### In the 

# United States Court of Appeals For the Seventh Circuit

____________________ Nos. 17-2241 & 18-2534

A MY L EE S ULLIVAN, d/b/a D ESIGN K IT, Plaintiff-Appellee, Cross-Appellant,

v.

F LORA, I NC ., Defendant-Appellant, Cross-Appellee

.

____________________ Appeals from the United States District Court for the Western District of Wisconsin. No. 3:15-cv-298 — William M. Conley
, Judge

.

____________________

A RGUED F EBRUARY 8, 2019

— D ECIDED A UGUST 21, 2019

____________________

Before F LAUM, B ARRETT, and S CUDDER , Circuit Judges

. S CUDDER , Circuit Judge . This appeal presents a question of fi rst impression for us on the scope of statutory damages recoverable under the Copyright Act of 1976. Section 504(c)(1) of the Act permits a copyright holder “to recover, instead of actual damages and pro fi ts, an award of statutory damages for all infringements involved in the action, with respect to2 Nos. 17-2241 & 18-2534

any one work,” with Congress se parately instructing that, indetermining statutory damages, “all the parts of a compilation or derivative work constitute one work.” This case requires us to determine what constitutes “one work” in a fact pa tt ern where a jury found infrin gement on multiple works registered in a single copyright application. Amy Sullivan, a graphic design artist, produced a series of 33 illustrations for Flora, Inc., an herbal supplement company, to use in two advertising campai gns. Upon noticing that Flora was using the illustrations in other ads, Sullivan brought suit for copyright infringement and opted to pursue statutorydamages. She did so to maximize her potential payout by classifying each of her 33 illustratio ns as “one work” within the meaning of § 504(c)(1) of the Co pyright Act. Flora disagreed, contending that the illustratio ns were part of two broadercompilations and thus, if Sullivan prevailed, § 504(c)(1) limited her to just two statutory damage awards—one award for infringement on the illustrations used in each of the two advertising campaigns. The district court agreed with Sullivan, and instructed the jury that she could recover separate awardsof statutory damages for 33 acts of infringement on 33 separate illustrations. The jury found infringement on each of the 33 illustrations and returned a statutory damages award of $3.6 million. On appeal Flora challenges th e district court’s ruling onstatutory damages and separate rulings on two additional defenses to liability asserted at trial. While procedural shortcomings defeat these la tt er two challenges, Flora is right that the district court commi tt ed error in permi tt ing separate awards of statutory damages unaccompanied by any fi nding that each or any of the 33 illustrations constituted “one work”Nos. 17-2241 & 18-2534 3

within the meaning and protecti on of § 504(c)(1) of the Copyright Act. It is neither appropri ate nor possible for us to make that fi nding on the record before us. So we vacate the judgment in Sullivan’s favor and remand for further proceedings.

I Flora, Inc. manufactures herbal supplement and health products. In 2013, looking to produce advertisements for two new products, “7-Sources” and “Flor-Essence,” the companycontacted freelance production specialist Joseph Silver to develop two animated videos. Unbeknownst to Flora, Silverthen contacted Amy Sullivan, a Wisconsin-based graphic design artist, to develop illustrations that would then be animated for use in the advertisements. In Sullivan’s wri tt en agreement with Silver, she granted Flora exclusive rights to her illustrations in the two speci fi ed advertising campaigns.Over the following months, Silver and Sullivan corresponded to develop the illustrations. Silver made suggestions on color, style, and text, while also o ffering rough outlines and sketches to guide Sullivan’s work. For her part, Sullivanused digital design software to create the ultimate illustrations, sometimes incorporating Silver’s suggestions and other times not. Flora used Sullivan’s illustrations in its fi nal advertisements for the two product lines.At some point in the summer or fall of 2013, Sullivan noticed that Flora was using her illustrations to promote other product lines. Exactly when the unauthorized use occurred is unclear. What the record shows for certain is that, on October 16, 2013, Sullivan sent Flora a le tt er complaining of copyright infringement. At that time, however, Sullivan had not (yet) registered her illustrations with the Copyright O ffi ce.4 Nos. 17-2241 & 18-2534

Sullivan subsequently did so in two copyright applications approved by the U.S. Copyright O ffi ce. Registration “VA 1-888-930” had an e ffective date of November 6, 2013 and covered the “7 Sources Illustration Collection.” It listed 17 separate illustrations with names like “Frame7” and “7S-Bo tt le Illustration.” Registration “VA 1-893-717” had an e ffective date of December 12, 2013 and covere d the “FEV Illustration Collection,” short for Flor-Essence. It listed 16 separate illustrations with names like “Frame-3,” “Herbs,” and “Amy Tex Bubble.”

