Woolworth Company v. Contemporary Arts/Dissent Black
Mr. Justice BLACK, with whom Mr. Justice FRANKFURTER concurs, dissenting.

The earthenware dogs found to infringe respondent's copyright were bought by F. W. Woolworth Company in good faith at a total cost of $914.40. Woolworth's total profit from the sale of the dogs was $899.16. The Court now holds that Woolworth must pay the dogs' copyright owner $5,000. This award is said to be allowed by § 101(b) of the Copyright Act, 17 U.S.C. § 101, 17 U.S.C.A. § 101. We do not think that section authorizes any such manifestly unjust exaction. This Court pointed out in Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 400-401, 60 S.Ct. 681, 684, 84 L.Ed. 825, that § 101, like an analogous patent law section, was not intended to award a copyright owner both damages and profits, but only 'one or the other, whichever was the greater.' Under this rule, profits only should be awarded to respondent in this case.

Reliance for awarding $5,000 against Woolworth is naturally placed on that provision of § 101(b) which provides for damages not in excess of $5,000 'in lieu of actual damages and profits'. But this Court has said that the purpose of this section was to recompense for injury done 'where the rules of law render difficult or impossible proof of damages or discovery of profits.' Douglas v. Cunningham, 294 U.S. 207, 209, 55 S.Ct. 365, 366, 79 L.Ed. 862. Here proof of profits was neither difficult nor impossible. And in the carefully considered case of Sheldon v. Metro-Goldwyn Pictures Corp., supra, 309 U.S. at page 399, 60 S.Ct. at page 684, Mr. Chief Justice Hughes speaking for the Court declared, '* * * the 'in lieu' clause is not applicable here, as the profits have been proved * * *.' See also to the same effect Davilla v. Brunswick-Balke Collender Co., 2 Cir., 94 F.2d 567; Sammons v. Colonial Press, 1 Cir., 126 F.2d 341. We would adhere to this view and limit this recovery to profits made by Woolworth. This Court should heed the admonition given in the Sheldon case to remember that the object of § 101(b) is not to inflict punishment but to award an injured copyright owner that which in fairness is his 'and nothing beyond this.' Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. at page 399, 60 S.Ct. at page 684.

The following circumstances bear on the question of unfairness of the amount of damages awarded. Petitioner contended in the Court of Appeals that the district judge did not give it a fair and impartial trial. 'In support of this contention', the Court of Appeals said, 'the appellant points to several instances in the record of irrelevant and prejudicial comments and remarks' made by the trial judge. Considering the judge's remarks as 'both unseemly and uncalled for', the Court of Appeals said:

'But after careful consideration of the record as a whole we      have concluded that the particular remarks of the judge which      would better have been left unsaid, and are better not      quoted, do not rise to the seriousness of reversible error.      Having regard for the convincing nature of the plaintiff's      proof, and the unconvincing nature of that of the defendant,      we do not feel that the decision reached by the court below      can be attributed to bias and prejudice. That is to say, we      feel that the defendant really had a fair and impartial      trial.' 193 F.2d 162, 169.

We accept the Court of Appeals' appraisal of the consequences of the judge's remarks on the factual issue of copyright infringement. But here the trial judge gave judgment for statutory damages in an amount that smacks of punitive qualities. And this Court has held that the amount of such damages is committed to the unreviewable discretion of a trial judge. Douglas v. Cunningham, 294 U.S. 207, 210, 55 S.Ct. 365, 366, 79 L.Ed. 862. In view of the remarks of the trial judge directed against the Woolworth Company, we think it had a just right to complain that the amount of damages imposed ought not to stand.

We would reverse and remand this case for a new trial by another judge. 

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