FILED 

 U.S. COURT OF APPEALS

 ELEVENTH CIRCUIT 

 03/05/99 

 THOMAS K. KAHN 

 CLERK

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

 

No. 95-3000

 

D. C. Docket No. 93-929-CIV-ORL-19

ROBERT MONTGOMERY,

Plaintiff-Appellee,

versus

REBECCA NOGA and 

FLORIDA LION'S DEN, INC.,

Defendants-Appellants.

 

Appeal from the United States District Court

for the Middle District of Florida

 

(March 5, 1999)

Before TJOFLAT, DUBINA and CARNES, Circuit Judges.

TJOFLAT, Circuit Judge:

The jury in this case found the defendants liable for infringing the plaintiff’s copyright in

a computer program and for violating section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 

The district court entered judgment against the defendants, awarding both actual damages and

attorneys’ fees to the plaintiff. On appeal, the defendants challenge numerous rulings of the
1

 Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir. 1983)

(quoting B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254, 1258 (5th Cir. 1971)).

2

 As Montgomery’s complaint explains, a bulletin board system (or BBS) is an electronic

interface between two computer systems that allows users to download software onto their

computer systems. VPIC 2.9a and subsequent versions included a notice of Montgomery’s

copyright as well as information about how users that obtained VPIC from bulletin boards could

register with Montgomery to avoid copyright infringement liability. Software that is marketed in

this way is called “shareware.”

1

district court. We affirm. In so doing, we endeavor to bring a small measure of clarity to certain

“rather swampy”1 areas of copyright and unfair competition law.

I.

Plaintiff Robert Montgomery is the author of VPIC, a computer software program that

enables users to view pictures on a computer screen. Montgomery integrated several computer

programs that he previously had written – each of which was capable of reading different picture

file formats – to create the initial version of VPIC in December 1988. VPIC went through

several versions during the course of its development, including version 1.3, released on

February 2, 1989, and version 1.4, released on March 15, 1989. Montgomery did not register his

copyrights in the early versions of VPIC and did not affix a copyright notice when he marketed

these early versions on computer bulletin boards. On August 8, 1990, Montgomery registered

his copyright in VPIC version 2.9a. VPIC 2.9a and subsequent versions did contain a copyright

notice when Montgomery marketed them on computer bulletin board systems.2

The defendants, Florida Lion’s Den, Inc. (“FLD”) and Rebecca L. Noga (FLD’s

president and sole shareholder), produce CD-ROM discs that are largely pornographic in nature. 
3

 Montgomery registered his copyright in VPIC 2.9a in 1990. The defendants sold the

four CD-ROM titles incorporating VPIC 4.3 from approximately December 1992 through

October 1993. At the time that the defendants incorporated VPIC 4.3 onto their CD-ROM discs,

VPIC 4.3 was not the most current version of VPIC available. Montgomery did not register his

copyright in VPIC version 4.3 until January 24, 1995, well after he commenced this suit. 

4

 The complaint also alleged that the defendants’ actions constituted unfair competition

under Florida common law. The district court dismissed this claim on April 7, 1994, on the

ground that it was pre-empted by the Copyright Act. 

5

 The injunction also required the defendants to recall and surrender to Montgomery all

infringing FLD products in their possession, and to advertise via bulletin board that the

2

In 1992, the defendants and FLD vice-president Blaine Richard downloaded VPIC version 4.33

from a bulletin board and incorporated it as a utility on four of FLD’s CD-ROM titles without

obtaining a license from Montgomery. Because the defendants had activated a certain feature of

VPIC, the VPIC closing screen that contained Montgomery’s copyright notice did not appear

when users viewed the pictures on the defendants’ discs.

Upon learning of the defendants’ unauthorized use of VPIC, Montgomery – acting

through his licensing agent, who sent a letter to the defendants on June 3, 1993 – demanded that

the defendants cease and desist from using VPIC on FLD products, recall all unsold products

containing VPIC, and pay damages for their unauthorized use. The defendants did not comply

with these demands; Montgomery therefore filed a complaint against them in the U.S. District

Court for the Middle District of Florida on October 25, 1993. The complaint sought damages

and injunctive relief for infringement of Montgomery’s VPIC copyright in violation of 17 U.S.C.

§ 101 et seq., and for a violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).4 The

defendants raised a number of affirmative defenses and impleaded Richard as a third-party

defendant. Montgomery obtained a preliminary injunction on November 30, 1993, that enjoined

the defendants from utilizing VPIC in FLD products.5
infringing products were produced without a license and thus were subject to payment of a

licensing fee to Montgomery.

6

 The jury had been instructed that Montgomery could not be awarded a double recovery

of the same damages under both the copyright and Lanham Act claims.

7

 The court granted the defendants’ motion for judgment against third-party defendant

Richard, noting that Richard previously had admitted that the defendants had a right of complete

contribution and indemnification against him for any amount that the defendants were found to

owe Montgomery in this suit.

3

Both Montgomery and the defendants moved for summary judgment on Montgomery’s

two claims, but the district court denied these motions on January 24, 1995. The case went to

trial before a jury on March 20, 1995. At the close of Montgomery’s case in chief, the

defendants moved for judgment as a matter of law on both claims; the court denied their motion. 

At the close of all the evidence, Montgomery moved for judgment as a matter of law and the

defendants renewed their motion; the court denied these motions as well. The case was then

submitted to the jury, which found in favor of Montgomery on both claims and awarded actual

damages in the amount of $80,000 for the copyright infringement claim and $30 for the Lanham

Act claim.6

 The jury also found that, with regard to the copyright claim, the defendants’

infringement had been “willful” and that, with regard to the Lanham Act claim, the case was

“exceptional.”

The district court subsequently entertained several post-trial motions. The court denied

the defendants’ motion for remittitur or a new trial, as well as their renewed motion for judgment

as a matter of law.7 The court granted Montgomery’s motion for a permanent injunction and, in

light of the jury’s “willful” and “exceptional” findings, granted Montgomery’s motion for costs

and attorneys’ fees. Montgomery also moved for an award of statutory damages pursuant to 17

U.S.C. § 504(c)(1), but the district court declined to award additional damages. Judgment was
8

 The court also entered judgment in favor of the defendants against Richard in this

amount. 

9

 We have subject matter jurisdiction over this appeal. See 15 U.S.C. § 1121(a) (1994);

28 U.S.C. §§ 1291, 1338 (1994).

4

therefore entered in favor of Montgomery and against the defendants in the amount of

$228,833.34: $80,000 for the copyright claim, $30 for the Lanham Act claim, $142,289.26 for

attorneys’ fees, and $6,514.08 for costs.8

 This appeal followed.9

II.

The defendants contend that the district court erred in (A) denying their motion for

judgment as a matter of law on the copyright infringement claim given that (1) Montgomery’s

copyright in VPIC 2.9a is invalid because earlier versions of VPIC were injected into the public

domain, and (2) the scope of Montgomery’s registered copyright in VPIC 2.9a, even if valid,

does not extend to protect VPIC 4.3; (B) denying their motion for remittitur or a new trial on the

issue of damages with respect to the copyright claim; (C) denying their motion for judgment as a

matter of law on the Lanham Act claim; (D) precluding one of their witnesses from testifying as

an expert; and (E) awarding Montgomery attorneys’ fees on (1) the copyright claim and (2) the

Lanham Act claim. We address these contentions seriatim.

A.

In evaluating the defendants’ contention that the district court improperly denied their

motion for judgment as a matter of law on Montgomery’s copyright infringement claim, we

proceed from certain basic principles of copyright law. The Copyright Act of 1976, 17 U.S.C. §
5

101 et seq. (1994), provides protection for computer programs. See Cable/Home

Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 842 (11th Cir. 1990); 17 U.S.C. §

102(a) (1994). The Act defines a computer program as “a set of statements or instructions to be

used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. § 101

(1994). For original computer programs and other original works of authorship created after

1977, copyright automatically inheres in the work at the moment it is created without regard to

whether it is ever registered. See Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d

1529, 1531 (11th Cir. 1994); 17 U.S.C. § 102(a); Melville B. Nimmer & David Nimmer, 2

Nimmer on Copyright § 7.16[A][1] (1998) [hereinafter Nimmer]. In order to bring an action for

copyright infringement, however, the author must first register the copyright. See 17 U.S.C. §§

411(a), 501(b) (1994); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 & n.4

(11th Cir. 1990) (stating that “[t]he registration requirement is a jurisdictional prerequisite to an

infringement suit”). Montgomery’s claim of copyright infringement, therefore, necessarily is

predicated on the defendants’ infringement of VPIC 2.9a – the only version of VPIC that

Montgomery had registered at the time he commenced this action.

Once a copyright infringement action has been properly commenced, the copyright

holder must prove two elements in order to prevail: “(1) ownership of a valid copyright, and (2)

copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural

Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991). Here, the

element of copying is not in dispute. The defendants admit that, without obtaining a license

from Montgomery, they downloaded VPIC 4.3 from a bulletin board and incorporated it as a

utility on four FLD discs. 
6

The defendants challenge the propriety of Montgomery’s copyright infringement claim

on two grounds. First, they argue that Montgomery does not own a valid copyright in VPIC 2.9a

as required by Feist. According to the defendants, Montgomery’s copyright in VPIC 2.9a is

invalid because earlier versions of VPIC – components of which were contained in VPIC 2.9a –

were injected into the public domain. Second, and alternatively, the defendants argue that the

scope of Montgomery’s copyright registration for VPIC 2.9a does not extend to support the

commencement of an action for infringement of his unregistered copyright in VPIC 4.3 – the

version that the defendants incorporated. 

