.g.,
Kamar Int'l, Inc. v. Russ Berrie and Co., 657 F.2d 1059 (9th Cir.
1981). Several sculptors may copy a deer, even the same deer, in cre-
ating a sculpture, and each may obtain copyright protection for his or
her own expression of the original. See Rachel v. Banana Republic,
Inc., 831 F.2d 1503 (9th Cir. 1987). Such individual creative efforts
inevitably possess some degree of originality. But when an author
copies another author's work, he appropriates that author's propriety
interest in the work, the author's individual expression.
If, however, a person makes a casting rather than a sculpture of the
deer, the effort introduces no originality into the product. Indeed, in
such a case, the idea in the original and its expression in the casting
are identical and inseparable because the mechanical process allowed
for no possibility of originality, which is inherent in authorship. In
such cases, copyright protection is not available. See Herbert Rosen-
thal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971)
5
(holding that where idea and expression are indistinguishable, copy-
ing the expression would not be barred by copyright registration).
In this case, no one has seriously disputed the fact that Knight indi-
vidually created sculptural works and thereby introduced originality
into them. Even though his works realistically depict animals, they are
not mere "castings" of animal carcasses. To the contrary, Knight con-
structs armatures to which he applies clay, forming what becomes
clay sculptures of animals in particular poses. Chase's counsel con-
ceded at trial that Knight formed his sculptures"from scratch" and
that therefore there was some originality in each of his works. These
clay sculptures were Knight's tangible expressions of animals and
thus contained originality, which is required as a condition for obtain-
ing copyright protection. See Feist, 499 U.S. at 346.
While Chase offers no serious challenge to the originality of
Knight's work, he does contend that by using the sculpted forms to
mount animal skins, Superior Form's mannequins serve a utilitarian
purpose and therefore are not copyrightable. As Chase argues, the
mannequin is "one of the tools of a taxidermist as utilitarian as the
glue, clay, glass and other materials used in mounting an animal." To
support his contention, Chase relies on a Second Circuit case holding
that human mannequins used to display clothes for commercial sale
are not copyrightable. See Carol Barnhart Inc. v. Economy Cover
Corp., 773 F.2d 411 (2d Cir. 1985).
Superior Form responds that its mannequins are in fact "sculptural
works," not "useful articles," within the meaning of the Copyright
Act. Alternatively, it argues that any utilitarian aspect of the manne-
quins is conceptually separable from their sculptural features. Supe-
rior Form analogizes its mannequins to the mannequins the Ninth
Circuit has recognized as copyrightable. See Rachel, 831 F.2d at 1507
(recognizing that animal mannequins painted, fitted with artificial
eyes, and covered with flocking are copyrightable); Kamar Int'l, 657
F.2d at 1061, (holding that stuffed toy animals are copyrightable).
The Copyright Act excludes from copyright protection any "useful
article," defining such an article as "having an intrinsic utilitarian
function that is not merely to portray the appearance of the article or
to convey information." 17 U.S.C. § 101. A"sculptural work," how-
6
ever, does not lose its copyrightability even if it has utilitarian aspects
so long as the "sculptural features . . . can be identified separately
from, and are capable of existing independently of, the utilitarian
aspects of the article." 17 U.S.C. § 101 (defining "pictorial, graphic,
and sculptural work"). When the sculptural features and utilitarian
aspects are not separable, the work is not copyrightable, although it
may be protectable on a more limited basis with a design patent.
Thus, the industrial design of a unique, aesthetically pleasing chair
cannot be separated from the chair's utilitarian function and, there-
fore, is not subject to copyright protection. But the design of a statue
portraying a dancer, created merely for its expressive form, continues
to be copyrightable even when it has been included as the base of a
lamp which is utilitarian. See Mazer v. Stein , 347 U.S. 201, 205
(1954). The objective in designing a chair is to create a utilitarian
object, albeit an aesthetically pleasing one; the objective in creating
a statue of a dancer is to express the idea of a dancer. As the Act
makes the distinction, a useful article has as its function something
more than portraying its own appearance. See 17 U.S.C. § 101 (defin-
ing "useful article").
