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How to choose between actual or statutory damages – simply inform the court

When Robert Smith (aka Bigg Robb) recorded his song Looking for a Country Girl, he probably was not looking for a legal battle, too. But Bernard Thomas (aka Bishop Bullwinkle) copied the beat from Smith’s song to make a new one – called Hell 2 Da Naw Naw – and suddenly became famous. Understandably upset at his work being copied, Smith informed Thomas of the issue and attempted to negotiate a resolution. When that failed, he sued and won.

Robert Smith, known professionally as Bigg Robb, is a recording artist and producer from Ohio who specializes in Southern Soul music. In 2012, Smith wrote and recorded a catchy song called Looking for a Country Girl. He registered his copyright in the song around the time it was released. Enter Bernard Thomas, known professionally as Bishop Bullwinkle, another Southern Soul musician. Thomas used the first twelve seconds of Looking for a Country Girl as the beat for a new song, Hell 2 Da Naw Naw.

Thomas did not ask Smith’s permission to sample his music, nor did he give Smith any credit for creating the beat. Smith soon discovered the sampling. Smith and Thomas were scheduled to perform at the same venue. As Smith was in his dressing room getting ready, he thought he “heard one of his songs playing” on the loudspeakers. Wondering why his song was being played on stage without him, Smith rushed out to see what was going on. But it was not Looking for a Country Girl playing over the speakers; rather, it was Thomas performing Hell 2 Da Naw Naw. Smith confronted Thomas after his performance, and Thomas admitted to sampling. The two exchanged numbers and agreed to work out some sort of compromise.

As negotiations continued, Hell 2 Da Naw Naw went viral. People began posting videos of themselves or others dancing to the song. Others used it as a catchphrase to describe their response to “any and every daily struggle”. Thomas uploaded a music video, which soon got millions of views, and articles were written about his “meteoric rise” to fame. The song has maintained its popularity over the last couple of years. Thomas posted a new version to YouTube in 2016 that currently has over thirty-one million views.

As Thomas’s fame grew throughout 2015, he “kept talking in circles” with Smith, refusing to agree to any form of compensation or joint ownership for Hell 2 Da Naw Naw. At one point the parties verbally agreed to a 50/50 split, but then Thomas refused to sign the contract when it was mailed to him. Towards the end of the year, Thomas changed his tune. Whereas before Thomas had appeared conciliatory, now he no longer even acknowledged Smith’s contribution. Instead, he publicly accused Smith of being a liar and said, “Let’s go to court. . . . If I did something wrong, why ain’t I in copyright court? . . . Take me to court.”

Smith honored Thomas’s request and sued him for copyright infringement. Both parties represented themselves. Thomas, however, essentially did not participate in the case, apart from filing a two-page answer to Smith’s complaint and two short conclusory letters. He ignored discovery requests and did not show up to trial. But Smith did, and he gave a thorough presentation with seventeen supporting exhibits. He also played both songs for the judge. When asked what his damages were, Smith explained that he had only a “guesstimation” based on Hell 2 Da Naw Naw’s YouTube views and Thomas’s public performances of the song. He also explained that he “took a look at the law, it said that damages up to $150,000 could be awarded by the Court,” and he was “certainly asking for that amount.”

The court ruled in Smith’s favor, awarding him 50% ownership rights in Hell 2 Da Naw Naw (and any derivatives thereof) and enjoining Thomas from further infringement. The court also found that Smith had not presented sufficient evidence to show actual damages but that he had “elected” statutory damages instead. Accordingly, the court awarded Smith $30,000 in statutory damages – substantially less than he had asked for. On appeal, Thomas did not dispute that he infringed Smith’s copyright, nor did he challenge the district court’s award of ownership rights and injunctive relief. Instead, Thomas argued that Smith did not properly “elect” statutory damages in the district court.

So how does a plaintiff elect statutory damages? He simply has to inform the court – either orally or in writing – of his intent to seek them at any point before final judgment. And the election does not have to exclude the possibility of actual damages – plaintiffs are entitled to simultaneously seek actual damages and statutory damages in the alternative. Smith easily meets this standard.

At trial, he reiterated his request: “I took a look at the law, it said that damages up to $150,000 could be awarded by the Court. So we are certainly asking for that amount financially.” R. 35, Pg. ID 262. He also testified about the willful nature of the infringement, which is only relevant to statutory damages. Smith’s invocations of the Act’s willfulness enhancement and $150,000 maximum, combined with an explicit mention of “statutory damages,” indicated his election – he did not need to cite the provision itself.

He also implicitly disclaimed actual damages by explaining that he had not gathered evidence to substantiate them, and instead he could “only give a guesstimation” based on YouTube views. The district court understood Smith perfectly well, specifically concluding that he had elected statutory damages. Smith’s intent was no mystery.

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