By Andrew Berger*

A pdf version of this article may be downloaded here.

Tenenbaum Finds That a Jury’s Award Within the Statutory Range Violates Due Process

In July 2010 Judge Nancy Gertner in Sony BMG Music Entertainment et al. v. Tenenbaum, did what no court has ever done before. The court held the jury’s statutory damages award of $675,000 violated the Due Process Clause even though the award was within the statutory range set by Congress.[FN1] The court stated that the “award is far greater than necessary to serve the government’s legitimate interests in compensating copyright owners and deterring infringement.”[FN2] Judge Gertner slashed the award by 90% to $2,250 per work infringed for a total of $67,500.

Tenenbaum thus becomes the first file sharing case to reach an appellate court following trial.

Why this Constitutional Attack on Statutory Damages?

Will Judge Gertner’s decision withstand appeal? Why are statutory damages, so long a staple of copyright litigation, now under increased constitutional scrutiny? For answers we need to go back a bit into history.

For many years tort defendants complained that awards of punitive damages were unpredictable and imposed crippling financial burdens. Mindful of these concerns, the Court in the late 1980’s started to question whether these “skyrocketing” awards might adversely impact “research and development of new products.”[FN3]


Finally in 1996 the Court in BMW of North America, Inc. v. Gore held unconstitutional a jury’s award of punitive damages.[FN4] There an Alabama jury awarded plaintiff $4,000 in compensatory damages and $4 million in punitive damages based on BMW’s failure to disclose that plaintiff’s supposedly “new” car had been repainted before he bought it.[FN5] The Alabama Supreme Court reduced the punitive damages award to $2 million, representing a ratio of punitive to compensatory damages of 500:1.[FN6] Despite this reduction, the Supreme Court held the award violated due process.

The Court acknowledged that “[p]unitive damages may further a State’s legitimate interests in punishing unlawful conduct and deterring its repetition” and that “only an award that is ‘grossly excessive’ in relation to these interests” would violate due process.[FN7] Gore then set forth three criteria, often referred to as “the Gore guideposts,” to assist court in determining if a punitive damage award comports with due process:

(1) The degree of reprehensibility of defendant’s misconduct;

(2) The disparity or ratio between the actual or potential harm suffered by plaintiff and the punitive damages award; and

(3) The difference between the punitive damages awarded by the jury and civil penalties authorized or imposed in comparable cases.[FN8]


Thereafter in State Farm Mutual Automobile Insurance Co. v. Campbell the Court, applying these three guideposts, concluded that a punitive damages award of $145 million, compared with actual damages of $1 million, “was an irrational and arbitrary deprivation of the property of the defendant.”[FN9] Although Campbell expressly declined to create a bright-line constitutional limit to the punitive-to-compensatory damages ratio, the Court expressed a general preference for single-digit ratios.[FN10]

Do the Gore Guideposts Apply to Test the Constitutionality of a Statutory Damages Award in Copyright Cases?

Following Gore and State Farm, courts uniformly opted not to apply the Gore framework to test the constitutionality of statutory damages awards in copyright cases.[FN11] Instead, post-Gore cases preferred to assess constitutionality by applying the standards set forth years earlier by the Court in St. Louis, I.M. & S. Ry. Co. v. Williams.[FN12]

In Williams, the Court considered whether a jury’s award within a statutorily prescribed range violated the due process clause. In that case, a railroad charged two sisters 66 cents each more than the statutorily prescribed fare. A state statute sought to deter over-charges by providing for statutory damages between $50 and $350 for each violation. The sisters sued and received statutory damage awards of $75 apiece — 114 times more than the 66 cents in damages each had incurred. Williams held that award constitutional.

The Court stated that the validity of the awards should not be tested by comparing the small amount of the overcharges with the magnitude of the judgments.[FN13] Instead, the Court, in assessing the awards’ constitutionality examined whether the statutory scheme appropriately responded to “the interests of the public, the numberless opportunities for committing the offense, and the need for securing uniform adherence to established passenger rates.”[FN14]

Williams stated that an award would only violate due process if it were “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”[FN15] The Court expressly rejected defendant’s attempt to test the constitutionality of the “large” penalty by comparing it with the actual damage, stating that statutory remedies for “public wrongs” are not required to “be confined or proportioned to [plaintiff’s] loss or damages.”[FN16] Williams added that when comparing the size of an award against the gravity of the offense, a court must bear in mind that legislatures “still possess a wide latitude of discretion” when setting statutory damages.[FN17]


