Robert MONTGOMERY, Plaintiff-Appellee,

                                                      v.

                  Rebecca NOGA and Florida Lion's Den, Inc., Defendants-Appellants.

                                                No. 95-3000.

                                      United States Court of Appeals,

                                              Eleventh Circuit.

                                               March 5, 1999.

Appeal from the United States District Court for the Middle District of Florida. (No. 93-929-CIV-ORL-19),
Patricia C. Fawsett, Judge.

Before TJOFLAT, DUBINA and CARNES, Circuit Judges.

        TJOFLAT, Circuit Judge:

        The jury in this case found the defendants liable for infringing the plaintiff's copyright in a computer

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

judgment against the defendants, awarding both actual damages and attorneys' fees to the plaintiff. On

appeal, the defendants challenge numerous rulings of the district court. We affirm. In so doing, we endeavor

to bring a small measure of clarity to certain "rather swampy"1 areas of copyright and unfair competition law.

                                                      I.

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

to view pictures on a computer screen. Montgomery integrated several computer programs that he previously

had written—each of which was capable of reading different picture file formats—to create the initial version

of VPIC in December 1988. VPIC went through several versions during the course of its development,

including version 1.3, released on February 2, 1989, and version 1.4, released on March 15, 1989.

Montgomery did not register his copyrights in the early versions of VPIC and did not affix a copyright notice

when he marketed these early versions on computer bulletin boards. On August 8, 1990, Montgomery



   1
    Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 

, 839 (11th Cir.1983) (quoting B.H. Bunn
Co. v. AAA Replacement Parts Co., 

, 1258 (5th Cir.1971)).
registered his copyright in VPIC version 2.9a. VPIC 2.9a and subsequent versions did contain a copyright

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

        The defendants, Florida Lion's Den, Inc. ("FLD") and Rebecca L. Noga (FLD's president and sole

shareholder), produce CD-ROM discs that are largely pornographic in nature. In 1992, the defendants and

FLD vice-president Blaine Richard downloaded VPIC version 4.33 from a bulletin board and incorporated

it as a utility on four of FLD's CD-ROM titles without obtaining a license from Montgomery. Because the

defendants had activated a certain feature of VPIC, the VPIC closing screen that contained Montgomery's

copyright notice did not appear when users viewed the pictures on the defendants' discs.

        Upon learning of the defendants' unauthorized use of VPIC, Montgomery—acting through his

licensing agent, who sent a letter to the defendants on June 3, 1993—demanded that the defendants cease and

desist from using VPIC on FLD products, recall all unsold products containing VPIC, and pay damages for

their unauthorized use. The defendants did not comply with these demands; Montgomery therefore filed a

complaint against them in the U.S. District Court for the Middle District of Florida on October 25, 1993. The

complaint sought damages and injunctive relief for infringement of Montgomery's VPIC copyright in

violation of 17 U.S.C. § 101 et seq., and for a violation of section 43(a) of the Lanham Act, 15 U.S.C. §

1125(a).4 The defendants raised a number of affirmative defenses and impleaded Richard as a third-party


   2
    As Montgomery's complaint explains, a bulletin board system (or BBS) is an electronic interface
between two computer systems that allows users to download software onto their computer systems.
VPIC 2.9a and subsequent versions included a notice of Montgomery's copyright as well as information
about how users that obtained VPIC from bulletin boards could register with Montgomery to avoid
copyright infringement liability. Software that is marketed in this way is called "shareware."
   3
     Montgomery registered his copyright in VPIC 2.9a in 1990. The defendants sold the four CD-ROM
titles incorporating VPIC 4.3 from approximately December 1992 through October 1993. At the time that
the defendants incorporated VPIC 4.3 onto their CD-ROM discs, VPIC 4.3 was not the most current
version of VPIC available. Montgomery did not register his copyright in VPIC version 4.3 until January
24, 1995, well after he commenced this suit.
   4
    The complaint also alleged that the defendants' actions constituted unfair competition under Florida
common law. The district court dismissed this claim on April 7, 1994, on the ground that it was
pre-empted by the Copyright Act.

                                                     2
defendant. Montgomery obtained a preliminary injunction on November 30, 1993, that enjoined the

defendants from utilizing VPIC in FLD products.5

        Both Montgomery and the defendants moved for summary judgment on Montgomery's two claims,

but the district court denied these motions on January 24, 1995. The case went to trial before a jury on March

20, 1995. At the close of Montgomery's case in chief, the defendants moved for judgment as a matter of law

on both claims; the court denied their motion. At the close of all the evidence, Montgomery moved for

judgment as a matter of law and the defendants renewed their motion; the court denied these motions as well.

The case was then submitted to the jury, which found in favor of Montgomery on both claims and awarded

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

claim.6 The jury also found that, with regard to the copyright claim, the defendants' infringement had been

"willful" and that, with regard to the Lanham Act claim, the case was "exceptional."

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

defendants' motion for remittitur or a new trial, as well as their renewed motion for judgment as a matter of

law.7 The court granted Montgomery's motion for a permanent injunction and, in light of the jury's "willful"

and "exceptional" findings, granted Montgomery's motion for costs and attorneys' fees. Montgomery also

moved for an award of statutory damages pursuant to 17 U.S.C. § 504(c)(1), but the district court declined

to award additional damages. Judgment was therefore entered in favor of Montgomery and against the




   5
    The injunction also required the defendants to recall and surrender to Montgomery all infringing FLD
products in their possession, and to advertise via bulletin board that the infringing products were
produced without a license and thus were subject to payment of a licensing fee to Montgomery.
   6
   The jury had been instructed that Montgomery could not be awarded a double recovery of the same
damages under both the copyright and Lanham Act claims.
   7
     The court granted the defendants' motion for judgment against third-party defendant Richard, noting
that Richard previously had admitted that the defendants had a right of complete contribution and
indemnification against him for any amount that the defendants were found to owe Montgomery in this
suit.

