SUSAN WAKEEN DOLL CO v. ASHTON-DRAKE
In the
United States Court of Appeals
For the Seventh Circuit
Nos. 00-2811 & 00-3717
Susan Wakeen Doll Company, Inc.,
Plaintiff-Appellee,
v.
Ashton-Drake Galleries,
Defendant-Appellant.
Appeals from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 98 C 6777--Elaine E. Bucklo, Judge.
Argued February 28, 2001--Decided November 14, 2001
Before Harlington Wood, Jr., Kanne, and
Rovner, Circuit Judges.
Kanne, Circuit Judge. Plaintiff, Susan
Wakeen Doll Company ("Wakeen"), sculpts,
designs, and markets collectable dolls.
Wakeen sued Ashton-Drake Galleries ("Ash
ton") for copyright infringement under 17
U.S.C. sec. 501 for allegedly copying the
head design used in one of Wakeen's most
popular dolls, the "Love Me Tender."
After a jury trial, the court entered
judgment for Wakeen in the stipulated
amount of $2.1 million and awarded Wakeen
$203,181.92 in attorney's fees. Ashton
appeals, alleging that 1) the district
court erred in denying its motion for
judgment as a matter of law or, in the
alternative, for a new trial, 2) the
district court submitted erroneous jury
instructions to the jury, 3) the district
court erred in denying its motion for a
mistrial, and 4) the district court erred
in awarding attorney's fees. We affirm
the district court's denial of Ashton's
motion for judgment as a matter of law or
a new trial and find that the allegedly
erroneous jury instructions did not
prejudice Ashton. We also affirm the
district court's denial of Ashton's
mistrial motion. However, we vacate and
remand the district court's award of
attorney's fees.
I. History
A. The Dolls
A baby head doll sculptor sculpts in a
pliable clay called plasticine. After
sculpting the clay, the artist puts the
clay into a plaster mold. The artist then
makes a porcelain model of the baby head
by pouring liquid porcelain into the
plaster mold and firing the head in a
kiln. The artist paints the hardened
porcelain head and adds hair and a body.
Next, the artist does a wax casting of
the plaster mold and sends it to a mold
maker, who submerges it into a liquid of
copper and nickel in order to create a
metal mold. This metal mold is used to
make a "master skin," or vinyl head. The
best master skins become the actual
production heads that become the dolls.
Susan Wakeen, a reputed sculptor and
designer of baby dolls, started the Susan
Wakeen Doll Company in 1989. That same
year, she sculpted the original "Love Me
Tender" ("LMT") doll head design and
registered its copyright in 1991. The
design received a national award of
excellence and was a commercial success.
As a result, it has been used in
approximately forty different dolls
marketed by Wakeen.
In 1990, Wakeen hired Marlene Sirko
("Sirko") to design a head for a
"relative" of LMT--a baby doll head that
looked like it was in the same family as
LMT. Susan Wakeen told Sirko that she
would supply her with a master skin of
LMT to use as a reference. Susan Wakeen
claimed that she sent Sirko the LMT
master skin via UPS, though Sirko denied
that she ever received it. Susan Wakeen
was not pleased with the sculpt that
Sirko produced, calling it "cartoonish"
and "oversized." In the fall of 1990,
Wakeen and Sirko's relationship ended.
Ashton also markets collectable dolls,
though its dolls are created by
independent artists. In 1993, Sirko
supplied Ashton with a clay sculpt that
Ashton later marketed as a doll entitled
"The Little Drummer Boy" ("Drummer").
Sirko was unable to produce any other
marketable sculpts for Ashton, and,
therefore, Ashton terminated its
relationship with Sirko on October 21,
1993. Despite this, Ashton began
marketing and selling Drummer at the end
of 1994.
The similarities between Drummer and LMT
were brought to Susan Wakeen's attention
by several Wakeen employees who had seen
advertisements for Drummer and by a
professional doll buyer who stated that
she had seen Drummer and thought that it
looked like LMT. As a result, Susan
Wakeen attempted to create the Drummer
head using the LMT master skin. She made
a mold from the master skin, poured
porcelain into the mold, and shrank it
two generations to match the size of the
Drummer head. She then modified the head
by shaving off a small amount of
porcelain in a few places. When she
finished, she concluded that the shrunken
and modified head was identical to the
Drummer head.
Consequently, Wakeen wrote to Ashton on
July 19, 1995 and informed it of the
alleged copyright infringement. Ashton
wrote to Sirko, asking her to explain the
"extreme similarities between the two
sculpts." Sirko responded that she had
created the head that became Drummer
independently, using a photo that she had
taken at her son's nursery school as her
reference. Ashton then wrote to Wakeen,
assuring them that "the trail of
development of the Little Drummer Boy is
complete, from dated photo references of
the child who was used as a model for the
doll to pictures of the work in
progress." Ashton also informed Wakeen
that Kathy Schultz, the Program Manager
in charge of Drummer, "worked with
[Sirko] in the development of the
sculpt."
During the following two years, Wakeen
repeatedly asked Ashton to send it the
work-in-progress photos and the original
clay that Sirko submitted to Ashton. In
response, Ashton told Wakeen that it had
concluded that the original sculpt of
Drummer and the final version of LMT were
very different, and that the two works
only appeared similar after the reduced
LMT head had been modified. Ashton did
not make the original clay sculpt
available to Wakeen or produce any
photographs of the work-in-progress until
court proceedings commenced. Throughout
its dispute with Wakeen, Ashton continued
to sell and profit from dolls using the
Drummer head.