Zomba v. Panorama, supra, is representative of the post-Gore cases applying Williams to test the constitutionality of a statutory damages award. In Zomba the 6th Circuit found that a statutory damages verdict of $806,000 (44 times actual damages) was constitutionally permissible.[FN18] Zomba acknowledged Campbell’s preference for a lower punitive-to-compensatory ratio.[FN19] But Zomba noted that Campbell did not deal with statutory damages and therefore Zomba said it would follow Williams until the Court held otherwise.[FN20]


But Tenenbaum did not wait for the Court. Instead, Judge Gertner applying the Gore framework, held unconstitutional the jury’s verdict of $675,000.Tenenbaum added that even under Williams the award was “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”[FN21]

Do the Gore Guidelines Apply Here?

The Gore guidelines are an ill-fit to test the constitutionality of a statutory damages award for a number of reasons. Before focusing on each guideline, I began with some overall considerations.

Courts such as Gore review punitive damages to establish whether a defendant had fair notice of the size of a potential award and to create an outer limit on the jury’s unrestrained discretion to impose punitive damages. But in the statutory damages context concerns about fair notice and unbounded liability are inapplicable. The Copyright Act already gives notice of the potential award and sets a statutory range within which it must fall.[FN22]

Further, punitive damages serve a singular purpose: to punish in amounts that are not constrained. But statutory damages in copyright litigation serve other purposes besides punishment: to compensate, impose appropriate damages on wrongdoers, deter future infringements and promote the creation of intellectual property.[FN23]

In addition, statutory damages are expressly authorized by Congress, which makes their review a question of the scope of Congress’ legislative authority. Punitive damages, by contrast, are typically awarded by juries without explicit statutory authorization or limitations and thus present no basis upon which courts could easily defer to legislative judgments.

Moreover, the Gore guideposts compensate for the absence of legislative guidance. Courts apply them to facilitate judgments the legislature never made. But the present statutory damages scheme is the result of a long history of Congressional action. That scheme already gives guidance regarding the appropriate range of statutory damages. Therefore, a within-statutory-range-verdict is entitled to substantial deference.

The Three Guideposts

Turning to the specific guideposts:

The first guidepost, the degree of defendant’s reprehensibility, has no role to place in a constitutional review of statutory damages because reprehensibility is already embraced and calibrated in the Copyright Act. An innocent infringer risks damages of no less than $200. A non-willful infringer faces damages of no more than $30,000; and a willful infringer risks a maximum of $150,000 per infringed work.

Because Congress has already crafted these limits, a court’s role should be limited to reviewing the rationality of Congress’ statutory scheme. That is why Williams instructs courts to examine the reasonableness of Congress’s determination, giving deference to its assessment of the “interests of the public, the numberless opportunities for committing the offense, and the need for securing uniform adherence” to the law.[FN24]

The second Gore guidepost weighs the relationship between the punitive award and the actual harm. But this guidepost has no application to statutory damages in copyright litigation for a number of reasons. First, statutory damages may be awarded, as Tenenbaum acknowledged, without any showing of harm.[FN25]Second, § 504(c) of the Copyright Act does not condition the availability of statutory damages on proof of actual damages. Instead, the statute permits a copyright owner to recover statutory damages “instead of actual damages and profits.” And as Judge Gertner acknowledged “every authority [before Tenenbaum] confirms what the language of section 504 indicates — statutory damages may be elected even if the plaintiff cannot, or chooses not to, prove” actual damages.[FN26]

Third, Williams forecloses any attempt to compare an award’s ratio to actual damages stating that statutory damages must not “be confined or proportioned to [plaintiff’s] loss or damages.”[FN27]Instead, Williams holds that “the Legislature may adjust [the award’s amount] to the public wrong rather than the private injury.”[FN28] Lastly, requiring proof of actual damages subverts a purpose of statutory damages which relieves the copyright holder of the sometimes impossible burden of proving actual damages.[FN29]

The third Gore guidepost judges the propriety of the statutory damages award by focusing on its relationship with the applicable civil penalty. But this guidepost is irrelevant in this constitutional analysis because the award is, by definition, the applicable civil or statutory penalty.

