In the

United States Court of Appeals

For the Seventh Circuit ____________

Nos. 02-2403 & 02-2470

MCROBERTS SOFTWARE, INC.,

 Plaintiff-Appellee,

Cross-Appellant,

v.

MEDIA 100, INC.,

 Defendant-Appellant,

Cross-Appellee.

____________

Appeals from the United States District Court

for the Southern District of Indiana, Indianapolis Division.

No. 99-1577 C M/S—Larry J. McKinney, Chief Judge.

____________

ARGUED DECEMBER 12, 2002—DECIDED MAY 14, 2003

____________

Before FLAUM, Chief Judge, and MANION and ROVNER,

Circuit Judges.

FLAUM, Chief Judge. McRoberts Software, Inc. (“MSI”)

sued Media 100, Inc. (“Media 100”) for copyright infringement, trade secret misappropriation, and breach of contract stemming from a 1995 licensing agreement between

the parties for MSI’s character generation computer software program. A jury found in favor of MSI on all three

claims and awarded substantial damages. Upon motions

by both parties for post-trial relief, the district judge: (1)

affirmed the jury’s finding that Media 100 infringed
2 Nos. 02-2403 & 02-2470

MSI’s copyright, misappropriated MSI’s trade secrets, and

breached their contract; (2) upheld the jury’s award of

damages to MSI for copyright infringement and breach of

contract; (3) vacated the jury’s award of damages to MSI

for trade secret misappropriation, calling it duplicative

of the copyright infringement award; and (4) awarded

MSI attorneys’ fees and prejudgment interest.

Media 100 now appeals the jury’s finding of liability for

copyright infringement, the jury’s damage awards for

copyright infringement and breach of contract, and the

district court’s decision to award MSI attorneys’ fees and

prejudgment interest. MSI appeals the district court’s

decision to vacate the jury’s damage award for trade secret

misappropriation. We reverse the district court’s order

vacating the trade secret damages award and affirm in

all other respects.

I. BACKGROUND

In 1992 MSI developed a computer software program

for character generation called Comet/CG. Character generation is the process of placing text over video and audio,

as when words appear over images in a television ad or

credits scroll at the end of a movie. Prior to MSI’s inventing

its software, character generation required specialized

hardware which cost up to $100,000, but MSI’s Comet/CG

software provided similar character generation capability

for users of Apple’s Macintosh personal computers at

around $1,300. Media 100 (formerly Data Translation,

Inc.) manufactured video editing equipment, including the

very expensive character generation hardware used by

advertising agencies and television production studios.

When Media 100 decided to enter the personal computing

market it turned to MSI to supply its Comet/CG software

for use with its new “Media 100” line of personal video

editing board hardware. MSI and Media 100 negotiated
Nos. 02-2403 & 02-2470 3

three separate licensing agreements, in 1993, 1995, and

1998. Only portions of the 1995 agreement are relevant to

this case.

Initially, Media 100’s personal video editing boards

functioned only on Macintosh computers through a video

card component called a NuBus. Windows computers, in

contrast, are compatible only with a video component

called a PCI bus. Therefore, until Macintosh retooled its

computers in 1995 to accept PCI bus hardware, video

editing systems could only function on Macintosh or Windows machines, but not both. The programming language

for Macintosh and Windows machines was similarly

incompatible, so MSI’s Comet/CG source code could only

be executed with Macintosh-compatible video editing

boards. Early in the partnership between Media 100 and

MSI, the Windows versus Macintosh debate remained

distant on the horizon, at least in the video and graphic

arts world. But it soon became clear that the personal

computing market was going the way of Windows. By the

time MSI and Media 100 negotiated their 1995 licensing

agreement, both companies sensed that a profitable future

had something to do with producing Windows-compatible

products.

The crux of MSI’s copyright infringement claim turns

on the meaning of the phrase “Media 100 hardware” in

the 1995 licensing agreement. Specifically, the parties

dispute whether the license permitted Media 100’s use

of Comet/CG on only existing Macintosh-compatible systems (and their progeny) or on as-yet-undeveloped Windows-compatible systems. On summary judgment the

district court determined that Section 5 of the 1995 licensing agreement defined the scope of Media 100’s license

to use MSI’s Comet/CG software, and that all other intellectual property rights not licensed by the agreement

were deemed held exclusively by MSI. Section 5 provided:
4 Nos. 02-2403 & 02-2470

Subject to [Media 100] timely paying all amounts

owing hereunder, upon payment of the $75,000 license

fee stated in section 3.2 for the CG Option 2.0 license,

then [Media 100] shall have a paid-up license to (1)

modify the CG Option 2.0 source code; (2) generate

executable code versions of CG Option 2.0; (3) distribute

executable code versions of CG Option 2.0 when integrated with [Media 100]’s Media 100 hardware and

software used for digital video editing, and such versions shall be licensed only for use on such hardware.

[Media 100] shall provide one source code copy of all

revisions it makes to Comet/CG to MSI on magnetic

media within thirty (30) days of release, and MSI may

incorporate such revisions in its version of Comet/CG.