                                                      3
defendants in the amount of $228,833.34: $80,000 for the copyright claim, $30 for the Lanham Act claim,

$142,289.26 for attorneys' fees, and $6,514.08 for costs.8 This appeal followed.9

                                                       II.

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

matter of law on the copyright infringement claim given that (1) Montgomery's copyright in VPIC 2.9a is

invalid because earlier versions of VPIC were injected into the public domain, and (2) the scope of

Montgomery's registered copyright in VPIC 2.9a, even if valid, does not extend to protect VPIC 4.3; (B)

denying their motion for remittitur or a new trial on the issue of damages with respect to the copyright claim;

(C) denying their motion for judgment as a matter of law on the Lanham Act claim; (D) precluding one of

their witnesses from testifying as an expert; and (E) awarding Montgomery attorneys' fees on (1) the

copyright claim and (2) the Lanham Act claim. We address these contentions seriatim.

                                                       A.

         In evaluating the defendants' contention that the district court improperly denied their motion for

judgment as a matter of law on Montgomery's copyright infringement claim, we proceed from certain basic

principles of copyright law. The Copyright Act of 1976, 17 U.S.C. § 101 et seq. (1994), provides protection

for computer programs. See Cable/Home Communication Corp. v. Network Prods., Inc., 

, 842

(11th Cir.1990); 17 U.S.C. § 102(a) (1994). The Act defines a computer program as "a set of statements or

instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C.

§ 101 (1994). For original computer programs and other original works of authorship created after 1977,

copyright automatically inheres in the work at the moment it is created without regard to whether it is ever

registered. See Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 

, 1531 (11th Cir.1994); 17




   8
    The court also entered judgment in favor of the defendants against Richard in this amount.
   9
   We have subject matter jurisdiction over this appeal. See 15 U.S.C. § 1121(a) (1994); 28 U.S.C. §§
1291, 1338 (1994).

                                                       4
U.S.C. § 102(a); Melville B. Nimmer & David Nimmer, 2 Nimmer on Copyright § 7.16[A][1] (1998)

[hereinafter Nimmer ]. In order to bring an action for copyright infringement, however, the author must first

register the copyright. See 17 U.S.C. §§ 411(a), 501(b) (1994); M.G.B. Homes, Inc. v. Ameron Homes, Inc.,

, 1488 & n. 4 (11th Cir.1990) (stating that "[t]he registration requirement is a jurisdictional

prerequisite to an infringement suit"). Montgomery's claim of copyright infringement, therefore, necessarily

is predicated on the defendants' infringement of VPIC 2.9a—the only version of VPIC that Montgomery had

registered at the time he commenced this action.

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

prove two elements in order to prevail: "(1) ownership of a valid copyright, and (2) copying of constituent

elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 

, 361,

, 1296, 

(1991). Here, the element of copying is not in dispute. The

defendants admit that, without obtaining a license from Montgomery, they downloaded VPIC 4.3 from a

bulletin board and incorporated it as a utility on four FLD discs.

        The defendants challenge the propriety of Montgomery's copyright infringement claim on two

grounds. First, they argue that Montgomery does not own a valid copyright in VPIC 2.9a as required by

Feist. According to the defendants, Montgomery's copyright in VPIC 2.9a is invalid because earlier versions

of VPIC—components of which were contained in VPIC 2.9a—were injected into the public domain.

Second, and alternatively, the defendants argue that the scope of Montgomery's copyright registration for

VPIC 2.9a does not extend to support the commencement of an action for infringement of his unregistered

copyright in VPIC 4.3—the version that the defendants incorporated.

         The district court rejected these arguments, finding that the jury's verdict was in accordance with

both the law and the evidence at trial. We review a district court's denial of a motion for judgment as a matter

of law de novo, applying the same standards as the district court. In considering the sufficiency of the

evidence that supports the jury's verdict, we review the evidence "in the light most favorable to, and with all



                                                       5
reasonable inferences drawn in favor of, the nonmoving party." Walker v. NationsBank of Fla., N.A., 

, 1555 (11th Cir.1995). If reasonable and fair-minded persons in the exercise of impartial judgment

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

v. Button Gwinnett Bancorp, Inc., 

, 1200 (11th Cir.1993). Questions of law raised by the motion,

however, are reviewed de novo. See Morro v. City of Birmingham, 

, 513 (11th Cir.1997), cert.

denied,--- U.S. ----, 

, 

(1998). Applying these standards to the two arguments

presented by the defendants, we conclude that the district court correctly denied their motion.

                                                      1.

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

a valid copyright. In order to meet this burden, the plaintiff must show that the work is original and that the

applicable statutory formalities were followed. See Bateman v. Mnemonics, Inc., 

, 1541 (11th

Cir.1996). Given that Montgomery produced a certificate of copyright registration for VPIC 2.9a at trial,

however, he benefited from a rebuttable presumption that the VPIC 2.9a copyright is valid. See 17 U.S.C.

§ 410(c) (1994).10 The burden therefore shifted to the defendants, who were required to demonstrate that "the

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

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

.

