# United Stat es Court of Appeals For the First C ircuit

Nos. 02-1452 02-1533 JOHN G. DANIELSON, INC.

Plaintiff, Appellee, Cross-Appellant,

v. WINCHESTER-CONANT PROPERTIES, INC.; THE WILLOWS AT WINCHESTER, LLC, Defendants, Appellants, Cross-Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS [Hon. William G. Young, Chief U.S. District Judge ]

Before Lynch, Circuit Judge , Stahl, Senior Circuit Judge , and Howard, Circuit Judge . Gary S. Matsko , with whom Paul L. Feldman , Judith Ashton , and Davis, Malm & D'Agostine, P.C. were on brief for appellants and cross-appellees

Anthony E. Battelle , with whom Construction Law Services , Charles R. Heuer , and Heuer Law Group were on brief for appellee and cross-appellant.

March 6, 2003-2- LYNCH, Ci rc uit Judge . This copyright case involves

unus ual facts, many dating to the mid-1980s, which greatly influence its result. A real estate developer acquired a parcel of landcovered by a 30-year restrictive covenant to which a previous

owner had agree d. Th e covenant required that any residential development conform with site plans submitted by the previous owner. The new owner tried to modify these restrictions; when it failedto do so it built a condominium subdivision that adhered to the site plans in the covenant. The architectural firm that h a d earlier designed those plans then sued for copyright infringement andunfair competition, and eventually won a jury verdict and a judgment in the district court for over $1.3 million -- essentially all the profits from the now-complete condominium project.

The corporation that built the condominiums, WinchesterConant Properties, Inc. ("WCP"), appeals the dismissal of most of its affirmative defenses. We affirm these dismissals, although in

some instances our reasons for affirmance differ significantly from the district court's rationale. The plaintiff architectural firm, John G. Danielson, Inc. ("Danielson") appeals some of the court's rulings dismissing its unfair competition claims. We affirm these rulings as well. Finally, both parties appeal aspects of the damages award. WCP argues that the district court gave erroneous instructions to the jury concerning the apportionm ent of profits between the infringing design and other aspects of the development.-3-

We agree, vacate the damage award, and remand for a determination of damages using the correct standards. I. Background A. Facts In the mid-1980s, Louis Farese was co-trustee of a trust that owned a 7.4 acre parcel of land in Winchester, Massachusetts (the "site"). Danielson had worked on other projects for Farese, andFarese hired Danielson to develop plan s f or the site. Danielson in turn retained D onal d Tellalian, of Tellalian Associates Architects and Planners ("Tellalian Associates"), as a subcontractor to assist it in its work on Farese's project.

Danielson, Tellalian Associates, and Farese consulted with each other, Winchester town officials, and residents who lived

near the site to determine the best course for developing the land. They settled on a condominium development, and showe d some early drafts of their plans to these stakeholders, some of whom suggested various changes. This process culminated in the production of

seven drawings, dated June 11, 1987, depicting a 7 0-unit condomin iu mdevelopment with four residential buildings and a "clubhouse" for community activities.

Four of th ese dr awings are subjects of Danielson's infringement claims. Three are site plans (labeled SP-1, SP-2, and SP-3) which show the layout of the site from a bird's eye view, including footprints o f buil dings, roads, parking, and green-4-

spaces; they bear the logos of both Danielson and Tellalian Associates. The fourth is an unlabelled artist's rendering of the buildings (designated A-3). None of these drawings had a copyright notice on them.

A t the time, the site was not zoned for resid entia l development and was co vered by a restrictive covenant between a previous owner and the Town of Winchester (the "Town"). The condominiumplan could only be completedif both the zoning and the covenant were amended, and only the Winchester Town Meeting could approve either change. On June 11, 1987 -- the same date that is

on the seven drawings -- the Winchester Planning Board voted to recommendthat the Town Meeting amend the site's zoning to allow residential development. The Board also entered into a new restrictive covenant with Farese, subject to Town Meeting approval. This covenant wo uld run with the land for 30 years, could be alteredonly by a two-thirds vote of the Town Meeting, and required that any residential development be in accordance with the seven drawings. (These drawings are therefore referred to by the litigants as the "covenant drawings.") At the Town Meeting on June 15, 1987, Tellalian showed several of the covenant drawings on an overheadprojector as part of his presentation; some were also displayedon easels in the l obby. The Town Meeting followed the Board's recommendations and approved both the rezo ning and the-5-

replacement of the previous covenant with the restrictive covenant signed by Farese and his co-trustee.

Having clearedthis obstacle, Farese and Danielson signed

a written contract for the project on June 29, 1987. The document is a standard form contract furnished by the American Institute of Architects (AIA), with some modifications made by the parties. The contract specifies that all plans remain Danielson's property, that plans are not to be used on other projects or by other parties without Danielson's written co nsent , and that "[s]ubmission or distribution to meet official regulatory requirements . . . is not to be construed as publication i n d erogation of the Architect's rights." As work continued, Danielson created numerous construction drawings; four of these, labeled C-1, C-3, C-4, and L1, are also subjects of this litigation. These four drawings are markedwith several revision dates in 1987 and 1988; they depict the site layout with some modifications and additions, particularly engineering details. They all bear logos of both Danielson and Tellalian Associates but lack copyright notice ; two of them also include the logo of another Daniel son su bcontractor, Medford Engineering ("Medford").

Soon after construction began in 1988, Farese encountered serious financial difficulties. The project was abandoned and lay1 P ace later formed a subsidiary of WCP, The Willows at

Winchester, LLC, and transferred ownership of the site to that entity, which Danielson also named as a defendant. In addition, the cond omini ums were marketed by WCP under the brand name of an affiliatedcompany, Starter Sales. We refer to all of these entities collectively as "WCP." -6- dorman t until 1994. Danielson has never collected over $226,000 that Farese owes it for work completed under the contract.

In 1993, Robert Pace became interested in bu ying and developing the site. He formed WCP and acquired the site in a foreclosure sale in April 1994. 1 Over the next few month s , WCP considereda range of possible d ev elopment options, including to wn houses, single-family homes, and housing for the elderly. Several versions of a condominium plan like the one Farese had pursuedwere also "on the table." Representatives of WCP met three times in mid-1994 with Edmond Danielson, by then the only full-time architect at the Danielson firm, to discuss ideas for the site. At Edmond Danielson's suggestion, Donald Tellalian joined the second and third of these meetings. The WCP representatives brought the disputeddrawings to these meetings and the participants looked at them, but WCP expressed concern that Farese's plan would not be profitable. WCP commissioned Danielson and Tellalian Associates to draft a proposed design for the elderly housing concept. By August 1994, WCP chose to pursue a townhouse plan designed by another architect instead.-7- WCP did not have the same luck as Farese in removing preexisting covenants, however. After failing in several attempts to persuade the Town to alter the covenant established with Farese, WCP decided in mid-1995 to develop the site according to the covenant specifications after all. WCP providedits architects and engineers (including some, like Medford, who had worked for Danielson on the earlier project) with construction drawings that

are the subject of this lawsuit. These agents removed the Danielson and Tellalian Associates logos and pro duce d plans very similar to the drawings Danielson claims were infringed. T hese copieddrawings were in turn used to obtain permit approval from the town in December 1995. WCP included a simplified site plan in

a sales brochure, and also placed a copy of the artist's rendering, covenant drawing A-3, on its signs. Construction began on the development, called "The Willows at Winchester," in 1996, and was finished in 2000.

The parties disagree about some aspects of their communication at this juncture, bu t cl early they stopped doing business together after the elderly housing design was rejected in August 1994. Sometime in late 1995 or early 1996, a representative of WCP telephoned Donald Tellalian and told him that the company

now planned to use the site layout embodied in the covenant. Neither WCP nor Tellalian informed Danielson; WCP says it thought that Tellalian spoke for Danielson. In any event, Edmond Danielson2 T he authorship and ownership of copyright in the p lan s

hadbeen an issue at e arlier sta ges in this litigation, but WCP foregoes these arguments on appeal. -8- says he was unaware of WCP's intent to use the old design until August 1997, when one of the firm's former employees happened to drive past the site, noticedthe buildings under construction, and in formed him. Danielson swiftly contacted attorneys, who sent a letter to WCP stating Danielson's claim. Danielson also registered the covenant drawings and construction drawing s fo r copyright in 1999. Finally, Danielson requested and received from Tellalian writte n statements indicating that Tellalian Associates made no claim on the copyright interests in the drawings. 2 B. Procedural History

After settlement discussions yielded no fruit, Danielson fileda complaint in the U.S. District Court for t he Di strict of Massachusetts in May 2000. The suit asserted a claimof copyright infringement under 17 U.S.C. § 501 (2000). It also asserted three unfair competiti on cla ims: conversion under state law; false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a) (2000); and unfair and deceptive trade practices under Mass. Gen. Laws ch. 93A (2001).