The Court Created a Safe Harbor for College-Age File Sharers

Judge Gertner admitted that this third guidepost was “the most troublesome for Tenenbaum.”[FN30] Nevertheless, Tenenbaum sidestepped this troublesome fact by reaching an extraordinary conclusion. The court stated that there was “substantial evidence indicating that Congress did not contemplate that the Copyright Act’s broad statutory damages provision would be applied to college students like Tenenbaum who file-shared without any pecuniary gain.”[FN31] The court repeated its bizarre conclusion, “[i]n fact, a careful review of section 504(c)’s legislative history suggests that Congress likely did not foresee that statutory damages awards would be imposed on noncommercial infringers sharing and downloading music through peer-to-peer networks.”[FN32]

No doubt collegiate music file sharers are loudly toasting this result. But the “substantial evidence” and the “legislative history” the court relied on consisted of off-hand, post-hoc comments made by Senators Hatch and Leahy at hearings held after Congress passed that statue.[FN33]

In fact, the legislative history of the aptly-named the Digital Theft Deterrence and Copyright Damages Improvement Act of 1999[FN34] (the “Digital Act”) demonstrates the opposite—that it addressed the growing online theft of intellectual property by all infringers, commercial or not. Congress expressed the need for this legislation in words that echo Tenenbaum’s conduct:

By the turn of the century … the development of new technology will create additional incentives for copyright thieves to steal protected works. Many computer users … simply believe that they will not be caught or prosecuted for their internet conduct. Also many infringers do not consider the current copyright infringement penalties a real threat and continue infringing even after a copyright owner puts them on notice.[FN35]

The text of the Digital Act (which amended the Copyright Act) does not distinguish between classes of infringers, much less immunize file sharers from statutory damages. Nor does § 504 (a)(2) of the Copyright Act. Instead, that section exposes any “infringer of copyright” to liability “for … statutory damages, as provided.” Further, courts resort to legislative history to divine the meaning of an otherwise ambiguous statutory provision, not to create ambiguity where none exists.[FN36] Because the statutory language was plain, Tenenbaum should not have examined congressional intent, much less relied on informal comments from two Senators made after the Digital Act was enacted.[FN37]

Further, if the court were correct that the Copyright Act was not intended to apply to collegiate file sharers, the logical result would have been to find that the verdict violated that Act.[FN38] But the court expressly recognized that the Act unambiguously authorized the jury’s award. Nonetheless, after acknowledging that it “must give effect to this clear statutory language,”[FN39] the court flip flopped stating that § 504(c) “does not embody” any judgment to which the court could defer.[FN40]

Tenenbaum’s Damage Calculation Was Equally Problematic

Tenenbaum took another unusual turn by setting the damages at $2,250 per work. The court first determined that the actual damage Tenenbaum caused the labels was $1 per song.[FN41] This figure ignores the wide distribution Tenenbaum made of the downloaded songs to an untold number of others, File sharing essentially places the songs in the public domain.

Then Tenenbaum purported to rely on the doctrine of treble damages under which a court may increase the award by three times the amount of actual damages.[FN42] But instead of trebling this $1 figure, Tenenbaum trebled $750, which is the minimum amount of statutory damages permitted under the Copyright Act for any infringement other than one done innocently. In other words, the court did not treble the amount of actual damages of $1 per infringed song it determined the labels had suffered. The court instead multiplied its determination of actual damages by 2,250 to reach the damage amount of $2,250 per work, an amount that under the circumstances appears arbitrary.

The Verdict Passes Muster Under Williams

The jury’s verdict in Tenenbaum, although substantial, fits comfortably within the Williams framework. That case requires deference to the legislature’s “wide latitude of discretion” in responding to public wrongs.[FN43] Under Williams, a court must defer to Congress’ judgment in assessing “the interests of the public, the numberless opportunities for committing the offense, and the need for securing uniform adherence to establish [law].”[FN44] So long as the statutory damages scheme adequately addresses these concerns, that scheme satisfies due process.

Here the jury’s award of $22,500 per song award is toward the low end of the willful infringement range (which extends upward to $150,000 per work) and was 15% of the maximum of $4.5 million the jury could have been assessed. It therefore seems not “obviously unreasonable” or “oppressive” considering there is nothing unconstitutional about an award greater than the quantifiable harm and further considering that the jury’s award was an appropriate response to Tenenbaum’s near decade of willful conduct.