        The defendants' argument that VPIC 2.9a is unprotectable has two parts. Citing 17 U.S.C. § 405(a),

the defendants initially claim that VPIC 1.3 and its predecessor versions were injected into the public

domain—i.e., that Montgomery forfeited his unregistered copyrights in these versions—because these



   10
     Section 410(c) states that, in any judicial proceeding, "the certificate of a registration made before or
within five years after first publication of the work shall constitute prima facie evidence of the validity of
the copyright...." The defendants argue that Montgomery could not benefit from this presumption
because he released some of VPIC's predecessor programs prior to October 1988, over five years before
he brought this suit. This argument misinterprets the statute. Section 410(c) merely requires that the
work at issue be registered (not that the infringement suit be brought) within five years after its first
publication. The evidence at trial demonstrated that VPIC 2.9a was first released to the public on July 1,
1990, and that Montgomery registered his copyright in that version on August 8, 1990. Accordingly,
Montgomery was entitled to the section 410(c) presumption.

                                                      6
versions did not contain copyright notices when Montgomery released them to the public prior to March 1,

1989. Second, the defendants assert that the revisions Montgomery made to VPIC in versions 1.4 through

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

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

forfeited his copyrights in VPIC 1.3 and its predecessors by publishing them without a copyright notice,11 we

conclude that the modifications Montgomery made to VPIC in versions 1.4 through 2.9a were sufficiently

original to support a valid copyright in version 2.9a as a derivative work. See SAS Inst., Inc. v. S & H

Computer Sys., Inc., 

, 826-27 (M.D.Tenn.1985) (concluding that regardless of whether

previous version of computer programming system was in the public domain, subsequent version of system

was sufficiently original to support valid copyright).




   11
        17 U.S.C. § 405(a) (1994) states that, for works publicly distributed before March 1, 1989,

                   the omission of [a copyright notice] from copies or phonorecords ... does not invalidate
                   the copyright in a work if ... (2) registration for the work has been made before or is made
                   within five years after the publication without notice, and a reasonable effort is made to
                   add notice to all copies or phonorecords that are distributed to the public in the United
                   States after the omission has been discovered....

           See generally Donald Frederick Evans & Assocs., Inc. v. Continental Homes, Inc., 

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

                    Montgomery argues that his 1990 registration of, and inclusion of a copyright notice in,
           VPIC 2.9a occurred less than 5 years after the publication of VPIC 1.3 and its predecessors in the
           late 1980s. He concludes, therefore, that any potential forfeiture of his rights properly was cured
           under section 405(a)(2). Montgomery's conclusion might be correct if he had registered, and
           made a reasonable effort to add notice to subsequent copies of, VPIC version 1.3 and its
           predecessor versions themselves. Cf. Continental 

n. 22 (discussing a
           disagreement among various courts regarding whether section 405(a)(2) requires a copyright
           owner to add notice to all copies distributed, or only to copies distributed after it is discovered
           that notice was omitted). We express no opinion, however, on the question of whether the
           inclusion of a copyright notice in copies of a subsequent version of a work can rescue the
           copyright of a previous version that was distributed without a copyright notice. Cf. 17 U.S.C. §
           101 (1994) ("where the work has been prepared in different versions, each version constitutes a
           separate work").

                                                         7
         The Copyright Act states that "[a] work consisting of editorial revisions, annotations, elaborations,

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

a 'derivative work.' "     17 U.S.C. § 101.       Such a work—if it is non-infringing and sufficiently

original—qualifies for a separate copyright, although this copyright does not protect the preexisting material

employed in the derivative work. See 17 U.S.C. § 103 (1994); Stewart v. Abend, 

, 223-24, 

, 1761-62, 

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

non-infringement clearly is satisfied. This is true regardless of whether Montgomery held valid copyrights

in VPIC 1.3 and its predecessor versions when he modified them to create version 2.9a (as Montgomery

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

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

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

least some minimal degree of creativity.... To be sure, the requisite level of creativity is extremely low; even

a slight amount will suffice." 

, 111 S.Ct. at 1287; see also 

111 S.Ct. at

1289.12 The defendants claim that the modifications Montgomery made to VPIC in versions 1.4 through 2.9a

did not cross even this low threshold. In support of this claim, they argue that Montgomery himself stated

on cross-examination that the source code for VPIC version 2.9a was substantially similar to the source code

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



   12
      Feist resolved a possible tension in our precedent regarding the test for establishing originality.
Compare Sherry Mfg. Co. v. Towel King of Fla., Inc., 

, 1568 (11th Cir.1985) (noting that
"in order to qualify for a separate copyright, the derivative work must contain some substantial, and not
merely trivial, originality" (emphasis added)), with Original Appalachian Artworks, Inc. v. The Toy Loft,
Inc., 

, 824-25 (11th Cir.1982) (discussing the "minimal degree of originality necessary for
copyright protection" (emphasis added)). Cf. 1 Nimmer § 3.03, at 3-10 ("[I]n order to qualify for a
separate copyright as a derivative or collective work, the additional matter injected in a prior work ... must
constitute more than a minimal contribution.").
   13
     The statement at issue occurred after a series of questions by the defendants' counsel that sought to
have Montgomery compare versions 1.3 and 2.9a. Counsel began by asking Montgomery about the size
of the execute file (in bytes) for each of these versions, and then by asking him to compare the size of
these files in percentage terms. Counsel then turned to the source code for each version and asked what

                                                       8
evidence presented at trial, however, that VPIC 2.9a contained several additions and corrections that were

not present in version 1.3. For example, the revision history that was submitted with the VPIC 2.9a copyright

registration application shows that in versions 1.4 through 2.9a, Montgomery corrected many problems,

increased the number of graphics file formats that VPIC users could view, increased by 50 percent the speed

at which VPIC would decode graphics stored in the GIF file format, and configured VPIC to work with


would be the best way to compare the code. This exchange followed:

                         A. There probably is no good way to do it. You may have added comments, you
                may have taken comments out. There's [sic] comments that don't compile. Even if you
                look at the size of the C modules and things like that, it still wouldn't tell you....