When se tt lement negotiations failed, Sullivan sued Flora for copyright infringement in the Western District of Wisconsin. The Copyright Act allows a plainti ff to choose to recover either statutory damages or actual damages. See 17 U.S.C. § 504(a). The choice must co me before the entry of fi nal judgment. See id. § 504(c)(1)

. As the litigation progressed, Sullivan chose to pursue statutory damage s, with the parties then staking out opposing positions onthe scope of a permissible award under § 504(c)(1). These competing positions frame the primary issue before us on appeal.

Flora contended that Sullivan’s 33 illustrations fell into one of two compilations (corre sponding with the company’stwo advertising campaigns in which the illustrations appeared and also aligning with the two copyright registrations) and thus § 504(c)(1) precluded Sullivan from receiving more than two separate awards of statutory damages—one for each compilation infringed. Sullivan begged to di ffer. She urgedthe district court to treat each of the 33 illustrations as 33 separate works entitled to 33 sep arate awards of statutory damages upon a showing that Flora infringed each work.Nos. 17-2241 & 18-2534 5

Who was right very much ma tt ered, for Congress authorized an award of between $750 and $30,000 in statutory damages for each work infringed, and up to $150,000 per work if a jury found willful infringement. See id . § 504(c)(2). Put most simply, Sullivan wanted the copyrighted work multiplier to be 33 and not two. The district court addressed the issue pretrial. It did so by focusing on Sullivan’s copyright applications. The certi fi cates from the U.S. Copyright O ffi ce showed that Sullivan had registered each of the 33 illustrations in two applications, withthe illustrations grouped to correspond with Flora’s two advertised product lines. The Copyright Act and its implementing regulations allow the registra tion of multiple works this way. See id . § 408(c)(1) (authorizing the extension of copyright protection from a single regist ration to multiple works listed in the registration application); 37 C.F.R. § 202.3(b)(4) (same). Relying on these provisions and drawing upon the statute’s de fi nition of “collective works,” the district court determined that “[Sullivan’s] copyrighted works are collective works, in which contributions, constitu ting separate and individual works in themselves, are assembled into a collective whole.” See 17 U.S.C. § 101 (de fi ning “collective works” this way). From there the district court co ncluded that “the [33] individual illustrations are individual works, entitling Sullivan to separate statutory damages awards.” The case advanced to trial against the backdrop of this ruling. Trial proceeded in three phases. In phase one, the court tasked the jury with determ ining whether Sullivan was thesole author of the copyrighted works, or instead whether Silver was a joint author capable of granting his own rights to Flora. In phase two, the jury considered whether Flora copied6 Nos. 17-2241 & 18-2534

and used Sullivan’s illustrations without authorization. In phase three, the jury determin ed what statutory damages resulted from the infringement. The jury ruled in Sullivan’s favo r at each phase. In phases one and two, the jury determined that Flora had copied andused Sullivan’s illustrations willfully and without authorization and furthermore that the works were not joint works but instead belonged to Sullivan alone. At phase three, the jury awarded $3,600,000 in statutory damages, fi nding that Flora willfully infringed on each of Sullivan’s 33 individual illustrations. The jury also found $143,500 in actual damages, which Sullivan declined in favor of the larger statutory award.

II Flora’s main contention on appe al is that the district court commi tt ed legal error in determining that Sullivan could collect statutory damages for infringement on each of the 33 illustrations as separate works. Sullivan urges us to avoid the issue on the basis that Flora wa ived any challenge to the damages award by not expressly objecting to the district court’s jury instruction. We cannot agr ee. While Flora could have objected, the fairest reading of the record is that the company— throughout the litigation—had ma de its position on statutory damages abundantly clear, including by brie fi ng the issue during the pretrial proceeding th at resulted in the district court’s determinative ruling. The law required no more in this circumstance. See Dresser Industries, Inc., Waukesha Engine Div. v. Gradall Co. , 965 F.2d 1442, 1450 (7th Cir. 1992) (explaining that the failure to object to a jury instruction embodying a legal determination “may be disregarded if the party’s position had previously been clearly made to the court and it is plainNos. 17-2241 & 18-2534 7

that a further objection would be unavailing”). So we proceed to the merits.