In this case, Chase argues that Superior Form's animal mannequins
have the utilitarian function of acting as mounts for animal skins for
display. But this argument overlooks that which distinguishes manne-
quins from ordinary plastic foam pellet animal stuffing: A mannequin
provides the creative form and expression of the ultimate animal dis-
play, whereas pellets do not. Even though covered with a skin, the
mannequin is not invisible but conspicuous in the final display. The
angle of the animal's head, the juxtaposition of its body parts, and the
shape of the body parts in the final display is little more than the por-
trayal of the underlying mannequin. Indeed, the mannequin can even
portray the intensity of flexed body parts, or it can reveal the grace
of relaxed ones. None of these expressive aspects of a mannequin is
lost by covering the mannequin with a skin. Thus, any utilitarian
aspect of the mannequin exists "merely to portray the appearance" of
the animal. See 17 U.S.C. § 101.
The very same considerations that distinguish useful articles from
sculptural works thus qualify mannequins designed to display trophy
animals for copyright protection; the author's artistic portrayal of the
animal form survives the final assemblage. It is the portrayal of the
7
animal's body expression given by the mannequin that is thus protect-
able under the Copyright Act. See Rachel, 831 F.2d at 1507; cf.
Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663 (3rd
Cir. 1990) (finding nose mask for humans copyrightable because its
sole function is to portray appearance of article); Kamar Int'l, 657
F.2d at 1061. We therefore agree with the district court in this case
because "the usefulness of the forms is their portrayal of the appear-
ance of animals." The mannequin forms "by definition are not useful
articles."
To the extent that an argument can be made that the mannequins
in this case perform a utilitarian function- - other than portraying
themselves- - by supporting the mounted skins, we believe the func-
tion to be conceptually separable from the works' sculptural features.
See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142,
1145 (2d Cir. 1987) ("Where design elements can be identified as
reflecting the designer's artistic judgment exercised independently of
functional influences, conceptual separability exists"); Kieselstein-
Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980)
(finding sculptural element of belt buckle conceptually separable from
utilitarian function).
We are not persuaded that the decision in Carol Barnhart compels
a different result. In that case, the Second Circuit concluded that
human mannequins used to display clothes for commercial sale were
aesthetically pleasing articles of industrial design and were not
designed for portraying themselves:
[T]he aesthetic and artistic features of the Barnhart forms
are inseparable from the forms' use as utilitarian articles
. . . . While [sculptural techniques in creating the forms] may
indicate that the forms are "aesthetically satisfying and valu-
able," it is insufficient to show that the forms possess aes-
thetic or artistic features that are physically or conceptually
separable from the forms' use as utilitarian objects to dis-
play clothes.
773 F.2d at 418. The court did not find that the author fixed a mode
of expression in a tangible form for the purpose of displaying or por-
traying the article.
8
The human mannequins considered in Carol Barnhart are quite
unlike Standard Form's animal mannequins, which are intended to
give body expression to the final displays and to constitute a perma-
nent portrayal of the animal. While we believe that Carol Barnhart
is thus distinguishable in significant respects, to the extent that it
might be construed as leaving unprotected an author's mode of
expression fixed in a tangible medium for the purpose of portraying
that expression, we would disagree with its holding. The court in
Mazer articulates the relevant distinction:
The dichotomy of protection . . . is . . . art for the copyright
and the invention of original and ornamental design for
design patents. We find nothing in the copyright statute to
support the argument that the intended use or use in industry
of an article eligible for copyright bars or invalidates its reg-
istration.
347 U.S. at 218.
Accordingly, we hold that the originality of expression fixed in
Superior Form's plastic mannequins, used for mounting animal skins
for permanent display, is protectable as a sculptural work under the
Copyright Act.
III
Chase also contends that a new trial is required because the district
court erred in its evidentiary rulings and jury instructions. We review
the district court's evidentiary rulings for abuse of discretion and its
jury instructions de novo.
