provides in no uncertain terms that there shouldn't be any award of statutory damages or attorney's fees for any infringement of copyright that is that commenced and i'm reading now after first publication of the work and before the effective date of its registration so in order to recover statutory damages the plaintiff must show that the first infringement of the work occurred before i'm excuse me after the effective date of the registration otherwise if it occurred before the effective date of the registration is that it or damages are unavailable it's undisputed that that's the rule of the district court so instructed the jury we're talking about statutory damages in this case because the district court refused to permit plaintiffs to seek actual damages or any alleged additional profits earned by defendant due to playing this failure to provide information in discovery about any of its claims in that regard so the plaintiff proceeded solely for statutory damages and an injunction an injunction was awarded it's not here on appeal so the plaintiff has the injunction against the conduct that it complained about now as to the damages portion of trial statutory damages the only thing that was sought matts what brings us to section four twelve why did congress adopt this rule in section four twelve why do we have this proposition that the first infringement must have occurred after the registration while this court has explained that in the case of johnson against jones and although i don't want to read anything from other cases i would like to just read this little portion from the court's opinion in johnson a man or a on whom is the burden of proof to show on the usage of the plaintiff your honor the plaintiff must show in this that's not in dispute everyone agreed that the plaintiff needs to show that the first infringement occurred after the rare effective date of the copyright registration now this i were that before each picture of the pictures of the group well it's for the work your honor again focusing on the language of the statute the statute explicitly says that no statutory damages shall be awarded for a infringement that commenced after first publication of the work and before the effective date of its registration namely the works registration so it has no group of pictures or each picture to its its each each individual in this case each individual room scene image each unique photograph and that's your question points out one of the major failings in this case i mean one of the failings in this case is that the plaintiff proceeded on the theory that there could be a large photographs allegedly presented to the copyright office more than seven hundred of them and then another huge number of photographs plaintiff's exhibits one through three and eight through fifteen which plaintiff claimed were the infringing activities and then the plaintiff says ok there must be some infringement in there somewhere just cutting to the chase mr excuse me before your time is up i think we get all of that why is there not sufficient circumstantial evidence in the record for the jury to have concluded that at least thirteen out of these seventy three images that they said violated occurred in the time sequence that you say requires well because your  honor i ask i can answer that question with another question let's assume not really the way it works i understand i'm not putting in the it's a rhetorical question let's assume that you wanted to determine on this record whether the first infringement of let's let's pick an exhibit you take one of the numbers that the jury listed on the verdict form pick one and say ok now how do we prove based on this or how  does the jury conclude based on this record that that photograph had its first infringing use after the copyright registration it can't be done when we ask the plaintiffs in the briefs in this case to do it the plaintiffs said i don't have that evidence what i'm relying on is the circumstantial evidence that you didn't come forward with your showing of when the first infringing use occurred well that's not exactly true my understanding from reading this is that the testimony of somebody named suture who's being relied upon heavily by the plane if you're due to provide the circumstantial evidence that i'm asking you about i realize that what you're saying was part of their argument but and there may be other testimony that will find that the plaintiffs as they were relying upon but souter seems to be one of the keys here why is that adequate or inadequate well mr sucre is the president of virtual studios the plaintiff and you're right he testified of both the liability phase and the damages phase but mr zucker never attempted to say with respect to any photograph that we registered the copyright for this photograph on day one and the first infringing use occurred on day two or thereafter let me ask another way let's assume using your hypothetical that he testifies we registered this on day one and i saw this on day two and that's all that he knows now at that point does the case fail because he hasn't cared as a bird or at that point is it incumbent upon you to rebut that the significance of that by showing that in fact you did use it before day one no your honor it is not incumbent on us to do that and that's you know we've brought of them so the plaintiff has to in every one of these infringing cases has to prove a negative that not only did they discover it after it was registered but that it but it couldn't have been used prior to  that that doesn't sound like that would be the law well it is your honor and that's why i started with well how does the plaintiffs prove a negative than in let's get outside the parameters of this case just in general with the plaintiffs ever prove that that's why i started