The district court rejected these arguments, finding that the jury’s verdict was in

accordance with both the law and the evidence at trial. We review a district court’s denial of a

motion for judgment as a matter of law de novo, applying the same standards as the district

court. In considering the sufficiency of the evidence that supports the jury’s verdict, we review

the evidence “in the light most favorable to, and with all reasonable inferences drawn in favor of,

the nonmoving party.” Walker v. NationsBank of Fla., N.A., 53 F.3d 1548, 1555 (11th Cir.

1995). If reasonable and fair-minded persons in the exercise of impartial judgment might reach

different conclusions based on the evidence presented, the motion should be denied. See Walls

v. Button Gwinnett Bancorp, Inc., 1 F.3d 1198, 1200 (11th Cir. 1993). Questions of law raised

by the motion, however, are reviewed de novo. See Morro v. City of Birmingham, 117 F.3d 508,

513 (11th Cir. 1997), cert. denied, — U.S. —, 118 S. Ct. 1299, 140 L. Ed. 2d 465 (1998). 

Applying these standards to the two arguments presented by the defendants, we conclude that the

district court correctly denied their motion.
10 Section 410(c) states that, in any judicial proceeding, “the certificate of a registration

made before or within five years after first publication of the work shall constitute prima facie

evidence of the validity of the copyright . . . .” The defendants argue that Montgomery could not

benefit from this presumption because he released some of VPIC’s predecessor programs prior to

October 1988, over five years before he brought this suit. This argument misinterprets the

statute. Section 410(c) merely requires that the work at issue be registered (not that the

infringement suit be brought) within five years after its first publication. The evidence at trial

demonstrated that VPIC 2.9a was first released to the public on July 1, 1990, and that

Montgomery registered his copyright in that version on August 8, 1990. Accordingly,

Montgomery was entitled to the section 410(c) presumption.

7

1.

The plaintiff in a copyright infringement action normally bears the burden of proving

ownership of a valid copyright. In order to meet this burden, the plaintiff must show that the

work is original and that the applicable statutory formalities were followed. See Bateman v.

Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996). Given that Montgomery produced a

certificate of copyright registration for VPIC 2.9a at trial, however, he benefited from a

rebuttable presumption that the VPIC 2.9a copyright is valid. See 17 U.S.C. § 410(c) (1994).10

The burden therefore shifted to the defendants, who were required to demonstrate that “the work

in which copyright is claimed is unprotectable (for lack of originality) or, more specifically, to

prove that . . . the copyrighted work actually taken is unworthy of copyright protection.” 

Bateman, 79 F.3d at 1541.

The defendants’ argument that VPIC 2.9a is unprotectable has two parts. Citing 17

U.S.C. § 405(a), the defendants initially claim that VPIC 1.3 and its predecessor versions were

injected into the public domain – i.e., that Montgomery forfeited his unregistered copyrights in

these versions – because these versions did not contain copyright notices when Montgomery

released them to the public prior to March 1, 1989. Second, the defendants assert that the
11 17 U.S.C. § 405(a) (1994) states that, for works publicly distributed before March 1,

1989, 

the omission of [a copyright notice] from copies or phonorecords . . . does not

invalidate the copyright in a work if . . . (2) registration for the work has been

made before or is made within five years after the publication without notice, and

a reasonable effort is made to add notice to all copies or phonorecords that are

distributed to the public in the United States after the omission has been

discovered . . . .

See generally Donald Frederick Evans & Assocs., Inc. v. Continental Homes, Inc., 785 F.2d 897,

905-06, 910-12 (11th Cir. 1986); 2 Nimmer § 7.16[A][1].

Montgomery argues that his 1990 registration of, and inclusion of a copyright notice in,

VPIC 2.9a occurred less than 5 years after the publication of VPIC 1.3 and its predecessors in

the late 1980s. He concludes, therefore, that any potential forfeiture of his rights properly was

cured under section 405(a)(2). Montgomery’s conclusion might be correct if he had registered,

and made a reasonable effort to add notice to subsequent copies of, VPIC version 1.3 and its

predecessor versions themselves. Cf. Continental Homes, 785 F.2d at 911 n.22 (discussing a

disagreement among various courts regarding whether section 405(a)(2) requires a copyright

owner to add notice to all copies distributed, or only to copies distributed after it is discovered

that notice was omitted). We express no opinion, however, on the question of whether the

inclusion of a copyright notice in copies of a subsequent version of a work can rescue the

copyright of a previous version that was distributed without a copyright notice. Cf. 17 U.S.C. §

101 (1994) (“where the work has been prepared in different versions, each version constitutes a

separate work”).

8

revisions Montgomery made to VPIC in versions 1.4 through 2.9a were not sufficiently original

to support a valid copyright in version 2.9a. 

We find that the defendants have not met their burden. Assuming arguendo that

Montgomery forfeited his copyrights in VPIC 1.3 and its predecessors by publishing them

without a copyright notice,11 we conclude that the modifications Montgomery made to VPIC in

versions 1.4 through 2.9a were sufficiently original to support a valid copyright in version 2.9a

as a derivative work. See SAS Inst., Inc. v. S&H Computer Sys., Inc., 605 F. Supp. 816, 826-27

(M.D. Tenn. 1985) (concluding that regardless of whether previous version of computer

programming system was in the public domain, subsequent version of system was sufficiently

original to support valid copyright).
12 Feist resolved a possible tension in our precedent regarding the test for establishing

originality. Compare Sherry Mfg. Co. v. Towel King of Fla., Inc., 753 F.2d 1565, 1568 (11th

Cir. 1985) (noting that “in order to qualify for a separate copyright, the derivative work must

contain some substantial, and not merely trivial, originality” (emphasis added)), with Original

Appalachian Artworks, Inc. v. The Toy Loft, Inc., 684 F.2d 821, 824-25 (11th Cir. 1982)

(discussing the “minimal degree of originality necessary for copyright protection” (emphasis

added)). Cf. 1 Nimmer § 3.03, at 3-10 (“[I]n order to qualify for a separate copyright as a

derivative or collective work, the additional matter injected in a prior work . . . must constitute

more than a minimal contribution.”).

9

The Copyright Act states that “[a] work consisting of editorial revisions, annotations,

elaborations, or other modifications [to a preexisting work that], as a whole, represent an original

work of authorship, is a ‘derivative work.’” 17 U.S.C. § 101. Such a work – if it is noninfringing and sufficiently original – qualifies for a separate copyright, although this copyright

does not protect the preexisting material employed in the derivative work. See 17 U.S.C. § 103

(1994); Stewart v. Abend, 495 U.S. 207, 223-24, 110 S. Ct. 1750, 1761-62, 109 L. Ed. 2d 184

(1990); 1 Nimmer §§ 3.01, 3.04[A]. In this case, the requirement of non-infringement clearly is

satisfied. This is true regardless of whether Montgomery held valid copyrights in VPIC 1.3 and

its predecessor versions when he modified them to create version 2.9a (as Montgomery

maintains) or he merely took VPIC 1.3 and its predecessor versions from the public domain and

modified them in order to create version 2.9a (as the defendants maintain). 

With regard to the requirement of originality, all that must be shown is that the work

“possesses at least some minimal degree of creativity. . . . To be sure, the requisite level of

creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345, 111 S. Ct.

at 1287; see also id. at 348, 111 S. Ct. at 1289.12 The defendants claim that the modifications

Montgomery made to VPIC in versions 1.4 through 2.9a did not cross even this low threshold. 

In support of this claim, they argue that Montgomery himself stated on cross-examination that
13 The statement at issue occurred after a series of questions by the defendants’ counsel

that sought to have Montgomery compare versions 1.3 and 2.9a. Counsel began by asking

Montgomery about the size of the execute file (in bytes) for each of these versions, and then by

asking him to compare the size of these files in percentage terms. Counsel then turned to the

source code for each version and asked what would be the best way to compare the code. This

exchange followed:

A. There probably is no good way to do it. You may have added

comments, you may have taken comments out. There’s [sic] comments that don’t

compile. Even if you look at the size of the C modules and things like that, it still

wouldn’t tell you. . . . 

Q. If we had the source code of VPIC version 1.3, couldn’t we at least see

some very similar [sic]?

A. You’d see portions of it in there, yes. The menu system was in there.

Q. You might even see 80 or 90 percent, possibly; isn’t that correct?

A. You might. Might not. . . . How can you possibly tell? You know, I

don’t, I don’t understand how you can tell. How you can get a comparison of 90

percent, 80 percent, 70 percent, 100 percent, you know. It may be 100 percent

with different words. I mean, you know, that’s a possibility. I don’t know how

you, how you can get percentages.

(emphasis added).

Defendants claim that the portion of Montgomery’s answer emphasized above establishes

that the material added in versions 1.4 through 2.9a was not sufficiently original to support a

valid copyright in version 2.9a. It is not clear from this exchange, however, whether

Montgomery’s comments regarding percentages pertained to the size of the code for these two

versions or to the similarity of the code. The following exchange, which occurred shortly after

the one quoted above, suggests that the code for version 2.9a was not 100 percent similar to the

code for version 1.3:

Q. . . . [I]n 1.3, you pretty well have 80 or 90 percent of VPIC 2.9a . . . as

far as what it does?