A The scope of statutory damage s available to Sullivan turns on § 504(c)(1) of the Copyright Act:[T]he copyright owner may elect, at any time before fi nal judgment is rendered, to recover, instead of actual damages and pro fi ts, an awardof statutory damages for all infringements involved in the action, with respect to any one work ,for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not lessthan $750 or more than $30,000 as the court considers just. For the purposes of this subsection, allthe parts of a compilation or derivative work constitute one work. 17 U.S.C. § 504(c)(1) (emphasis added). By its terms, § 504(c)(1) limits a plainti ff’s recovery to oneaward of statutory damages for each work infringed. Put another way, Congress focused the inquiry on the number of protected works infringed, not the number of infringements. See Twin Peaks Prods., Inc. v. Publications Int’l Ltd. , 996 F.2d 1366, 1381 (2d Cir. 1993). In doing so, Congress imposed the additional limitation that, in awarding statutory damages, each part of a compilation shall be considered “one work.” 17 U.S.C. § 504(c)(1). In construing § 504(c)(1), it is therefore essential to determine not only what constitutes “one work”—a term Congress left unde fi ned in the Copyright8 Nos. 17-2241 & 18-2534

Act—but also when multiple works combine to form a “compilation,” a term Congress did de fi ne in the statute. In copyright law, a “work”—as its name implies—re fl ects an original expression, whether in the form of art, literature, music, or another tangible medi um of expression, that may be entitled to protection. See 17 U. S.C. § 102(a). An artist seeking copyright protection for multiple works can do so in a single registration application. See 17 U.S.C. § 408(c)(1) (allowing for a single registration for a grou p of related works); 37 C.F.R. § 202.3(b)(4) (same); see also 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright§ 7.18(c) (Rev. Ed. 2019) (discussing the Copyright Act’s fl exible approach in allowing a single registration for multip le works). The Copyright O ffi ce’s granting such a single applicat ion results in each registered work receiving copyright protection. See Wildlife Express Corp. v. Carol Wright Sales, Inc. , 18 F.3d 502, 507, 508 (7th Cir. 1994) (explaining that “[a] certi fi cate of registration from the U.S. Register of Copyrights constitutes prima facieevidence of the validity of a copyright” and “[a] n owner of a copyright is protected against unauthorized copying”). Sullivan charted thisexact course here, applying to protect what she called “illustration collections” and receiving two certi fi cates of registration from the Copyright O ffi ce. These certi fi cates resulted inSullivan’s 33 illustrations being registered and therefore having copyright protection.The district court began and ended its analysis of the statutory damages question with this same observation. It put its ruling on the scope of statutory damages this way: Based on the undisputed fact that plainti ffregistered her two illustration collections as a collective or group work under 17 U.S.C.Nos. 17-2241 & 18-2534 9

§ 408(c)(1) and 37 C.F.R. § 202.3(b)(4)(i), and that that identi fi cation appears appropriate—or, at least, defendant [Flora] has failed to explainwhy the copyrighted works do not appropriately fall within that designation—the courtconclude[s] that the copyrighted works are collective works, in which contributions, constituting separate and individual works in themselves, are assembled into a collective whole. (Dkt. 240 at 1) (emphasis in the original). The court reinforced its ruling when instructing the ju ry on the scope of statutory damages it could award Sullivan upon fi ndings of infringement by Flora, explaining that “for purposes of considering a statutory damages award, you may consider each illustrationin the 7 Sources illustration collection and the Flor-Essence illustration collection as an independent, copyrighted work.”

The district court drifted o ffcourse in seeing the 33 illustrations as “collective works” without fi rst asking, as § 504(c)(1) requires, whether each illustration constituted “one work” or instead combined to form a “compilation.” The misstep becomes apparent upon recognizing that Congress, in de fi ning “compilation” in § 101 of the Copyright Act, madeclear that the term “includes collective works.” So the consequence of the district court characterizing the 33 illustrationsas “collective works” was that the illustrations then also constituted a “compilation” and thus , by operation of § 504(c)(1),“all the parts of a compilation”—each of Sullivan’s 33 illustrations—“constitute one work.” But that conclusion is at odds with the district court also de termining that the Copyright Act authorized the jury to return 33 separate awards of statutory damages for infringement on each of the 33 illustrations.10 Nos. 17-2241 & 18-2534