During negotiations for the 1995 agreement, MSI knew

that Media 100 had developed a new video editing board

based on the PCI bus architecture. While Media 100’s new

bus hardware made its products potentially compatible

with Windows machines, the bundled video editing software, including Comet/CG, that Media 100 agreed to license from MSI still only operated on Macintosh machines.

In 1998 Media 100 decided that it could no longer afford

to be outside looking in on the Windows machine market,

so it entered an agreement with software development

firm Vanteon (formerly Millennium Computer Corp.) to

translate the Comet/CG source code from Macintosh to

Windows (akin to translating English to Chinese, in the

words of MSI owner, Mr. McRoberts). Media 100 gave

Vanteon a copy of MSI’s confidential Comet/CG source code,

without MSI’s consent or knowledge, and paid Vanteon

nearly $3.2 million to translate the code as quickly as

possible. When Vanteon completed the task, Media 100 took

the new code, put it into a Windows-compatible video

editing system, and began selling it immediately. This new

product line was named “Finish” and was essentially the

same as the old “Media 100” line, except that Finish
Nos. 02-2403 & 02-2470 5

worked on Windows machines and Media 100 worked on

Macintosh machines.

Soon after the Finish boards containing the translated

Comet/CG code hit the market, MSI complained to Media

100 that it was not licensed to incorporate the Comet/CG

software into its Windows-compatible product line, nor was

it licensed to use any new version of Comet/CG that

operated on PCI bus architecture rather than NuBus.

Moreover, MSI demanded that Media 100 give it a copy

of the translated Comet/CG code created by Vanteon as

required by the licensing agreement. Media 100 refused to

give MSI the translated code, but it removed all Finish

products containing the translated MSI software from

the market, licensed another company’s Windows-compatible CG software, and reissued the Finish video boards

with the new software.

MSI sued Media 100 in federal district court, claiming:

(1) copyright infringement under the Federal Copyright

Act based on Media 100’s unauthorized creation and distribution of the translated Windows-compatible Comet/CG

software, (2) trade secret misappropriation under Indiana’s

Trade Secret Act based on Media 100’s unauthorized

disclosure of the confidential Comet/CG source code to

Vanteon, and (3) breach of contract under Indiana common law based on Media 100’s failure to provide MSI

with a copy of its translated Windows-compatible Comet/

CG software. The district court denied Media 100’s motion

for partial summary judgment, finding that MSI’s intellectual property claims were not preempted by the terms of

the licensing agreement. The court determined that the

1995 license permitted Media 100 to generate and distribute executable code versions of Comet/CG source code

that it had modified, but only so long as the modifications

to the source code were themselves within the scope of

the license. Further, the court determined that the scope of

the licensing agreement was ambiguous. Although the
6 Nos. 02-2403 & 02-2470

court found that the phrase “when integrated with [Media

100]’s Media 100 hardware and software used for digital

editing” delineated the scope of the license, it decided that

the phrase may have included only NuBus hardware

and Macintosh-compatible systems, as MSI contended, or

it may have also included PCI bus hardware and Windows-compatible systems, as Media 100 argued.

MSI and Media 100 took their case to trial, and a jury

found in favor of MSI on all three claims, awarding MSI

substantial damages. Specifically, the jury awarded MSI

damages for copyright infringement in the amount of

$1.2 million for actual damages and $900,000 for lost

profits; for trade secret misappropriation in the amount of

$300,000; and for breach of contract in the amount of

$85,000. Media 100 sought post-trial relief on all claims

under Rules 50 and 59 of the Federal Rules of Civil Procedure. The court denied Media 100’s Rule 50 motion

for judgment as a matter of law on the substantive claims

and declined to award a new trial under Rule 59 or reduce

the jury’s damage awards for copyright infringement

and breach of contract; however, the court vacated the

jury’s $300,000 damage award for trade secret misappropriation, calling it duplicative of the copyright infringement award. Additionally, the district court granted

MSI’s post-trial motion for attorneys’ fees ($192,283), costs

($475), and prejudgment interest ($313,061). Media 100

and MSI both appeal from the district court’s post-trial

orders.

II. Discussion

A. Copyright Infringement Liability

The jury determined that Media 100 infringed MSI’s

copyright because Media 100 acted outside the scope of

the 1995 licensing agreement when it copied and translated

the Comet/CG source code into Windows with Vanteon’s
Nos. 02-2403 & 02-2470 7

paid assistance, and then distributed the translated version

of the Comet/CG software with its Windows-based Finish

products. The district court denied Media 100’s post-trial

motion for judgment as a matter of law on copyright

infringement, and we review that decision de novo. Mathur

v. Board of Trustees of Southern Illinois University, 207

F.3d 938, 941 (7th Cir. 2000); Emmel v. Coca-Cola Bottling

Co. of Chicago, 95 F.3d 627, 629 (7th Cir. 1996). A motion

for judgment as a matter of law should be granted only

where there can be but one conclusion from the evidence.