The parties both submitted summary judgment motions. WCP sought dismissal of the case. Danielson sought summary judgment as to liability on three of its claims, but not as to the conversion claimor damages issues. On February 8, 2002, shortly before-9-

trial, the district cou rt issued an order disposing of these motions and shaping the case for trial. The district court later issueda published opinion elaborating on it s nu merous holdings. John G. Danielson, Inc. v. Winchester-Conant Props., Inc. , 186 F. Supp. 2d 1 (D. Mass. 2002).

In these pretrial rulings, the court held that there was

no genuine factual dispute that WCP had infringed Danielson's copyright. Id. at 4, 14. It dismissed five of WCP's affirmative defenses, which asserted that D a nielson's copyright was invalid becaus e of : (1) publication without statutorily required notice, (2) disclosure in the covenant which placed the plans in the public domain, (3) implied license, (4) merger doctrine, and (5) abandonment. Id. at 14-24. The court also ruledthat Danielson's state-law unfair trade practices claim was preempted by federal copyright law. Id. at 29. The other motions were denied.

The trial lasted through six days of testimony from February 19-27, 2002. A fte r plaintiff rested, WCP moved for directedverdict; the court granted the motion as to D aniels on's conversion claim, but allowed the copyright and false designation of origin claims to go forward. At the close of all the evidence, the district court rejected renewed motions for directedverdict on these matters, but granted Danielson's motion for directed verdict against WCP's estoppel and waiver defenses.-10- Taken together, these rulings considerably narrowed the questions left for the jury to decide. Two issues often at the heart of copyright cases, copyrightability and infringement, were already determined as a matter of law. On the copyright claim, the jury considered only the two remaini ng aff irmative defenses, concerning the statute of limitations and coauthorship. The jury foundfor Danielson on both of these defenses and neither of these verdicts is appealed. It awardeddamages on the copyright claim of $1,464,950. The jury also found that Danielson's Lanham Act claim of false designation of origin was within the statute of limitations and that WCP was liable under that claim for $120,000 in damages. The jury's total damages awardrepresented essentially all of the profit WCP made from the development.

The district cou rt disposed of post-trial motions from the bench at a hearing on March 27, 2002. It denied WCP's motion for a new trial under Fed. R. Civ. P. 59. The court granted WCP's renewed motion for judgment as a matter of law under Fed. R. Civ. P. 59(b) as to the Lanham Act claim, however, because it held there was no basis in the evidence for the $120,000 in damages the jury hadawarded. The court also reduced the damages under the copyright claim by $120,000, stating from the bench that it was "clear to the Court that the $120,000 was simply ad ded onto the3 As an alternative, in the event that the decision to

reduce the jury's copyright damages award were later reversed, the district court also ordered a remittitur of the same amount. -11- bas e damages the plaintiff otherwise is entitled to." 3 Finally, the co urt dealt with Danielson's petition for attorneys' fees, prejudg men t interest, and costs. Danielson was not entitled to attorneys' fees under the Copyright Act because the drawings were

n ot regist ered at the time of infringement. 17 U.S.C. § 412. Because the Lanham Act verdict was vacated, the district court ruledthat Danielson could not get attorneys' fees from that source either, but entered a provisional award of fees in case the Lanham Act dismissal were to be reversed on appeal. Finally, the court deniedprejudgment interes t an d awarded costs. Judgment for Danielson was then entered in the amount of $1,344,950. These cross-appeals followed.

WCP appeals the pretrial dismissal on summary judgment of four of its affirmative defenses, as well as the directed verdict against its estoppel and waiver defenses during trial. WCP also pursues its objections to the jury instructions concerning the calcula tion o f damages and to the exclusion of certain expert testimony concerning damages that it attempted to offer at trial. Finally, WCP appeals the denial of its motion fo r a new trial. Danielson appeals the dismissal of its unfair trade practices claim andits Lanham Act false designation of origin claim, as well as the denial of attorneys' fees and prejudgment interest.-12- II. Affirmative Defenses Because copyrightability and infringement are not in serious dispute, WCP's only real hope to avoid liability lies in its affirmative defenses. It do es not appeal those affirmative defenses rejectedby the jury, or its abandonment defense. It does appeal four affirmative defenses dismissedon summary judgment. We review such rulings de novo, including when sum mary judgment is granted, as here, on cross-motion s. Se grets, Inc. v. Gillman Knitwear Co. , 207 F.3d 56, 61 (1st Cir. 2000). In addition, WCP appeal s the dismissal of its estoppel and waiver defenses during trial. We review this grant of a motion for judgment as a matter of law under Rule 50(a) de novo, giving inferences to the nonmovant andaffi rming only if no reasonable jury could have found in the nonmovant's favor. Espada v. Lugo , 312 F.3d 1, 2 (1st Cir. 2002). A. Publication

WCP first argues that Danielson 's handling of the covenant drawings during efforts to secure th e zoning change in 1987 constituted their "publication," a term of art under copyright law. WCP argues that, because copyright law at that time required notice to accompany publication, a nd t he drawings lacked notice, Danielson forfeited any copyright it had.

We emp hasize at the outset that the relevant events, which occurred in 1987, fall within a short period between two major revisions of applicable federal copyright law. The Copyright4 The 1976 Act also reduced the importance of publication.

Previously, the publication of a work hadmarkedthe point at which its federal copyright protecti on began, but after the 1976 Act, federal copyright attached at the moment a work was first created. See 17 U.S.C. § 301(a) (setting pr eempt ion at point when work is "fixedin a tangible medium"). Copyright attached to the drawings at issue here when they were first drafted -- in the parlance of copyright, when they were first "fixed" on paper. See id. at § 101.

5 This case is also not covered by the Architectural Works Copyright Protection Act of 1990, because the drawings were created before the statute's effective date. See Pub. L. N o. 10 1-650, § 706, 104 Stat. 5089, 5134 (1990). -13- Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 ("1976 Act"), which became effective on January 1, 1978, included a statutory definit i on of publication for the first time. 4 See 17 U.S.C. § 101. The Berne Convention Implementation Act, Pub. L. No. 100-568, 102 Stat. 2853 (1988) ("Berne Act"), which became effective on March 1, 1989, made notice optional rather tha n mand atory, while retaining incentives to encourage notice. See 17 U.S.C. § 401. The overlap of the 1976 Act's publication definition (which remains in force today) and mandatory notice (now optional) lasted only for the period between these enactments. If the same facts arose today, they would not present a significant issue. 5

The law in 1987 required that, when works were published, they include formal notice or lose their copyright. See 17 U.S.C. § 401(a) (1982) (amended 1988) ("[A] notice of copyright shall be placedon all publicly distributed copies"). Sufficient notice requiredthree elements: a declaration of copyright such as the-14-

"©" symbol, the year of publication, and an identification of the copyright holder. Id. at § 401(b). It is undisputed that the drawings at issue here didnot satisfy these requirements. Although the 1976 Act added some provisions to cure or disregard the omission of notice at the time of publication, see id. at §§ 405-406, it is also undisputed that none of th em ap plies to this

case. See generally Donald Frederick Evans & Assocs. v. Cont'l Homes, Inc. , 785 F.2d 897, 905-12 (11th Cir. 1986) (analyzing curative provisions from 1976 Act). Congress re cogniz ed in 1976 that t he pen alties for publishing without notice might be unduly harsh. See H.R. Rep. No. 94-1476, at 143-44 (1976) [hereinafter

" House Report "] ("One of the strongest arguments f or rev ision of the pres ent s tatute has been the need to avoid the arbitrary and unjust forfeitures now resulting from unintentional or relatively unimportant omissions or errors in the copyright notice."). But it

was not un til p assage of the Berne Act that this requirement was eliminated.