your honor with section fo twelve because the purpose of section four twelve and and i asked the court to read the entire opinion in johnson against jones but the purpose of section four twelve was as the court said to have copyright holders register early and often in the normal case we understand that the idea is to get to make people register in that on the public record we get that in that but it just seems odd that if your construction of the statute is such that no of can ever meet it that doesn't sound like that could be right now your point is registered where you put it out there exactly iran and that's what happens in the normal case that's why this case is so bizarre this is a case in which the parties did business together for years mr zucker testified that they had provided some one hundred twenty room scene images to our client during the period from two thousand to two thousand and seven and it wasn't until the last week of december two thousand and seven when they first started registering so it works you this question he does testify that there's a pretty quick turnover of at least the store  that were infringing right super does you know he says it's a fashion industry remember that test and he studies say that your honor but i don't think i mean you know so i mean is that circumstance or all evidence that if if he's finding infringement years after two thousand and seven would that allowed your to infer that it was it began post comments or i you know your honor i don't think so but let me let me make sure that the court appreciates both aspects of what we're talking about here it's not only that he says well i saw some things in the store in two thousand and twelve but he doesn't even say that this photograph is the one that i'm talking about and this is the photograph that was registered on such and such a day and this is the photograph that they had the right to use for the year and that y expired here and that's why it was infringing thereafter is about as loose as it gets not to say it's too you know but did you a minor standing as you did ask for that it just didn't happen did you i mean was there ruling yes the courts the court said that the court didn't like to ask too many questions of the jury and that the court didn't want to have questions and sub sub questions but really it would have required only one more question to say which of the infringing images that you find are appropriate basis for statutory damages you don't make any argument here about that omission i guess well  we didn't we have been appealed on the ground that the verdict form was deficient we have said however that we can tell what happened that pretty tough road to go down your honor i know it's a tough road to go down and that's why we wrote the brief the way we wrote it we wrote the brief to say let's take the entire verdict form let's take every one of those documents pick any one show us when we had the right to use it they don't complain that we used any document that we didn't have the right to use at some point they say they gave us the photos for here at some point the year expired and thereafter we were no longer permitted to use it you would have thought that with respect to specific photos they would have said ok this photo was licensed on october thirteenth two thousand and two it was allowed to be used for a year any use their after was infringing they didn't do that with respect any photograph and so we can't stay standing here today we can't know when the prospective period of infringement began because we don't know when the one year all they say is will it happen years before think about what they are telling you they are telling you that they provided us with one hundred twenty images during the seven year period all of which we wanted to use to market our carpet we had the right they say to use it for each one for each year but they say we didn't do it we didn't we we either didn't use it for the year or we use that then we stopped using it then we waited several years until after the registrations occurred in two thousand and seven two thousand and eight and two thousand and nine and then we started using it again and that was infringing and that was the first infringement that is now and they don't say which one they're talking about my right plaintiffs you're right you're on the plaintiff says we don't know we can't tell the thirteen are in there somewhere there's a total of seventy three numbers or seventy four numbers on the verdict form somewhere in there there's thirteen we said to them well pick one any one and show us that you've satisfied the statutory requirement they didn't do it they said you should have come forward to show that you first infringed  after or before the registration so you know that hasn't been done but if your honor will take a look it's a ten page exhibit it's just ten pages in joint appendix twenty nine to thirty eight that's the  the chart of mr senate tempo who testified for us on the damages and then plaintiff put his chart into evidence as plaintiff's exhibit one hundred they told the jury rely on it in their rebuttal argument on damages the jury was out for one hour from one twenty five to two twenty five they came up with a list of seventy four specific four digit numbers they didn't get it from nowhere they got it from that char and you can go through that chart and you can see that for each separate room image identified by missed the senate tempo and he pulled out all the duplicate that he found in the that were found in the photos in the stores this is said you shouldn't count the same photo more than once you me your way over your time so wrap up your answer to the question we please sure i'm really through your honor i think that's how you can tell what the jury did thanks very much it