Emmel, 95 F.3d at 636. In reviewing a jury’s verdict, we

must consider the evidence in the light most favorable

to the prevailing party, and only if there is no legally

sufficient evidentiary basis to support the verdict will

we reverse it. Id. at 629. In other words, “we are limited

to assessing whether no rational jury could have found

for the [prevailing party].” Emmel, 95 F.3d at 630. As a

reviewing court, we must be particularly careful “to avoid

supplanting [our] view of the credibility or the weight

of evidence for that . . . of the jury.” Mathur, 207 F.3d at

941; see also Minnesota Mining & Manufacturing Co. v.

Pribyl, 259 F.3d 587, 595 (7th Cir. 2001).

Giving due deference to the jury’s findings, we cannot

say as a matter of law that Media 100 did not infringe

MSI’s copyright in its Comet/CG source code. In ruling on

the parties’ summary judgment motions prior to trial,

the district court held that the licensing agreement between MSI and Media 100 was ambiguous in scope. In

particular, the court found that it was unclear whether

the license gave Media 100 the right to do what it ultimately did, which was translate the Comet/CG source

code into Windows and then distribute the translated

software in new Media 100 Windows hardware, without

first obtaining permission from MSI. The parties submitted this question of interpretation to the jury, and the

jury resolved the ambiguity in favor of MSI.
8 Nos. 02-2403 & 02-2470

Media 100 now argues on appeal that it is entitled to

judgment as a matter of law because the plain language

of the 1995 agreement and the evidence introduced at

trial established conclusively that Media 100 did not exceed the scope of its license. Media 100 claims that the

ambiguity in the license agreement over the meaning of

the term “Media 100 hardware” can only be resolved in

its favor because MSI’s founder and president, Mr. McRoberts, testified at trial that he knew at the time he

negotiated the 1995 agreement that Media 100 would

want to modify the Comet/CG source code to work on

Windows hardware. Since Mr. McRoberts knew this,

Media 100 argues, he of course meant for the phrase

“Media 100 hardware” in the 1995 agreement to include

both existing Macintosh hardware and the not-yet-developed Windows hardware. Since the jury was told that

Media 100’s liability for copyright infringement turned

on whether the phrase “Media 100 hardware” included

Windows hardware, and since Mr. McRoberts testified

that he knew Media 100 might want to develop and sell

Windows hardware at some time in the future, Media

100 argues that the jury could only have concluded that

Media 100 operated within the scope of the license when

it translated and distributed a Windows version of Comet/

CG without MSI’s permission.

In contrast, MSI argues that Mr. McRoberts intentionally

neglected to define “Media 100 hardware” in the 1995 license as including Windows hardware because (1) neither MSI nor Media 100 had any Windows-compatible

products in existence at that time, so it was unnecessary

to affirmatively include or exclude them from the license,

and (2) MSI wanted to preserve its right to participate in

the development of character generation software for

Windows if and when Media 100 decided to make an

investment in the technology on its end. MSI supported

its interpretation of the license with several pieces of
Nos. 02-2403 & 02-2470 9

1 MSI argues on appeal that the jury could have found copyright

infringement based solely on Media 100’s act of giving the

Comet/CG source code to Vanteon without MSI’s permission.

Media 100 essentially conceded this point at oral argument, but

insisted that MSI did not present this theory of copyright infringement to the jury and the jury was not instructed to find infringement on this act alone. Our review of the trial transcript confirms

that MSI did argue to the jury in its opening and closing state-

(continued...)

evidence, including: (1) the testimony of Mr. McRoberts

regarding his intentions at the time he made the agreement with Media 100, (2) the testimony of Media 100

executives regarding their understanding of the scope of

the license, none of whom could definitively say that

they knew Mr. McRoberts meant to include the use of

undeveloped Windows-compatible software in the terms

of the 1995 license, (3) copies of MSI’s past software

development contracts and Comet/CG licensing agreements with Media 100 and other hardware companies, and

(4) the district court’s instruction to the jury that the

meaning of the term “Media 100 hardware” in the 1995

agreement was indisputably ambiguous. The evidence

also showed that Media 100 paid about the same amount

of money for its 1995 license as it had for earlier licenses

of Comet/CG, even though, according to Media 100, the

1995 license was immensely greater in scope because it

included the right to modify, create, and distribute Comet/

CG in Windows products as well as Macintosh products.