The knot untangles by returning to the language of § 504(c)(1). The key distinction in § 504(c)(1) is not between a compilation and a collective work—indeed, § 101’s de fi nition makes plain that the former includes the la tt er—but instead between “one work” and a “com pilation.” Or, stated anotherway, the proper inquiry under § 504(c)(1) asks whether Sullivan’s 33 illustrations constitute 33 individual works or instead are parts of two compilati ons (corresponding with thetwo advertising campaigns in which Flora used the illustrations). The district court stopped short of asking this question (or pu tt ing it to the jury) by givingcontrolling weight to the fact that Sullivan registered her illustrations as a group andtherefore protected each of the 33 illustrations. That observation, while re fl ecting an accurate understanding of the registration process, does not resolve the scope of statutory damages available to Sullivan. Th at answer, we conclude, must come by parsing § 504(c)(1) and distinguishing between a work and a compilation. Identifying the right question is easier than knowing the right answer, though. And this is where we bene fi t from not being the fi rst court to consider the scope of statutory damages available under § 504(c)(1)—and, more speci fi cally, the meaning of “one work.”

BOther circuits seem to follow one of two approaches in answering the question presented, though the dividing lines are far from absolute. Start with th e Second Circuit and its decision in Bryant v. Media Right Prods., Inc. , 603 F.3d 135 (2d Cir. 2010). The case entailed allegations of infringement on two copyrighted music albums, each with ten songs, and the parties disputing whether statutory damages should beNos. 17-2241 & 18-2534 11

measured on a per-album or per-song basis. The court observed that each song had sep arate copyright protection and,in addition to being sold as part of an album, could be purchased individually through retailers like iTunes. See id. at138. Even when bought individually, however, the songs remained part of and indeed were produced and marketed as an album. That fact resolved the statutory damages question because, as the court saw it, “[ a]n album falls within the Act’s expansive de fi nition of compilation.” Id . at 140. “Based on aplain reading of the statute,” the reasoning followed, “infringement of an album should result in only one statutory damage award.” Id . at 141. More to it, the court emphasized, the “[Copyright] Act [in § 504(c)(1)] speci fi cally states that all parts of a compilation must be treated as one work for purposes of calculating statutory damages.” Id. at 142. And, drawing reinforcement from the Copyright Act’s de fi nition of compilation, the Second Circuit added that “[t]he fact thateach song may have received a separate copyright is irrelevant to this analysis.” Id . at 141. In so holding, the Second Circuit distinguished its prior decision in Twin Peaks Productions v. Publications International , where the court held that eight distinct statutory damages awards were available for infringement on the copyrighted scripts of eight television episodes that the defendant later combined into a single book. 996 F.2d 1366, 1381 (2d Cir.1993). Separate awards of statutory damages were appropriate in Twin Peaks , the Bryant court subsequently explained, because “the plainti ff

had issued the works separately, as independent television episodes,” and it was “the defendant[who] printed eight teleplays from th e series in one book.” 603 F.3d at 141. Even though each episode of Twin Peaks contributed to the drama’s broader plot, wh ich unfolded over the course12 Nos. 17-2241 & 18-2534

of a season, the fact remained th at the episodes aired at separate times and, in this way, stood on their own enough toavoid being grouped with the other episodes and thus considered a compilation within the meaning of the Copyright Act. The upshot, then, was that the plainti ff in Twin Peaks was entitled to eight separate statutory damage awards for each infringed episode. See Twin Peaks , 996 F.2d at 1381; see also WB Music Corp. v. RTC Communication Grp., Inc. , 445 F.3d 538,540–41 (2d Cir. 2006) (following the same approach and reversing the district court’s limitation of a plainti ff’s statutory damages on a per-album basis). The Second Circuit’s approach—embodied, as we see it, in its most recent decision in Bryant —gives controlling weight to the last sentence of § 504(c)(1 ), where Congress directed that, for purposes of assessing statut ory damages, “all the parts of a compilation or derivative work constitute one work.” The approach has a limiting e ffect. Take, for instance, the songwriter who produces an album, registers the album under the group registration process made available by 17 U.S.C. § 408(c)(1), only then to learnsomeone infringed multiple tracks. The artist would be entitl ed to one and only one award of statutory damages because “it is the copyright holders whoissued their works as ‘compilations’; they chose to issue Albums,” instead of producing each song as independent singles. Bryant, 603 F.3d at 141. The Second Circuit’s approach,in short, places dispositive weight on the songwriter’s bundling of songs—protected though they may be at the individual level—into an album. It is the production and publication of each song as part of an album that limits the songwriter’s recovery to one award of statutory damages no ma tt er the infringement that may have occurr ed at the level of any individual song.Nos. 17-2241 & 18-2534 13