                        Q. If we had the source code of VPIC version 1.3, couldn't we at least see some
                very similar [sic]?

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

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

                        A. You might. Might not.... How can you possibly tell? You know, I don't, I
                don't understand how you can tell. How you can get a comparison of 90 percent, 80
                percent, 70 percent, 100 percent, you know. It may be 100 percent with different words.
                I mean, you know, that's a possibility. I don't know how you, how you can get
                percentages.

        (emphasis added).

                 Defendants claim that the portion of Montgomery's answer emphasized above establishes
        that the material added in versions 1.4 through 2.9a was not sufficiently original to support a
        valid copyright in version 2.9a. It is not clear from this exchange, however, whether
        Montgomery's comments regarding percentages pertained to the size of the code for these two
        versions or to the similarity of the code. The following exchange, which occurred shortly after
        the one quoted above, suggests that the code for version 2.9a was not 100 percent similar to the
        code for version 1.3:

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

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

                         Q. By the time you got to 2.9, you also corrected a number of errors, did you
                not?

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

                                                      9
additional graphics computer chips and cards. In light of this evidence, we conclude that the defendants failed

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

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

district court, therefore, did not clearly err in rejecting the defendants' argument that VPIC 2.9a is

unprotectable.14



   14
     While the question of originality usually is viewed as an issue of fact subject to appellate review
under the clearly erroneous standard, see Original Appalachian 

; 3 Nimmer §
12.12, we have departed from this standard in certain situations. In Sherry 

& n. 6, we held as a matter of law that a design on a towel lacked sufficient originality to be
copyrightable. In so doing, we stated that "where the appellate court has the opportunity to view for itself
the same tangible exhibits considered by the trial court, the rationale for applying the clearly erroneous
standard disappears." 

n. 6. We cited the Second Circuit case of Eden Toys, Inc. v. Florelee
Undergarment Co., 

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

                 In this case, we have before us certain tangible exhibits that bear directly on the question
        of whether Montgomery's modifications were sufficiently original. Some of these exhibits, such
        as the source code for VPIC 2.9a, are not readily comprehensible by those not trained in
        computer programming. The VPIC revision history is somewhat more comprehensible, but
        Montgomery interpreted and expanded upon it at length in his trial testimony. In such
        circumstances, it is unclear whether Sherry Manufacturing would require that we consider the
        question of originality de novo. Cf. Malden Mills, Inc. v. Regency Mills, Inc., 

,
        1113 & n. 2 (2d Cir.1980) (implying, in the context of a copyright infringement analysis, that
        expert testimony regarding matters not within the knowledge of the lay observer might preclude
        de novo review); G.R. Leonard & Co. v. Stack, 

, 40-41 (7th Cir.1967) (applying the
        clearly erroneous standard in the copyright infringement context where the evidence regarding
        the parties' respective works consisted mostly of "testimonial analysis and interpretation" of the
        works). To the extent that Sherry Manufacturing would require de novo review, however, we
        conclude that Supreme Court precedent prevents us from following it.

                 Only twenty days after we decided Sherry Manufacturing, the Supreme Court held that
        factual findings are to be reviewed for clear error "even when the district court's findings do not
        rest on credibility determinations, but are based instead on physical or documentary evidence or
        inferences from other facts." Anderson v. City of Bessemer City, 

, 574, 

, 1511-12, 

(1985). While we recognize that Second Circuit copyright
        infringement cases continue to apply de novo review to certain factual determinations that are
        based on tangible exhibits, see, e.g., Folio Impressions, Inc. v. Byer Cal., 

, 766 (2d
        Cir.1991) (reviewing district court finding of substantial similarity de novo ); Business Trends
        Analysts, Inc. v. Freedonia Group, Inc., 

, 402-03 (same), we believe that this
        standard of review is inappropriate after Anderson. See Wildlife Express Corp. v. Carol Wright
        Sales, Inc., 

, 506-07 & n. 1 (7th Cir.1994); cf. AmBrit, Inc. v. Kraft, Inc., 

, 1541 n. 46 (11th Cir.1986) (citing Anderson and declining to review de novo a finding of
        similarity of design in trade dress infringement action brought under Lanham Act section 43(a)).

                                                      10
                                                       2.

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

registration in VPIC 2.9a does not extend to support the commencement of an action for infringement of his

unregistered copyright in the derivative work VPIC 4.3.15 The defendants base this argument on several

provisions of the Copyright Act. First, they point to the following clause from the Act's discussion of when

a work is "created": "[W]here the work has been prepared in different versions, each version constitutes a

separate work." 17 U.S.C. § 101. The defendants also direct our attention to 17 U.S.C. § 411(a) (1994),

which states that "no action for infringement of the copyright in any work shall be instituted until registration

of the copyright claim has been made in accordance with this title." Reading these provisions together, the

defendants conclude that because VPIC version 4.3 is a "separate work" that was not registered when

Montgomery brought this suit, Montgomery could not maintain a copyright infringement action against them

for copying that work. While the defendants recognize that Montgomery registered his copyright in VPIC

2.9a, they claim that the Copyright Act16 supports the conclusion that this registration does not cover

material—such as the derivative work VPIC 4.3—not in existence at the time of the registration.