A. . . . I think by the time it got to 2.9, it knew how to do a bunch of other

things. . . . 

Q. By the time you got to 2.9, you also corrected a number of errors, did

you not?

A. Yes. Yes. It mainly amounts to adding new features.

10

the source code for VPIC version 2.9a was substantially similar to the source code for version

1.3. We find that the import of Montgomery’s statement is far from clear.13 It is clear from other

evidence presented at trial, however, that VPIC 2.9a contained several additions and corrections

that were not present in version 1.3. For example, the revision history that was submitted with
14 While the question of originality usually is viewed as an issue of fact subject to

appellate review under the clearly erroneous standard, see Original Appalachian Artworks, 684

F.2d at 825; 3 Nimmer § 12.12, we have departed from this standard in certain situations. In

Sherry Manufacturing, 753 F.2d at 1569 & n.6, we held as a matter of law that a design on a

towel lacked sufficient originality to be copyrightable. In so doing, we stated that “where the

appellate court has the opportunity to view for itself the same tangible exhibits considered by the

trial court, the rationale for applying the clearly erroneous standard disappears.” Id. at 1569 n.6. 

We cited the Second Circuit case of Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27,

35 (2d Cir. 1982), in support of this statement.

In this case, we have before us certain tangible exhibits that bear directly on the question

of whether Montgomery’s modifications were sufficiently original. Some of these exhibits, such

as the source code for VPIC 2.9a, are not readily comprehensible by those not trained in

computer programming. The VPIC revision history is somewhat more comprehensible, but

Montgomery interpreted and expanded upon it at length in his trial testimony. In such

circumstances, it is unclear whether Sherry Manufacturing would require that we consider the

question of originality de novo. Cf. Malden Mills, Inc. v. Regency Mills, Inc., 626 F.2d 1112,

1113 & n.2 (2d Cir. 1980) (implying, in the context of a copyright infringement analysis, that

expert testimony regarding matters not within the knowledge of the lay observer might preclude

de novo review); G.R. Leonard & Co. v. Stack, 386 F.2d 38, 40-41 (7th Cir. 1967) (applying the

clearly erroneous standard in the copyright infringement context where the evidence regarding

the parties’ respective works consisted mostly of “testimonial analysis and interpretation” of the

works). To the extent that Sherry Manufacturing would require de novo review, however, we

conclude that Supreme Court precedent prevents us from following it.

Only twenty days after we decided Sherry Manufacturing, the Supreme Court held that

factual findings are to be reviewed for clear error “even when the district court’s findings do not

11

the VPIC 2.9a copyright registration application shows that in versions 1.4 through 2.9a,

Montgomery corrected many problems, increased the number of graphics file formats that VPIC

users could view, increased by 50 percent the speed at which VPIC would decode graphics

stored in the GIF file format, and configured VPIC to work with additional graphics computer

chips and cards. In light of this evidence, we conclude that the defendants failed to meet their

burden of showing that the modifications Montgomery made to VPIC in versions 1.4 through

2.9a were not sufficiently original to support a valid copyright in version 2.9a as a derivative

work. The district court, therefore, did not clearly err in rejecting the defendants’ argument that

VPIC 2.9a is unprotectable.14
rest on credibility determinations, but are based instead on physical or documentary evidence or

inferences from other facts.” Anderson v. City of Bessemer City, 470 U.S. 564, 574, 105 S. Ct.

1504, 1511-12, 84 L. Ed. 2d 518 (1985). While we recognize that Second Circuit copyright

infringement cases continue to apply de novo review to certain factual determinations that are

based on tangible exhibits, see, e.g., Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 766 (2d

Cir. 1991) (reviewing district court finding of substantial similarity de novo); Business Trends

Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 402-03 (same), we believe that this

standard of review is inappropriate after Anderson. See Wildlife Express Corp. v. Carol Wright

Sales, Inc., 18 F.3d 502, 506-07 & n.1 (7th Cir. 1994); cf. AmBrit, Inc. v. Kraft, Inc., 812 F.2d

1531, 1541 n.46 (11th Cir. 1986) (citing Anderson and declining to review de novo a finding of

similarity of design in trade dress infringement action brought under Lanham Act section 43(a)).

15 In his brief, Montgomery characterizes VPIC 4.3 as a derivative work of VPIC 2.9a. If

this characterization is accurate, VPIC 4.3 would have qualified for a separate copyright at the

moment of its creation. See 17 U.S.C. §§ 102(a), 103 (1994). Although the defendants do not

contend that the modifications Montgomery made to VPIC 2.9a in order to create VPIC 4.3 were

insufficiently original to warrant characterizing VPIC 4.3 as a derivative work, the evidence in

the record regarding the nature of these modifications is sparse. We assume for purposes of the

above discussion that VPIC 4.3 is a derivative work, but it is important to note that our

conclusion would be the same even if VPIC 4.3 did not possess sufficient originality to be

characterized as a derivative work.

12

2.

We now turn to the defendants’ alternative argument that the scope of Montgomery’s

copyright registration in VPIC 2.9a does not extend to support the commencement of an action

for infringement of his unregistered copyright in the derivative work VPIC 4.3.15 The defendants

base this argument on several provisions of the Copyright Act. First, they point to the following

clause from the Act’s discussion of when a work is “created”: “[W]here the work has been

prepared in different versions, each version constitutes a separate work.” 17 U.S.C. § 101. The

defendants also direct our attention to 17 U.S.C. § 411(a) (1994), which states that “no action for

infringement of the copyright in any work shall be instituted until registration of the copyright

claim has been made in accordance with this title.” Reading these provisions together, the
16 The defendants argue that the provisions of the Copyright Act cited above, as well as

section 103(b) of the Act, support their characterization of the VPIC 2.9a registration. See 17

U.S.C. § 103(b) (1994) (stating that the copyright in a derivative work “is independent of, and

does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright

protection in the preexisting material”). 

13

defendants conclude that because VPIC version 4.3 is a “separate work” that was not registered

when Montgomery brought this suit, Montgomery could not maintain a copyright infringement

action against them for copying that work. While the defendants recognize that Montgomery

registered his copyright in VPIC 2.9a, they claim that the Copyright Act16 supports the

conclusion that this registration does not cover material – such as the derivative work VPIC 4.3 –

not in existence at the time of the registration. 

The defendants’ argument, however, mischaracterizes Montgomery’s claim of copyright

infringement. The evidence at trial showed that VPIC 4.3 incorporated over seventy percent of

the original source code from the registered work VPIC 2.9a, and that VPIC 4.3 would not

function if the VPIC 2.9a code was removed. By downloading VPIC 4.3 and incorporating it as

a utility on FLD discs, therefore, the defendants infringed Montgomery’s registered copyright in

VPIC 2.9a within the meaning of section 501(a) of the Copyright Act. See 17 U.S.C. § 501(a)

(1994) (“Anyone who violates any of the exclusive rights of the copyright owner as provided by

sections 106 through 118 . . . is an infringer of the copyright . . . .”); 17 U.S.C. § 106(1)-(2)

(1994) (noting that a copyright owner has the exclusive right to do and to authorize both

reproduction of the copyrighted work in copies and preparation of derivative works based upon

the copyrighted work); H.R. Rep. No. 94-1476, at 61 (1976), reprinted in 1976 U.S.C.C.A.N.

5659, 5675 (noting that under section 106(1), “a copyrighted work would be infringed by

reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or
17 The authorities cited in the text directly support our conclusion. Additional support

may be found in the pronouncements of courts and commentators that have dealt with analogous

factual situations. See, e.g., Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111-12

(1st Cir. 1993) (holding that plaintiff could recover damages for copyright infringement of

underlying work where plaintiff had an exclusive license to distribute an underlying work that

was subject to a registered copyright, plaintiff had produced an unregistered derivative work

based on the underlying work, and defendant had copied and distributed the derivative work); id.

at 1112 (“Although a derivative work may be separately copyrighted, that copyright does not

affect the copyright in the underlying work. . . . Any elements that the author of the derivative

work borrowed from the underlying work . . . remain protected by the copyrights in the

underlying work.”); cf. Stewart v. Abend, 495 U.S. 207, 223, 110 S. Ct. 1750, 1761, 109 L. Ed.

2d 184 (1990) (“The aspects of a derivative work added by the derivative author are that author’s

property, but the element drawn from the pre-existing work remains on grant from the owner of

the pre-existing work.”). See also 1 Nimmer § 3.05, at 3-34.20 (considering whether the owner

of the registered copyright in an underlying work may claim infringement when the defendant

has copied matter that originated in the underlying work from a derivative work produced by a

third party under a nonexclusive license, and concluding that “the better view is that if the

material copied was derived from a copyrighted underlying work, this will constitute an

infringement of such work regardless of whether the defendant copied directly from the

underlying work, or indirectly via the derivative work”).