B. The Trial
In October, 1998, Wakeen filed suit
under 17 U.S.C. sec. 501, claiming that
Ashton infringed its copyright by
producing and marketing Drummer. Susan
Wakeen asserted that she had sent Sirko
an LMT master skin, thus giving Sirko an
opportunity to copy the doll head. Susan
Wakeen produced a UPS receipt that
indicated that she had sent a package to
Sirko on the day that she claimed to have
sent the master skin to Sirko. Wakeen
also presented evidence that LMT and
Drummer were substantially similar.
Wakeen's witness, doll-expert Jeanne
Singer, opined that the external
structures of the doll heads were
identical. Susan Wakeen and Singer both
testified that they had compared the
Sirko head to a plaster-filled master
skin of LMT and concluded that the
dimensions and placement of the dolls'
facial features were virtually identical.
Singer also testified that although some
of the features were different between
the two dolls, Sirko had most likely made
minor modifications to the LMT master
skin in order to disguise her copying.
Susan Wakeen demonstrated to the jury how
quickly Drummer could be created from a
reduced LMT head. Finally, Wakeen claimed
that Sirko did not have the skill to
independently create a doll head like
Drummer's.
Ashton challenged each aspect of
Wakeen's case. Initially, Ashton
attempted to show that Sirko could not
have copied LMT. Sirko denied receiving a
master skin from Wakeen, and Ashton
argued that the evidence was insufficient
to prove that Wakeen had sent Sirko the
LMT master skin, or that Sirko had
received it. Ashton highlighted that
Wakeen could not produce any records from
its shipping department or a transmittal
letter to support its claim that it sent
the master skin to Sirko. Ashton also
claimed that the UPS receipt from the
package that Wakeen sent to Sirko did not
describe the package's contents.
Ashton next attempted to rebut Wakeen's
contention that the dolls were
substantially similar by calling a doll-
expert, Erik Blome, who claimed that
there were overwhelming dissimilarities
between the two dolls. Blome testified
that Drummers' features--specifically,
its nose, cheeks, and lips--were
different than LMT's. Blome testified
that he measured the distances between
facial features on the LMT plaster-filled
skin and on the Drummer plaster, and that
the distances were "extremely different"
between the two. Ashton also argued that
Susan Wakeen's modification demonstration
was misleading because she was using a
head made from porcelain, while Sirko
would have had to have modified an LMT
head made out of vinyl.
Finally, Ashton claimed that Drummer's
head was the independent creation of
Sirko. Sirko explained, via deposition,
that she began sculpting her doll head in
early 1993. She said that she sculpted
freehand from a block of plasticine clay,
using photographs of a toddler boy taken
at her son's nursery school in 1990 as
her model. Sirko testified that others
witnessed her work-in-progress, although
Ashton was unable to produce any
photographs of Sirko's work-in-progress.
Ashton called several witnesses to
support Sirko's assertions. Tania Honeck,
who lived with Sirko for several months,
testified that she watched Sirko create
the Drummer head. Honeck saw Sirko warm
the clay and mount it to a sculpting
pole. Honeck also helped select reference
photographs of the toddler claimed to
have been the model for Sirko's head and
said that the photos were constantly
present in Sirko's studio during the
sculpting process. Further, she never saw
an LMT master skin in Sirko's home or
studio. Ashton then called Sandra
Gianini, an artist friend of Sirko's.
Gianini testified that she visited
Sirko's studio in 1993 and that she
helped paint eyes on and add hair to the
Drummer head. Gianini stated that she was
not present when Sirko sculpted the
Drummer head, though she also said that
if she saw the head prior to its
completion, she probably would not have
remembered it because of its unfinished
state. She also testified that she did
not see an LMT master skin in Sirko's
studio. Honeck and Gianini both testified
that Sirko sculpted Drummer in late 1992
or early 1993, right after Christmas.
Sirko's husband Yuri testified via
deposition. Yuri stated that Sirko
started Drummer's head from a block of
clay and that he saw Sirko using the
reference photographs of the toddler boy
while she was sculpting. He also stated
that he never saw an LMT doll, master
skin, or photograph in Sirko's studio.
Both Yuri and Marlene Sirko testified
that Sirko sculpted Drummer's head before
she had any contact with Ashton. They
claimed that after completing Drummer's
head in March, 1993, Sirko sent Ashton
photographs of the finished sculpt, and
that Ashton suggested a few minor
changes, such as making the mouth more
pouty. They also claimed that after
Ashton approved Sirko's work, it made the
plaster molds used in the production
process. Finally, Ashton presented
evidence showing that Sirko had the
talent and experience necessary to create
Drummer's head.