        The defendants' argument, however, mischaracterizes Montgomery's claim of copyright infringement.

The evidence at trial showed that VPIC 4.3 incorporated over seventy percent of the original source code

from the registered work VPIC 2.9a, and that VPIC 4.3 would not function if the VPIC 2.9a code was



   15
     In his brief, Montgomery characterizes VPIC 4.3 as a derivative work of VPIC 2.9a. If this
characterization is accurate, VPIC 4.3 would have qualified for a separate copyright at the moment of its
creation. See 17 U.S.C. §§ 102(a), 103 (1994). Although the defendants do not contend that the
modifications Montgomery made to VPIC 2.9a in order to create VPIC 4.3 were insufficiently original to
warrant characterizing VPIC 4.3 as a derivative work, the evidence in the record regarding the nature of
these modifications is sparse. We assume for purposes of the above discussion that VPIC 4.3 is a
derivative work, but it is important to note that our conclusion would be the same even if VPIC 4.3 did
not possess sufficient originality to be characterized as a derivative work.
   16
      The defendants argue that the provisions of the Copyright Act cited above, as well as section 103(b)
of the Act, support their characterization of the VPIC 2.9a registration. See 17 U.S.C. § 103(b) (1994)
(stating that the copyright in a derivative work "is independent of, and does not affect or enlarge the
scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material").

                                                       11
removed. By downloading VPIC 4.3 and incorporating it as a utility on FLD discs, therefore, the defendants

infringed Montgomery's registered copyright in VPIC 2.9a within the meaning of section 501(a) of the

Copyright Act. See 17 U.S.C. § 501(a) (1994) ("Anyone who violates any of the exclusive rights of the

copyright owner as provided by sections 106 through 118 ... is an infringer of the copyright...."); 17 U.S.C.

§ 106(1)-(2) (1994) (noting that a copyright owner has the exclusive right to do and to authorize both

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

copyrighted work); H.R.Rep. No. 94-1476, at 61 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5675 (noting

that under section 106(1), "a copyrighted work would be infringed by reproducing it in whole or in any

substantial part, and by duplicating it exactly or by imitation or simulation" (emphasis added)); 

reprinted in 1976 U.S.C.C.A.N. at 5675 ("The exclusive right to prepare derivative works, specified

separately in clause (2) of section 106, overlaps the exclusive right of reproduction [in section 106(1) ] to

some extent.... [T]o constitute a violation of section 106(2), the infringing work must incorporate a portion

of the copyrighted work in some form." (emphasis added)). Such infringement is actionable under sections

501(b) and 411(a) of the Act.17 See 17 U.S.C. § 501(b) (1994) ("The legal or beneficial owner of an exclusive




   17
      The authorities cited in the text directly support our conclusion. Additional support may be found in
the pronouncements of courts and commentators that have dealt with analogous factual situations. See,
e.g., Gamma Audio & Video, Inc. v. Ean-Chea, 

, 1111-12 (1st Cir.1993) (holding that
plaintiff could recover damages for copyright infringement of underlying work where plaintiff had an
exclusive license to distribute an underlying work that was subject to a registered copyright, plaintiff had
produced an unregistered derivative work based on the underlying work, and defendant had copied and
distributed the derivative work); 

("Although a derivative work may be separately copyrighted,
that copyright does not affect the copyright in the underlying work.... Any elements that the author of the
derivative work borrowed from the underlying work ... remain protected by the copyrights in the
underlying work."); cf. Stewart v. Abend, 

, 223, 

, 1761, 

(1990) ("The aspects of a derivative work added by the derivative author are that author's property, but
the element drawn from the pre-existing work remains on grant from the owner of the pre-existing
work."). See also 1 Nimmer § 3.05, at 3-34.20 (considering whether the owner of the registered copyright
in an underlying work may claim infringement when the defendant has copied matter that originated in
the underlying work from a derivative work produced by a third party under a nonexclusive license, and
concluding that "the better view is that if the material copied was derived from a copyrighted underlying
work, this will constitute an infringement of such work regardless of whether the defendant copied
directly from the underlying work, or indirectly via the derivative work").

                                                     12
right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any

infringement of that particular right committed while he or she is the owner of it."); 17 U.S.C. § 411(a)

(1994); see also Lamb v. Starks, 

, 755-56 (N.D.Cal.1996) (holding that a prima facie case

of copyright infringement had been established where the defendant copied plaintiff's unregistered trailer that

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

v. Nugent, 

, 1060 & n. 5 (E.D.Tex.1995) (granting summary judgment on plaintiffs'

copyright infringement claim where plaintiffs registered their copyrights in certain versions of computer

programs and defendants copied subsequent versions that were derived from the registered works); 2 Nimmer

§ 7.16[B][2] (concluding that the owner of a registered underlying work that is part of an unregistered

derivative work should be able to maintain a copyright infringement suit against a defendant who reproduces

the derivative work—and thus the underlying work contained therein—without authorization); Douglas

Y'Barbo, On Section 411 of the Copyright Code and Determining the Proper Scope of a Copyright

Registration, 34 San Diego L.Rev. 343, 351-52, 354 n. 38, 356 (1997) (same).

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

rejecting the defendants' argument that the scope of Montgomery's registered copyright in VPIC 2.9a does

not extend to protect VPIC 4.3. We therefore affirm the district court's decision to deny the defendants'

motion for judgment as a matter of law.

                                                      B.