Because it is clear that the drawings did not satisfy the applicable notice requirements, WCP's argument depends on whether there was a "publication" of the drawings so that notice was mandated. The statutory definition of publication reads in full:

"Publication" is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a gro up of persons for purposes of further distributio n , public performance, or public display, constitutes-15- publication. A public performance or display of a work does not of itself constitute publication. 17 U.S.C. § 101.

WCP points to several uses of the coven ant drawings to support its a rgum ent that they were published under this definition. The drawings were shown t o n eighborhood groups and town officials during the planning process. At the Town Meeting, they were displayed on ea sels and p rojected onto a screen. The Town Meeting was videotaped, and the tape was broadcast on local cable television and placed in the Winchester Public Library. The plans were filed with the Town as exh ibits to t he covenant, and couldbe copied from those files by anyone. In additio n, s ome drawings were later shared with Danielson's subcontractors.

The district court granted summary judgment against this defense by relying on an aspect of the doctrine of "limited pub lic ation." See Danielson , 186 F. Supp. 2d at 15-18. The statutory definition of publication q uoted above "in general constitutes a codification of the definition evolved by case law" before the 1976 Act. 1 M.B. Nimmer & D. Nimmer, Nimmer on Copyright § 4.04, at 4-20 (2001) [hereinafter " Nimmer "]. That case law includes judicially crafted exceptions for limited publication: restricteddistribution of the work that does not qualify as publication or trigger the notice requirement. Limited publication "occurs when tangible copies of the work are distributed, but to a limitedclass of persons and for a limited purpose." Burke v. NBC ,-16-

598 F.2d 688, 692 (1st Cir. 1979) (explaining and applying law before 1976 Act) (citing White v. Kimmel , 193 F.2d744, 746-47 (9th Cir. 1952)).

Numerous cases have applied the limited publication exception to the submission of architectural plans to municipal authorities for approval, either because the law require d th is submission for a limited purpose or because doing so did not constitute a distribution. See, e.g. , Codespoti & Assocs. v. Bartlett , 51 F. Supp. 2d 125, 128 (D. Conn. 1999); East/West Venture v. Wurmfeld Assocs. , 722 F. Supp. 1064, 1066 (S.D.N.Y. 1989); Edgar H. Wood Assocs. v. Skene , 197 N.E.2d 886, 893-94 (Mass. 1964) (common-law copyright); see also 1 Ni mmer , supra , § 4.10, at 4-52 (under 1976 Act, "placing a work in a public file . . . clearly does not constitute an act of publication"). But see CertifiedEng'g, Inc. v. First Fid. Bank , 849 F. Supp. 318, 323-24 (D.N.J. 1994) (drawings for subdivision published by submission to authorities, but holding made in context of denying preliminary injunction). Similarly, the circulation of plans to c ontr actors for purposes of working on th e project has been found a limited publication. See, e.g. , Kunycia v. Melville Realty Co. , 755 F. Supp. 566, 574 (S.D.N.Y. 1990).

At least some of the activities that WCP characterizes as publication are covered by these lim ited publication exceptions. For example, once the covenant was approved and submitted to the-17-

Town, state law required that the drawings be available as public records. See Mass. Gen. Laws ch. 66, § 10(a) (2001); Hull Mun. Lighting Plant v. Mass. Mun. Wholesale Elec. Co. , 609 N.E.2d 460, 463-64 (Mass. 1993) (broad definition of public records subject to disclosure). The exception also covers copies p rovi ded to Danielson's subcontractors or consultants, including Medford, for work on the project.

Nonetheless, other activities went beyond such limited groups and limited purposes. T he neighborhood meetings and the Town Meeting were open to the general public, and the broadcast and videotape of the Town Meeting could also be viewed by a broad group of people. The district court responded to this prob lem by erroneously extending the boundaries of the exception. It pointed out that this access to the plans was "helpful" in obtaining approval of the z oning chan ge, Danielson , 186 F. Supp. 2d at 16 n.2, and "in furtherance of the Town's obligation under state law to solicit input from the community and make findings regarding the desirability" of the project, id. at 17. However, the cases cited by the court concerned putative publications that were required by law or were otherwise made for narrow purposes. Extending the exception to everything that is "helpful" in lobbying for municipal approval of a zoning change, including dissemination to the general public, effectively removes the "limited" from limited publication.-18- Nevertheless, this court may affirm a dist rict court's grant of s ummary judgment on any basis that is manifest in the record. See Burns v. State Police Ass'n , 230 F.3d 8, 9 (1st Cir. 2000). Here, the district court's expansion of the limited publication doctrine was unnecessary to its result, because the record indicates that the remaining alleged publications were not coveredby the statuto ry d efinition. Rather, Danielson merely "displayed" the drawings within the meaning of the Act. The Copyright Act states outright, "Apublic performance or display of

a wo rk does not of itself constitute publication." 17 U .S.C. § 101. WCP's own submis sion of undisputed facts in support of summary judgment demonstrates that the uses of the drawings at the neighborhoodmeeting and the Town Meeting do not qualify as publications: In 1986 andearly 1987, the Covenant Drawings and

earlier versions thereof were shown to many individuals and groups by Danielson and Tellalian. They were shown to neighbors of the Site at several neighborhood meetings at which representatives of Tellalian and/or Danielson were present. They were shown to Farese as well. . . .

Numerous meetings were also held with the Town of Winchester Planning Board by representatives of Farese, Danielson, and Tellalian. Co pies of the Covenant Drawings and earlier versions thereof we re shown to Planning Board members. . . .

Four of the seven Covenant Drawings were shown to all prese nt [at the Town Meeting] on a large screen placed at the front of [the] meeting by D. Tellalian. . . . [The] drawings were also all placed in public view on easels in the lobby of the building.-19-

(Emphasis added). In addition, one of Danielson's architects said at his deposition that the plans were only shown, not distributed. When asked whether those in attendance at neighborhood meetings could have copied the drawings they were shown, he replied "No. .

. . They were in our possession. They would ha ve t o have permission to copy them."

At most, Danielson or Tellalian "showed" plans to others; that did not constitute publication under the explicit terms of the statute. "[A] sine qua non of publication should be the acquisition by members of the public of a possessory interest in tangible copies of the work in question." 1 Nimmer , supra , § 4.07, at 4-42. The broa dcas t of the Town Meeting on local cable television does not constitute publication under the definition in the 1976 Act either. The definition "makes plain that any for m [of] dissemination in which a material object does not change hands

-- performances or displays on television, for example -- is not a publication no matter how many people are exposed to the work." House Report at 138; see Burke , 598 F.2d at 693 ("Publication did not occur merely because the filmwas shown [on television] to the general public."); 1 P. Goldstein, Copyright § 3.3, at 3:31 (2d ed. 1996) (mere br oadc ast probably not publication, even if home videotaping would be possible).-20- That leaves the fact that the public library held a videotape of the meeting that patrons could borrow. After viewing

a copy of this video providedby WCP, we are not confident that the often unfocused image of a blurr y projecti on on a screen in the high school auditorium actually qualifies as a publication of the covenant drawings themselves. We put that factual question to one side, howeve r, bec ause of the absence of any evidence that Danielson or Tellalian knew that the tape of the Town Meeting would be loaned at the library, rather than merely broadcast on local cable television . P ublication requires the consent of the copyright owner. See 1 Nimm er , supr a , § 4.04, at 4-20 to 4-21 & n.8; Goldstein, supra , § 3.3.1, at 3:33 & nn. 19-20. While this condition is implici t in the publication definition, it is reiterated explicitly in the notice requirement. See 17 U.S.C. § 401(a) (requiring notice on works published "by auth ority of the copyright owner"). Unli ke the other actions alleged to be publication, WCP has not shown that this one was authorized by Danielson. On appeal, WCP also argues that the requirements of the definition of "publication" are fulfilled because it includes the "offering to distribute copies . . . to a group of persons for purposes of . . . public display." 17 U.S.C. § 101. According to this argument, Danielson offered the cov enant drawings to Farese andhis associates, and they in turn displayed them. The facts in-21-

the record do not support this interpretation either. Only

a rchitects working for Danielson or for Tellalian Asso ciate s displayedthe plans; there is no indication that Farese or his agents did so instead. Indeed, WCP's summary judgment submission notedthe plans were "shown to Farese," suggesting he may not even have possessed copies of them until later.