Recognizing this limitation, most other circuits have interpreted § 504(c)(1) a di fferent way. A good illustration comes from the First Circuit’s decision in Gamma Audio & Video, Inc. v. Ean-Chea , 11 F.3d 1106, 1118 (1st Cir. 1993). The court there considered how to award statutory damages for infringement on four episodes of the televisi on series Jade Fox, where the episodes had been registered together on one copyright certi fi cate and later rented or sold in sets containing multiple episodes. Construing § 504(c)(1), the court adopted what it called an “independent economic value test” to determine if each episode of Jade Fox had copyright value unto itself and was therefore an independent work—in statutory terms, “one work”—for purposes of awarding statutory damages. Id . at 1116–17.The First Circuit explained that such a substantive economic inquiry be tt er re fl ected the value of each episode and gave e ffect to not only the language Congress used in § 504(c)(1), but also the absence on a broader level of anything in “either the statute or the corresponding regulations that precludes a copyright owner from registering the copyrights in multiple works on a single registration form while still collecting an award of statutory damages for the infringement on each work’s copyright.” Id . at 1117. Applying the test, the First Circuit determined that the evidence before it supported

a fi nding that each episode of Jade Fox, although plainly partof a television series, constituted an independent work entitled to its own award of statutory damages. See id. at 1117–18. The Ninth, Eleventh, and D.C. Circuits follow the First Circuit’s approach. See, e.g. , VHT, Inc. v. Zillow Grp., Inc. , 918 F.3d 723, 747 (9th Cir. 2019) (adherin g to its discussion in Columbia Pictures Television, Inc. v. Krypton Bd. of Birmingham, Inc. ,14 Nos. 17-2241 & 18-2534

259 F.3d 1186 (9th Cir. 2001) and explaining that “the question of whether something—like a photo, television episode, or soforth—has ‘independent economic value’ informs our analysis of whether the photo or episode is a work” within the meaning of § 504(c)(1)); MCA Television Ltd. v. Feltner , 89 F.3d 766, 769 (11th Cir. 1996) (employingthe same test to determine “whether each expression has an independent economic value and is, in itself, viable”); Walt Disney Co. v. Powell ,897 F.2d 565, 570 (D.C. Cir. 1990) (asking whether certain copyrighted materials are “distinct, viable works with separate economic value and copyright lives” to determine the scope of available statutory damages under § 504(c)(1)).The Fourth Circuit is the only other circuit to have considered the question presented. Its answer came with mixed signals, following the Second Circuit’s approach in Bryant but suggesting di fferent facts may fi t with a di fferent construction of § 504(c)(1). See Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 285 (4th Cir. 2003), abrogated on other grounds byReed Elsevier, Inc. v. Muchnick , 559 U.S. 154 (2010). In Xoom , the court determined that two collections of numerous digital images, protected under two copyright registrations, were compilations and thus only subject to two statutory damages awards under § 504(c)(1). See id . at 285 n.8 (explaining that “Imageline is entitled to one award of statutory damages per work infringed because SuperBundle and Master Gallery are compilations or derivative works in which Imageline holds copyrights”). At another point in its opinion, ho wever, the Fourth Circuit appeared to agree that “the Copyright Act does not bar multiple awards for statutory damages wh en one registration includes multiple works.” Id . at 285. This quali fi cation is substantial and seems to suggest the Fourth Circuit may chart a di fferentNos. 17-2241 & 18-2534 15

course—perhaps the one followe d by most other circuits—on di fferent facts.

C Section 504(c)(1) is hardly a model of clarity, especially when considering, as we are here, infringement of multiple protected works and a plainti ffseeking multiple, separate awards of statutory damages. It is not at all surprising that two approaches fi nd recognition in the caselaw of other circuits. In the end, we conclude, in closer keeping with the approach of the First, Ninth, Eleventh, and D.C. Circuits, that § 504(c)(1) requires courts co nfronted with circumstanceswith multiple works and multiple infringements to determine, or to charge a jury with fact fi nding tailored to answering, whether the protected works have value only in and through their composite whole (and thus meet the de fi nition of a “compilation” in § 101) or instead have standalone value at the level of “one work.” A protected work has standalone value if the evidence shows th at work has distinct and discernable value to the copyright holder. See Gamma Audio , 11 F.3d at 1116 (explaining that“separate copyrights are not distinct ‘works’ unless they can live their own copyright life”—a viability determination that turns on whether the work in question has independ ent economic value); see also Feltner, 89 F.3d at 769; Walt Disney Co. , 897 F.2d at 569.The question at the heart of the Second Circuit’s more limited approach in Bryant —which focuses on whether the copyright holder marketed and distributed the multiple protected works as individual works or as a compendium of works (like, for example, an album)—is certainly relevant to the inquiry we believe Congress has required in § 504(c)(1). But we also believe the inquiry needs to extend further to16 Nos. 17-2241 & 18-2534