        The defendants' next claim of error relates to their motion for remittitur or—if Montgomery rejected

a remittitur amount proposed by the court—for a new trial on the issue of damages with respect to

Montgomery's copyright claim. In this motion, the defendants contended that the jury's award of $80,000

in damages for copyright infringement—$43,900 for actual damages sustained by Montgomery as a result

of the infringement and $36,100 for the defendants' profits attributable to the infringement—was excessive

and not supported by the evidence because the award was based on the value of unregistered VPIC versions



                                                      13
issued subsequent to the registered version 2.9a. The defendants maintained that no evidence was introduced

at trial regarding the value of VPIC 2.9a at the time of the infringement, and that there was no evidence that

anyone had ever purchased a license from Montgomery to use VPIC 2.9a. The district court denied the

motion, concluding that the verdict was in accordance with the jury instructions and the evidence presented

at trial.

            Although the defendants' briefs on appeal are somewhat opaque, the defendants apparently contend

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

committed an error of law by failing to instruct the jury to base its calculation of actual damages on the

reasonable value in the marketplace of the plaintiff's program VPIC 2.9a for commercial use at the time of

the infringement. When the defendants' counsel suggested this instruction during the charge conference, the

court expressed the view that it would be error to rule that the plaintiff could recover infringement damages

only for VPIC 2.9a. Such a ruling, explained the court, would "foreclose the derivative work concept."

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

"plaintiff's program" for commercial use at the time of the infringement. The defendants' counsel did not

object to the district court's version of the actual damages instruction as required by Fed.R.Civ.P. 51. See

Electro Servs., Inc. v. Exide Corp., 

, 1528-29 (11th Cir.1988) (concluding that a party who

offers a proposed instruction does not thereby preserve a challenge to the giving of a different instruction by

the court, absent a specific objection). We therefore review the instruction only for plain error.18 See Pate

v. Seaboard R.R., Inc., 

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




    18
      In their brief on appeal, the defendants suggest that, prior to the charge conference, the district court
had already heard and rejected their argument that damages should be based on version 2.9a. We have
recognized an exception to the objection requirement of Rule 51 where "the party's position has
previously been made clear to the court and it is plain that a further objection would have been
unavailing." 

(quoting Lang v. Texas & Pac. Ry. Co., 

, 1279 (5th
Cir.1980)). After reviewing the record, we are not convinced that it was "plain" at the charge conference
that an objection by the defendants would have been unavailing.

                                                      14
          When reviewing a jury instruction under the plain error standard, we will reverse "only in

exceptional cases where the error is 'so fundamental as to result in a miscarriage of justice.' " Iervolino v.

Delta Air Lines, Inc., 

, 1414 (11th Cir.1986) (quoting Delancey v. Motichek Towing Serv., Inc.,

, 901 (5th Cir.1970)). More specifically, we require appellants to establish "that the challenged

instruction was an incorrect statement of the law and that it was probably responsible for an incorrect verdict,

leading to substantial injustice." 

. If the instruction will " 'mislead the jury or leave

the jury to speculate as to an essential point of law,' the error is sufficiently fundamental to warrant a new trial

despite a party's failure to state a proper objection." 

v. RCI, Inc., 

, 636

(5th Cir.1980)).

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

conclude that the defendants have not established that the instruction was fundamentally erroneous. The

relevant provision of the Copyright Act states that "[t]he copyright owner is entitled to recover the actual

damages suffered by him or her as a result of the infringement...." 17 U.S.C. § 504(b) (1994). This provision

requires the plaintiff to demonstrate a "causal connection" between the defendant's infringement and an injury

to the market value of the plaintiff's copyrighted work at the time of infringement.19 See Key West Hand Print

Fabrics, Inc. v. Serbin, Inc., 

, 613 (S.D.Fla.1966); 4 Nimmer § 14.02[A]; see also Data Gen.

Corp. v. Grumman Sys. Support Corp., 

, 1170-71 (1st Cir.1994) (defining the plaintiff's burden

with reference to tort law principles of causation and damages). Having held that the defendants infringed

Montgomery's registered copyright in VPIC 2.9a by placing VPIC 4.3 on FLD discs, 

part II.A.2.,

it follows that the jury properly could consider evidence of the injury that the defendants' infringement caused

to the value of subsequent unregistered VPIC versions derived from version 2.9a—such as VPIC 4.3—in

order to determine the extent of the injury to the value of Montgomery's registered copyright at the time of



   19
     This injury often is measured by the revenue that the plaintiff lost as a result of the infringement.
See Harper & Row, Publishers, Inc. v. Nation Enters., 

, 567, 

, 2234, 

(1985); Data Gen. 

; 4 Nimmer § 14.02[A], at 14-9.

                                                        15
infringement. Cf. 4 Nimmer § 14.02[A], at 14-8 n. 4 (noting that, in view of the copyright owner's exclusive

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

work includes any injury to the value of "sequel rights"). Obviously, Montgomery's damages could not

adequately be measured solely by reference to the market value of VPIC 2.9a as a stand-alone computer

program; this value presumably was quite low at the time of the infringement given that revised versions of

the program were then available. Therefore, the district court did not commit a fundamental error by refusing

to instruct the jury to calculate actual damages based only on the value of version 2.9a of the plaintiff's

program.

         The defendants' second claim of error relates to the evidentiary basis for the jury's damage award.

The defendants point out that versions 2.9a and 4.3 of VPIC contained a statement that those who wished to

use VPIC as a utility for another product had to obtain a license from Montgomery and pay a royalty of $1

per copy of the product shipped. Because the evidence established that FLD and an associated company

distributed 26,641 discs containing VPIC, the defendants contend that Montgomery should have received at

most $26,641 in damages. Indeed, given that Montgomery sold licenses for unlimited use of a subsequent

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

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

incorporated VPIC. The defendants therefore argue that the jury's award of $80,000 in damages was both

excessive and unsupported by the evidence.