C. The Instruction Conference
Both parties met with the district court
judge before closing arguments in order
to discuss the jury instructions each
party had previously submitted to the
court. Rather than using the parties'
proposed instructions, the court tendered
a two-page instruction on copyright law
at the start of the instruction
conference and gave the parties a
fewminutes to look it over. The
instruction informed the jury that Wakeen
should prevail if it proved that Sirko
had access to LMT and that Drummer and
LMT were substantially similar. Ashton
objected to this instruction because it
did not address independent creation,
which would rebut Wakeen's copyright
infringement claim. Ashton argued that
even if Wakeen proved access and
substantial similarity, Ashton should
prevail if Sirko independently created
her work. Ashton requested that another
line be added to the jury instructions
addressing independent creation. The
district court judge did not consider
such an instruction necessary and stated
that once Wakeen proved access and
substantial similarity, then there could
be no independent creation. The district
court judge and Ashton debated this area
of copyright law for a few hours, but
Ashton failed to convince the judge that
its position was correct. The district
court judge submitted the original jury
instructions to the jury, adding one line
that stated that Ashton claimed that
Sirko independently created her work.
At this conference, both parties also
tendered interrogatories covering access,
substantial similarity, and independent
creation that they proposed should be
used if the court chose to submit a
special verdict form to the jury. Wakeen
also submitted a proposed general verdict
form. The court opted for a special
verdict, but prepared its own form that
did not utilize the parties' proposed
questions. The court's special verdict
form asked the jury to answer two
questions--one dealing with access and
one dealing with substantial similarity.
Because the court's verdict form did not
include Ashton's proposed question
dealing with independent creation, Ashton
asked for a general verdict form. When
the court refused, Ashton proffered a
second question dealing with independent
creation and suggested that the court
include it on its special verdict form.
The court refused this suggestion, and
the conference ended.
D. Closing Arguments
During closing arguments, Ashton
repeatedly told the jury that it should
find that Ashton did not infringe
Wakeen's copyright because Sirko had
independently created her work. Ashton
explained to the jury that if Sirko inde
pendently created her work, then that
meant that she did not copy LMT and that
there was no infringement. Ashton also
told the jury that if it found that Sirko
independently created her work, then it
should mark "no" on the special verdict
form asking whether the two heads were
substantially similar. Although Wakeen
did not object to this comment, the
district court judge reprimanded Ashton
in front of the jury indicating that this
comment improperly stated the law.
E. Jury Deliberations
The original jury verdict form posed two
questions to the jury: "1) Do you find
that Marlene Sirko had access to
plaintiff's copyrighted sculpture?" and
"2) Do you find that there exists a
substantial similarity between the
sculpture that became Ashton Drake
Galleries' 'Little Drummer Boy' and
plaintiff Susan Wakeen Doll Company's
copyrighted sculpture?" The morning after
the jurors began deliberating, the
district court decided that it needed to
ask a separate question dealing with
independent creation. Wakeen opposed
submitting the supplemental verdict form
without also submitting clarifying
instructions to the jury. Ashton agreed
that the court needed to submit the
supplemental verdict form, but argued
against submitting clarifying
instructions. Neither party objected to
the court's decision to submit the
supplemental verdict form after the jury
returned its verdict with respect to the
original two questions. Therefore, after
the jury answered "yes" to both of these
questions, the district court judge gave
the jury a supplemental verdict form
containing the following question: "Do
you find that Marlene Sirko copied
plaintiff's copyrighted sculpture to
create the sculpture that became
defendant Ashton-Drake Galleries' 'Little
Drummer Boy?'" Ashton moved for a
mistrial after the supplemental verdict
form was submitted to the jury on the
grounds that the deliberative process had
been impaired. The court denied Ashton's
mistrial motion.
The jurors answered "yes" to this third
question, and the court entered a verdict
for Wakeen. The court awarded Wakeen $2.1
million in damages, an amount to which
both parties had stipulated before trial.
Ashton moved for judgment as a matter of
law ("JMOL") or, alternatively, for a new
trial under Federal Rules of Civil
Procedure 50(b) and 59(a). The district
court denied Ashton's motion. The
district court then awarded Wakeen
attorney's fees in the amount of
$203,181.92.
II. Analysis
A. Standard of Review
We review a district court's denial of
a motion for JMOL de novo. See Palmquist
v. Selvik, 111 F.3d 1332, 1343 (7th Cir.
1997). Our inquiry, however, is limited
to "whether the evidence presented,
combined with all reasonable inferences
permissibly drawn therefrom, is
sufficient to support the verdict when
viewed in the light most favorable to the
party against whom the motion is
directed." Goodwin v. MTD Prods., Inc.,
232 F.3d 600, 606 (7th Cir. 2000). In
other words, we reverse only if we find
that no rational juror could have found
for the prevailing party. See Emmel v.
Coca-Cola Bottling Co. of Chicago, 95
F.3d 627, 629 (7th Cir. 1996). We review
a district court's denial of a motion for
a new trial to see whether the district
court judge abused her discretion in
ruling that the jury verdict was not
against the clear weight of the evidence.
See Robinson v. Burlington N. R.R., 131
F.3d 648, 656 (7th Cir. 1997). This means
that we will not overturn a jury verdict
if there is a reasonable basis in the
record to support it. See id.
B. Sufficiency of the Evidence
Ashton's first argument is that the
evidence at trial was insufficient for
Wakeen to establish a claim of copyright
infringement against it, and therefore,
that the district court erred in not
granting its motion for JMOL or a new
trial. To establish copyright
infringement, a plaintiff must prove two
elements: "1) ownership of a valid
copyright, and 2) copying of constituent
elements of the work that are original."
Feist Publ'ns, Inc. v. Rural Tel. Serv.
Co., Inc., 499 U.S. 340, 361, 111 S. Ct.