As the district court noted, Tenenbaum started file sharing in 1999 and continued through 2007, “downloading thousands of songs for free and without authorization.” Tenenbaum “was aware his conduct was illegal” and even continued it after receiving a cease and desist letter. When sued he tried to shift responsibility for his downloading to others and lied during his “sworn responses to discovery requests” and “made several misleading or untruthful statements in his deposition testimony.”[FN45]

The record labels should not be faulted for being unable to quantify the extent of injury Tenenbaum caused. The nature of peer-to-peer file sharing technology Tenenbaum used made that showing nearly impossible. Peer-to-peer networks operate without any centralized control or oversight. They allow computer users to transfer music files directly to their peers without the knowledge of third parties. As the jury may have determined, Tenenbaum should not avoid the consequences of his misconduct simply because he made it difficult for the labels to quantify injury.[FN46]

Music piracy is a major problem in this country robbing the economy of billions each year.[FN47] If piracy is to ever end, large verdicts of the kind meted out in Tenenbaum may be necessary.

What Are the Consequences If Tenenbaum Is Affirmed on Appeal?

Affirming the result in Tenenbaum will negatively impact copyright enforcement for years to come for a number of reasons.

First, affirmance will cause many meritorious copyright claims never to be litigated. That is because Tenenbaum, contrary to the Copyright Act, requires copyright owners to prove actual damage as a pre-condition to recovering statutory damages. But many copyright holders will be unable to show actual damages. The value of a copyright, especially at inception, is often impossible to estimate. How much is an unpublished novel by a first-time author worth?

Second, removing the teeth from the statutory damage scheme, which is what Judge Gertner essentially did, relegates litigants to actual damages. But they are often inadequate for a number of reasons. First, actual damages may be less than the cost of detecting, investigation and, for sure, litigating. So why bother? Second, actual damages, often requiring extensive accounting analysis, may be prohibitively expensive to prove. Third, although actual damages in copyright litigation include the infringer’s profits attributable to the infringement, there may be none to collect either because an infringer earned none, conveniently lost its sales records or never kept any.

What Will Be the Eventual Outcome?

Predictions about how the Court might rule should this case reach the high court are not for the faint of heart. But, as Justice Ginsburg noted in Eldred v. Ashcroft,[FN48] albeit in a different context, the Court has been “deferential to the judgment of Congress in the realm of copyright.” I suggest that that deference will continue should the Court ever weigh the constitutionality of the jury’s award in Tenenbaum.[FN49]

But at the same time the Court may wish to update its constitutional analysis of statutory damages in the copyright context. Williams is nearly a century old. The internet, new technologies and the ease and frequency of downloading have now reshaped the copyright landscape. Further, copyright holders are in many cases no longer interested in protecting their exclusive rights. Instead, they now place their works on social media sites with every expectation and hope that they will be copied, adapted, modified, published, transmitted and displayed to an untold number of others by any means of distribution now know or later created. These copyright holders who freely share their works often advocate and expect that others will do the same. This advocacy is not likely to lead to changes in the Copyright Act. But it may continue to influence the judicial response to infringement as it did in the district court’s opinion in Tenenbaum.

* Mr. Berger is counsel to the New York firm of Tannenbaum Helpern Syracuse & Hirschtritt LLP where he specializes in copyright and trademark infringement litigation. He also publishes an intellectual property blog called IP In Brief at

[FN1] 721 F. Supp. 2d 85 (D. Mass. 2010).

[FN2] Id. at 89.

[FN3] Browning-Ferris Industries of Vermont, Inc. v. Kelco Disposal, Inc., 492 U.S. 257, 282 (1989) (O’Connor, J., concurring in part & dissenting in part);Pacific Mutual Life Ins. Co. v. Haslip, 499 U.S. 1, 23 (1991) (Punitive damage award that was more than 4 times the amount of compensatory damages came “close to the line.”).

[FN4] 517 U.S. 559 (1996).

[FN5] 646 So. 2d 619 (Ala. 1994).

[FN6] Id. at 629.

[FN7] 517 U.S. at 568.

[FN8] Id. at 574-84.

[FN9] 538 U.S. 408, 429 (2003).

[FN10] Id. at 425.

[FN11] See, e.g., Lowry’s Reports, Inc. v. Legg Mason, Inc., 302 F. Supp. 2d 455, 460 (D. Md. 2004); Zomba Enters, Inc. v. Panorama Records, Inc., 491 F.3d 574, 587 (6th Cir. 2007) (Noting that Gore and State Farm’s application to statutory damages for copyright infringement was questionable); Arista Records LLC v., Inc., 2010 WL 3629587 at *4-*5 (S.D.N.Y. Sept. 16, 2010) ($6,585,000 award did not violate due process); Propet USA, Inc. v. Shugart, 2007 WL 4376201 at *2-*3 (W.D. Wash. Dec. 13, 2007) ($500,000 statutory damages award for copyright infringement—“some forty times … actual damages”—not unconstitutionally excessive).