Given all of this evidence, it was reasonable for the

jury to conclude that the 1995 license limited Media 100’s

use of the Comet/CG software to Macintosh hardware

only, and that Media 100 exceeded the scope of the license, infringing MSI’s copyright, through its unauthorized modification and distribution of the Comet/CG

source code in Windows hardware.1

 At trial the jury heard
10 Nos. 02-2403 & 02-2470

1 (...continued)

ments that Media 100’s distribution of the source code to Vanteon

constituted copyright infringement, and MSI’s presentation of

evidence throughout the trial is consistent with and supports

this theory. But, as Media 100 points out, the jury was instructed

that to find liability for copyright infringement it had to find

that Media 100 copied or made a derivative work from the

Comet/CG source code (as by hiring Vanteon to translate it) and

that the license agreement limited Media 100’s use of the code

to Macintosh hardware. We agree with Media 100’s reading of

the instructions; therefore, we have reviewed the record for

sufficient evidence of both Media 100’s unauthorized distribution of the source code to Vanteon and of Media 100’s unauthorized distribution of the source code in Windows hardware.

evidence of both parties’ interpretations of the scope of

the licensing agreement, and in particular the meaning

of the phrase “Media 100 hardware.” Media 100 now

claims that because the evidence better supports its interpretation, it can only support its interpretation. This,

however, is not the standard we use to review jury verdicts; faced with two permissible, conflicting interpretations, the jury in this case was entitled to resolve the

ambiguity in the licensing agreement in favor of MSI.

B. Copyright Infringement Damages

The jury awarded MSI $1.2 million in actual damages

plus $900,000 in lost profits on its copyright infringement claim. Media 100 claims on appeal that the jury’s

damages awards were unsupported by the evidence and

that the lost profits award was duplicative of the actual

damages award. Media 100 seeks to vacate the awards, or

at least reduce the lost profits award, so that MSI does

not receive “double damages.” Our standard of review is

the same here as for the copyright infringement claim: we

are looking to see whether there is a reasonable basis in
Nos. 02-2403 & 02-2470 11

the record to support the jury’s damages awards. See

Emmel, 95 F.3d at 629.

1. Actual Damages

Media 100 claims that the $1.2 million award for actual

damages is unsupported by the evidence. The Copyright

Act permits a copyright owner to recover actual damages

suffered as a result of the infringing activity and any profits of the infringer resulting from the infringement that

are not otherwise taken into account in calculating actual damages. 17 U.S.C. § 504(b). Actual damages are

usually determined by the loss in the fair market value of

the copyright, measured by the profits lost due to the

infringement or by the value of the use of the copyrighted

work to the infringer. Deltak, Inc. v. Advanced Systems,

Inc., 767 F.2d 357, 360 (7th Cir. 1985). MSI asserts that

its actual damages can be calculated based either on the

hypothetical value of an up-front license fee for Media

100 to distribute a Windows-compatible version of Comet/

CG software, or on the approximate value of performing

the translation of Comet/CG source code from Macintosh to

Windows. Media 100 argues that damages based on the upfront license fee theory are speculative because they do

not accurately identify the value of the Windows-compatible Comet/CG software to Media 100. In addition, Media

100 disputes MSI’s claim that it can recover actual damages based on lost translation fees because the parties

never agreed that Media 100 would hire MSI to convert the

Comet/CG source code to Windows.

Despite Media 100’s disagreement with the jury’s calculations, MSI presented sufficient evidence at trial to

sustain the jury’s award of $1.2 million in actual damages

for copyright infringement. It is not improper for a jury

to consider either a hypothetical lost license fee or the

value of the infringing use to the infringer to determine
12 Nos. 02-2403 & 02-2470

actual damages, provided the amount is not based on

“undue speculation.” On Davis v. The Gap, Inc., 246 F.3d

152, 166 (2d Cir. 2001). See also Interactive Pictures Corp.

v. Infinite Pictures, Inc., 274 F.3d 1371 (Fed. Cir. 2001)

(upholding award of actual damages based on estimated

lump sum royalty payment from infringer’s projected

sales). In this case MSI presented the jury with several

ways of measuring actual damages, including: (1) the

value of a software development fee to convert MSI’s

Comet/CG source code to Windows (equivalent to the

value of the translation project undertaken by Vanteon); (2)

the value of the software license fees Media 100 paid

to Inscriber, the third party supplier of Windows-compatible character generation software whose product Media

100 eventually incorporated into its Finish product line

to replace the translated MSI Comet/CG software; (3)

the ratio of license fees paid to MSI for sales of Comet/

CG software incorporated into Media 100 (Macintosh)

products compared to the projected sales of a Windowscompatible version of Comet/CG software incorporated

into Finish (Windows) products; (4) the ratio of software

development fees to software license fees based on prior

agreements between MSI and Media 100; or (5) the

terms of a hypothetical license fee between MSI and

Media 100 for a Windows-compatible version of Comet/CG

based on the relative size of the Macintosh market as

compared to the Windows market for such products. Media

100 maintains that all of these theories of recovery are

speculative because there is no evidence that Media 100

would have hired MSI instead of Vanteon to translate

MSI’s Comet/CG source code or paid more to MSI for the

right to distribute a translated version of Comet/CG in

Media 100’s Finish products. Neither of Media 100’s claims

persuade us to reverse the jury’s damage award in this

case.