please the court mike anderson here on behalf of the apple a virtual studios i will not try to use sucker time in fact i expect my argument may not even use my entire time but we're here today contending that the circumstantial evidence that was placed into this record and the reasonable inferences that can be made from that circumstantial evidence more clearly than not shows that it is more likely than not that the thirteen images for which the jury awarded statutory damages were registered before their first use now let's just say i want to ask you about that because i thought the briefing was excellent in both sides but it is true that your brief seems to have not a single record in support of the proposition that you just made i don't see anything in here that tells me what evidence in the record would allow the jury to find that thirteen of these images the were registered before the infringement began so i'd like to ask you what record evidence specifically supports what you just said there is evidence in this record your honor from the testimony of representatives of both of you and if you'll recall from the briefing the dispute in this case arose in the two thousand and seven two thousand and eight timeframe at that point in time bo use officer patricia plop and testified she told her people to continue ordering room scene images from virtual studios that is at or about the time all of these images were being registered later there is testimony from gina floated in the record exhibits forty and forty one that both use trial trial evidence yes or this is exhibits forty and forty one that bowyer you introduced into evidence in this case showing that virtual studios sent fourteen new images to bow you in two thousand and ten those images that were introduced on those exhibits show september of two thousand and ten and in december of two thousand and ten virtual studios was sending its images to both of you new images for its use in displays when are they registered those images would have all been registered between two thousand and seven and the end of two thousand and that it's all over it's in response to your to your brother counsel's arguments you agree you didn't say specific image specific date specific use but you did say they were registered within a period between a and b and the use was after b we did in the defense of the jury we probably didn't do as good a job as we should have done or could have done to lay that out for them more specifically but they had all of the information and the evidence that they needed to know and this record makes clear they are worth thirteen or more images that were provided to but he don't know which they're doing that but we do not know which thirteen they picked but they are only list in the bird for those other words that you just mentioned those are i've got the form in front of me those are in the record and are on the board from you know like what range we're talking about seventy seven i don't have that information with me on hand your honor i apologize so so you have that they sent the fourteen images in late two thousand and ten what else do they they testified that they were making displays with these images  during the entire period of time there was a day to testify mike mcallister was a representative of bo you testified about the preparation of this place as well as windy jane's ms jane's  testified she would she worked with home depot there was evidence at trial submitted that some of these images that we complained about were used in the home depot stores she testified she would give photographs that hit the bow you had obtained from virtual studios to home depot to use doesn't know when they first started using them doesn't know what use they put them to other than they use them for displays i mean what does that do for us we don't know when bo you got those point in an ideal world we wouldn't have to have hard i mean it was just an oversight here there was an oversight but there is clearly evidence that they were produced or there is clearly evidence that thirteen or more of the images that were registered were eligible for statutory damages that's just what i'm trying to nail down because again it's simply not in your brief i've got you know the september late two thousand and fourteen images record i don't know if those are the fourteen i mean  and i'm just trying to give you an opportunity tell me what else you have we tried to do the same thing we asked both of you is there is there anything else you given us two places to look at the first was the testimony of a two two people plus forty and forty one but then you just gave us another a second way that is judge yes it's just pointed out doesn't sound very persuasive so is there anything else there there was evidence it made it into the record that initially the work that was being done by virtue of studios for both of you was to manipulate images that virtual studios obtained from both of you in other words they were both images it was not until much l in time when this dispute arose that bo you was obtaining images from virtual studios to use on displays bruce started was that a date after all the images were registered or not it was unclear as to us when they first use those images and it maintaining that it could not tell us when it first use those images it's reasonable to infer from us having attempted to prove that negative that those images were images before they were registered under herman of defense i mean it's your burden of proof in the person instance right it is our burden of perin why would they keep records they could care less presumably in their ordinary business practice presumably accepting that the discussion occurred between the parties about the issue of whether they were authorized to use these images