14

simulation” (emphasis added)); id. at 62, reprinted in 1976 U.S.C.C.A.N. at 5675 (“The

exclusive right to prepare derivative works, specified separately in clause (2) of section 106,

overlaps the exclusive right of reproduction [in section 106(1)] to some extent. . . . [T]o

constitute a violation of section 106(2), the infringing work must incorporate a portion of the

copyrighted work in some form.” (emphasis added)). Such infringement is actionable under

sections 501(b) and 411(a) of the Act.17 See 17 U.S.C. § 501(b) (1994) (“The legal or beneficial

owner of an exclusive right under a copyright is entitled, subject to the requirements of section

411, to institute an action for any infringement of that particular right committed while he or she

is the owner of it.”); 17 U.S.C. § 411(a) (1994); see also Lamb v. Starks, 949 F. Supp. 753, 755-

56 (N.D. Cal. 1996) (holding that a prima facie case of copyright infringement had been

established where the defendant copied plaintiff’s unregistered trailer that contained portions of
15

a movie in which the plaintiff held a registered copyright); Central Point Software, Inc. v.

Nugent, 903 F. Supp. 1057, 1060 & n.5 (E.D. Tex. 1995) (granting summary judgment on

plaintiffs’ copyright infringement claim where plaintiffs registered their copyrights in certain

versions of computer programs and defendants copied subsequent versions that were derived

from the registered works); 2 Nimmer § 7.16[B][2] (concluding that the owner of a registered

underlying work that is part of an unregistered derivative work should be able to maintain a

copyright infringement suit against a defendant who reproduces the derivative work – and thus

the underlying work contained therein – without authorization); Douglas Y’Barbo, On Section

411 of the Copyright Code and Determining the Proper Scope of a Copyright Registration, 34

San Diego L. Rev. 343, 351-52, 354 n.38, 356 (1997) (same).

We conclude, after considering this question of law de novo, that the district court did not

err in rejecting the defendants’ argument that the scope of Montgomery’s registered copyright in

VPIC 2.9a does not extend to protect VPIC 4.3. We therefore affirm the district court’s decision

to deny the defendants’ motion for judgment as a matter of law. 

B.

The defendants’ next claim of error relates to their motion for remittitur or – if

Montgomery rejected a remittitur amount proposed by the court – for a new trial on the issue of

damages with respect to Montgomery’s copyright claim. In this motion, the defendants

contended that the jury’s award of $80,000 in damages for copyright infringement – $43,900 for

actual damages sustained by Montgomery as a result of the infringement and $36,100 for the

defendants’ profits attributable to the infringement – was excessive and not supported by the
16

evidence because the award was based on the value of unregistered VPIC versions issued

subsequent to the registered version 2.9a. The defendants maintained that no evidence was

introduced at trial regarding the value of VPIC 2.9a at the time of the infringement, and that

there was no evidence that anyone had ever purchased a license from Montgomery to use VPIC

2.9a. The district court denied the motion, concluding that the verdict was in accordance with

the jury instructions and the evidence presented at trial. 

Although the defendants’ briefs on appeal are somewhat opaque, the defendants

apparently contend that the district court erred in two ways when it denied their motion. First,

they claim that the court committed an error of law by failing to instruct the jury to base its

calculation of actual damages on the reasonable value in the marketplace of the plaintiff’s

program VPIC 2.9a for commercial use at the time of the infringement. When the defendants’

counsel suggested this instruction during the charge conference, the court expressed the view

that it would be error to rule that the plaintiff could recover infringement damages only for VPIC

2.9a. Such a ruling, explained the court, would “foreclose the derivative work concept.” 

Instead, the court merely instructed the jury to consider the reasonable value in the marketplace

of the “plaintiff’s program” for commercial use at the time of the infringement. The defendants’

counsel did not object to the district court’s version of the actual damages instruction as required

by Fed. R. Civ. P. 51. See Electro Servs., Inc. v. Exide Corp., 847 F.2d 1524, 1528-29 (11th Cir.

1988) (concluding that a party who offers a proposed instruction does not thereby preserve a

challenge to the giving of a different instruction by the court, absent a specific objection). We
18 In their brief on appeal, the defendants suggest that, prior to the charge conference, the

district court had already heard and rejected their argument that damages should be based on

version 2.9a. We have recognized an exception to the objection requirement of Rule 51 where

“the party’s position has previously been made clear to the court and it is plain that a further

objection would have been unavailing.” Pate, 819 F.2d at 1082 (quoting Lang v. Texas & Pac.

R.R. Co., 624 F.2d 1275, 1279 (5th Cir. 1980)). After reviewing the record, we are not

convinced that it was “plain” at the charge conference that an objection by the defendants would

have been unavailing.

17

therefore review the instruction only for plain error.18 See Pate v. Seaboard R.R., Inc., 819 F.2d

1074, 1082-83 (11th Cir. 1987).

When reviewing a jury instruction under the plain error standard, we will reverse “only in

exceptional cases where the error is ‘so fundamental as to result in a miscarriage of justice.’” 

Iervolino v. Delta Air Lines, Inc., 796 F.2d 1408, 1414 (11th Cir. 1986) (quoting Delancey v.

Motichek Towing Serv., Inc., 427 F.2d 897, 901) (5th Cir. 1970)). More specifically, we require

appellants to establish “that the challenged instruction was an incorrect statement of the law and

that it was probably responsible for an incorrect verdict, leading to substantial injustice.” Pate,

819 F.2d at 1083. If the instruction will “‘mislead the jury or leave the jury to speculate as to an

essential point of law,’ the error is sufficiently fundamental to warrant a new trial despite a

party’s failure to state a proper objection.” Id. (quoting Cruthirds v. RCI, Inc., 624 F.2d 632,

636 (5th Cir. 1980)).

Applying this standard to the challenged instruction on the calculation of actual damages,

we conclude that the defendants have not established that the instruction was fundamentally

erroneous. The relevant provision of the Copyright Act states that “[t]he copyright owner is

entitled to recover the actual damages suffered by him or her as a result of the infringement . . .

.” 17 U.S.C. § 504(b) (1994). This provision requires the plaintiff to demonstrate a “causal
19 This injury often is measured by the revenue that the plaintiff lost as a result of the

infringement. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 567, 105 S.

Ct. 2218, 2234, 85 L. Ed. 2d 588 (1985); Data Gen. Corp., 36 F.3d at 1170; 4 Nimmer §

14.02[A], at 14-9.

18

connection” between the defendant’s infringement and an injury to the market value of the

plaintiff’s copyrighted work at the time of infringement.19 See Key West Hand Print Fabrics,

Inc. v. Serbin, Inc., 269 F. Supp. 605, 613 (S.D. Fla. 1966); 4 Nimmer § 14.02[A]; see also Data

Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1170-71 (1st Cir. 1994) (defining the

plaintiff’s burden with reference to tort law principles of causation and damages). Having held

that the defendants infringed Montgomery’s registered copyright in VPIC 2.9a by placing VPIC

4.3 on FLD discs, see supra part II.A.2., it follows that the jury properly could consider evidence

of the injury that the defendants’ infringement caused to the value of subsequent unregistered

VPIC versions derived from version 2.9a – such as VPIC 4.3 – in order to determine the extent

of the injury to the value of Montgomery’s registered copyright at the time of infringement. Cf.

4 Nimmer § 14.02[A], at 14-8 n.4 (noting that, in view of the copyright owner’s exclusive right

to prepare derivative works under 17 U.S.C. § 106(2), the injury to the market value of the

copyrighted work includes any injury to the value of “sequel rights”). Obviously, Montgomery’s

damages could not adequately be measured solely by reference to the market value of VPIC 2.9a

as a stand-alone computer program; this value presumably was quite low at the time of the

infringement given that revised versions of the program were then available. Therefore, the

district court did not commit a fundamental error by refusing to instruct the jury to calculate

actual damages based only on the value of version 2.9a of the plaintiff’s program.
19

The defendants’ second claim of error relates to the evidentiary basis for the jury’s

damage award. The defendants point out that versions 2.9a and 4.3 of VPIC contained a

statement that those who wished to use VPIC as a utility for another product had to obtain a

license from Montgomery and pay a royalty of $1 per copy of the product shipped. Because the

evidence established that FLD and an associated company distributed 26,641 discs containing

VPIC, the defendants contend that Montgomery should have received at most $26,641 in

damages. Indeed, given that Montgomery sold licenses for unlimited use of a subsequent

version of VPIC – version 5.1e – to various entities for $2,000, the defendants contend that the

damages awarded should have been no higher than $8,000 for the four CD-ROM titles produced

by FLD that incorporated VPIC. The defendants therefore argue that the jury’s award of

$80,000 in damages was both excessive and unsupported by the evidence.

Because motions for a new trial are committed to the discretion of the trial court, we

review the district court’s rejection of the defendants’ argument only to ascertain whether there

has been a clear abuse of discretion. See Agro Air Assocs., Inc. v. Houston Cas. Co., 128 F.3d

1452, 1455 n.5 (11th Cir. 1997) (reviewing denial of motion for remittitur or new trial on ground

of excessive damages under abuse of discretion standard); United States v. Sullivan, 1 F.3d

1191, 1196 (11th Cir. 1993) (reviewing denial of motion for new trial on ground that verdict was

against the great weight of the evidence under abuse of discretion standard). We have found that

“[t]his level of deference is especially appropriate where a new trial is denied and the jury’s

determinations are left undisturbed.” Insurance Co. of N. Am. v. Valente, 933 F.2d 921, 925

(11th Cir. 1991). After reviewing the entire record in light of this standard, we find that there

was ample evidence from which the jury could have concluded that an award of $43,900 for
20 VPIC 5.0b was the most current version available at the time that FLD produced its

first CD-ROM title; Montgomery testified that he charged a royalty of $2 per copy at this time. 