First, Media 100 maintains that it would not have hired

MSI to translate the Comet/CG source code to Windows
Nos. 02-2403 & 02-2470 13

2 The values given are estimates and projections presented

by MSI to the jury at various points in the trial; not surprisingly,

Media 100 disputes these figures. Because we are required to

take the evidence in the light most favorable to the prevailing

(continued...)

because MSI did not have the technical capability or

human resources to complete the project, and even assuming MSI could have done the work, Media 100 was not

obligated under the license agreement to hire MSI for

the job. This argument misses the point; MSI is entitled

under the Copyright Act to recover actual damages resulting from the infringement of its copyright. In this case

one element of infringement was Media 100’s unauthorized

creation (with Vanteon’s paid assistance) of a derivative

work—the translated Windows version of Comet/CG—based

on MSI’s copyrighted Comet/CG source code. Media 100’s

estimation of MSI’s interest or ability in the translation

project is irrelevant, for Media 100 infringed MSI’s copyright in part by hiring Vanteon to translate the source

code without permission from MSI, and MSI may lawfully

seek damages resulting from this infringement.

Second, Media 100 claims that because MSI failed to

establish either the actual value of the translated Comet/

CG software as distributed in the Finish products or the

value of the lost licensing fee to MSI, any part of the jury’s

award based on these values is purely speculative. But

MSI was not required to establish the actual value; it

was required only to provide sufficient evidence of the

value so that the jury did not have to resort to undue

speculation in estimating actual damages. Deltak, 767 F.3d

at 360; On Davis, 246 F.3d at 166. At trial MSI presented

substantial evidence of the value of Windows-compatible

character generation software to Media 100, including: (1)

Media 100’s licensing and software development agreements with Inscriber ($1.43 million2

); (2) the value of
14 Nos. 02-2403 & 02-2470

2 (...continued)

party when reviewing a jury verdict, we include here the figures

that MSI submitted as evidence.

Media 100’s contract with Vanteon to translate MSI’s

Macintosh software to Windows ($3.2 million); (3) Media

100’s actual and projected sales of its Finish product

line incorporating Windows character generation software

($10-$65 million); and (4) a hypothetical license fee based

on the comparative size of the Macintosh and Windows

market for video editing products ($9.75-$15.6 million).

Combined with MSI’s submission of its own past agreements with Media 100 to develop and modify prior versions of Comet/CG, the jury had ample evidence from which

to estimate the value of Media 100’s use of MSI’s copyrighted source code and arrive at its $1.2 million actual

damage award.

2. Lost Profits

Media 100 next argues that the jury’s award of $900,000

for lost profits should be vacated or reduced because the

award was contrary to the evidence and duplicative of

the $1.2 million actual damages award. The Copyright

Act permits a copyright owner to recover any profits of

the infringer resulting from the infringement that are not

otherwise taken into account in calculating actual damages. 17 U.S.C. § 504(b). Media 100 maintains that it presented uncontroverted evidence at trial proving that it

realized no profits from the sale of its Finish products

incorporating the translated Comet/CG software; therefore,

the jury must not have properly apportioned Media

100’s profits as mandated by § 504(b) and as instructed

by the court. Moreover, Media 100 claims that even if it

had made any profits, the $900,000 award should be

reduced to the extent that it amounts to “double counting”
Nos. 02-2403 & 02-2470 15

of MSI’s actual damages. Both of these claims are unavailing.

First, the jury heard testimony from both MSI and Media

100 regarding the revenues and expenses associated with

the distribution of Finish products incorporating the

translated Windows version of Comet/CG software. From

this evidence, the jury determined that Media 100 did, in

fact, realize a $900,000 profit from its sales. MSI carried

its initial burden under § 504(b) of proving Media 100’s

revenues by submitting evidence of Media 100’s actual

and projected sales of the Finish product line. Media 100

then had the burden of proving apportionment to the jury,

Roulo v. Russ Berrie & Co., 886 F.2d 931, 941 (7th Cir.

1989), by submitting evidence of its deductible costs and

expenses. The jury in this case was specifically instructed

by the court to deduct production and marketing expenses from Media 100’s revenues in calculating any profit realized by Media 100.

Media 100’s claim that it presented “uncontroverted”

evidence of its expenses, which the jury presumably

ignored, is simply false. At trial MSI challenged Media

100’s calculation of fixed and variable expenses, some of

which are deductible and some of which are not, and the

jury even asked for clarification of the expenses from the

judge during its deliberations. From this conflicting evidence, the jury could reasonably have concluded that

Media 100’s estimates of the value of Comet/CG to its

Finish products and of its deductible expenses were incorrect or unsubstantiated, and chosen instead to credit

MSI’s revenue and expense figures when it calculated

Media 100’s profits. Media 100’s contention on appeal that

its costs and expenses far exceeded its revenues merely

rehashes its unsuccessful arguments to the jury. Under

these circumstances, and without any other evidence

that the jury intentionally disregarded its duty to apportion profits, see Pribyl, 259 F.3d at 587 (“absent evidence
16 Nos. 02-2403 & 02-2470

to the contrary, we assume that juries follow a court’s

instructions”), we cannot say that the jury’s award is

contrary to the evidence.