discern and give more fulsome e ffect to the distinction Congress drew in the text of § 504( c)(1) between “one work” and a “compilation.” See Yellow Pages Photos, Inc. v. Ziplocal, LP,795 F.3d 1255, 1281 (11th Cir. 2015) (employing a similar approach to discerning whether mu ltiple photos constituted acompilation or individual works). To stop at the Second Circuit’s inquiry does not allo w a possibility Congress made available in § 504(c)(1)—a situation where a copyright holder encounters infringement on multiple works available in the market as a group but where discernable value lies at the level of a particular individual work—for example, at the level of a particular photo or song which, although released as part of an album, is likewise marketed and available at the individual level. Sellers regularly allow buyers to acquire a part of a whole and the market assigns value accordingly. The inquiry and fact fi nding demanded by § 504(c)(1) is more functional than formal, taking account of the economic value, if any, of a protected wo rk more than the fact that the protection came about by an artist registering multiple works in a single application. The necessary fi nding requires a focus on where the market assigns valu e. By way of an analogy, imperfect though it may be, think in the fi rst instance of the multiple protected works as a quiltand then ask whether any one individual patch has discern able, independent economic value—whether once separated from the quilt a particular patch lives its own copyright life (as “one work”)—or instead whether the value lies in the patches’ combined assembly into the quilt as a whole (as a “compilation”). Our analysis must end here, th ough, as the record as itpresently stands does not allow us to resolve as a factual matter whether all or part of Sullivan’s 33 illustrations areNos. 17-2241 & 18-2534 17

separate works with distinct and discernable value or part of two broader compilations. The di strict court did not ask (or put to the jury) the questions we see as necessary for resolving the statutory damages question. See VHT, Inc. , 918 F.3d at 748 (remanding on similar reasoning for additional fact fi nding). This error requires us to vaca te the judgment in Sullivan’s favor. Our doing so in no way calls the jury’s fi ndings of infringement into question. On remand the district court will have ample fl exibility to structure the proceedings to enable the requisite fi ndings pertinent to statutory damages.

III Invoking an altogether di fferent provision of the Copyright Act, Flora advances a separate and independent challenge to the jury’s statutory damages award based on the timing of the company’s infringement on Sullivan’s copyrighted works. The district court determined that Flora waived this challenge by raising it much t oo late at trial. We agree. Section 412 of the Copyright Act prohibits an award of statutory damages for “any infrin gement of a copyright in an unpublished work commenced before the e ffective dates of registration.” 17 U.S.C. § 412(1). By its terms, § 412 imposes a bar to recovering statutory damages if a defendant can show that any infringement began before the registration of the works in question.

Neither the district court nor jury ever considered the timing bar imposed by § 412. The reason is because Flora raised the § 412 limitation for the fi rst time during the third and fi nal phase of trial—the damages phase—and even then, only at a side bar on an unrelated issue. Flora’s doing so surprised the district judge, as the position marked a substantial shift in the18 Nos. 17-2241 & 18-2534

company’s trial strategy. All along Flora had sought to avoid liability based on the defense of joint authorship—by arguingthat Silver and Sullivan jointly created each of the 33 illustrations—and thus that the company (through Silver’s joint ownership) could not possibly be liable for infringement. By invoking § 412 and advancing a timing defense, Flora changed course, recognizing (undoubtedlyin response to the jury’s verdict in phase two) that it had infringed on Sullivan’s worksbut arguing that the infringement began before she had registered the illustrations. In Flora’ s view, the timing of the infringement—before Sullivan’s registration—triggered the application of § 412 to bar any award of statutory damages.The district judge reacted to Flora’s raising this § 412 argument when it did with mean ingful frustration. The court rightly underscored that Flora made no mention of any § 412 defense in its answer, motion to dismiss, or request for summary judgment. Nor, the district court added, did Flora ever say a word about any possible § 412 bar at the jury charge conference—at a time when the court and parties could have considered how to put the infringement-timing question to the jury. Indeed, when asked di rectly whether either party had concerns with the jury instruction on statutory damages, counsel for Flora responded, “None, Your Honor.” As the district court saw it, then, Flora waited to pursueand raise its newfound § 412 defense until the close of evidence and thus well after eitherparty could have structured its presentation of evidence—as to liability and defenses alike—to address the timing pr edicate on which application of the damages bar hinges. Or, as the district judge put the point, “by si tt ing on its challenge until the end of the evidence, defendant left plainti ff and the court to believe that itNos. 17-2241 & 18-2534 19

had conceded this requirement for an award of statutory damages.” Accordingly, the district court concluded that Flora had waived any § 412 timing defense.

