00-2811, 00-3717 Susan Wakeen Doll Company, Inc. v. Ashton-Drake Galleries

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“[T]he 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.

“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… 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.”

Affirmed in part, and vacated in part.

Appeals from the United States District Court for the Northern District of Illinois, Bucklo, J., Kanne, J.