Congress has pro vid ed the courts with an explicit definition of publication in the 1976 Act that seeks to prevent much of the litigation andconfusion that hadpreviously surrounded the undefined te rm . The facts here allow us to apply that definition without venturing to create any new doctrine about the murky boundaries of limited publication. B. Covenant Drawings as "Laws"

WCP next argues that the covenant drawings, by virtue of their inclusion in the restrictive covenant approvedat th e Town Meeting, have become "laws" which are in the public domain and uncopyrightable.

It is well-established that judicial decisions and statutes are in the public domain. Bldg. Officials & Code Admin. Int'l, Inc. v. Code Tech., Inc. (" BOCA "), 628 F.2d 730, 733-34 (1st Cir. 1980) (reviewing case law); see Banks v. Manchester , 128 U.S. 244 (1888) (judicial opinions are in publ ic domain); Wheaton v. Peters , 33 U.S. 591 (1834) (judicial opinions are not copyrightable). This straightforward gen er al rule has proven-22-

difficult to apply when the material in question does not fall neatly into the categories of statutes or judicial opinions. A

nu mber of appellate courts have reached arguably inconsistent results in such cases. See Veeck v. S. Bldg. Code Cong. Int'l, I nc. , 293 F.3d 791, 793 (5th Cir. 2002) (en banc) (model code enters public domain when legislatively adopted as law of a jurisdiction), petition for cert. filed , Sep t. 4, 2002 (No. 02- 355); Practice Mgmt. Info. Corp. v. Am. Med. Ass'n , 121 F.3d 516, 518-20 (9th Cir. 1997) (incorporation of classification system for medica l pr ocedures in Medicare and Medicaid regulations does not make them uncopyrightable); CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc. , 44 F.3d 61, 73-74 (2d Cir. 1994) (inco r poration of used-car valuations in insurance statutes and regulations does not make them uncopyrightable).

The First Circuit faced such a question when it vacated

a prelimin ary injunction against printing state regulations; the regulations incorporated material written by a private party, which was purportedly copyrighted and licensed to the state. BOCA , 628 F.2d at 736. While the court leaned strongly toward a conclusion that the copyright was invalid, it emphasized just as strongly that it declined to reach a definitive conclusion. Id. BOCAdid not resolve the issue and this court has not done so since.

WCP cites BOCAand urges us to adopt the rule suggested there and apply it to the covenant drawings. The district court,-23-

after noting that BO CA was not binding on it, Danielson , 186 F. Supp. 2d at 21, adopted the opposite rule. Id. at 23 ("[O]therwise copyrightable works . . . do not lose copyright protection when they are adoptedby government bodies or incorporated by reference into public enactments."). We reject both courses of action. We do not need to cons ider the b road question we reserved in BOCA , because the facts here do not present it.

The restrictive covenant is distinct from the zoning law. The Town Meeting debated and voted on two different mea sures concerning the site, which had two different effects. The first

v ote changed the zoning law so that the site was zoned f o r residential development. We need not consider here whether or not the zoning law is within the public domain, such that any potential intellectual property rights t o it s content would be overridden, because that law simply sets parameters for the development permissible in different zon es, and designates the site as belonging to a particular zone. See generally18A D.A. Randall & D.E. Franklin, Massachusetts Practice: Municipal Law & Practice , chs. 17-18 (4th ed. 1993).

The second vote at the Town Meeting approved the restrictive covenant, which is nothing more than an agreement between the Town of Winchester and Farese (and his successors in

own ers hip) concerning the site. A restrictive covenant is "[a] private agreement, usu[ally] in a deed or lease, that restricts the-24-

use or occupancy of real property." Black's Law Dictionary 371 (7th ed. 1999) (emphasis added); see Randall & Franklin, supra , § 570, at 18 (change in overall zoning law does not remove conditions of covenant recorded in deed for particular land). The restrictive covenant in this case displays the hallmarks of a private contract. It notes consideration given to Farese and his co-trustee by the Town and includes notarized signatures of bo th the trustees and Town officials. It is this document which incorporates, by reference, the seven drawings that Danielson provided to Farese.

Farese could just as easily have enter ed i nto an agreement with the site's neighbors to limit development; its embodiment in a restrictive covenant, recorded as part of the deed, wouldnot convert such a private contract or easement into a "law" andthrust it into the public domain. It wouldnot bind the public at large, but only the parties and their successors in interest. The fact that the Town was a party to the restrictive covenant here does not change the analysis.

WCP argues that the Planning Board and Town Meeting changedthe zoning only because they knew the covenant would be enforced, and that adoption of the two "in tandem" makes them part of the same "legislative scheme." The logical extension of this argument, however, is that any undertakings on which lawmakers rely in passing a statute would become part of the "legislative scheme" andthe public domain. If F arese and the neighbors had entered-25-

into a private covenant, and the Planning Board and Town Meeting changed the zoning only because they knew of this contract and it satisfiedtheir concerns about the site, there would be no argument that the covenant was thereby part of the public domain. Similarly, references to the covenant drawings or their features in the Planning Board's decision and speeches at the Town Meeting do not thrust the drawings themselves into the public domain, any more than quoting a poem on the Senate floor would stri p th e poet's copyright. There are compelling arguments on both sides of the question we reserved in BOCA . They implicate the proper scope of the public domain and the best means to enc our age private involvement and expertise in lawmaking. But contracts enteredinto by government entities do not raise these weighty issues, and we neednot resolve the question we left open in BOCAin order to rule

on this case. Because the covenant drawings were not incorporated into any generally applicable laws, we affirmthe district court's grant of summary judgment against this defense. C. Implied License

Usually transfers of copyright must be made in writing, 17 U.S.C. § 204(a), but this requirement does not apply to nonexclusive licenses where ownership of the copyright is not transferred, see id. at § 101. A copyright owner may grant such nonexclusive licenses orally, or they may be implied from conduct-26-

which indicates the owner's intent to allow a licensee to use the work. See Data Gen. Corp. v. Grumman Sys. Support Corp. , 36 F.3d 1147, 1167 n.35 (1st Cir. 1994); 3 Nimmer , supra , § 10.03(A)(7), at 10-42. Uses of the copyrighted work that stay within the scope of

a nonexclusive license are immunized from infringement suits. See Grahamv. James , 144 F.3d 229, 236 (2d Cir. 1998).

The burden of proving the existence of such a license is

on the party claiming its protection, the licensee. Bourne v. Walt Disney Co. , 68 F.3d 621, 631 (2d Cir. 1995). Implied licenses are foundonly in narrow circumstances. See SmithKline Beecham Consumer Healthcare, L.P. v. Watson Pharms., Inc. , 211 F.3d 21, 25 (2dCir. 2000) (citing Effects Assocs., Inc. v. Cohen , 908 F.2d 555, 558 (9th Cir. 1990)). WCP argues that it has met this burden and shown that Danielson granted a nonexclusive license to future

owners of the site to use the disputed drawings. It did so, argues WCP, by permitting the incorporation of the covenant drawings in a restrictive covenant running with the land.

At least four other circuits have resolved cases in which

an architect sued for copyright infringement andthe defendant answeredthat it had a nonexclusive license to use the architect's plans. See Nelson-Salabes, Inc. v. Morningside Dev., LLC , 284 F.3d 505, 514-16 (4th Cir. 2002); Foad Consulting Group v. Musil Govan Azzalino , 270 F.3d 821, 828-32 (9th Cir. 2001); Johnson v. Jones , 149 F.3d 494, 500-02 (6th Cir. 1998); I.A.E., Inc. v. Shav er , 7 46 FoadCo ns ulting bases its very similar framework on

principles of California contract law, because it holds that state law governedthe interpretation of the contract there. 270 F.3d at 826-28. The author of Effects Associates , writi ng s eparately, cr iticizes this rationale. Id. at 832-34 (Kozinski, J. , concurring). The circumstances of that case are different from the one at hand, and we need not delve into this aspect of the analysis. -27- F.3d768, 775-76 (7th Cir. 1996). These cases reached different results on their individual facts: Foad Consulting and I.A.E. foundlicenses while Nelson-Salabes and Johnson did not. But they all applied a similar analytical framework, and we will follow their lead.