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

district court's rejection of the defendants' argument only to ascertain whether there has been a clear abuse

of discretion. See Agro Air Assocs., Inc. v. Houston Cas. Co., 

, 1455 n. 5 (11th Cir.1997)

(reviewing denial of motion for remittitur or new trial on ground of excessive damages under abuse of

discretion standard); United States v. Sullivan, 

, 1196 (11th Cir.1993) (reviewing denial of

motion for new trial on ground that verdict was against the great weight of the evidence under abuse of



                                                     16
discretion standard). We have found that "[t]his level of deference is especially appropriate where a new trial

is denied and the jury's determinations are left undisturbed." Insurance Co. of N. Am. v. Valente, 

, 925 (11th Cir.1991). After reviewing the entire record in light of this standard, we find that there was

ample evidence from which the jury could have concluded that an award of $43,900 for actual damages

resulting from the infringement and $36,100 for the defendants' profits attributable to the infringement was

appropriate.

        As to Montgomery's actual damages, the evidence indicated that VPIC 4.3 was not the most current

version of VPIC available at the time that FLD produced its four CD-ROM titles. At that time, a license to

use the most current version of VPIC as a utility for another product could be obtained in exchange for a

royalty of $2 to $3 per copy of the product shipped.20 Montgomery testified at trial that he typically only

licensed the most current version of VPIC available.21 The jury was thus entitled to conclude that the

defendants would have had to pay Montgomery at least $53,282 for a license to distribute the 26,641 FLD

CD-ROM discs that incorporated VPIC—an amount in excess of the $43,900 that the jury actually awarded.

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

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

See Iowa State Univ. Research Found., Inc. v. American Broad. Cos., 

, 83 (S.D.N.Y.1979)

(noting, in the context of awarding statutory damages under the Copyright Act of 1909, that the defendant



   20
      VPIC 5.0b was the most current version available at the time that FLD produced its first CD-ROM
title; Montgomery testified that he charged a royalty of $2 per copy at this time. On December 20, 1992,
Montgomery raised the royalty to $3 per copy beginning with VPIC 6.0. Montgomery argues on appeal
that FLD produced its three remaining CD-ROM titles after this royalty increase. While the testimony at
trial was somewhat unclear on this point, the pressing dates that are encoded within the CD-ROM exhibits
themselves seem to indicate that FLD produced only one of its CD-ROM titles after December 20, 1992.
   21
      As mentioned in note 

, Montgomery increased his royalty rate to $3 beginning with VPIC
6.0. At trial, however, the evidence indicated that Montgomery subsequently issued some licenses for
older versions of VPIC—versions 5.1 and 5.1e—at a rate of either $2 per copy or $2,000 for unlimited
usage. Montgomery testified that he issued these licenses either because the user did not plan to
distribute VPIC to the public or because the user planned only limited public distribution (often less than
1,000 copies) and could not afford the $3 per copy royalty.

                                                      17
"cannot expect to pay the same price in damages as it might have paid after freely negotiated bargaining, or

there would be no reason scrupulously to obey the copyright law"); 4 Nimmer § 14.02[A] (applying this

observation from Iowa State to the computation of actual damages under the current Copyright Act).

        With respect to the defendants' profits, the Copyright Act provides the following computational

guidance:

        The copyright owner is entitled to recover ... any profits of the infringer that are attributable to the
        infringement and are not taken into account in computing the actual damages. In establishing the
        infringer's profits, the copyright owner is required to present proof only of the infringer's gross
        revenue, and the infringer is required to prove his or her deductible expenses and the elements of
        profit attributable to factors other than the copyrighted work.

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

statutory obligation to present proof of the defendants' gross revenue. Montgomery initially provided a set

of spreadsheets that summarized various business records of FLD produced by the defendants. These

spreadsheets showed that FLD's total revenue from sales of the four CD-ROM titles at issue was $255,162,

and that FLD's total profit (after expenses) on these sales was $142,802.80. Later in the trial, Montgomery

provided an alternative FLD total profit estimate of $158,103 that was based upon profit information elicited

from Noga on cross-examination. By determining what percentage of files on each CD-ROM title could be

viewed using VPIC, Montgomery estimated that the amount of this profit allocable to VPIC was $107,310.35.

While the defendants did seek to discredit Montgomery's profit allocation estimate on cross-examination, they

did not question Montgomery's total profit figures and did not offer any allocation estimate of their own. The

jury, faced with multiple profit estimates of over $100,000, thus had a sufficient evidentiary basis for its

conclusion that Montgomery should recover $36,100 as the defendants' profits attributable to the




                                                      18
infringement.22 The district court, therefore, did not clearly abuse its discretion in denying the defendants'

motion for remittitur or a new trial on the issue of damages.

                                                       C.