On December 20, 1992, Montgomery raised the royalty to $3 per copy beginning with VPIC 6.0. 

Montgomery argues on appeal that FLD produced its three remaining CD-ROM titles after this

royalty increase. While the testimony at trial was somewhat unclear on this point, the pressing

dates that are encoded within the CD-ROM exhibits themselves seem to indicate that FLD

produced only one of its CD-ROM titles after December 20, 1992. 

21 As mentioned in note 20, supra, Montgomery increased his royalty rate to $3 beginning

with VPIC 6.0. At trial, however, the evidence indicated that Montgomery subsequently issued

some licenses for older versions of VPIC – versions 5.1 and 5.1e – at a rate of either $2 per copy

or $2,000 for unlimited usage. Montgomery testified that he issued these licenses either because

the user did not plan to distribute VPIC to the public or because the user planned only limited

public distribution (often less than 1,000 copies) and could not afford the $3 per copy royalty.

20

actual damages resulting from the infringement and $36,100 for the defendants’ profits

attributable to the infringement was appropriate.

As to Montgomery’s actual damages, the evidence indicated that VPIC 4.3 was not the

most current version of VPIC available at the time that FLD produced its four CD-ROM titles. 

At that time, a license to use the most current version of VPIC as a utility for another product

could be obtained in exchange for a royalty of $2 to $3 per copy of the product shipped.20

Montgomery testified at trial that he typically only licensed the most current version of VPIC

available.21 The jury was thus entitled to conclude that the defendants would have had to pay

Montgomery at least $53,282 for a license to distribute the 26,641 FLD CD-ROM discs that

incorporated VPIC – an amount in excess of the $43,900 that the jury actually awarded. While

the defendants correctly note that Montgomery sold $2,000 unlimited use licenses for VPIC 5.1e,

the jury certainly was permitted to find that Montgomery would not have offered such a license

to the defendants. See Iowa State Univ. Research Found., Inc. v. American Broad. Cos., 475 F.

Supp. 78, 83 (S.D.N.Y. 1979) (noting, in the context of awarding statutory damages under the
21

Copyright Act of 1909, that the defendant “cannot expect to pay the same price in damages as it

might have paid after freely negotiated bargaining, or there would be no reason scrupulously to

obey the copyright law”); 4 Nimmer § 14.02[A] (applying this observation from Iowa State to

the computation of actual damages under the current Copyright Act). 

With respect to the defendants’ profits, the Copyright Act provides the following

computational guidance: 

The copyright owner is entitled to recover . . . any profits of the infringer that are

attributable to the infringement and are not taken into account in computing the

actual damages. In establishing the infringer’s profits, the copyright owner is

required to present proof only of the infringer’s gross revenue, and the infringer is

required to prove his or her deductible expenses and the elements of profit

attributable to factors other than the copyrighted work.

17 U.S.C. § 504(b) (1994). Montgomery provided evidence at trial, however, that went well

beyond his statutory obligation to present proof of the defendants’ gross revenue. Montgomery

initially provided a set of spreadsheets that summarized various business records of FLD

produced by the defendants. These spreadsheets showed that FLD’s total revenue from sales of

the four CD-ROM titles at issue was $255,162, and that FLD’s total profit (after expenses) on

these sales was $142,802.80. Later in the trial, Montgomery provided an alternative FLD total

profit estimate of $158,103 that was based upon profit information elicited from Noga on crossexamination. By determining what percentage of files on each CD-ROM title could be viewed

using VPIC, Montgomery estimated that the amount of this profit allocable to VPIC was

$107,310.35. While the defendants did seek to discredit Montgomery’s profit allocation

estimate on cross-examination, they did not question Montgomery’s total profit figures and did

not offer any allocation estimate of their own. The jury, faced with multiple profit estimates of

over $100,000, thus had a sufficient evidentiary basis for its conclusion that Montgomery should
22 As noted above, 17 U.S.C. § 504(b) (1994) allows recovery of a defendant’s profits

only if such profits “are not taken into account in computing the actual damages.” There is no

indication that the jury’s award of damages violated this prohibition of double recovery. As one

commentator has noted, “[e]ven when a plaintiff’s actual damages include lost profits, there may

be a recovery of defendant’s profits in an amount equal to (but not more than) the amount by

which defendant’s profits exceed plaintiff’s lost profits.” 4 Nimmer § 14.03, at 14-30. In this

case, the jury’s award of $43,900 in actual damages arguably represents the profits that

Montgomery lost because of the defendants’ failure to purchase a license to distribute VPIC. 

Because Montgomery’s $107,310.35 estimate of the defendants’ profit allocable to VPIC

exceeded this actual damage award by $63,410.35, however, the jury’s award of $36,100 as the

defendants’ profits was permissible.

23 Section 43(a), as amended, provides in pertinent part:

(1) Any person who, on or in connection with any goods . . ., uses in commerce

any word, term, name, symbol, or device, . . . or any false designation of origin,

false or misleading description of fact, or false or misleading representation of

fact, which – (A) is likely to cause confusion, or to cause mistake, or to deceive as

to the affiliation, connection, or association of such person with another person,

or as to the origin, sponsorship, or approval of his or her goods, services, or

commercial activities by another person, . . . shall be liable in a civil action by any

person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a) (1994).

24 The three claims of error that we discuss above are not the only purported errors that

the defendants identify on appeal. They also argue, for example, that Montgomery’s Lanham

Act claim must fail because Montgomery never registered VPIC as a trademark. It is well

22

recover $36,100 as the defendants’ profits attributable to the infringement.22 The district court,

therefore, did not clearly abuse its discretion in denying the defendants’ motion for remittitur or

a new trial on the issue of damages.

C.

Turning to Montgomery’s claim under section 43(a) of the Lanham Act, 15 U.S.C. §

1125(a)(1)(A),23 the defendants contend that the district court committed several errors when it

denied their motion for judgment as a matter of law. Three of the defendants’ claims of error

merit discussion here.24 We consider these claims in light of the standards enunciated in the
settled, however, that registration is not a prerequisite to an action under section 43(a). See, e.g.,

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 2757, 120 L. Ed. 2d

615 (1992). As to the defendants’ other claims of error, we decline to consider them here

because they were not raised before the district court. See Caban-Wheeler v. Elsea, 71 F.3d 837,

842 (11th Cir. 1996); All Care Nursing Serv., Inc. v. Bethesda Mem’l Hosp., Inc., 887 F.2d

1535, 1538 n.3 (11th Cir. 1989).

23

introduction to part II.A., supra, and conclude that the district court did not err in denying the

defendants’ motion.

1.

The defendants first contend that the district court was required, as a matter of law, to

grant their motion because the act of omitting a copyright notice alone cannot constitute a

violation of section 43(a). They argue that if such an omission was found to be actionable under

section 43(a), virtually every act of copyright infringement would also constitute a violation of

the Lanham Act. This argument, however, mischaracterizes the facts of the case before us. 

While the defendants did activate a certain feature of VPIC that caused Montgomery’s copyright

notice not to appear when users viewed FLD’s CD-ROM discs, this was not the only act upon

which the defendants’ liability under section 43(a) could have been predicated. Unchallenged

testimony at trial established that each of FLD’s four CD-ROM titles that contained VPIC, when

loaded into a computer and used, would display a CD help menu in which FLD claimed

copyright. The copyright notice on one CD-ROM title, for example, stated that the help menu

was “copyrighted and owned” by FLD. As part of the help menu on each title, the defendants

included a description of how a user with a particular brand of computer video card could set up

a viewing program in order to display the picture files that were present on the disc. One such
25 See 15 U.S.C. § 1125(a)(1)(A) (1994) (the false designation of origin prong prescribes

liability for “[a]ny person who, on or in connection with any goods . . . , uses in commerce any . .

. false designation of origin . . . [which] is likely to cause confusion, or to cause mistake, or to

deceive . . . as to the origin, sponsorship, or approval of his or her goods . . . by another person . .

. .”); id. (the mistaken affiliation prong prescribes liability for “[a]ny person who, on or in

connection with any goods . . . , uses in commerce any word, term, name, symbol, or device, or

any combination thereof, . . . [which] is likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association of such person with another person . . .

.”); cf. Jerome Gilson, Trademark Protection and Practice § 5.01[3], at 5-26 (39th rel. 1998)

(noting that confusion can be likely under section 43(a) on either “a source basis” or “an

associational basis”).

These two prongs are part of subsection (A) of section 1125(a)(1), which prescribes

liability “for infringement of even unregistered marks, names, and trade dress.” J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition § 27:9 (4th ed. 1996). Subsection

(B), which is not at issue here, addresses false advertising.

24

description read, in pertinent part: “Included on this CD-ROM [disc] are two different [picture

file] viewing utilities, VPIC and CSHOW, each in its own directory. VPIC is the best one to use

. . . .” This description was not the only reference to VPIC that appeared on the defendants’ CDROM titles; the names of several files present on each title also contained the term “VPIC.”