1282, 113 L. Ed. 2d 358 (1991). The
parties do not dispute that Wakeen owns a
valid copyright in LMT, but disagree
about whether Sirko copied LMT to create
the head that Ashton marketed as Drummer.
Given that direct evidence of copying is
normally unavailable, "copying may be
inferred where the defendant had access
to the copyrighted work and the accused
work is substantially similar to the
copyrighted work." Atari, Inc. v. N. Am.
Phillips Consumer Elecs. Corp., 672 F.2d
607, 614 (7th Cir. 1982). Thus, Wakeen
could establish a prima facie case of
copyright infringement by showing that
Ashton had access to its copyrighted LMT
doll and that Drummer was substantially
similar to LMT. See, e.g., Ty, Inc. v.
GMA Accessories, Inc., 132 F.3d 1167,
1169-70 (7th Cir. 1997). However, the
inference of copying that is drawn from
proof of access and substantial
similarity can be rebutted by the
defendant's showing that it independently
created the allegedly infringing work.
See id. at 1171.
As a practical matter, if "two works are
so similar as to make it highly probable
that the later one is a copy of the
earlier one, the issue of access need not
be addressed separately, since if the
later work was a copy its creator must
have had access to the original." Id. at
1170. Thus, if the works resemble each
other so closely as to make it highly
unlikely that the challenged work was "an
accident of independent creation," then
the similarity "is evidence of access."
Id. "The more a work is both like an
already copyrighted work and--for this is
equally important--unlike anything that
is in the public domain, the less likely
it is to be an independent creation." Id.
at 1169. Thus, a strong showing of
substantial similarity can operate to
infer that the defendant had access to
the plaintiff's work and that the
defendant copied the plaintiff's work
rather than independently created its own
work. However, the presumption of copying
that arises from a showing of substantial
similarity can be rebutted by proof of
independent creation. Id. ("[I]f
independent creation results in an
identical work, the creator of that work
is free to sell it."). A defendant
independently created a work if it
created its own work without copying
anything or if it copied something other
than the plaintiff's copyrighted work.
See 3 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright sec. 12.11[D], at 12-
175 (2001).
We now turn to the evidence in this case
to determine if it was sufficient to
support the jury's findings that: 1)
Ashton had access to LMT, 2) there were
substantial similarities between LMT and
Drummer, and 3) Ashton did not
independently create Drummer. Viewing the
facts in the light most favorable to
Wakeen, as we must, we find that there
was sufficient evidence to support the
jury's findings.
Wakeen could prove access by showing
that "the defendant had an opportunity to
view the protected item." Wildlife
Express Corp. v. Carol Wright Sales,
Inc., 18 F.3d 502, 508 n.5 (7th Cir.
1994). Susan Wakeen testified that based
on a previous working relationship, she
sent a master skin of the LMT head to
Sirko via UPS on July 16, 1990. Wakeen
also introduced a UPS receipt into
evidence to corroborate this testimony,
which showed that UPS picked up a package
addressed to Sirko from Wakeen on that
day. While Sirko claimed that she never
received the UPS package, the jury
rejected this testimony and determined
that she did receive it--thereby
inferring that she saw the master skin.
The jury was presented with conflicting
stories--that Sirko received the package
containing the master skin or that she
did not receive the package. Because
arational juror could have believed Susan
Wakeen's testimony that she sent the LMT
master skin to Sirko via UPS, as
reflected by the UPS receipt, the jury's
finding that Sirko had access to LMT was
not clearly erroneous. See Coca-Cola
Bottling, 95 F.3d at 629; cf. Anderson v.
City of Bessemer City, 470 U.S. 564, 574,
105 S. Ct. 1504, 84 L. Ed. 2d 518 (1985)
("[W]here there are two permissible views
of the evidence, the fact finder's choice
between them cannot be clearly
erroneous.").
The jury's access finding is further
supported by the striking similarity
between the LMT head and Sirko's doll
head that provided the basis for Drummer.
See Ty, 132 F.3d at 1170. This court
applies the "ordinary observer" test to
determine whether a substantial
similarity existed between the two dolls'
heads. Wildlife Express, 18 F.3d at 508-
09. The inquiry under this test is
"whether the accused work is so similar
to the plaintiff's work that an ordinary
reasonable person would conclude that the
defendant unlawfully appropriated the
plaintiff's protectible expression by
taking material of substance and value."
Id. at 509 (quoting Atari, 672 F.2d at
614). Because the works at issue deal
with the reproduction of a lifelike
object--a toddler--Wakeen must prove that
Drummer is substantially similar "to
those few aspects of the work that are
expression not required by the idea."
Wildlife Express, 18 F.3d at 508.
The "idea" in this case was a depiction
of a toddler's face. The artistic
"expression" of LMT according to Wakeen
was an idealized child's face that
reflected the essence of a baby's beauty
and innocence. Wakeen presented
demonstrative exhibits and expert
testimony at trial that supported the
jury's factual determination that LMT and
Drummer were substantially similar. The
jury compared the two heads themselves,
saw photographs of the two heads,
examined porcelains of the heads, and
looked at an LMT head with Drummer hair
in order to assess the similarities
between the two works. In addition, the
jury heard testimony from Singer,
Wakeen's expert, saying that the two
heads' facial features were virtually
identical. For example, both heads
portrayed a toddler with pouty lips that
were lower on the right side of the
mouth.