Second, Media 100 argues that the jury’s $900,000 lost

profits award was duplicative of the $1.2 million actual

damages award and should be vacated. Lost profit damages serve to make the copyright owner whole in cases

where the infringer’s gains exceed the owner’s losses. See

Taylor v. Meirick, 712 F.2d 1112, 1120 (7th Cir. 1983). This

is true even if the owner never would have realized the

profit made by the infringer; by disgorging any net profits from the infringer, lost profit damages eliminate a

major incentive to steal the copyright instead of fairly

negotiating for its use with the owner. Id. Here, Media 100

argues that had it paid MSI either the up-front license fee

or the translation fee upon which the $1.2 million actual

damage award was premised, its distribution of the translated, Windows-compatible Comet/CG software would

not have been infringing, and MSI would not have been

entitled to Media 100’s profits. Media 100 is right about

this, and it is exactly for this reason that copyright law

does entitle MSI to recover Media 100’s profits. Without

this rule, Media 100 could infringe MSI’s copyright without the risk of losing more than it would have had to

pay not to infringe and with the benefit of keeping whatever profits it made by infringing. See Taylor, 712 F.2d at

1120.

MSI’s recovery of Media 100’s profits is, however, limited

to only those profits attributable to the infringement

that were not otherwise included in the jury’s calculation

of actual damages. As discussed earlier, MSI presented

evidence at trial suggesting that it suffered anywhere

from $1.43-$15.6 million in damages as a result of Media

100’s copyright infringement. The jury was instructed to

measure MSI’s actual damages from the copyright infringement by “the amount a willing buyer would have been
Nos. 02-2403 & 02-2470 17

reasonably required to pay a willing seller at the time of

the infringement for the use made by Media 100 of [MSI]’s

Comet/CG source code,” and to measure Media 100’s profits by “the amount of money that Media 100 made because

of the infringement minus deductions for expenses in

producing and marketing the infringing work.” The jury

also was told not to award lost profits for any amount that

was already taken into account in determining actual

damages. Even if we cannot know for certain which pieces

of evidence the jury relied on in making each of its calculations, the instructions were proper as a matter of law

and we must assume that the jury followed them. Because

the evidence of MSI’s injuries was more than adequate

to support the jury’s total damage award for copyright

infringement, we conclude that the jury’s award of $900,000

for lost profits was not duplicative of its award of $1.2 million in actual damages.

C. Trade Secret Misappropriation Damages

In its cross-appeal, MSI claims that the district court

erred by vacating the jury’s award of $300,000 in damages

for trade secret misappropriation. We review the court’s

decision de novo and look to see whether there is sufficient evidence in the record to support the jury’s damages

award. Mathur, 207 F.3d at 941. In granting Media 100’s

post-trial motion for judgment as a matter of law on

this issue, the district court ruled that MSI had failed to

distinguish between its damages for copyright infringement and its damages for trade secret misappropriation,

calling the trade secret damages duplicative and against

the weight of evidence. The only explanation offered by

the court for its decision was its belief that a successful

claim for trade secret damages would have required MSI

to argue and prove that it had suffered actual damages

and lost unique ideas as a result of Media 100’s breach of
18 Nos. 02-2403 & 02-2470

confidentiality. The court did not elaborate further on why

it felt that MSI had failed to carry its burden of proof

on this issue.

Unlike the district court, we find that MSI presented

ample evidence to support the jury’s award of damages for

trade secret misappropriation. The jury was clearly instructed by the court as to how it should properly calculate damages for both trade secret misappropriation

and copyright infringement. Once both parties approve

the jury instructions, they become the law of the case, see

Jabat, Inc. v. Smith, 201 F.3d 852, 857 (7th Cir. 2002),

and we assume that the jury applies the law as given

to them to the facts as they find them, see Pribyl, 259 F.3d

at 587. Because the Comet/CG source code represented both

a trade secret and a protectible copyright, much of the

evidence presented at trial could have been used to substantiate damages for either one or both claims. Still, it

is undisputed that the jury was instructed to consider

different measures of damages in determining each award.

In calculating trade secret damages, for example, the

court told the jury to consider either “the cost Media 100

would have incurred in acquiring the same information

or trade secret through its own experimentation or

through other lawful means,” or “the actual value of what

has been appropriated or the reasonable royalty at the

time of the misappropriation.” The jury was also reminded that MSI had the burden of proving its damages

“for actual loss [proximately] caused by the misappropriation” by a preponderance of the evidence. In comparison,

the instruction for computing copyright damages told

the jury to determine “the amount of money adequate to

compensate [MSI] for the reduction of the market value

of the copyrighted work caused by the infringement,” as

measured by “the amount a willing buyer would have

been reasonably required to pay a willing seller . . . for the

use made by Media 100 of [MSI]’s Comet/CG source code.”
Nos. 02-2403 & 02-2470 19

Although both instructions inform the jury that the value

of the Comet/CG source code is relevant to determining damages, the value of the code is supposed to be

measured differently in each instance. Therefore, it is

neither surprising nor impermissibly duplicative for MSI

to have presented numerous theories to the jury for calculating its losses.