Chase first argues that the district court abused its discretion by
refusing to allow testimony that Knight's work was not original
because he had copied significant portions of his mannequins from
preexisting works. But Chase's counsel admitted at trial that Knight
had constructed his mannequins "from scratch," using as models plas-
ter masks of actual animals. By observing nature in the form of the
masks, Knight created clay models with his own hands, and from
these models he made the mannequins. Even though Knight had
9
sculpted the animal forms himself, the district court permitted Chase
to introduce evidence that Superior Form's mannequins were not
entirely original and allowed Chase to argue that he had copied only
unoriginal aspects of Superior Form's mannequins. In these circum-
stances, we conclude that the district court did not abuse its discretion
in refusing to permit Chase to present evidence that Superior Form's
works were copied in their entirety from preexisting work.
For similar factual reasons, we also reject Chase's challenge to the
district court's instructions on originality. The court correctly stated
that because it had found as a matter of law that Superior Form's
mannequins were Knight's original works, subject to copyright pro-
tection, the jury "need not concern themselves with that matter." And
the court further explained that "there is no liability unless it is the
original aspects of the plaintiff's work that are copied or taken." The
court thus accommodated Chase's claim that he copied only unorigi-
nal aspects of Superior Form's mannequins. We find no reversible
error in the court's giving these instructions.
Chase also contends that the district court improperly hampered his
defense to Standard Form's claim of intentional infringement by
excluding evidence that Chase had relied on the advice of counsel in
determining that taxidermy mannequins are not copyrightable. While
such a contention is remarkably inconsistent with Chase's own efforts
to obtain copyright protection for its mannequins and its public state-
ments that its own mannequins were copyrighted, evidence of reliance
on the advice of counsel is generally probative of a party's lack of
willfulness in infringing a copyright. See RCA/Ariola, Int'l, Inc. v.
Thomas & Grayston Co., 845 F.2d 773, 779 (8th Cir. 1988). In this
case, however, Chase was not denied the opportunity to present such
evidence. At most, the court deferred one effort by Chase to explain
what counsel told him. On that occasion, the court directed Chase's
counsel to proceed to another area of inquiry, but stated, "[I]f you
want to reask it later when we get the jury out for lunch break, you
can tell me why [the witness] can say that he never [honored Superior
Form's copyrights] because he was of the opinion that it was okay to
copy [the mannequins]." Chase never followed up on the court's
offer, perhaps for strategic reasons. We find no error in the district
court's handling of this matter.
10
In a similar vein, Chase argues that the district court improperly
excluded evidence of Chase's reliance on a finding by an Alabama
district court that fish mannequins are not copyrightable. The record
reveals, however, that the district court only prohibited Chase from
interpreting the Alabama court's ruling. The court permitted Chase to
testify that after the Alabama case, it was his"understanding that [he]
could continue to work off of others' forms." The court also permitted
Chase to introduce as an exhibit a copy of the Alabama court's deci-
sion. With respect to this matter, we agree with the district court's
observation in its memorandum opinion denying Chase's motion for
a new trial: "Mr. Chase was given substantial opportunity to explain
what the [Alabama] case led him to believe; he simply was not
allowed to tell the jury what the case meant objectively as a matter
of law."
As his final ground for a new trial, Chase contends that the district
court's instruction on willful infringement was misleading and preju-
dicial. The court instructed the jury:
In general, evidence that notice has been accorded to the
defendants before the specific facts found to have consti-
tuted infringement occurred is perhaps the most persuasive
evidence of willfulness. It's not the only way that willful-
ness can be established.
Chase acknowledges that the instruction is an accurate statement of
the law, as quoted from Video View, Inc. v. Studio 21 Ltd., 925 F.2d
1010, 1021 (7th Cir.), cert. denied, 502 U.S. 861 (1991). But he
argues nevertheless that "the instruction left the jury with the impres-
sion that all [Superior Form] had to prove on the issue of willful
infringement was that Chase disregarded [Superior Form] copyright
notices." Because Chase offered no modification, alternative, or addi-
tional instruction at trial to ameliorate his concern, however, we con-
clude that the district court did not err in giving the instruction.
IV
Finally, Chase contends that the award of statutory damages was
improper and excessive and that the award of attorneys fees was
unjustified. The jury awarded Superior Form $400,000 in statutory
11
damages, the maximum allowable, and the district court awarded
Superior Form $74,104.50 in attorneys fees and costs. Chase does not
challenge the reasonableness of the amount of the attorneys fees.