On appeal, Ashton argues that to the
extent there is a resemblance between LMT
and Drummer, this similarity is
unavoidable. Ashton argues that babies'
faces all have similar features such as
large eyes, puffy cheeks, and doubled
chins. Ashton also claims that there are,
in fact, marked differences between the
two dolls. For example, it notes the
small differences in size between the
features of the two heads. Even if we
would have weighed the evidence
differently than the jury, we cannot
reverse unless we find that there was no
rational basis for the jury's finding.
See Goodwin, 232 F.3d at 606. Here, there
was testimony showing the similarities
between the two heads, and these
similarities related to features that
were not necessary to capture the essence
of a baby--such as a pouty expression
rather than a smile and lips that were
lower on the right side. Thus, there was
a rational basis for the jury's
conclusion that LMT and Drummer were
substantially similar. See Coca-Cola
Bottling, 95 F.3d at 629.
Having found that Wakeen successfully
presented a prima facie case of copyright
infringement, the jury next considered
whether Sirko copied LMT in designing the
head that became Ashton's Drummer, or
whether Sirko independently created her
work. In support of its claim that Sirko
independently created Drummer, Ashton
presented testimony from Sirko's friends.
These friends claimed that they saw Sirko
referring to the photograph of the
toddler while working on Drummer.
Further, none of these witnesses saw the
LMT master skin in Sirko's studio. Wakeen
countered that Sirko had seen the master
skin of the LMT, that this skin could
easily be modified to produce Drummer,
and that Sirko lacked the skill to
independently create a head like Drummer
without copying. Further, Wakeen's
expert, Singer, testified that Drummer's
features indicated that Sirko made slight
modifications to the LMT master skin. On
appeal, Wakeen also identifies
inconsistencies in the testimony of
Sirko's friends. The jury evaluated all
of this evidence and found that Sirko
copied LMT in producing the head that
became Drummer. Because there were facts
supporting the jury's conclusion, this
finding is not clearly erroneous. See
Wildlife Express, 18 F.3d at 506 n.1.
The record supports the jury's findings
that Sirko had access to the LMT master
skin, that LMT and Drummer were
substantially similar, and that Sirko
copied LMT in designing the head that
became Drummer. Therefore, these findings
were not clearly erroneous, and the
district court did not abuse its
discretion in denying Ashton's motion for
JMOL or for a new trial.
C. Jury Instructions
Ashton's next contention is that the
district court's instructions to the jury
were erroneous, and that these errors
were prejudicial, requiring that Ashton
be granted a new trial. To win a new
trial based on an erroneous jury instruc
tion, Ashton must show that: 1) the
instructions did not adequately state
Seventh Circuit law and 2) it was
prejudiced by the error because the jury
was likely confused or misled. See Gile
v. United Airlines, Inc., 213 F.3d 365,
375 (7th Cir. 2000). An erroneous jury
instruction could not prejudice Ashton
unless considering the instructions as a
whole, along with all of the evidence and
arguments, the jury was misinformed about
the applicable law. See EEOC v. AIC Sec.
Investigations, Ltd., 55 F.3d 1276, 1283
(7th Cir. 1995). In other words, even if
the jury instructions in this case were
erroneous, if the applicable principles
of law were communicated to the jury--
through the arguments or evidence, for
example--then Ashton does not deserve a
new trial. See id.
The jury instructions in this case did
not accurately present the relationship
between access, substantial similarity,
and independent creation as explained by
this court in Ty, 132 F.3d at 1171.
Specifically, the jury instruction on
proving copyright infringement failed to
convey to the jury that Wakeen could not
prevail if Sirko independently created
Drummer./1 In Ty, 132 F.3d at 1171
(emphasis added), we held that:
Access (and copying) may be inferred when
two works are so similar to each other
and not to anything in the public domain
that it is likely that the creator of the
second work copied the first, but the
inference can be rebutted by disproving
access or otherwise showing independent
creation.
However, the jury instructions in this
case omitted crucial information and
stated: "Access (as well as copying) may
be inferred when a defendant's sculpture
is so similar to plaintiff's sculpture
that it is likely that the creator of
defendant's sculpture copied plaintiff's
sculpture." At oral argument, Ashton
conceded that it did not object to this
clause during the instruction conference.
Therefore, Ashton has waived any argument
with respect to this clause. See Deppe v.
Tripp, 863 F.2d 1356, 1361 (7th Cir.
1988) (holding that Federal Rule of Civil
Procedure 51 means "that in civil cases a
plain error doctrine is not available to
protect parties from erroneous jury
instructions to which no objection was
made at trial.").
Further, the district court instructed
the jury that: "If you conclude that Ms.
Sirko had access to plaintiff's
copyrighted sculpture you should find in
favor of plaintiff Susan Wakeen Doll
Company if you find that defendant's
sculpture is substantially similar to
plaintiff's copyright." The problem with
this jury instruction was that it
suggested that Wakeen could prevail on
its copyright infringement claim if it
proved access and substantial similarity
regardless of whether Sirko independently
created her work. However, this
suggestion was not true under Seventh
Circuit precedent, as Ashton could rebut
the inference of copying stemming from a
finding of access and substantial
similarity by showing that Sirko
independently created her work. See Ty,
132 F.3d at 1171. Therefore, Ashton has
proved half of what it needs to prove in
order to prevail on this claim--that the
jury instructions did not adequately
state the law of this Circuit.