In considering whether Montgomery failed as a matter of law to establish a violation of

section 43(a) on these facts, we begin with Montgomery’s complaint. In Count Two,

Montgomery claimed that the defendants had violated section 43(a) in one of two ways: by

“pass[ing] off the VPIC software as their own property” or by “represent[ing] a connection,

license, association, or relationship between Plaintiff and Defendants.” These two theories of

liability correspond to two portions of section 43(a), which we will refer to as the “false

designation of origin” prong and the “mistaken affiliation” prong.25 The essence of

Montgomery’s argument for liability under these two prongs is that the defendants’ use of the

term “VPIC” as described above would likely confuse users of the CD-ROM discs; such users
26 See Camp Creek Hospitality Inns, Inc. v. Sheraton Franchise Corp., 139 F.3d 1396,

1413 n.28 (11th Cir. 1998) (“Section 1125(a) prohibits both ‘passing off,’ where A sells its

product under B’s name, and ‘reverse passing off,’ where A sells B’s product under A’s name.”). 

We discuss the meaning of “reverse passing off” at greater length in note 27, infra.

25

would likely believe either that the defendants owned the VPIC viewing utility themselves or

that they had licensed it from its owner for commercial use. In either case, Montgomery argues,

the users would not know that their use of VPIC was in fact unauthorized and that they needed to

obtain a license from Montgomery for their own non-commercial use of his program in

connection with the defendants’ discs. We agree with Montgomery’s argument. Therefore, we

hold as a matter of law that Montgomery has stated a claim against the defendants under the false

designation of origin and mistaken affiliation prongs of section 43(a) of the Lanham Act. 

With respect to the false designation of origin prong, we are mindful of recent Second

Circuit cases that address the question of whether a false copyright notice is actionable under

section 43(a). In Lipton v. Nature Co., 71 F.3d 464 (2d Cir. 1995), for example, the defendants

infringed the plaintiff’s copyright in a book of animal terms by creating a line of merchandise

that utilized the terms. The merchandise bore copyright notices in the names of both defendants. 

The plaintiff brought a claim against the defendants for “reverse passing off”26 in violation of the

false designation of origin prong of section 43(a). The district court, concluding that the

copyright notices that the defendants placed on their infringing merchandise constituted false

designations of origin, granted summary judgment for the plaintiff on this claim. The court of

appeals reversed, “find[ing] that, as a matter of law, a false copyright notice alone cannot

constitute a false designation of origin within the meaning of § 43(a) of the Lanham Act.” 

Lipton, 71 F.3d at 473; see also Softel, Inc. v. Dragon Med. & Scientific Communications, Inc.,
26

118 F.3d 955, 971 (2d Cir. 1997), cert. denied, — U.S. —, 118 S. Ct. 1300, 140 L. Ed. 2d 466

(1998) (noting that “[w]ithout a requirement of ‘some additional misrepresentation of originality

beyond mere use of a copyright symbol, [plaintiffs] could convert all improper copyright claims

into Lanham Act violations’” (quoting EFS Mktg., Inc. v. Russ Berrie & Co., 76 F.3d 487, 492

(2d Cir. 1996))). The court attempted to distinguish the leading case of Eden Toys, Inc. v.

Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982), which imposed liability under section

43(a) on a defendant who placed a copyright notice that read “Copr. Fred Original” on an

infringing product, on the ground that the false notice in that case also contained a representation

that the product was “original.” Lipton, 71 F.3d at 473-74; see also Banff Ltd. v. Express, Inc.,

921 F. Supp. 1065, 1072-73 (S.D.N.Y. 1995) (claiming that the Second Circuit’s decisions

establish that a false representation regarding the creator or originator of a product can be a false

designation of origin, but that a false copyright notice cannot). 

We do not believe that Lipton forecloses Montgomery’s claim under the false designation

of origin prong of section 43(a). As an initial matter, we note that many courts have disagreed

with Lipton’s conclusion that the act of placing a copyright notice on an infringing product

cannot be a false designation of origin under section 43(a). See, e.g., Southern Bldg. Code

Congress Int’l, Inc. v. Florida Constr. Sch., Inc., 14 U.S.P.Q.2d 1846, 1848 (M.D. Fla. 1989);

Manufacturers Techs., Inc. v. Cams, Inc., 706 F. Supp. 984, 1004 (D. Conn. 1989); Sunset Lamp

Corp. v. Alsy Corp., 698 F. Supp. 1146, 1153 (S.D.N.Y. 1988); cf. Ladas v. Potpourri Press,

Inc., 846 F. Supp. 221, 224 (E.D.N.Y. 1994) (responding to claim that defendant had falsely

claimed copyright in giftware collections in violation of section 43(a) by directing defendant to

place non-removable stickers bearing plaintiff’s copyright notice on collection items). We need
27 We recognize that in false designation of origin claims of the “reverse passing off”

variety, the defendant often has merely removed the plaintiff’s mark from a product, added its

own mark, and sold the product without altering it in any other way. In this case, however, the

defendants incorporated Montgomery’s VPIC product into their own CD-ROM products. It

could be argued that, in light of Roho, Inc. v. Marquis, 902 F.2d 356 (5th Cir. 1990), this factual

distinction is relevant to our determination of whether Montgomery has stated a claim for false

designation of origin. 

In Roho, the plaintiff manufactured specialized wheelchair cushions and hospital

mattresses. Its mattresses were constructed by assembling four wheelchair cushions together. 

The defendants bought several of the plaintiff’s wheelchair cushions, removed the plaintiff’s

labels, fastened ten of the cushions together to make a mattress, and attached their own tag to the

mattress. The plaintiff sued the defendants for, inter alia, reverse passing off under the false

designation of origin prong of section 43(a). See id. at 357-58. 

The court began its analysis by noting that the doctrine of reverse passing off is

applicable in situations where a defendant resells another person’s product that has been only

“slightly modified.” Finding that the essence of the plaintiff’s claim was that the defendant had

purchased one of the plaintiff’s products and sold it in modified form under a different label, the

court proceeded to compare the plaintiff’s cushions with the defendants’ mattress. It found that

the defendants had substantially modified the plaintiff’s cushions by attaching them together to

create a mattress; furthermore, the mattress and cushions were marketed to different consumers

for different purposes. Therefore, the court held that the defendants were not simply reselling a

relabeled and slightly modified version of the plaintiff’s product. Instead, the defendants’

mattress was a new product to which they could properly apply their own label. See id. at 360-

61.

 We assume arguendo that Roho is applicable in our circuit. See J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 27:81 (4th ed. 1996) (discussing the level of

similarity between the defendant’s and plaintiff’s works that must be demonstrated in order to

bring a reverse passing off claim, including the Second Circuit’s requirement (which is similar to

Roho’s “slightly modified” requirement) of “substantial similarity” and the Ninth Circuit’s

requirement of “bodily appropriation”); but see Debs v. Meliopoulos, (N.D. Ga. 1991) (rejecting

any requirement of either bodily appropriation or substantial similarity and focusing instead on

likelihood of confusion). This assumption, however, does not affect our conclusion that

27

not decide whether to adopt the holding of Lipton as the law of this circuit, however, because the

facts of this case are distinguishable from Lipton. The CD help menu that referred to VPIC was

not merely copyrighted by the defendants; they actually stated that they “owned” the menu. We

find that this claim of ownership was sufficient to allow Montgomery to state a claim against the

defendants under section 43(a) for false designation of origin.27 See Lipton, 71 F.3d at 474 
Montgomery has stated a claim for false designation of origin. The defendants in Roho escaped

liability not because they incorporated the plaintiff’s product into their own, but because this

incorporation substantially modified both the physical attributes and the purpose of the plaintiff’s

product. In this case, however, Montgomery created VPIC for the purpose of allowing computer

users to view picture files. Without reprogramming VPIC, the defendants incorporated it into

their CD-ROM discs for the purpose of allowing users to view the pictures on the discs. Courts

have not hesitated to find defendants liable for false designation of origin in such circumstances. 

See, e.g., F.E.L. Publications, Ltd. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409, 416-17 (7th

Cir. 1982) (finding that defendant who excluded plaintiff’s name from custom-made hymnals

that incorporated plaintiff’s songs and bore the names of defendant’s parishes would be liable for

false designation of origin if the users of the hymnals were likely to be confused as to the origin

of the songs); Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923, 938-39 (N.D. Cal. 1996);

Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1562 (M.D. Fla. 1993) (defendant who

substituted his own advertisement for plaintiff’s trademark on certain photographs and

incorporated these photographs into his computer bulletin board system held liable for false

designation of origin).

28

(quoting with approval from Cognotec Servs. Ltd. v. Morgan Guar. Trust Co., 862 F. Supp. 45,

51 (S.D.N.Y. 1994), which found that copyright infringement alone “does not amount to a . . .

false designation to establish a claim under § 43(a),” and noted that such a claim requires the

existence of “some affirmative act whereby [the defendant] falsely represented itself as the

owner of [the plaintiff’s computer program]”); see also Johnson v. Jones, 149 F.3d 494, 503 (6th

Cir. 1998) (finding that a defendant who removed the plaintiff’s name and seal from a set of

architectural plans and substituted his own had “represented [the plans] to be his own work” and

was thus liable for false designation of origin); United States Media Corp. v. Edde Entertainment

Inc., 40 U.S.P.Q.2d 1581, 1588 (S.D.N.Y. 1996) (noting that although a copyright notice is

insufficient under Lipton to support a claim of false designation of origin, “[s]uch a claim may

be supported . . . by further acts on the part of the infringer falsely representing itself as the

owner of the work”); cf. Jerome Gilson, Trademark Protection and Practice § 7.02[5], at 7-26 &
28 The court in Sega did not explicitly refer to the “false designation of origin prong” or

the “mistaken affiliation prong” in its discussion of section 43(a). Nonetheless, the passage

quoted above – which refers both to sponsorship (a part of the false designation of origin prong,

see supra note 25) and to mistaken affiliation – appears in the court’s analysis of the plaintiff’s

trademark infringement claim. In its subsequent examination of the plaintiff’s claim under

section 43(a), the court made the following statement: “For the same reasons set forth regarding

Sega’s trademark infringement claim, [the defendant’s] use of the Sega trademark is likely to be

confusing and to cause damage to Sega and, therefore, Sega is entitled to summary judgment

regarding [the defendant’s] liability under 15 U.S.C. § 1125(a).” Sega, 948 F. Supp. at 939.