beyond a period of one year so boyi was zero notice that we were concerned about it and then we began the registration process and they continued to order images from us after that time and the jury in this case we can't ignore the fact that the jury in this case listen to this evidence listened to both use arguments and found that they willfully they were m clearly by lady russian as you know always there are a sufficient basis for this particular determination under a preponderance of the evidence standard that we had to meet in order to meet our burden of proving that there was copyright for interment in this case and the circumstantial evidence that was in the record the exhibits that were put in the record the fact that the only evidence of first use was that offered by mr super there are well over two dozen images on that verdict for that he testified that the first time he ever saw them being used by both of you was in two thousand and twelve that's the only evidence as to those images first use it was reasonable for the jury to infer based on the testimony about this being a fashion industry based on the testimony based on the testimony about these images being used on displays in different stores that those images were not first used until after registration well let me ask you a question about that because i was curious about that as well if he had testified that he routinely searched himself or had somebody else searched to make sure somebody wasn't infringing and that's when he first saw them it seems to me you might be able to draw a different inference than if he simply testified i was in a home depot one day i happen to see this on their screen and i got intrigued and i look forward that really doesn't prove that it was or wasn't used in earlier date so what did he say he said that once he found out that they were using these images he began looking to see whether they were continuing to use the images improperly but that the negative of that is he wasn't looking prior to that he was not looking prior to that so that is why would you go to the inference that they didn't use it prior to that date well you would draw the inference because the testimony was that they prepared these displays as a fashion industry testify that they didn't use an image until they were going to introduce a new line so they had a stockpile of images that they obtained from our client and others but the uncontroverted testimony was they didn't use them until the initiated in the product line so from all of this we continue that there was adequate as a where do we find the testimony that cooperates that that that the use corresponded i guess several part question where do we find the testimony that says the use commenced with the introduction of the new line there was and and that there were at least thirteen or more new lines that were introduced after the last registry the first part of your question that testimony was discussed with mr mcallister you and ms following i don't think there's any testimony that addresses the second point that you raised and that was that there were thirteen lines introduced at more than one year after the first registration so again how does that help us how does that make it reasonable for the jury to infer that there must have been that many new lines if that's what you're hanging your hat on i'm not necessarily hanging my head on that i'm  hanging my head on all of the circumstantial evidence that we put into the record but as to that particular piece it may not weigh as heavily as some of the other evidence that the jury had from which you can make its determination the burden of proof is on you i don't understand we can assume that investigator number one number two it would have been an extraordinarily expensive undertaking to attend or you end up with a one point nine million dollars well and they did the other nobody ever does going to be that big a case well they're more than thirteen images in this record that are eligible for statutory damages but we did not tell it here is you're really going in to try to prove a statutory damages case well in reality we had not made that election yet in all likelihood we would have attempted to prove an in perspective not that it affects the outcome here what were you seeking in actual damages in actual damages we have not made that determination because we didn't know yet what you had derived in terms of revenue from the use of these particular images we had the information telling us what they spent you were precluded from introducing it because you didn't in it you didn't offer up what your profits were or how it affected your profits right that is correct so come on give me a you're telling me that you know that you've you filed a case you went through mediation presumably you went to trial and at the end of the trial you still didn't know what your damages would have been had he had the judge allowed you to put them in we we knew that our damages were premised upon what bo you had profited from illegally using our images that was where our theory is we proceeded to we never got to the point of discussing what the value of that would be before we went to trial but  the trial it's like fifty three thousand or something like that that was they were witness there was testimony from their expert that stated that in his opinion the measure of damages actual damages would be fifty to fifty seven fifty seven five i think if you had no not have an expert testify i didn't say test did you hire a damage expert we did hire the head that person prepare report that person did not prepare a report to the person tell you what the person was prepared to offer up in testimony yes and what did it what was the number it was like twenty five million dollars if you want to know ok i do want to know it but