The touchstone for finding an impliedlicense, according to this framework, is intent. See Nelson-Salabes , 284 F.3d at 515 (calling intent "determinative question"); Johnson , 149 F.3d at 502 ("Without intent, there can be no implied license."); see also Data Gen. , 36 F.3d at 1167 n.35 (license is found from copyright owner's gra nt of "permission to use"). Two of the cases begin their analysis with a three-part test originally derived from Effects Associat es , 90 8 F.2d at 558-59, which requires that the licensee request the creation of the work, the licensor create and deliver the work, and the licensor intend that the licensee distribute the work. See Nelson-Salabes , 284 F.3d at 514-15; I.A.E. , 74 F.3d at 776. 6 But they quickly pass over the "request" and "d eliv ery" issues to focus on manifestations of the architects' i ntent that plans may be used on a project without their inv olve ment. See-28-

Nelson-Salabes , 284 F.3d at 515; Johnson , 149 F.3d at 501; I.A.E. , 74 F.3d at 776. We will do the same here, while noting that it was actual ly Farese, not WCP, who requested the work and received delivery of it.

The most recent of the four cases distilled its predecessors to yield this succinct summary:

Our analysis of these decisions . . . suggests that the existence of an implied nonexclusive lic ense in a particular situation turns on at least three factors: (1) whether the parties were engaged in a short-term discrete transaction as opposed to an ong oing relationship; (2) whether the creator utilized written contracts, such as the standard AIA contract, providing that copyrighted materials could only be u sed with the creator's future involvement or express p ermi ssion; and (3) whether the creator's conduct during the creation or delivery of the copyrighted material indicated that use of the material without the creator's involvement or consent was permissible.

Nelson-Salabes , 284 F.3d at 516. This is not an exhaustive list of factors to consider, but it provides useful guidance in determining the crucial question of intent.

Here, the first two conside rati ons point away from a license, because they both suggest Danielson's intent to remain involvedin the job. Danielson was in a long-term relationship with Farese working on development of the site, not a one-time arrangement, unlike the architects in I.A.E. and Foad Consulting . See Nelson-Salabes , 284 F.3d at 516 (comparing cases). This intent was also manifested by the standard AIA contract signed by Farese andDanielson, which specifically provided that plans "shall not be7 Farese had previously paid Danielson for services

renderedthrough June 5, 1987. Activity from that date until July 3, including completion of the covenant drawings on June 11, was billedin the first invoice under the contract, dated July 15, 1987. The contract describes the sche mat ic design phase, which amountedto 15 percent of the contract price, as including site plans like the covenant drawings. -29- used. . . for other projects, for additions to this Project, or for completion of this Project by others . . . except by agreement in writing and with appropriate compensation." See Nelson-Salabes , 284 F.3d at 516 (architect asked client to sign AIA contract); Johnson , 149 F.3d at 500 (sam e). While this contract was signed after the date on the covenant drawings, Danielson says that the contract retroactively included the work done on those drawings as part of its schematic design phase. 7 In any event, we are looking to the contract for evidence about overall intent, not for an interpretation of its binding terms -- WCP was not a party to the contract. See Foad Consulting , 270 F.3d at 834 (Kozinski, J., concurring) (noting that contract can be evidence of a relationship giving rise to implied copyright license, even if the license is not derived from the contract itself); Johnson , 149 F.3d at 500 (using unsigned contract as evidence of intent). That evi dence strongly suggests that Danielson granted no permission to others to use the plans.

To evaluate the third, more general consideration, these

cases also look to whether the supposed infringer obtained the plans directly fro m the supposed licensor, which would suggest-30-

permissi on to use them. See, e.g. , Johnson , 149 F.3d at 501 ; I.A.E. , 74 F.3d at 777. WCP got its copies of the plans from the foreclosure sale and from Medford, not from Danielson. See Danielson , 186 F. Supp. 2d at 20.

Danielson's acquiescence to the use of its plans as the basis for the covenant may indeed point in the other direction, as WCP argues. It could be seen as evidence that others were allowed to use the plans, although it is also possible that Danielson never contemplatedthe risk that Farese would fail to comp let e the development himself. Whatever its import, we do not think this one fact outweighs all the other indic ations that no implied license

was intended. See Nelson-Salabes , 28 4 F.3d at 516 (weighing factors pointing in both directions andconcluding that no license

was granted). Furthermore, giving undue weight to the filing of plans with the local government could vitiate our earlier holding, andthe majority position among courts, that such filing alone does not undermine the copyright.

WCP also argues that intent of the grantor is the wrong standard for determining the existence of an implied nonexclusive license. This argument misunderst ands t he intent benchmark as a subjective inquiry into the mind of the putative licensor. Rather, it is an objective inquiry into facts that manifest such contractual intent. See I.A.E. , 74 F.3d at 777 (Relevant intent "is not the parties' subjective intent but the ir outward-31-

manifestation of it" ). This i s a typical task in contract law. See, e.g. , 1 E.A. Farnsworth, Farnsworth on Contracts § 3.13 (2d ed. 1998) (inferring contractual acceptance from conduct); id. at § 8.5 (inferring waiver of condition from conduct). If an architect worked on a short-term assignment with no outward signs of expecting to continue involvement with the larger project, and handed over the requested plans to a client without a contract or other limitations, it would not matter if he or she harbored private hopes of working on the next phase of the project. See I.A.E. , 74 F.3d at 777. But that is not what happened here.

Finally, WCP's suggestion that the appropriate standard is the effect of the architect's behavior on the subjective perception of the supposed licensee has no basis. It conflates the affirmative defense of implied license with the affirmative defense of estoppel, which we consider below. And the argum ent t hat our refusal to find a license would restrain alienation is misplaced; it is the covenant itself, not Danielson's copyright, that encumberedthe site, and WCP does not challenge the validity of the covenant. D. Merger It is axiomatic that, while "[n]o author may copyrig h t his ideas or t he fa cts he narrates," an author may copyright the expression of those ideas. Harper & Row Publishers, Inc. v. Nation Enters. , 471 U.S. 539, 556 (1985); see 17 U.S.C. § 102(b).-32-

Sometimes, however, an idea can be expressed in so few ways that it "merges" with its expression, and the expression become uncopyrightable.

When the uncopyrightable subject matter is very narrow, so that the topic necessarily requires, if not only one form of expression, at best only a limited number . . . the subject matter would be appropr iate d by permitting the copyrighting of its expression. We cannot recognize copyright as a game of chess in which the public can be checkmated. Morrisseyv. Procter & Gamble Co. , 379 F.2d 675, 678-79 (1st Cir. 1967) (internal quotations and c itations omitted); see Concrete Mach. Co. v. Classic Lawn Ornaments Inc. , 843 F.2d 600, 606-07 (1st Cir. 1988). For example, we have held that this doctrine of merger foreclosedcopyright on rules for a sweepstakes contest which could be effectively communicated using only a limited number of verbal formulations, Morrissey , 379 F.2d at 679, and on pictures of fruits andflowers used on labels to indicate the scent of candles, Yankee Candle Co. v. Bri dgewater C andle Co. , 259 F.3d 25, 35 (1st Cir. 2001). WCP argues that the restrictive covenant means there is only one way to build on the land, and that the covenant drawings merge with that idea. This contention distorts the purpose of the merger doctrine. The doctrine aims to prevent the monopolization of facts or id eas t hat are present in nature; where ownership of the expression would remove such facts or ideas from the public domain, the doctrine disallows copyright. See Yankee Candle , 259-33-

F.3dat 36 ("In general, the merger doctrine is most applicable where the idea and the expression are of items found in nature, or

are found commonly in everyday life.") . Here, the restrictive covenant made one method of developing the site legally easier and cheaper than others, but it did not transform the covenant drawings into the only physically possible means to express ideas for such development. WCP's pursuit of several alternative designs demonstrates the availabil ity of alternatives here -- as does an expert report proffered by WCP on damages issues, wherein WCP's expert says an appropriate layout for the site "can be achievedin many different ways."