We see no error in the distri ct court’s conclusion, in no small part because § 412 operates akin to an a ffi rmative defense that Flora should have raised far earlier in the proceedings. Waiting this long resulted in waiver. See Carr v. O’Leary, 167 F.3d 1124, 1126 (7th Ci r. 1999) (explaining that a party’s unreasonable delay in advancing an argument “is normally a compelling ground for deeming even a good ground waived”). Our cases are clear that waiver, not forfeiture, occurs when a defe ndant waits until the eleventh hour or beyond to raise an a ffi rmative defense and in doing so prejudices the opposing party. See Reed v. Columbia St. Mary’s Hosp. , 915 F.3d 473, 482 (7th Cir. 2019). “Allowing a last-minute defense that intr oduces new factual and legal issues after discovery has closed,” we have emphasized, “raises the costs of litigation and allows the party that was at least negligent in failing to plead its defense to take unfair advantage of its opposing party.” Id

. It is hard to see what happened here any other way than the district judge put it: for wh atever reason, strategic or inadvertent, Flora waited to raise its timing-of-infringement defense until the jury had already found infringement, leaving the trial record altogether missing evidence on precisely when the infringement began—the ly nchpin inquiry under § 412. Without any notice that this change of course was coming, Sullivan had no reason to believe her infringement claim mayrise or fall on evidence pinpointing the timing of Flora’s infringement on each of the 33 illustrations.20 Nos. 17-2241 & 18-2534

In these circumstances, we cannot say the district court was wrong to conclude that “Flora, at minimum , needed to put the timing requirement of § 412 inissue by timely challenging it” and its failure to do so constituted waiver.

IV

Flora’s fi nal e ff ort on appeal to avoid liability comes in its contention that the district court erred in not se tt ing aside thejury’s verdict on the basis that the trial evidence showed beyond dispute that Silver and Sullivan were joint authors of the 33 illustrations. Here too, though, Flora runs into waiver, as the company failed to present th is challenge to the district court in response to the jury’s adverse verdict. The pathway to that conclusion is straightforward. Joint authorship is a defens e to copyright infringement. See Janky v. Lake County Conven tion and Visitors Bureau , 576 F.3d 356, 361 (7th Cir. 2009). The defense, as its name implies, turns on whether two or more authors jointly created the work in question. If so, th ey hold undivided interests in the work and the underlying ri ghts are shared and not exclusive to one or the other authors. See 17 U.S.C. § 201(a); Janky, 576 F.3d at 361 (“The bene fi ts of co-authorship are therefore signi fi cant: each author may use or license the joint work.”). Throughout the pretrial proceedings, Flora sought toshow that Joseph Silver’s contributions to Sullivan’s illustrations resulted in joint authorsh ip, which in turn would have allowed Silver to authorize Fl ora’s use of the illustrations, eliminating the basis for infringement. A copyright owner cannot infringe its own work. Flora continued to advance the joint authorship defense at tria l, moving, for example, on day two for judgment as a ma tt er of law on the issue. See Fed. R.Nos. 17-2241 & 18-2534 21

Civ. P. 50(a). The district court denied the motion, and the case went to the jury. In fi nding infringement, the jury expressly found (and so answered on the verdict form) that Flora had not carried its burdenof showing that the illustrations were the result of a joint e ff ort by Silver and Sullivan.

But Flora never renewed its ch allenge at any point after the jury returned its verdict in Sullivan’s favor. And therein lies the problem. Flora insists on appeal that the district court erred in not keeping the joint authorship question from the jury and failing to grant its Rule 50(a) motion on the issue. Yet this contention runs headlong into the well-se tt led preceptthat “a court of appeals may not award judgment due to insu ffi ciency of the evidence where no Rule 50(b) motion was fi led after the verdict.” Fuesting v. Zimmer, Inc. , 448 F.3d 936, 938 (7th Cir. 2006); see also Lexington Ins. Co. v. Horace Mann Ins. Co. , 861 F.3d 661, 669 (7th Cir. 2017) (making clear that for a party to seek judgment on appeal, “the requesting party must not only have fi led a motion under Rule 50(a), but must also have renewed that motion under Rule 50(b)”). The demands of Rule 50(b) serv e a sound purpose. As the Supreme Court has emphasized, the “determination of whether a new trial should be granted or a judgment entered under Rule 50(b) calls for the judgment in the fi rst instance of the judge who saw and heard th e witnesses and has the feel of the case which no appellate printed transcript can impart.” Unitherm v. Food Sys., Inc. v. Swift-Eckrich, Inc. , 546 U.S. 394, 401 (2006). This explains why our caselaw is unyielding in requiring a party who believes a jury’s verdict lacks a

su ffi cient evidentiary basis to rai se that challenge in the district court. It is not enoughto rest on having made a preverdict su ffi ciency-of-evidence challenge under Rule 50(a).22 Nos. 17-2241 & 18-2534