Ashton must lose on this claim, however,
because the erroneous jury instructions
did not prejudice it. The fact that the
district court recognized its error and
eventually submitted the crucial third
question to the jury meant that the jury
was fully informed of the applicable
legal principles, albeit in a less than
ideal manner. After finding that Ashton
had access to LMT and that Drummer was
substantially similar to LMT, the jury
was given a supplemental verdict form
that asked it to answer a third question:
"Do you find that Marlene Sirko copied
plaintiff's copyrighted sculpture to
create the sculpture that became
defendant Ashton-Drake Galleries' Little
Drummer Boy?" This question squarely
addressed the independent creation
defense because copying is the opposite
of independent creation. See, e.g.,
Eisenschiml v. Fawcett Publ'ns, Inc., 246
F.2d 598, 603 (7th Cir. 1957). If the
jury answered "no" to this question,
Ashton would have prevailed. Therefore,
although the jury instructions did not
address independent creation, this
principle was communicated to the jury
via the supplemental verdict form, and
the jury specifically found that Sirko
did not independently create her work.
The evidence at trial and defense
counsel's closing arguments also notified
the jury that Ashton should prevail if
Sirko independently created Drummer. See
AIC Sec. Investigations, 55 F.3d at 1283.
The majority of Ashton's case focused on
independent creation. For example, it
presented evidence that Sirko was an
accomplished sculptor and that she used a
1990 photograph of a toddler as the model
for her head that became Drummer.
Further, three defense witnesses claimed
that they saw Sirko using the photograph
as her model, that they never saw the
master skin of LMT in Sirko's studio,
that they conferred with Sirko about
certain features of her work, and that
the likeness between Sirko's work and the
photograph was obvious. This evidence
helped notify the jury that Ashton's
defense was that Sirko did not copy LMT,
but rather, that she independently
created her work.
During closing arguments, defense
counsel argued: "If the Little Drummer
Boy is an original creation of Marlene
Sirko, the inquiry ends right there. If
you find Marlene Sirko created,
independently created the Little Drummer
Boy, you can go home, the case is over .
. . ." Further, he stated: "Was this
copy? Is this copyright infringement? The
answer is no. Marlene Sirko created this
doll. She created this with the
inspiration of this child, a child she
photographed in her son's nursery school
in Germantown, Pennsylvania." These two
comments conveyed to the jury that Ashton
was relying, in part, on the independent
creation defense and that if Sirko
independently created her work, then she
did not copy LMT.
In sum, the jury instructions were
erroneous in that they failed to explain
that even if Wakeen proved access and
substantial similarity, Ashton should
prevail if Sirko independently created
her work. However, the error in the
instructions was cured by the fact that
the evidence and arguments conveyed the
independent creation defense to the jury
and by the fact that the jury
specifically found that Sirko did not
independently create her work. Therefore,
Ashton's "speculation that the jury might
have decided the case differently if
given the proper instruction is
insufficient to establish prejudice."
Gile, 213 F.3d at 375.
On appeal, Ashton claims that the error
in the jury instructions was compounded
by events that occurred during closing
arguments. During its closing argument,
Ashton's counsel told the jury:
In fact, you are going to see a verdict
form that says, "Do you find these heads
substantially similar?" Well, if you
believe, if you find that there was no
copying done by Marlene Sirko, you are
going to answer that question "No." I'm
going to repeat that again to you before
we are done, but if you should find that
Marlene Sirko's work is an original
creation of Marlene Sirko, that she did
not copy Love Me Tender, that question in
your jury form that says "Is there a
substantial similarity," you have got to
answer, you must answer that "No."
At that point, the district court judge
interrupted and commented in the jury's
presence: "Counsel, that's an incorrect
statement, and I believe you know that,
so I'll give them the law."
Ashton claims that the district court
judge's comment was reversible error
because it made its counsel seem
deceitful and that its counsel was only
trying to comply with the district
court's erroneous instructions. In order
to obtain a reversal, Ashton must show
that the district court abused its
discretion in supervising the closing
arguments. See Trytko v. Hubbell, Inc.,
28 F.3d 715, 727 (7th Cir. 1994). Whether
LMT and Drummer were substantially
similar and whether Sirko independently
created her work were different
propositions, see Ty, 132 F.3d at 1171,
and it was not true that the jury should
mark "no" to the substantial similarity
question if it found that Sirko
independently created her work.
Therefore, the district court did not
abuse its discretion by interrupting
counsel because of this incorrect
statement. See United States v. Briggs,
700 F.2d 408, 414 (7th Cir. 1983)
(stating that a "federal judge has the
right, and often the obligation, to
interrupt the presentation of counsel in
order to clarify misunderstandings").
Furthermore, the district court did not
abuse its discretion by stating that
Ashton's counsel knew it was misstating
the law. See, e.g., Piepenburg v. Cutler,
649 F.2d 783, 792-93 (10th Cir. 1981)
(declining to reverse where district
court interrupted counsel's closing
arguments and inferred that counsel
intentionally misstated the law).