WCP relies on Kern River Gas Transmission Co. v. Coastal Corp. , 899 F.2d 1458 (5th Cir 1990), to support its position. In that case, regulators had given environmental approval to a proposed1,000 mile route for a gas pipeline. The company that had plottedth e ro ute claimed copyright over documents depicting it; these were merely publicly available maps on which the company had addeda line tracing the route. The court denied copyright protection b ased on merger. In WCP's view, Kern River based its merger finding on the fact that regulatory approval li mit ed the available options for building a pipeline, and the map merged with the "idea" of an approved route. If that were the only reasoning in the case, we are not sure the deci sion would be correct. However, we think the regulatory approval was, at most, a secondary-34-

consideration; merger applied, more simpl y, because the map markings were "the only effective way to conv ey the ide a of the proposedlocation of a pipeline." Id. at 1464. Even if there had be en no regulatory decision in the case, it should have come out the same way, because the underlying idea was no more than a linked series of geographical points found in nature, and a line on a map the only practical method to express that idea. The covenant drawings, in contrast, express just one of many possible detailed andcomplex visions for developing the site. Kern River is inapposite. E. Estoppel and Waiver

WCP argues that Danielson is estop ped f rom an infringement action because it participated in the three 1994 meetings where WCP displayed s ome of the drawings and indicated that it might pursue a similar plan for the site. Principles of equitable estoppel from other areas of the law apply to copyright actions. See Hampton v. Paramount Pictures Corp. , 279 F.2d 100, 104 (9th Cir. 1960); Cherry River Music Co. v. Simitar Entm't, Inc. , 38 F. Supp. 2d 310, 318 (S.D.N.Y. 1999). The district court grante d j udgment as a matter of law against this affirmative defense at the close of evidence at the trial, because it found the evidence insufficient to give the issue to the jury.

The first element required to show estoppel is that the pl aint iff knew of the defendant's potential infringement. See-35-

Pluml ey v. S. Container, Inc. , 303 F.3d 364, 374 (1st Cir. 2002) (party to be estoppedmust "know the facts"); Hampton , 279 F.2d at 104 (same, applied to copyri ght ) . Danielson argues that the

me etings established only that WCP possessed copies of the plans andconsidered possibly using them. WCP appeared more enthusiastic about other alterna tiv es, however, and pursued them for a year. Indeed, a WCP employee who attended the meetings testified at trial that WCP expressed serious reservations about the economic viability of the condominium concept, given the changes in the market in the seven years since Farese had suspendedconstruction. Moreover, there was no indication at these exploratory meetings that WCP would proceed with the Farese plan wi thout Danielson's participation. When WCP reversed course and began working from the disputeddrawings, it informedTella lian of this fact, but never Danielson. In A ugu st 1997, when Danielson learned of actual infringement, it acted promptly to assert its claim.

We agree with the district court that the evidence about these meetings did not establish the type of knowledge necessary to estop Daniel son f rom pursuing its claim. We also note that this conclusion is consistent with the jury's subsequent verdict on the statute of limitations defense, which ne cessar ily involved a rejection of the claim that Danielson knew or should have known of infringing activity before May 1997. Cf. Heinrich v. Sweet , 308 F.3d 48, 69 (1st Cir. 2002) (looking to necessary implications of-36-

jury verdict on one issue as support for conclusions on a different but related issue).

WCP advances an arguably distinct waiver defense based on the same arguments. A waiver must be voluntary and knowing, however. See Med. Air Tech. Corp. v. Marwan Inv., Inc. , 303 F.3d 11, 19 & n.4 (1st Cir. 2002). S ince t he facts do not support knowledge sufficient for estoppel, waiv er is a fortiori unsupportable. III. Unfair Competition Claims

Danielson appeals the summary judgment ruling against its claimof unfair and deceptive trade practices under Mass. Gen. Laws ch. 93A, and the post-trial judgment as a matter of law against it on the Lanham Act false designation of origin claim. A. Preemption of Chapter 93A Claim

Federal copyright law preempts right s under state law when they are the equivalent of those granted under the Copyright Act. 1 7 U.S.C. § 301(a). The district court granted summary judgment against Danielson's chapter 93A claim, finding it preemptedby this provision. Danielson , 186 F. Supp. 2d at 29. As notedearlier, we review summary judgment de novo. See Segrets , 207 F.3d at 61.

WCP first invoked preemption as an affirmative defense in its answer to Danielson's com pla int. Danielson essentially concededin its briefs to us that it advanced only cursory lega l8 Danielson attempts to augment its arguments on appeal by

alleging that the element of "rascality" in a chapter 93A claim adds enough to escape preemption. Normally, we will not entertain an argument on appeal of summary judgment that was not raised before the district court. See Ortiz v. Gaston County Dyeing Mach. Co. , 277 F.3d 594, 597 (1st Cir. 2002). In any event, a label such as "rascality" is a dubious basis for the extra element required to survive preemption. See Data Gen. , 36 F.3d at 1165 (citing Mayer v. Josiah Wedgwood & Sons, Ltd. , 601 F. Supp. 1523, 1535 (S.D.N.Y. 1985)).

-37- arguments against preemption at the time of summary judgment. The behavior on which Danielson based its state-law claim is the same behavior that Danielson alleged gave rise to copyright liability. The state claim is therefore preempted. See Data Gen. , 36 F.3d at 1164-65. 8 B. Lanham Act

The district court ruled post-verdict against Danielson's LanhamAct false designati on of origin claim because the damages foundby the jury when it found liability on the claim were too speculative. On appeal, Danielson argues that the removal of its logo from the infringed drawings violated the Lanham Act, and that its contract with Farese provided a basis for the jury to reach the $120,000 figure. In response, WCP argues not only that the amount of damages was unproven, but that Danielson failed to demonstrate any cognizable harm at all. It also argues that other showing s9 Danielson argues that WCP has waived these arguments by

failing to discuss them in its opening brief to us. But these are cross-appeals, and WCP was the prevailing party on the Lanham Act issue before the district court. The onus is not on WCP to seek to have its victory re-examined on the grounds that the district court awardedit on too narrow a basis. Rather Danielson, in its capacity as cross-appellant, challengedthe district court ruling. WCP then replied, having attacked the Lanham Act claim under Rule 50 both during and after trial.-38- requiredby the Lanham Act were inadequate, including the involvement of interstate commerce. 9

Section 43(a) of the Lanham Act creates a federal cause of action for any person "who believes that he or she is likely to be damaged" by "any false designation of origin" used "in commerce" which "is likely to cause con fusion, or to cause mistake, or to deceive." 15 U.S.C. § 1125(a) (2000). A typical scenario involves "passing off," where a defendant sells its own goods or services while falsely representing that they come from the plaintiff; this claimis a "close cousin" of other trademark infringement actions, except that it is available to those with unregistered marks. See PHC, Inc. v. Pioneer Healthcare, Inc. , 75 F .3d 75, 78 (1st Cir. 1996). Danielson's claim is closer to so-called "reverse passing off," where the defendant falsely attribut es the plaintiff's product to itself or a third party. See Waldman Publ'g Corp. v. Landoll, Inc. , 43 F.3d 775, 780-81 (2 d Cir. 19 94). The First Circuit has not recognized this claim under section 43(a) of the LanhamAct, although other courts have done so. See, e.g. , id. ; Smith v. Montoro , 648 F.2d 602, 605 -07 (9th Cir. 1981). See-39-

generally J.T. Cross, Giving Credit Where Credit is Due , 72 Wash. L. Rev. 709, 716-19 & n.46 (1997) (collecting cases and tracing history); id. at 736-42 (criticizing recognition of reverse passing off claims under section 43(a)). We will not decide here whether

we re cognize such a claim, but will assume for purposes o f thi s appeal that we would do so.

Danielson's ar gument s on the Lanham Act before the district court, and indeed the jury, were frequently cursory. At summary judgment, the district cou rt said that it would refrain fromentering judgment on the Lanham Act claim because "the parties have not adequately briefed the issue, and ought [to] be given an opportunity further to hone their arguments at trial." Danielson , 186 F. Supp. 2d at 27. But Danielson did little honing at trial; for example, it did not mention the claim in its closing argument to the jury (although WCP did).