Chase argues that the statutory damages must bear some reasonable
relationship to the amount of actual damages and"should not amount
to a windfall" or punishment. He points out that his gross revenue
from the sale of the contested mannequins was roughly $10,200 and
that Superior Form was not able to identify any damages caused by
his misappropriation. Chase further notes that the $400,000 awarded
by the jury is more than double the combined net income of Dan
Chase Taxidermy for fiscal years 1991 and 1992, which totaled
roughly $170,000.
The Copyright Act provides that "an infringer of copyright is liable
for either . . . actual damages . . . or . . . statutory damages as provided
by subsection (c)." 17 U.S.C. § 504(a). And subsection (c) provides:
In a case where the copyright owner sustains the burden of
proving, and the court finds, that infringement was commit-
ted willfully, the court in its discretion may increase the
award of statutory damages to a sum of not more that
$100,000.
15 U.S.C. § 504(c)(2). Thus, if the jury was presented with evidence
justifying a finding of willful infringement, it is given broad discre-
tion to award up to $100,000 for each work copied. Our review of
such an award is even more deferential than abuse of discretion. See
Douglas v. Cunningham, 294 U.S. 207, 210 (1935); Broadcast Music,
Inc. v. Star Amusement, Inc., 44 F.3d 485, 487 (7th Cir. 1995).
In this case the jury was properly instructed on its discretionary
authority under the Copyright Act. The court told the jury that if it
found willfulness, it should determine the appropriate damages by
focusing not only on the actual damages suffered by the plaintiffs, but
also on:
any evidence that the defendants have a history of copyright
infringement; any evidence that the defendants are appar-
12
ently impervious to either deterrence or rehabilitation; the
extent of the defendant's knowledge of the copyright laws;
any misleading or false statements made by the defendants;
. . . and any factor which the jury believes evidences the
defendants knew, had reason to know, or recklessly disre-
garded the fact that its conduct constituted copyright
infringement.
See, e.g., F. W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S.
228, 234 (1952) (holding that recovery is not limited to gross profit
from infringement; court may consider all facts); Chi- Boy Music v.
Charlie Club, Inc., 930 F.2d 1224, 1229 (7th Cir. 1991) (holding that
court may consider several factors in awarding damages under copy-
right Act, including deterrence and circumstances of infringement).
Moreover, the jury was presented with evidence substantially impli-
cating each of those factors.
The record supports the conclusion that Dan Chase Taxidermy
became the largest taxidermy supplier in the country by consistently
and deliberately copying competitors' forms in disregard of the copy-
right laws. Dan Chase acknowledged, that of the 3,000 molds in his
catalog, 150 to 200 were made from competitors' molds. He
explained:
This generally is done in the industry in order to seek out
mannequins from different companies. I'm sure our com-
pany because of the fact we've worked so hard to produce
so many is probably ordered from more than anybody and
worked off of them more than anybody.
But in 1989, Chase was sued by Sportsmen On Film, Inc. for copy-
right infringement. The complaint there alleged that Chase purchased
copyrighted tapes from Sportsmen On Film, erased that company's
name, substituted the name of Chase Taxidermy, and falsely pack-
aged and labeled the tape with his own copyright notice. At the trial
in this case, Dan Chase testified that he had "admitted everything" in
the previous case and confessed, "I made a sad error. We paid for it,
and that was the end of it."
In 1987, Chase was sued by Jonas Brothers, a taxidermy supply
company, for copyright infringement. While Chase settled that case,
13
he was again charged by Jonas Brothers with copyright infringement
several years later. Chase has also been accused by at least three other
people in the industry of illegally copying their taxidermy manne-
quins. And Chase is currently being sued in the Northern District of
New York by 11 plaintiffs who allege that Chase illegally infringed
copyrights on taxidermy mannequins.
Moreover, evidence was presented at trial that Chase has acted in
a manner that is inconsistent with his position maintained at trial that
taxidermy mannequins are not copyrightable. In earlier versions of his
catalogs, Chase represented that "each manikin in this catalog is
legally copyrighted according to the law of the United States of
America and any infringement will be vigorously prosecuted." When
a judge determined in another litigation that one of Chase's fish forms
was not copyrightable, Chase replaced the broad copyright statement
from his catalog with the warning, "Beware of look- a- likes," and the
explanation that "desperate copycats" are"working overtime in an
attempt to deceive the public and violate the rights of others." Even
then, however, Chase continued to affix copyright notices to his taxi-
dermy mannequins. When asked why, Chase testified at trial that he
did it to "bluff" others so that they would not copy his mannequins.