To excuse its failure to move under Rule 50(b) followingthe jury’s adverse verdict, Flora argues that we have discretion on appeal to consider pure questions of law. But the question of joint authorship is not a pure question of law: answering whether two or more individuals or entities contributedenough to a work to result in joint authorship requires consideration of facts. And this is precisely why other courts have recognized, properly in our view, that the question is one for a jury to consider guided by aninstruction from the district court. See Medforms, Inc. v. Heal thcare Mgmt. Solutions , 290 F.3d 98, 110 (2d Cir. 2002) (explaini ng that in a copyright case, “[a]uthorship is generally a question of fact for the jury”). Having failed to lodge a post-verdict challenge under Rule 50(b), Flora waived the very issue it now wants us to review. We cannot do so.Even if Flora had not waived its joint authorship challenge, we would be quick to conc lude that the jury reasonably found Sullivan was the sole author of the 33 illustrations in question. The jury received evidence of the contributions ofboth Silver and Sullivan and viewed both of the copyright registrations submi tt ed solely in Sullivan’s name. The district court also properly instructed the jury that “[a] ‘joint work’ is a work that two or more pers ons prepared with the intention that their contributions be merged into inseparable elements of a single work.” This instruction mirrored the Copyright Act’s de fi nition of a “joint work.” See 17 U.S.C. § 101. It also aligns precisely with what we have described as the a tt ributes of a joint work. See Janky, 576 F.3d at 362 (explaining that a joint work requires “(1) intent to create a joint work; and (2) contribution of independently copyrightable material”).Nos. 17-2241 & 18-2534 23

Asked whether a preponderance of the evidence demonstrated that the copyrighted illustrations were joint works, the jury answered in the negative, fi nding that Sullivan was the sole author. We cannot say this was an unreasonable result in light of the evidence presented. See Collins v. Kibort, 143 F.3d 331, 335 (7th Cir. 1998) (explaining that we will “overturn a jury verdict for the plainti ffonly if we conclude that no rational jury could have found for the plainti ff ”).

V We conclude with a brief word in response to Sullivan’s cross appeal challenging the district court’s refusal to award

a tt orneys’ fees. Our review is limited to whether the district court’s ruling re fl ected an abuse of discretion. See Gastineau v. Wright, 592 F.3d 747, 748 (7th Cir. 2010). The Copyright Act a ff ords a district court discretion in awarding a tt orneys’ fees to the prevailing party in an infringement case. See 17 U.S.C. § 505 (explaining that “the court in its discretion mayallow the recovery of full costs by or against anyparty” in an infringement case) (emphasis added). The Supreme Court o ffered further guidance in Fogerty v. Fantasy, Inc. , outlining a series of factors for courts to consider when awarding fees. 510 U.S. 517, 534 n.19 (1994) (se tt ing out a series of nonexclusive factors, including frivolousness, motivation, objective unreasonableness of factual or legal positions, and considerations of compensation and deterrence). In denying Sullivan’s fee applic ation, the district court reasoned well within the discretion a ff orded by Congress. Considering the factors outlined in Fogerty, the court saw the case as close on the merits and hard fought by the parties. From there the district court under scored that Sullivan had won a24 Nos. 17-2241 & 18-2534

substantial verdict that would be costly for Flora to satisfy and that, when balancing the totality of what occurred in the litigation, an additional award of fees was neither required nor appropriate, especially in light of the reasonableness of the joint authorship defense Flora pressed at trial. Or, in thedistrict court’s own words, “no further compensation or deterrence in the form of an a tt orneys’ fee award [was] necessary.” We cannot call the distri ct court’s reasoning an abuse of discretion and therefore a ffi rm its denial of Sullivan’s fee application.

* * * For these reasons, we AFFIRM in part and otherwise VACATE the judgment in Sullivan’s favor and REMAND to the district court for further pr oceedings consistent with this opinion.