For the most part, the argument that was made suggested that Danielson had been damaged by the alleged Lanham Act violation beca use it los t the contract value of the drawings as a result. But there is an insuperable causation problem with that argument. Danielson has insisted in other contexts that the only possible use for the infringed drawings was in connection with the site. Surely the reason that WCP did not hire Danielson for the job, or buy out the Farese contract, was not that it was deceived by the misattribution. We do not see how the mi screant a nd the only-40-

potential lost customer can be one and the same; WCP would need to have confused itself. False designation of origin did not cause this harm. Danielson notes that others who came in contact with the drawings would have been misled about its origins as well. Since exposure to subcontractors, planning officials, and the like would be good for business, one might expect that Danielson lost an opportunity to enhance its professional reputation. See Johnson , 149 F.3d at 502 (reverse passing off found where defendant replaced plaintiff's logo with its own on architectural drawings and circulated them), quoted in Danielson , 186 F. Supp. 2d at 27; cf. Attia v. Soc'y of N.Y. Hosp. , 201 F.3d 50, 58-60 (2d Cir. 1999) (considering similar claim and rejecting it because plan at issue was too general to be protectable). Here, however, Danielson did nothing whatsoever at trial to show how the misattri bution might have cost it other potential work. We see no evidence in the record that Danielson even operated outside Massachusetts at this time, in order to establish the necessary interstate commerce nexus for the market in which business was allegedly lost. Cf. Johnson , 149 F.3d at 502 (record established that plaintiff was licensed in three states and did work in all of them). Danielson also admitted at trial that, in i ts diminished capacity in the 1990s, the firm

was no longer able to do a job of the type or scale of the Willows at Winchester. Thus a developer of a sim ilar proj ect who saw-41-

Danielson's logo on the drawings and considered hiring it would have been unable to do so anyway.

Perhaps the meager showings of commerce and harm that Danielson did offer might have been enough to justify nonmonetary relief in a different case. See Cashmere & Camel Hair Mfrs. Inst.

v. Saks Fifth Ave. , 284 F.3d 302, 311 (1st Cir. 2002) (under Lanham Act, "a plaintiff seeking damages must show actual harm to its business"); Web Printing C ontrol s Co. v. Oxy-Dry Corp. , 906 F.2d 1202, 1204 (7th Cir. 1990) (reversing dismissal of c lai m for failure to show harm when injunctive relief was requested). Here, however, Danielson claimed only money damages and failed to carry its burden of proof. On the facts of record in this case we therefore affirm the dismissal of the claim. As a result, we also affirmthe denial of attorneys' fees, because Danielson was not the "prevailing party" as required by the statute. 15 U.S.C. § 1117(a). IV. Damages

WCP appeals fromthe jury instructions on damages, while Danielso n appeals the district court's reduction of copyright damages and denial of prejudgment interest. A. Infringer's Profits

The principal damages in this case, on which the parties focus the most attention, are profit s fr om selling condominium uni ts in the Willows at Winchester. Damages for copyr igh t10 If the district court was correct that the jury's

copyright dama ges included $120,000 of actual damages , then it appears that the jury deducted the full amount for real estate commissions and did no apportionment at all. -42- infringement include "any profits of the infringer that are attributable to the infringement." 17 U.S.C. § 504(b). The copyright owner needs only to present evidence of the infringer's gross revenues; the burden is th en on the defendant to show how much of its revenues are profits, and what "elements of profit [are] attributable to factors other than the copyrighted work." Id. In this case, stipulations by the parties settled many of these issues. The parties agreedthat the gross revenues from the sale of all 70 condominium units totaled $19,867,684. They also stipulatedthat WCP incurred at least $18,136,667 in deductible expenses. They disagreed about whether an additional amount of up to $386,067 for commissions to real estate brokers was also deductible, a question of fact that was left to the jury and is not directly before us on appeal. Therefore, depending on the outcome of that dispute, the total pool of profi ts f rom which the jury couldcalculate damages was between $1,344,950 and $1,731,017. The jury awarded Danielson $1,464,950. This figure suggests that the jury apportioned, at most, a negligible amount of the profits and award ed all or almost all of WCP's profits to Danielson. 10 WCP-43-

argues that some apportionment is required by law, and that faulty instructions led the jury not to do the necessary apportionment.

The caselaw is clear on this point: there must be a rational apportionment of profits. The division of profits between those portions attributable to the infringement and those attributab le to other sources does not require "mathematical exactness." Abendv. MCA, Inc. , 863 F.2d 1465, 1480 (9th Cir. 1988) (apportionment requi red where film "Rear Window" infringed underlying short story, but also earned profit fromreputations and creative contributions of many others, including Grace Kelly, James Stewart, and Alfred Hitchcock). The Supreme Court held in 1940 that a "reasonable approximation" w as eno ugh if it allowed "a rational separation of the net profits so that neither party may have what rightfully belongs to the other." Sheldon v. MetroGoldwyn Pictures Corp. , 309 U.S. 390, 404 (194 0) (internal quotations omitted) (requiring apportionment where movie infringed parts of play, but added other content, as well as costumes, scenery, and the like).

In Data General , this court found so me ap portionment requiredas a matter of law because the defendant showed that, apart from its in fringing activity, customers purchased its services for reasons such as the price, quality, and breadth of its service. 36 F.3 d at 1174, 1177. We agree with WCP that Data General controls this case. See also Bruce v. Weekly World News,-44-

Inc. , 310 F.3d 25, 31-32 (1st Cir. 2002) (50-50 apportionment of profits from sales of T-shirts featuring infringed"generic" photo of President Clinton shaking hands, retouched to depict him greeting an alien); Sygma Photo News, Inc. v. High Soc'y Magazine, Inc. , 778 F.2d 89, 96 (2d Cir. 1985) (reducing district court's apportionment of profits for infringing photo of Raq uel Welch on

cove r of " Celebrity Skin" magazine because of failure to account for cover's list of other celebrities picturedinside); Frank Music Corp. v. Metro-Goldwyn-Mayer, I nc. , 772 F.2d 505, 518 (9th Cir. 1985) (one percent apportionment for infringing use of songs in Las Vegas revue was clear error becaus e evidence indicated the songs were more important to the revue's success); ABKCO Music, Inc. v. Harrison gs Mus ic, Ltd. , 508 F. Supp. 798, 801-02 (S.D.N.Y. 1981) (apportioning song's profits between infringing melody, noninfringing lyrics, and fame and appeal of s inger George Harrison). At trial, WCP presented evidence concerning many contributing factors that helped the Willows at Winchester turn a profit besides Danielson's skeletal site plans. It pointed to five volumes of sub seque nt and more detailed architectural drawings necessary to complete the project. Other evidence conce rned t he extensive efforts WCP made to coordinate l ogistics, supervise subcontractors, choose and install v ario us amenities, market the development, and sell the condominium units. WCP also argued that11 On appeal, Danielson challenges the district court's

decision to allow these experts to testify at trial. We review for abuse of discretion. See Kumh o Tire Co. v. Carmichael , 526 U.S. 137, 152 (1999). We find no such abuse; Barsky and Hawkes are both experiencedprofessionals with relevant expertise. Meanwhile, WCP appeals the district court's decision to exclude certain parts of the testim ony it wanted to elicit from Hawkes, especially her estimate that the contribution of a site plan to a condominium project is no more than 10-15 percent of its total appeal. Given the lack of foundation offered for this particular number, we think the district court was within its discretion to limit Hawkes's testimony in this manner. At a second trial, if one is required, see infra Part IV.C, WCP might do a better job of establishing the basis for this opinion, or might offer other experts or evidence to support it. More importantly , whe n the jury is given the proper standardrather than instructed to look for mathematical exactness, it will be less important for WCP to produce a prec ise n umerical figure. -45- aspects of Danielson's site plans, such as the placement of garages andparking areas, actually might have detracted from the development's appeal. WCP supported many of these contentions with testimony from two experts: David Barsky, an architect, and Sue Hawkes, a condominium marketing consultant. 11

"[T]he defendant may show that the existence and amount of its profits are not the natural and probable consequences of the infringement alone, but are also the result of other factors which eit her ad d intrinsic value to the product or have independent promotional value." Data Gen. , 36 F.3d at 1175. Where such a showing is made, apportionment is required. Id. at 1177; Cream Records, Inc. v. Jos. Schlitz Brewing Co. , 754 F.2d 826, 828 (9th Cir. 1985) ("[W]here it is clear . . . that not all of the profits

are attributable to the infringing material, the copyright owner is-46-

not entitled to recover all of those profits merely because the infringer fail s to establish with certainty the portion attributable to the non-infringing elem ents."); Orgel v. Clark Boardman Co. , 301 F.2d 119, 121 (2d Cir. 1962) ("[W]here an infringer's profits are not entirely due to the infringement, and the evidence suggests some division which may rationally be used as

a springboard it is the duty of the court to make some apportionment."). Many of the noninfringing elements that triggeredapportionment in the cases we have cited here -- such as the popularity of a celebrity, the quality of a finished product,

or marketing efforts -- were inchoate. We hold that WCP has likewise made enough of a showing to require some apportionment as a matter of law. See Data Gen. , 36 F.3d at 1177.