After Chase acknowledged that he was a member of the National
Taxidermy Association, he was asked whether he follows the
Association's ethical rule: "I will not cast or reproduce any form or
part thereof except my own, sculpted by me or my employee unless
I have the specific permission to do so from the originator of the
form." Chase testified that he did not consider the rule meaningful
and described the Code of Ethics as "whitewash" that was never
intended to be followed. The Code was, according to Chase, "passed
for show."
Finally, the most telling evidence of willful infringement in this
case is Chase's underhanded purchase of the four Superior Form man-
nequins using pseudonyms, his removal of Superior Form's copyright
notice from those forms, and his attachment of his own copyright
notice. Such conduct is inconsistent with any claim of innocence or
justification. The jury had ample evidence from which to conclude
that illegal copying of competitors mannequins was a course of busi-
14
ness for Dan Chase Taxidermy and that the maximum statutory dam-
ages was suitable.
With respect to attorneys fees, Chase argues that attorneys fees are
not to be awarded as a matter of course under 17 U.S.C. § 505. He
notes, moreover, that because of the enormous statutory damages,
Superior Form has been "more than adequately compensated for any
injury or expense incurred." Chase concludes,"the magnitude of
[Superior Form's] award is already grossly excessive without further
punishing Chase by awarding [attorneys] fees and costs." We con-
clude, however, that the district court did not abuse its discretion in
the circumstances of this case.
A court may award costs and "may also award a reasonable attor-
ney's fee to the prevailing party as part of the costs." 17 U.S.C. § 505.
Chase is correct in noting that such awards are not to be made as a
matter of course but, rather, as a matter of the court's discretion. See
Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1033 (1994). In exercising
such discretion, we have instructed district courts to consider: (1) the
motivation of the parties; (2) the objective reasonableness of the legal
and factual positions advanced; (3) the need in particular circum-
stances to advance considerations of compensation and deterrence;
and (4) any other relevant factor presented. See Rosciszewski v. Arete
Assoc., Inc., 1 F.3d 225, 234 (4th Cir. 1993).
Chase maintains that he had a reasonable basis to test the legal
question of whether animal mannequins are copyrightable and thus he
should not be assessed legal fees for doing so. He points to the district
court's assessment that the case "presented legal questions that were
novel and complex." We agree that if Chase had pursued these legal
issues in good faith, an award of attorneys fees would constitute an
abuse of discretion. But the record in this case belies the suggestion
that Chase maintained his legal position in good faith.
The record shows that Chase adopted a business practice of copy-
ing animal mannequins created by competitors, justifying the practice
with the claim that animal mannequins are not copyrightable. As a
result of this practice he has been sued repeatedly for copyright
infringement. At the same time that he was making the contention that
animal mannequins are not copyrightable, however, he was applying
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for copyrights for his own mannequins, affixing copyright notices to
them, and warning others that his mannequins are"legally copy-
righted" and "any infringement will be vigorously prosecuted." When
one of his fish mannequins was found by a court to be not copyright-
able - - a decision that he now argues vindicates his contention that
animal mannequins are not copyrightable - - he nevertheless contin-
ued to warn the public, "Beware of look- a- likes," and "[D]esperate
`copy cats' [are] working overtime in an attempt to deceive the public
and violate the rights of others." (Emphasis added). Moreover, he
continued to attach copyright notices to his mannequins to "bluff"
others into believing his forms were copyrighted. He admits that he
is a member of a trade association that has adopted an ethical code
that prohibits copying, but characterizes the code as "whitewash,"
which was "passed for show."
The district court recognized that it was not required to award
attorneys fees to the prevailing party and did so only after carefully
considering each of the relevant factors. In this case, it found Chase's
conduct "outrageous," and we conclude that the court's finding is
amply supported. Under such circumstances, we do not find the dis-
trict court's award in this case to constitute an abuse of discretion.
For the foregoing reasons, the judgment of the district court is
AFFIRMED.
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