29

n.32 (39th rel. 1998) (citing cases for the proposition that the phrase “false designation of origin”

includes not only geographic origin but also “origin of source or manufacture”).

As to the mistaken affiliation prong, we are not the first court to use this prong in

connection with the false designation of origin prong to hold defendants liable for violating

section 43(a). Other courts have reached the same result on facts similar to those before us. In

Sega Entertainers Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996), for example, the

defendant used the plaintiff’s mark to identify unauthorized copies of plaintiff’s video games that

the defendant had incorporated into his computer bulletin board system; the plaintiff’s mark also

appeared when a bulletin board user downloaded and played the counterfeit games. In ruling on

the plaintiff’s motion for summary judgment, the court found that the defendant had infringed

the plaintiff’s trademark and violated both the false designation of origin and mistaken affiliation

prongs of section 43(a). Id. at 937-39. In particular, the court concluded that the plaintiff had

established a likelihood of confusion because “[a]ny member of the public that logged onto [the

defendant’s bulletin board system] was likely to think that the trademark indicated that the

games were sponsored by or affiliated with Sega.” Id. at 938 (emphasis added).28
29 See, e.g., Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1383 (5th Cir. 1996); Thorn

v. Reliance Van Co., 736 F.2d 929, 932 n.5 (3d Cir. 1984) (mentioning “the widely-held view

that as a remedial statute, [section 43(a)] should be broadly construed”); F.E.L. Publications,

Ltd. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409, 416 (7th Cir. 1982); Frisch’s Restaurants,

Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 651 (6th Cir. 1982); Warner Bros.,

Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir. 1981) (noting that “§ 43(a) of the Lanham Act is

remedial in nature, and should be interpreted and applied broadly so as to effectuate its remedial

purpose”).

30

In light of the above authorities and the well-established principle that section 43(a)

should be broadly construed,29 we conclude that the district court did not err in rejecting the

defendants’ contention that Montgomery failed to state a claim under section 43(a) as a matter of

law. The jury properly was allowed to determine whether users of the defendants’ CD-ROM

discs were likely to be confused, mistaken, or deceived regarding whether the defendants were

the source of VPIC or had a license to use it.

2.

The defendants’ two remaining contentions pertain to two of the elements that a plaintiff

is required to prove in order to establish a claim for infringement of an unregistered mark under

section 43(a) of the Lanham Act, namely: (1) that the plaintiff’s mark either is inherently

distinctive or has acquired distinctiveness through secondary meaning; and (2) likelihood of

confusion. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69, 112 S. Ct. 2753,

2757-58, 120 L. Ed. 2d 615 (1992); University of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535,

1541 (11th Cir. 1985). The district court rejected the defendants’ claim that these elements had

not been proven, and the jury found them liable for violating section 43(a). Because it is for the

trier of fact to decide whether these elements have been proven, we will not reverse the jury’s
30 In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), this

court adopted as binding precedent all decisions of the former Fifth Circuit handed down prior to

October 1, 1981. 

31 The defendants do not argue that the term “VPIC,” even if used as a mark, is not

inherently distinctive and has not acquired distinctiveness through secondary meaning. We

therefore need not move beyond the threshold issue of whether that term was used as a mark in

order to consider the distinctiveness of the term itself.

31

verdict absent clear error. See Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1170 (11th Cir.

1991); Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839-840 & n.16 (11th Cir.

1983); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 n.12, 1186 (5th Cir. 1980).30

On appeal, the defendants contend that Montgomery could not possibly have met the

distinctiveness requirement because he did not use the term “VPIC” as a mark in connection

with his computer program.31 It is true that the closing screen of version 4.3 of his program

(which did not appear when users viewed the pictures on the defendants’ discs) merely contained

the following statement: “Picture file viewer for VGA/EGA ver 4.3 (C) Copyright 1990, 1991

Bob Montgomery, All Rights Reserved . . . .” Other evidence at trial demonstrated, however,

that Montgomery distributed an additional computer file with version 4.3; this file, which was

entitled “VPIC User’s Manual,” repeatedly referred to the program as “VPIC.” Montgomery

testified that the term “VPIC,” which stands for “view pictures,” was also used to describe his

program in various print publications. In fact, Montgomery’s program was referred to as

“VPIC” when it was included in a 1992 compilation of shareware programs known as the

Dvorak Top Thirty. These uses of the term “VPIC” were obviously sufficient to catch the

attention of the defendants, who themselves referred to Montgomery’s program as “VPIC” in
32 In United States v. Torkington, 812 F.2d 1347 (11th Cir. 1987), we recognized that

pre-sale confusion of actual purchasers is not the only type of confusion actionable under the

Lanham Act. Instead, the likely to confuse test is also satisfied “when potential purchasers of the

trademark holder’s products would be likely to be confused should they encounter the allegedly

counterfeit goods in a post-sale context – for example, in a direct purchaser’s possession.” Id. at

1352. In this case, however, neither the pre-sale confusion of actual purchasers nor the post-sale

confusion of potential purchasers is at issue; it is the post-sale confusion of actual purchasers –

that is, the confusion of users of the defendants’ discs (most of whom, presumably, previously

had purchased the discs they were using) – that concerns Montgomery.

33 In each of the three cases cited at the end of note 27, supra, the court recognized that

defendants may be held liable for user confusion. See F.E.L. Publications, 214 U.S.P.Q. at 416

(“By printing its own name on the hymnals and excluding F.E.L.’s, the parishes have used a

false designation of origin if the users of the hymnals are confused as to the origin of the

32

their help menu. Clearly, therefore, the jury had a sufficient evidentiary basis upon which to

conclude that Montgomery used the term “VPIC” as a mark.

The defendants also contend that Montgomery failed to demonstrate a likelihood of

confusion as to whether the defendants either were the source of VPIC or had a commercial

license to use it. Their first argument in support of this contention is that Montgomery could not

have shown any likelihood of pre-sale confusion32 by purchasers of the defendants’ CD-ROM

discs because the term “VPIC” does not appear on the packaging of any of the discs. This

argument misapprehends the nature of Montgomery’s claim for damages. Montgomery is not

claiming that the defendants used the term “VPIC” on their packaging in order to persuade

purchasers to buy their disc instead of his program; he is claiming that users of the defendants’

discs would likely be confused about either the source or the license status of VPIC and thus

would be unlikely to pay him the required licensing fee for their individual use of his program in

connection with the defendants’ discs. Such user confusion, if properly proven, is an appropriate

basis for a finding of likelihood of confusion under section 43(a).33
songs.”); Sega, 948 F. Supp. at 938 (holding that members of the public who used defendant’s

computer bulletin board system were likely to be confused regarding whether certain games

available therein were sponsored by or affiliated with the plaintiff); Playboy, 839 F. Supp. at

1554, 1561-62 (concluding that individuals who subscribed to defendant’s computer bulletin

board system and subsequently viewed certain images on the system were likely to be confused

as to whether plaintiff had sponsored, endorsed, or approved defendant’s use of its images).

33

The defendants also argue, however, that Montgomery did not provide sufficient proof

regarding the likelihood of user confusion. They note that Montgomery offered no evidence at

trial to indicate that he had been contacted by any confused users who mistakenly thought that he

and the defendants were associated. In addition, they point to Montgomery’s own statement at

trial that users of one of the defendants’ CD-ROM titles “never would even know that VPIC was

on there.”

We observe that Montgomery made this statement as part of a discussion of the process

that a user would follow in order to view a picture file on one of the defendants’ discs. 

Montgomery testified that when a user selected a picture file from the defendants’ CD menu, the

menu would utilize VPIC to display the file. Upon pressing a key, the user would be returned to

the CD menu and “never would even know that VPIC was on there.” Montgomery also testified,

however, that users who did not have one specific brand of video card in their computers would

need to visit the defendants’ CD help menu before engaging in this viewing process. As noted in

part II.C.1., supra, this help menu told users of other video cards how to set up one of two

available picture file viewing utilities – VPIC (“the best one to use”) or CSHOW – in order to

view the picture files that were present on the defendants’ discs. It is the references to VPIC that

appear in this help menu, along with the defendants’ omission of the VPIC copyright notice, that

Montgomery relies upon to establish a likelihood of user confusion. After placing
34

Montgomery’s statement in this context, we conclude that it was not clear error for the jury to

find a likelihood of user confusion despite this statement.

With respect to the defendants’ argument that no confused users had contacted

Montgomery, we have held that a plaintiff is not required to provide evidence of actual

confusion in order to prove likelihood of confusion. See Bauer Lamp, 941 F.2d at 1171-72. 

Instead, actual confusion is merely one of several factors that may be relevant in analyzing

whether there is a likelihood of confusion between two marks. See Jellibeans, 716 F.2d at 840

(listing factors); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11th Cir. 1983). 