As a matter of law, it is possible to recover damages

based on more than one legal theory in the same suit,

provided the plaintiff provides sufficient evidence of his

injuries. See Public Service Co. of Indiana v. Bath Iron

Works Corp., 773 F.2d 783, 793-95 (7th Cir. 1985). Evidence in this record suggests that had Media 100 lawfully

gone about acquiring the rights to the Comet/CG source

code for the purpose of translating it into Windows, it either

would have had to pay MSI to translate it or pay MSI for

the right to hire someone else like Vanteon to translate

it. Media 100 disputes this evidence, but the jury was

entitled to draw this inference from what it heard at trial.

In particular, the jury learned that Media 100’s customers

wanted any new Windows hardware to be compatible

with their Macintosh hardware running Comet/CG,

which meant that Media 100 had a strong incentive to

translate the Comet/CG code rather than incorporate

Windows-based character generation software from a different company. Moreover, the jury heard evidence from

MSI to suggest that the value to Media 100 of acquiring

MSI’s trade secret in the Comet/CG source code would have

ranged from $383,000 to $1.3 million; MSI based these

figures on (1) past software development contracts between Media 100 and MSI (as compared with software

licensing contracts which the parties also entered into),

(2) the profits realized by Vanteon in translating MSI’s

Comet/CG source code, and (3) MSI’s investment costs in

the Comet/CG source code. In sum, the evidence shows

that MSI suffered a measurable loss when Media 100 took
20 Nos. 02-2403 & 02-2470

its trade secrets in the Comet/CG source code and gave

them to Vanteon, a competing software development

company. The evidence also shows that this loss was

different from the loss that MSI suffered when Media 100

incorporated the translated source code into Widowscompatible products and profited from its unauthorized

distribution. For these reasons we hold that it was error

for the district court to vacate the jury’s award of $300,000

to MSI for trade secret damages as duplicative of the

copyright infringement damages.

D. Breach of Contract Damages

Media 100 disputes the validity of the jury’s award

of $85,000 to MSI for breach of contract. We review

the jury’s award for breach of contract damages to see if

it is supported by sufficient evidence in the record. Emmel,

95 F.3d at 629. Media 100 admitted at trial that it failed

to give MSI a copy of the translated Windows version of

Comet/CG as required by the license agreement. Despite

this admission, Media 100 maintains that MSI cannot

obtain damages because MSI proved neither that it lost

profits as a result of the breach nor that the software

had any recoverable value. With respect to lost profits, the

parties agreed at trial that such damages were not available to MSI, and the jury was so instructed. As for other

damages arising from the breach, the court instructed the

jury to ascertain “the sum that would put [MSI] in the

same position it would have been in had the 1995 contract

been fulfilled as agreed by Media 100. [MSI] is limited

in recovery to the loss actually suffered and should not

be placed in a better position than it would have been

had the breach not occurred.” The jury also was told that

the contract capped any damages at the amount Media

100 paid for the license, or $85,000.

Media 100 argues that the jury could not have found

it liable for the full amount of contract damages for its
Nos. 02-2403 & 02-2470 21

breach because the translated character generation software had no value. Media 100 claims that the translated

Comet/CG source code was only a small, and ultimately

defective, part of a larger software bundle distributed

with its Finish video editing systems. In contrast, MSI

maintains that the translated software had significant

value, as shown by the $2.6 million fee Media 100 paid

Vanteon to create the Windows-compatible version, and

also by the software’s inclusion in the launch of the original Finish product line, whose sales were projected by

Media 100 to reach nearly $10 million in its first year.

There also is evidence in the record showing that Media

100 went to the trouble of translating MSI’s Comet/CG

software rather than licensing Windows-ready character

generation software from another company because

Media 100 knew that its current customers wanted any

new Windows-based product from Media 100 to be compatible with its older Macintosh-based products. In light of

this evidence the jury was entitled to come to its own

conclusion regarding the value of the Comet/CG software

and to award MSI the full measure of contract damages

for Media 100’s breach.

E. Attorneys’ Fees

Media 100 argues that the district court abused its

discretion by awarding MSI attorneys’ fees under the

Copyright Act. Section 505 of the Copyright Act provides

that “in its discretion” a district court may “award a

reasonable attorney’s fee to the prevailing party as part of

the costs.” 17 U.S.C. § 505. When a court exercises its

discretion to award attorney’s fees under § 505 it should

consider such non-exclusive factors as “frivolousness,

motivation, objective unreasonableness (both in the factual

and in the legal components of the case) and the need in

particular circumstances to advance considerations of
22 Nos. 02-2403 & 02-2470

compensation and deterrence.” Harris Custom Builders, Inc.

v. Hoffmeyer, 140 F.3d 728, 730 (7th Cir. 1998) (quoting

Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)).

This test does not dictate a precise rule or formula, but

courts should treat prevailing plaintiffs and prevailing

defendants alike. Harris Custom Builders, 140 F.3d at

730. A showing of bad faith or frivolousness is no longer

required to receive attorney’s fees. See Budget Cinema, Inc.

v. Watertower Associates, 81 F.3d 729, 731 (7th Cir. 1996).