D. Mistrial Motion
Ashton also argues that the erroneous
jury instructions infected the process by
which the jury considered the
supplemental verdict form. It complains
that the district court erred by failing
to declare a mistrial because of the
wording of the question on the
supplemental verdict form, because of the
timing of when the court gave the
supplemental verdict form to the jury,
and because the supplemental verdict form
was not accompanied by clarifying
instructions. Ashton bases its mistrial
motion on the contention that "the
deliberative process has been severely
disrupted by reason of the piecemeal
instruction to the jury." We review a
denial of a mistrial motion for an abuse
of discretion. See Raybestos Prods. Co.
v. Younger, 54 F.3d 1234, 1239 (7th Cir.
1995).
Ashton complains that the language of
the supplemental verdict form did not
adequately notify the jury that the third
question had to do with independent
creation. The supplemental verdict form
asked the jury: "Do you find that Marlene
Sirko copied plaintiff's copyrighted
sculpture to create the sculpture that
became Ashton Drake Galleries' Little
Drummer Boy?" Ashton argues that because
this question did not mention the words
"independent creation" and since it
required a "no" answer to support Ashton,
this question favored Wakeen. Ashton's
argument is without merit because it
drafted this very question and proffered
it as a third interrogatory that the
court should ask the jury. The district
court chose to submit Ashton's
interrogatory to the jury, and Ashton is
in no position to challenge its adequacy.
Moreover, Ashton told the jury during
closing arguments that copying was the
converse of independent creation.
Ashton also claims that the timing of
the submission of the supplemental
verdict form and the fact that it was not
accompanied by clarifying instructions
constitute reversible error. After the
district court decided to submit a
supplemental verdict form, it sought
guidance with respect to when it should
submit the third question to the jury--
before or after the jury had decided the
first two questions. Neither party
addressed this point, but Wakeen argued
that the district court should accompany
the supplemental verdict form with
clarifying instructions telling the jury
that it could infer copying from the same
evidence that supported its findings of
access and substantial similarity. Ashton
responded to Wakeen's argument by stating
that clarifying instructions were
unnecessary because the jury instructions
already mentioned that the jury could
infer copying from proof of access and
substantial similarity. The district
court agreed with Ashton on this point
and stated that it thought the best
course of action would be to wait to
submit the supplemental verdict form
until the jury had returned its verdict
with respect to the other two
questions./2
Ashton claims that the manner in which
the supplemental verdict was submitted to
the jury was reversible error because the
jury did not know all of the issues that
needed to be addressed from the outset.
Ashton claims that the jurors were misled
by the jury instruction that told the
jury to find for Wakeen if it found
access and substantial similarity.
Therefore, it argues, by the time the
jury had decided access and substantial
similarity, the jury thought it had
already decided the case in Wakeen's
favor, and the supplemental verdict form
was meaningless. While Ashton's proffered
scenario is possible, it is also possible
that the jury thought that the submission
of the supplemental verdict form meant
that the court was displeased with its
answers to the first two questions. See
Bonner v. Guccione, 178 F.3d 581, 591 (2d
Cir. 1999) (stating that post-verdict
interrogatory may lead "jury to infer
that judge is conveying her unhappiness
with the verdict"). However, Ashton's
reliance on juror confusion is ill-
founded given that it argued to the
district court that clarifying
instructions were not necessary.
The district court's denial of Ashton's
mistrial motion was not an abuse of
discretion. Ashton had the opportunity to
advise the court on how to submit the
supplemental verdict form to the jury,
and the court did what Ashton asked it to
do. Ashton drafted the third question,
argued against clarifying instructions,
and remained silent as to the timing
issue. Further, on appeal, it has done
nothing more than speculate that the jury
was confused. The record, however, does
not reveal that the jury was confused.
The jury heard evidence and arguments
pertaining to the two elements of the
copyright infringement claim--access and
substantial similarity--and to the issue
of independent creation. The district
court submitted three special
interrogatories pertaining to each of
these issues, and the jury deliberated
for hours on each question before
returning a verdict in Wakeen's favor on
all three issues. While it was
unfortunate that the district court erred
in initially drafting the jury
instructions, Ashton has not shown that
any step of the deliberative process was
reversible error.
E. Attorney's Fees
Ashton's final argument is that the
district court erred in awarding
attorney's fees. The Copyright Act
provides that "in its discretion," a
district court may "award a reasonable
attorney's fee to the prevailing party as
part of the costs." 17 U.S.C. sec. 505.
In utilizing its discretion to award
attorney's fees under 17 U.S.C. sec. 505,
a court should consider such non-
exclusive factors as "frivolousness,
motivation, objective unreasonableness
(both in the factual and in the legal
components of the case) and the need in
particular circumstances to advance
considerations of compensation and
deterrence." Harris Custom Builders, Inc.
v. Hoffmeyer, 140 F.3d 728, 730 (7th Cir.
1998) (quoting Fogerty v. Fantasy, Inc.,
510 U.S. 517, 534 n.19, 114 S. Ct. 1023,
127 L. Ed. 2d 455 (1994)). Under this
test, there is no precise rule or
formula, but courts should apply the test
in an even-handed manner, treating
prevailing plaintiffs and prevailing
defendants alike. Harris Custom Builders,
140 F.3d at 730 (quoting Fogerty, 510
U.S. at 534). A showing of bad faith or
frivolousness is no longer required in
order to receive attorney's fees. See
Budget Cinema, Inc. v. Watertower
Assocs., 81 F.3d 729, 731 (7th Cir.