we as a matter of trial strategy determine that that might be a little purpose for us perjury to have a good strategy just i mean this is just a factual inquiry did you all work with our circuit mediator at all in this case we did in light of this discussion the actual damages or at least several times to them just a couple hundred times for them is that we're talking pictures of rooms or in steal somebody's mobile and copiers but what we have here is this court having decided having considered this very issue but you're asking me about determined and stated in his memorandum opinion and judgment that he did not find it to be excessive or shocking based on the evidence what if we find it shocking that well i would still maintain that the extraordinary deferential standard that this court has addressed earlier as to statutory damage awards should carry the weight at the end of the congress standard yes it is a unique standard in the it  honor i appreciate your giving me a few moments i only have a couple of quick points first of all i did look at the exhibits to which counsel referred they don't identify any specific documents and there is absolutely no way to tell and i think when the court looks at those exhibits the court will realize that there's no way to tell whether any of the documents that were provided in two thousand and ten a handful are or are not on the juries list there's simply no way to tell counsel was asked to give an example of a specific number of bates number that was first infringed after registration counsel just said there's twenty of them on there but he didn't name one and the reason this can't be done that's the whole problem in the case so and there's nothing in the in the testimony that was referred to that does it either it's not a question of proving a negative that's a that's a catch phrase but it's not a negative it's a positive have to prove the first infringement after the registration and these images we know for example because mr zucker testified that he saw the images on the website on our client's website and he complained about it in two thousand and seven he said we got i got started complaining about in two thousand and seven and it went on thereafter so that was before any registration so we know that for the website images that are listed on the verdict form the proof that they say they want is in the record their own client testified that we were using those images prior to registration is there any case that says that if the testimony shows it was registered on day one and there was use on day too that that's not adequate for statutory damages because there isn't any proof as to whether it was or wasn't used to before day one understand what you say the statute says i a case of extensive use prior to the date of any registration so we know that with respect to many of these images we can't say how many but we know with respect why would we have paid the money that it cost us to get the images if we didn't intend to use them we obviously were using them with risp so with respect to the images that were in the stores the plaintiff's position is we put the images in the store and we just left them there the plaintiff says we should have gone and gotten them and taken them back so the plaintiff's theory of the case is our wrongdoing our infringement was that we took the images to the stores and we just left them there there's no suggestion that we first what them we use them then we withdrew them then we started infringing again after they registered that evidence is missing and they can't identify a single a single one and you know the fact that it is true there were a few images that they there were the ones that were there were the ones that were on the website and then there were the ones that were provided on c d s that were then turned into what they call rack cards or desk desk top cards where you could see a photograph of the room with the rug and your honor i mean i don't need to belabor the point the supreme court's decision back in one thousand nine thousand which has not been changed which this court recognize does give the court the opportunity to review the statutory damages award and it's not irrelevant what the relationship is between the amount of damages awarded and the amount of bullets the income to the plaintiff and just fix a number rather than prolong the agony the considerations and go into a statutory damages awarded just so different than some of the other areas you're analogizing to i mean the the the  jury sense that your client brazen brazenly infringed matters as a policy matter it's poor for the number it's not just some multiple their actual damages isn't isn't that a fair description of the law your honor i don't disagree with you that the multiple is the be all in the end all all i all i'm here to say is that the supreme court in one thousand one thousand cases that we've cited in our brief st louis i am an s railway against williams and then the follow up case shortly thereafter and this court's recognition of that in zomba shows that there is a room for judicial review there is room for the court to consider the proportionality the reasonableness the excessiveness of an award and here as the district court found there were bases for our position the jury it minutely didn't buy our position the jury saying we infringe willfully but you know they were relying on a turning condition that they put on the back of an invoice and said that's show that you can only use it for a year understand well  fully understand your arguments or which you've made very clearly but you know how hard it is to prevail on that argument to sufficiency so i would just echo what my colleague said about you might want to have a conversation about this  thank you interesting case case will be submitted