We will reverse an award of attorney’s fees under the

Copyright Act only if the district court applied the wrong

legal standard or abused its discretion. Susan Wakeen

Doll Co., Inc. v. Ashton Drake Galleries, 272 F.3d 441, 457

(7th Cir. 2001).

Media 100 contends that the district court abused its

discretion because it failed to consider the objective reasonableness of Media 100’s defenses and based its award

of attorneys’ fees entirely on the jury’s finding that Media

100 had willfully infringed MSI’s copyright. Were this

assertion true, Media 100 would have a more compelling claim. But the district court in this case applied the

proper legal standard, considered all the relevant factors, appropriately exercised its discretion, and articulated

its reasons for doing so; it was required to do no more.

The district court determined that both Media 100’s

willful infringement, as found by the jury, and the need

to deter companies like Media 100 from “taking advantage of non-specific licensing agreements” justified the

award of attorneys’ fees in this case. In particular, the

court noted that Media 100 had purposefully excluded

MSI from participating in the translation of MSI’s own

proprietary Comet/CG source code and had willfully

abandoned its responsibility to clarify the actual scope of

the licensing agreement prior to undertaking the translation. The court explained that Media 100’s failure to seek

permission from MSI before it undertook the translation
Nos. 02-2403 & 02-2470 23

project was particularly indefensible “in light of the dynamic nature of the market for software products.” In

Wakeen Doll we vacated a district court’s award of attorneys’ fees under the Copyright Act because the court had

not explained why it made the award. 272 F.3d at 459. In

that case we noted that the explanation need not be

extensive so long as it gave us a reasonable basis for

reviewing how the court exercised its discretion. Id. at

458. Here, we have ample evidence of how and why the

district court exercised its discretion to award attorneys’

fees, and under these circumstances we cannot say the

court abused its discretion.

F. Prejudgment Interest

Media 100 also challenges the district court’s decision to

award prejudgment interest to MSI, a decision that we

review for abuse of discretion. First National Bank of

Chicago v. Standard Bank & Trust, 172 F.3d 472, 480 (7th

Cir. 1999). The district court in this case correctly stated in

making its award that “prejudgment interest is presumptively available to victims of federal law violations.”

Gorenstein Enterprises, Inc. v. Quality Care U.S.A., Inc., 874

F.2d 431, 436 (7th Cir. 1989). Media 100 contends that this

court has never decided whether it is proper to award

prejudgment interest for willful infringement under the

Copyright Act; therefore, it suggests we follow the Third

Circuit in requiring that liquidated damages or bad faith

exist before awarding prejudgment interest. See Whelan

Assoc., Inc. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1325,

1327 (E.D.Pa. 1985), aff’d on other grounds, 797 F.2d 1222

(3d Cir. 1986) (analogizing copyright infringement with

patent infringement and applying same prejudgment

interest requirements to copyright situations as statutorily

required by the Patent Act).

In Gorenstein, however, we affirmed an award of prejudgment interest for a trademark infringement, noting that
24 Nos. 02-2403 & 02-2470

prejudgment interest was properly awarded for a wide

variety of federal law violations. 874 F.2d at 436. We

decided in that case that such interest was necessary to

make the plaintiff whole and discourage delay by the

defendant in making reparations. Id. The rule we articulated in Gorenstein was broad and we have consistently

applied the presumption in favor of prejudgment interest

for willful violations of federal law in the years since. See,

e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., 978

F.2d 947, 963 (7th Cir. 1992); In re Oil Spill by the Amoco

Cadiz, 954 F.2d 1259, 1331 (7th Cir. 1992); Lorenzen

v. Employees Retirement Plan of the Sperry & Hutchinson

Co., 896 F.2d 228, 236 (7th Cir. 1990). Since the jury

found Media 100’s violation of the Copyright Act to be

willful, and the district court properly applied this circuit’s rule set forth in Gorenstein, we find that the district

court’s award of prejudgment interest to MSI was not an

abuse of discretion.

III. CONCLUSION

We conclude that there was sufficient evidence in the

record to support the jury’s determinations that Media

100 is liable to MSI for copyright infringement, that

MSI suffered $1.2 million actual damages and $900,000

lost profits as a result of Media 100’s copyright infringement, that MSI suffered $300,000 damages as a result of

Media 100’s misappropriation of its trade secrets, and

that MSI suffered $85,000 damages from Media 100’s

breach of contract. We also hold that it was not an abuse

of discretion for the district court to award MSI $192,283

attorneys’ fees or $313,061 prejudgment interest based

on Media 100’s willful infringement of MSI’s copyright.

Therefore, the district court’s post-trial orders are

AFFIRMED with respect to the copyright infringement

liability, copyright infringement damages, breach of con-
Nos. 02-2403 & 02-2470 25

tract damages, attorneys’ fees, and prejudgment interest.

We REVERSE the district court’s order with respect to

trade secret misappropriation damages and order the

jury’s award of $300,000 damages to MSI be REINSTATED.

A true Copy:

Teste: 

 ________________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit 

USCA-02-C-0072—5-14-03