1996). We will reverse a court's award of
attorney's fees under 17 U.S.C. sec. 505
if the district court applied the wrong
legal standard or abused its discretion.
See id.
In its order, the district court found
that the "deterrence" factor alone
created a basis for awarding attorney's
fees under 17 U.S.C. sec. 505, and
awarded Wakeen $203,181.92 in fees.
However, it offered no explanation of how
this factor supported an award of
attorney's fees. In fact, all that the
district court's order said on this
matter was, "[a]s to deterrence, the
defendant says that it had stopped the
infringement before trial and so did not
need to be deterred, but this confuses
specific deterrence--deterring this
wrongdoer from its malfeasance--with
general deterrence--deterring other
potential wrongdoers from theirs." Then
the district court concluded that it
"would award attorney's fees to the
plaintiff on deterrence grounds under
Fogerty." The district court did not
indicate what behavior it was trying to
deter, or how the "particular
circumstances" in this case weighed in
favor of awarding attorney's fees.
Fogerty, 510 U.S. at 534 n.19.
Although we are aware that a district
court may use its discretion to award
fees under 17 U.S.C. sec. 505, we cannot
determine how that discretion was
exercised in this case. In Harris Custom
Builders, 140 F.3d at 730-31, the court
vacated and remanded an award of
attorney's fees where the district court
judge did not adequately explain the rea
sons for granting the award. The court
remanded the case to the district court
judge for "his comments, which need not
be extensive, on how his discretion [was]
being exercised." Id. at 731; see Fasa
Corp. v. Playmates Toys, Inc., 108 F.3d
140, 144 (7th Cir. 1997) (refusing to
"read between the lines" of the judge's
award of attorney's fees and vacating
award and remanding case to district
court so that it could elucidate the
standard it was applying). While we make
no judgment on whether the deterrence
factor alone can support an award for
attorney's fees--especially given that
the district court's order was
unpublished--we note that some
explanation by the district court about
its decision is necessary. If the
district court purports to deter others
from behaving as Ashton did, then it must
explain what Ashton did that led to its
award of attorney's fees.
The district court also purported to
award attorney's fees as part of the
costs under 28 U.S.C. sec. 1920. That
statute lists six categories of "costs"
that may be provided to the prevailing
party as a matter of course, but
attorney's fees are not a category that
the statute lists. 28 U.S.C. sec. 1920.
In a copyright action, fees are governed
by 17 U.S.C. sec. 505, and any award of
fees and non-taxable costs must come
through it, and not through the general
costs provisions of 28 U.S.C. sec. 1920.
Cf. Fasa Corp., 108 F.3d at 144 (holding
that the word "costs" is a term of art
that does not normally encompass
attorney's fees). Therefore, the district
court erred in awarding attorney's fees
as "costs" under 28 U.S.C. sec. 1920.
III. Conclusion
We AFFIRM the district court's denial of
Ashton's motion for judgment as a matter
of law; denial of Ashton's motion for a
new trial; and denial of Ashton's motion
for mistrial. We VACATE the district
court's award of attorney's fees and
REMAND the issue for further action.
FOOTNOTES
/1 The instructions, as read to the jury, stated:
This is a copyright infringement case. The plain-
tiff Susan Wakeen Doll Company, Inc., claims that
the defendant Ashton Drake Galleries infringed
its copyright on a baby doll head sculpted by
Susan Wakeen which the plaintiff named "Love Me
Tender." The defendant denies infringing the
copyright and claims that the sculpture is the
independent, original creation of Marlene Sirko.
Copyright infringement exists when a defendant
copies a work to which the plaintiff owns the
copyright . . . . In order to determine whether
defendant copied plaintiff's sculpture, you must
determine whether Marlene Sirko had access to
plaintiff's copyrighted sculpture. Access (as
well as copying) may be inferred when a defen-
dant's sculpture is so similar to plaintiff's
sculpture that it is likely that the creator of
defendant's sculpture copied plaintiff's sculp-
ture. You may also conclude that Ms. Sirko had
access to plaintiff's copyrighted sculpture if
you find that plaintiff sent Ms. Sirko a copy of
that sculpture and believe that Ms. Sirko saw
plaintiff's sculpture.
If you conclude that Ms. Sirko had access to
plaintiff's copyrighted sculpture you should find
in favor of plaintiff Susan Wakeen Doll Company
if you find that defendant's sculpture is sub-
stantially similar to plaintiff's copyright.
Defendant's sculpture is "substantially similar"
to plaintiff's copyright if an ordinary reason-
able person, unless he or she set out to detect
disparities between the plaintiff's and defen-
dant's sculptures, would be disposed to overlook
the disparities and regard their aesthetic appeal
as the same. The two sculptures need not be
identical for defendant's sculpture to infringe
plaintiff's copyright. Differences in size,
shape, color, or feel are not important if there
are [sic] substantial similarity in the overall
artistic expression.
/2 The court wanted to wait to submit the supplemen-
tal verdict form because if the jury answered
"no" to either of the first two questions--indi-
cating that Sirko did not have access to LMT or
that the two heads were not substantially simi-
lar--then Wakeen would have failed to prove its
prima facie case, and Ashton would have pre-
vailed. Therefore, it would have been moot wheth-
er Sirko had independently created her work.