The defendants do not contend that any of the other factors point to the conclusion that users of

their CD-ROM discs were unlikely to be confused. We therefore cannot say, based merely on

the absence of evidence of actual confusion, that the jury clearly erred in finding a likelihood of

confusion.

D.

The defendants’ next claim of error relates to the district court’s decision to preclude one

of their witnesses from testifying as an expert. At trial, the defendants’ counsel attempted to

qualify Mr. Bahram Yusefzadeh as an expert witness who would provide testimony about

computer software licensing practices, the various types of software licenses available, and the

pricing of unlimited use licenses. On voir dire, Montgomery’s counsel established that

Yusefzadeh’s knowledge and experience pertained to the development, marketing, and licensing

of commercial software used by individual banks. Yusefzadeh had no experience either in

negotiating utility licenses for software that was distributed as “shareware” – such as VPIC – or
35

in marketing software through distributors under a “shrink-wrap” license – the method by which

the defendants marketed their four CD-ROM titles. Montgomery’s counsel then objected to the

admission of expert testimony by Yusefzadeh, and the district court sustained the objection on

two grounds. First, the court found that Yusefzadeh was not qualified as an expert because the

defendants had not shown that his experience with banking software was germane to the issues

involved in the case. Second, the court noted that the meaning of the terms used to describe the

various types of software licenses (e.g., single-user, multi-user, and unlimited use) would be selfevident to the jury and thus did not require explanation by an expert.

Our consideration of the district court’s ruling is informed by Fed. R. Evid. 702, which

states:

If scientific, technical, or other specialized knowledge will assist the trier of fact

to understand the evidence or to determine a fact in issue, a witness qualified as

an expert by knowledge, skill, experience, training, or education, may testify

thereto in the form of an opinion or otherwise.

When recast using the language of Rule 702, the two grounds given by the district court for its

ruling essentially were (1) that Yusefzadeh was not “qualified as an expert by . . . experience” to

testify to “a fact in issue” in this case; and (2) that his testimony describing the various types of

software licenses would not “assist the trier of fact to understand the evidence.” The defendants

challenge the first of these grounds on appeal. They claim that the basic principles of

commercial software licensing also apply to shareware and utility licensing, and therefore
34 Specifically, the defendants argue that Yusefzadeh was qualified to provide the

following testimony relating to damages: (1) it is not unusual in the computer licensing business

for a licensee to negotiate an unlimited use license for a lump sum; and (2) the issuance of a

newer and improved version of a computer program renders older versions virtually worthless. 

These two opinions appeared in the expert witness report prepared by Yusefzadeh and filed by

the defendants. See Fed. R. Civ. P. 26(a)(2).

36

contend that Yusefzadeh’s commercial licensing experience was germane to the issue of

Montgomery’s damages.34

We review the district court’s ruling regarding Yusefzadeh’s qualifications under a

deferential standard. “A trial court has wide discretion in determining whether to exclude expert

testimony, and its action will be sustained unless manifestly erroneous.” United States v. Cross,

928 F.2d 1030, 1049 (11th Cir. 1991) (internal quotation marks omitted). We find no indication

of manifest error here. After considering the defendants’ assertion that Yusefzadeh’s experience

in the commercial software licensing field was also applicable in the shareware and utility

licensing field, the district court concluded that these two fields were “totally distinguishable.” 

Because the defendants present no support for their assertion on appeal, we defer to the district

court’s conclusion.

E.

Finally, the defendants contend that the district court erred in awarding Montgomery

$142,289.26 in attorneys’ fees on his copyright and Lanham Act claims. Although the district
35 The defendants requested that the court make such an allocation. While the court

deemed this request to be “logical and well-founded,” it was unable to make the allocation

because Montgomery’s attorneys neither divided their billed time between the claims nor

indicated whether they had spent substantially more time on one of the claims.

36 See Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 853-54

(11th Cir. 1990); Johnson v. Georgia Highway Express, Inc., 488 F.2d 714, 717-19 (5th Cir.

1974). We note that the jury in this case found that the defendants’ infringement was willful. 

Such a finding of willful infringement, while it “does not compel a fee award, . . . is an

‘important factor’ in the district court’s ‘discretionary decisionmaking.’” Cable/Home

Communication, 902 F.2d at 854 (quoting Casella, 820 F.2d at 366).

37

court did not allocate a specific portion of its award to each claim,35 we review the defendants’

contentions regarding the propriety of a fee award under each claim in turn.

1.

In a civil copyright infringement action, 17 U.S.C. § 505 (1994) empowers the court to

award a “reasonable attorney’s fee to the prevailing party.” Such fees “are to be awarded . . .

only as a matter of the court’s discretion.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534, 114 S.

Ct. 1023, 1033, 127 L. Ed. 2d 455 (1994). Where the record reveals that the district court

weighed the relevant factors36 and exercised its discretion, as it did here, we will not question the

court’s decision to grant or deny fees absent an abuse of that discretion. See Casella v. Morris,

820 F.2d 362, 366-67 (11th Cir. 1987).

The defendants contend that the district court abused its discretion in two ways when it

awarded attorneys’ fees to Montgomery on his copyright claim. First, they argue that because

Montgomery’s evidence of damages was based on unregistered versions of VPIC, an award of

attorneys’ fees was not permitted by 17 U.S.C. § 412 (1994). Section 412 states, in pertinent
38

part, that “no award . . . of attorney’s fees . . . shall be made for . . . any infringement of

copyright in [a work] commenced before the effective date of its registration . . . .” We reject

this argument for the reasons discussed in parts II.A.2. and II.B., supra. 

The defendants’ second argument is that because Montgomery had a contingency fee

agreement with his attorneys, the district court should not have awarded attorneys’ fees based

upon the amount of time that Montgomery’s attorneys spent on the case. Such an award, in the

defendants’ view, impermissibly included a premium above the fees actually incurred by

Montgomery. While the defendants certainly are correct that an award of attorneys’ fees under

section 505 should not include an additional amount – in excess of the reasonable value of

services rendered – by way of penalty, see 4 Nimmer § 14.10[C], we are convinced that no such

amount was awarded here. As the district court recognized, the contingency fee agreement

between Montgomery and his attorneys provided that the attorneys were entitled to a certain

percentage of any “amount recovered” from the defendants. The term “amount recovered” was

defined to include “the total amount awarded by the Court or jury, together with all attorneys’

fees awarded by the Court, and shall include that amount of attorneys’ fees awarded as a

contingency fee multiplier.” Clearly, the terms of this agreement did not prevent the district

court from awarding Montgomery a reasonable amount in attorneys’ fees that was based on the

amount of time his attorneys spent on the case. We therefore conclude that the district court did

not abuse its discretion by awarding attorneys’ fees to Montgomery on his copyright claim.

2.
39

Turning to the issue of fee awards under the Lanham Act, section 35(a) provides that

“[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 15

U.S.C. § 1117(a) (1994). Such an award is available in actions under section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a), that involve unregistered trademarks. See Rickard v. Auto

Publisher, Inc., 735 F.2d 450, 458 (11th Cir. 1984). The jury found that Montgomery’s claim

under section 43(a) was an “exceptional” case, and the district court exercised its discretion to

award him attorneys’ fees on that claim. 

On appeal, the defendants argue that Montgomery is not entitled to fees because he was

not the “prevailing party” on his Lanham Act claim. We have stated in a related context that the

prevailing party is “the party succeeding on a significant litigated issue that achieves some of the

benefits sought by that party in initiating the suit.” Cable/Home Communication Corp. v.

Network Prods., Inc., 902 F.2d 829, 853 (11th Cir. 1990) (applying this definition to an award of

attorneys’ fees in the copyright infringement context). “Where the [party’s] success on a legal

claim can be characterized as purely technical or de minimis, a district court would be justified

in concluding that [this definition] has not been satisfied.” Texas State Teachers Ass’n v.

Garland Indep. Sch. Dist., 489 U.S. 782, 792, 109 S. Ct. 1486, 1493-94, 103 L. Ed. 2d 866

(1989). 

The defendants contend that Montgomery’s success was de minimis because the jury

awarded him only $30 in damages on his Lanham Act claim. Montgomery responds that the jury

was instructed not to award him “a double recovery of the same damages” on his copyright and

Lanham Act claims. He argues, therefore, that the incremental $30 award is consistent with the

conclusion that he prevailed on his Lanham Act claim.
37 We express no opinion on the question of whether the incremental $30 damage award

alone would be sufficient to make Montgomery a “prevailing party.”

40

We need not focus solely on this damage award, however, in order to determine whether

Montgomery is entitled to attorneys’ fees. It is also important to note that the district court, at

Montgomery’s request, permanently enjoined the defendants from producing or transferring CDROM discs containing VPIC under the relevant provisions of both the Lanham and Copyright

Acts. See 15 U.S.C. § 1116 (1994); 17 U.S.C. § 502 (1994). Montgomery’s success in

procuring this injunction achieved a significant benefit – namely, preventing the defendants from

falsely designating the origin of VPIC – that he sought in initiating this suit. Considering both

the damages and injunctive relief that he received on his Lanham Act claim, therefore, we

conclude that Montgomery was a “prevailing party” within the meaning of 15 U.S.C. §

1117(a).37 The district court did not err in awarding him attorneys’ fees on his Lanham Act

claim.

III.

For the foregoing reasons, the challenged rulings of the district court are AFFIRMED.