[FN12] 251 U.S. 63 (1919).

[FN13] Id. at 67.

[FN14] Id.

[FN15] Id.

[FN16] Id.

[FN17] Id. at 66.

[FN18] 491 F.3d at 587-88.

[FN19] Id. at 587.

[FN20] Id.

[FN21] 721 F. Supp. 2d at 116.

[FN22] Plaintiffs-Appellants Opening Brief to the First Circuit in Tenenbaum at 38-9 (“Plaintiffs’ Brief”).

[FN23] See, e.g., F.W. Woolworth Co. v. Contemporary Arts Inc., 344 U.S. 228, 233 (1952) (“The statutory rule, formulated after long experience, not merely compels restitution of profit and reparation for injury but also is designed to discourage wrongful conduct.”); Feltner v. Columbia Pictures Television Inc.,523 U.S. 340, 352, (1998) (“[A]n award of statutory damages may serve purposes traditionally associated with legal relief, such as compensation and punishment.”); Fitzgerald Publishing Co. v. Baylor Publishing Co., 807 F. 2d 1110, 1117 (2d Cir.1986) (“[T]he expenses saved and the profits reaped by the infringers are considered” as are “the revenues lost by the plaintiff . . . the value of the copyright, . . .and the deterrent effect on others besides the defendant.”); Stevens v. Aeonian Press, 64 USPQ2d 1920, 1921 (S.D.N.Y.2002) (“In making such an award [of statutory damages], the Court is required to consider various factors, including . . . the revenues lost by the Plaintiffs, the value of the copyright, the deterrent effect of the award on other potential infringers, and factors relating to individual culpability.”).

[FN24] 251 U.S. at 67; Plaintiffs’ Brief at 41-2.

[FN25] 721 F. Supp. 2d at 87; see also, F.W. Woolworth Co. v. Contemporary, supra, 344 U.S. at 233 (“Even for uninjurious and unprofitable invasions of copyright the court may, if it deems just, impose a liability within statutory limits to sanction and vindicate the statutory policy.”); Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488, 496 (4th Cir.), cert. den., 519 U.S. 809 (1996) (Affirming then-maximum statutory damages award of $100,000 per infringement despite plaintiff’s inability to identify damages or lost profits and even though defendant’s revenues from the infringing sales only totaled $10,000);

[FN26] Tenenbaum, supra, 721 F. Supp. 2d at 92.

[FN27] Williams, 251 U.S. at 66.

[FN28] Id.

[FN29] Congress enacted statutory damages because “actual damages are often conjectural, and may be impossible or prohibitively expensive to prove.” Staff of H. Comm. on the Judiciary, 87th Cong., Copyright Law Revision: Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law at 102.

[FN30] 721 F. Supp. 2d at 103.

[FN31] Id. at 89.

[FN32] Id. at 104.

[FN33] Id. at 106-07.

[FN34] Pub. L. No. 106-160, 113 Stat. 1774.

[FN35] H.R. Rep. 106-216 at 3.

[FN36] See Ratzlaf v. United States, 510 U.S. 135, 147-48 (1994).

[FN37] See, e.g., Connecticut Nat’l Bank v. Germain, 503 U.S.249, 253-54 (1992) (“We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there. When the words of a statute are unambiguous, then, this first canon is also the last: judicial inquiry is complete.” (internal quotations and citations omitted)).

[FN38] See Plaintiffs’ Brief at 33.

[FN39] 721 F. Supp. 2d at 107

[FN40] Id.

[FN41] Id. at 112.

[FN42] Id. at 117.

[FN43] 251 U.S. at 66.

[FN44] Id. at 67.

[FN45] 721 F. Supp. 2d at 90-91.

[FN46] See Bigelow v. RKO Radio Pictures, 327 U.S. 251, 264 (1946).

[FN47] The Record Industry Association of America quotes with approval a source stating that U.S. internet users annually consume between $7 and $20 billion worth of digitally pirated recorded music., last visited February 17, 2011.

[FN48] 537 U.S. 186, 198 (2003).

[FN49] Pamela Samuelson & Ben Sheffner, Debate, Unconstitutionally Excessive Statutory Damage Awards in Copyright Cases, 158 U. PA. L. REV. PENNUMBRA 53, 62 (2009),