WCP argues that the district court's instructions to the jury foreordained it s refusal to apportion, because they erroneously stated an extremely high standa rd to show that an element of profit was not attributable to the infringement. We overturn a jury instruction only if it prejudices a party's substantial rights because it mi sleads the jury or misstates or unduly complicates the correct legal st andard . See Faigin v. Kelly , 184 F.3d 67, 87 (1st Cir. 1999). Th e instructions on apportionment did all three.

WCP proposed jury instructions that reflected the precedents reasonably accurately. Parties are entitled to jury-47-

instructions that reflect the correct legal standards, but not, of course, the exact phrasing they desire. See Luson Int'l Distribs., Inc. v. Fabricating & Prod. Mach., Inc. , 966 F.2d 9, 13 (1st Cir. 1992). Here, however, the district court's instructions on apportionment were misleading and inconsistent with the applicable law: [WCP argues it is] entitled to apportion those net

revenues, and if there are portions of those revenues which were earned completely free of what the site plan drawings which were infringedwer e used for, then they shouldn't have to pay those net revenues ove r to Danielson. . . . [This portion] had nothing to do with the infringement.

Well, they say that. The [WCP] folks have to prove that, and again by a fair preponderance of the evi dence. So you consider things. Were the de sig n features wholly separate from the site plan drawings[?] Was there a marketing plan wholly separat e[?] You con sider those aspects, but they have to be whol l y separate. WCP objected at the end of the instructions: "[W]hen you definedthe burden on apportionment of damages, twice you used the phrase that the app ortionment has to be 'wholly separate,' 'completely free.' . . . That's an overstatement of what we have to show in the case." We could put it no better ourselves. These instructions required mathematical exactness and complete separability to all ow apportionment, but the law imposes no such requirements. In objecting, WCP also referred the court to several

cases that supported it s posi tion and were contrary to the instructions, including ABKCO Musicand Sygma News . The trial judge interrupted, saying "I'm satisfied with the charge."-48- The jury, apparently, was less satisfied. After several hours of deliberation, it sent a note t o the judge asking for clarification:

Trying to understand apportionment. Author writes story. Movie studio infringes story and turns it into a movie. Movie makes a hundred million profit . O bviously there were many added aspects to make movie. Does author recover a hundred million since story underlies the whole [movie]? There is [sic] clear creative contributions by many others. Can this have an impact on the award? We needmore understanding of the law of apportionment with respect to copyright infringement. The court responded with a further charge that largely reiterated its prior one:

In order to prove apportionment [WCP] has to prove by a fair preponderance of t he e vidence that some aspect or aspects of the net revenues are the result of something other than the copyright infringement. If it's all intertwined and there can be no separately identifiable amount, and to give your example, the authors, the book authors underlies [sic] the entire movie, then there's no apportionment. But if there is a portion of those net r evenues, net profits, which are apart from, separate from, identifiably separate from the copyright infringement, and [WCP] has proved that by a fair preponderance of the evidence, then it's only fair that that be apportioned out because that part of it was not permitted, was not enhancedor allowed or undergirdedby the copyri ght i nfringement. . . . If you are going to apportion you see if [WCP] has identified a separable amount, and then you deduct that amount or that portion and the Danielson folks get the remainder.

T he judge's response to the jury's hypothetical was inconsistent with two leading cases pres en ting similar facts, Sheldon , 309 U.S. at 404, and Abend , 863 F.2d at 1478-80. Otherwise, the second charge merely echoed the court's original12 Danielson argues that WCP waived this issue by failing to

object again to the reiterated instruction. Given that WCP offered an instruction on apportionment, objected to the original charge, andraised this issue again in its po st-ve rdict motion for a new trial, we will cons ider it pr eserved for appeal. Even if there were waiver, it would simply limit our review to clear error, and that standard would be satisfied here.

13 We are unpersuaded by Danielson's argument that apportionment is not appropriate because the entire development was "intertwined" with the infringedsite plans. Danielson cites only one case to us in support of this notion, Business Trends Analysts, Inc. v. Freedonia Group , 700 F. Supp. 1213, 1241 (S.D.N.Y. 1988), aff'd887 F.2d 399 (2d Cir . 1989 ). That case is simply inapplicable: the court there found the record "absolutely bereft of any proof" from defendants on apportionment. Id. Its reference to intertwining referred to the lack of any evidence that would "sensibly and responsibly extricate the gold from the dross." Id. In contrast, the evidence in the case before us allows a sensible and responsible apportionment.

14 This finding obviates the need for us to consider s eparately WCP's appeal of the denial of its motion for a ne w trial, which was predicated on damages issues; our holding has the same effect. -49- error, albeit without some of the intensifying adverbs, and it did nothing to undo the damage. 12 WCP did not need to prove that it s noninfringing contributions to the development were "wholly separate" from Danielson's plans, as the first instruction repeatedly said. It is also wrong to state, as did the second instruction, that apportionment is unavailable where the fina l prod uct wa s "enhanced or allowed or undergirded by the copyright infringement." 13

In light of these erroneous instructions on apportionment, we must vacate the copyright damages. 14 See Data Gen. , 36 F.3d at 1177 (citing Allen v. Chance Mfg. Co. , 873 F.2d-50-

465, 470 (1st Cir. 1989)). Apportionment is "ultimately a delicate exercise informed by considerations of fairness andpublic policy,

as well as fact." Data Gen. , 36 F.3d at 117 6. The instructions here did not fulfill these goals, and the jury's verdict was distorted as a result. B. Other Damages Issues

In addition to p rof its based on the infringement, Danielson is also entitled to any actual damages it suffered. 17 U.S .C. § 504(b) . If, for example, Danielson demonstrated the amount of compensation that it might have obtained from WCP, but had lost because WCP unlawfully copied the drawings instead, that

sumwould serve as a good measure of actual damages. The district court determined that the jury had added $120,000 to its award of copyright damages and that this amount was overly speculative, and so the court reduced the award commensurately. Danielson appeals this decision. We are concerned that the court's response may itself have depended on speculat ion, b ut by vacating the damages awardwe have eliminated the need to decide this question. We also vacate the district court's alternative order of remittur. Danielson may offer evidence to show actual damages in any further proceedings to calculate damages.

Finally, Danielson appeals the district court's denial of prejudgment interest. We review this decision for abuse of discretion. Hogan v. Bangor & Aroostook R.R. , 61 F.3d 1034, 1038-51-

(1st Cir. 1995). In ruling from the ben ch, the district court statedthat it relied on Mu rray v. Shaw Industries, Inc. , 990 F. Supp. 46 (D. Mass. 1997). That case found that prejudgment interest was inappropriate where the entire damages award was composedof disgorged pr ofit s from an infringer, because, unlike actual damages, the plaintiff never had those funds and so deserved

no compensation for the lost use of the money while the case was pending. Id. at 48. This reasoning is sound and not an abuse of discretion. Danielson offers no support for its assertion that the standards for awarding prejudgment interest and attorneys' fees are the same, and we find none. We do note, however, that after further proceedings Danielson's awa rd may include some actual damages. If so, the district court may, in its discretion, choose to revisit this issue. C. RemandWe hope that damages can n ow b e resolved without requiring the empanelment of another jury for a new proceeding. As

we did in Data General , 36 F.3d at 1177 n.52, we offer some thoughts to assist the district court in the conduct of further proceedings. First and foremost, now t hat WC P's liability is established and every underlying legal issue is resolved, we urge the parties to renew their efforts to settle the c ase . Alternatively, the parties couldagree to allow the district court to determine damages on the basis of the evidence already presented-52-

at trial. See 4 Nimmer , supra , § 14.03(D), at 14-41 (parties may consent to bench trial). The district court might also accept some further briefing or evidence before ruling on damages. Finally, if the parties decline all of these invitations, we encourage the district court to consider, in its discretion, ordering a remittitur. Data Gen. , 36 F.3d at 1177 n.52. Fifteen years have passedsince the drawings at the center of this case were produced. There is no advantage to prolonging the litigation any further. V. Conclusion For the reasons stated in this opi nion , the district court's decisions dismissing WCP's affirmative defenses and Danielson's unfair competition claims are affirmed . T he d amages awardis vacated and the case is remanded for proceedings to calculate damages consistent with this opinion.