           Turning to Montgomery's claim under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A),23

the defendants contend that the district court committed several errors when it denied their motion for

judgment as a matter of law. Three of the defendants' claims of error merit discussion here.24 We consider




   22
      As noted above, 17 U.S.C. § 504(b) (1994) allows recovery of a defendant's profits only if such
profits "are not taken into account in computing the actual damages." There is no indication that the
jury's award of damages violated this prohibition of double recovery. As one commentator has noted,
"[e]ven when a plaintiff's actual damages include lost profits, there may be a recovery of defendant's
profits in an amount equal to (but not more than) the amount by which defendant's profits exceed
plaintiff's lost profits." 4 Nimmer § 14.03, at 14-30. In this case, the jury's award of $43,900 in actual
damages arguably represents the profits that Montgomery lost because of the defendants' failure to
purchase a license to distribute VPIC. Because Montgomery's $107,310.35 estimate of the defendants'
profit allocable to VPIC exceeded this actual damage award by $63,410.35, however, the jury's award of
$36,100 as the defendants' profits was permissible.
   23
        Section 43(a), as amended, provides in pertinent part:

                   (1) Any person who, on or in connection with any goods ..., uses in commerce any word,
                   term, name, symbol, or device, ... or any false designation of origin, false or misleading
                   description of fact, or false or misleading representation of fact, which—(A) is likely to
                   cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
                   association of such person with another person, or as to the origin, sponsorship, or
                   approval of his or her goods, services, or commercial activities by another person, ... shall
                   be liable in a civil action by any person who believes that he or she is or is likely to be
                   damaged by such act.

           15 U.S.C. § 1125(a) (1994).
   24
     The three claims of error that we discuss above are not the only purported errors that the defendants
identify on appeal. They also argue, for example, that Montgomery's Lanham Act claim must fail
because Montgomery never registered VPIC as a trademark. It is well settled, however, that registration
is not a prerequisite to an action under section 43(a). See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 

, 768, 

, 2757, 

(1992). As to the defendants' other claims of error,
we decline to consider them here because they were not raised before the district court. See Caban-
Wheeler v. Elsea, 

, 842 (11th Cir.1996); All Care Nursing Serv., Inc. v. Bethesda Mem'l
Hosp., Inc., 

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

                                                       19
these claims in light of the standards enunciated in the introduction to part 

, and conclude that the

district court did not err in denying the defendants' motion.

                                                       1.

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

motion because the act of omitting a copyright notice alone cannot constitute a violation of section 43(a).

They argue that if such an omission was found to be actionable under section 43(a), virtually every act of

copyright infringement would also constitute a violation of the Lanham Act. This argument, however,

mischaracterizes the facts of the case before us. While the defendants did activate a certain feature of VPIC

that caused Montgomery's copyright notice not to appear when users viewed FLD's CD-ROM discs, this was

not the only act upon which the defendants' liability under section 43(a) could have been predicated.

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

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

copyright notice on one CD-ROM title, for example, stated that the help menu was "copyrighted and owned"

by FLD. As part of the help menu on each title, the defendants included a description of how a user with a

particular brand of computer video card could set up a viewing program in order to display the picture files

that were present on the disc. One such description read, in pertinent part: "Included on this CD-ROM [disc]

are two different [picture file] viewing utilities, VPIC and CSHOW, each in its own directory. VPIC is the

best one to use...." This description was not the only reference to VPIC that appeared on the defendants' CD-

ROM titles; the names of several files present on each title also contained the term "VPIC."

        In considering whether Montgomery failed as a matter of law to establish a violation of section 43(a)

on these facts, we begin with Montgomery's complaint. In Count Two, Montgomery claimed that the

defendants had violated section 43(a) in one of two ways: by "pass[ing] off the VPIC software as their own

property" or by "represent[ing] a connection, license, association, or relationship between Plaintiff and

Defendants." These two theories of liability correspond to two portions of section 43(a), which we will refer



                                                       20
to as the "false designation of origin" prong and the "mistaken affiliation" prong.25 The essence of

Montgomery's argument for liability under these two prongs is that the defendants' use of the term "VPIC"

as described above would likely confuse users of the CD-ROM discs; such users would likely believe either

that the defendants owned the VPIC viewing utility themselves or that they had licensed it from its owner

for commercial use. In either case, Montgomery argues, the users would not know that their use of VPIC was

in fact unauthorized and that they needed to obtain a license from Montgomery for their own non-commercial

use of his program in connection with the defendants' discs. We agree with Montgomery's argument.

Therefore, we hold as a matter of law that Montgomery has stated a claim against the defendants under the

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

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

that address the question of whether a false copyright notice is actionable under section 43(a). In Lipton v.

Nature Co., 

(2d Cir.1995), for example, the defendants infringed the plaintiff's copyright in a

book of animal terms by creating a line of merchandise that utilized the terms. The merchandise bore

copyright notices in the names of both defendants. The plaintiff brought a claim against the defendants for




   25
      See 15 U.S.C. § 1125(a)(1)(A) (1994) (the false designation of origin prong prescribes liability for
"[a]ny person who, on or in connection with any goods ..., uses in commerce any ... false designation of
origin ... [which] is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin,
sponsorship, or approval of his or her goods ... by another person ...."); 

affiliation prong
prescribes liability for "[a]ny person who, on or in connection with any goods ..., uses in commerce any
word, term, name, symbol, or device, or any combination thereof, ... [which] is likely to cause confusion,
or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with
another person ...."); cf. Jerome Gilson, Trademark Protection and Practice § 5.01[3], at 5-26 (39th
rel.1998) (noting that confusion can be likely under section 43(a) on either "a source basis" or "an
associational basis").

                  These two prongs are part of subsection (A) of section 1125(a)(1), which prescribes
        liability "for infringement of even unregistered marks, names, and trade dress." J. Thomas
        McCarthy, McCarthy on Trademarks and Unfair Competition § 27:9 (4th ed.1996). Subsection
        (B), which is not at issue here, addresses false advertising.

                                                     21
"reverse passing off"26 in violation of the false designation of origin prong of section 43(a). The district court,

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

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

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

designation of origin within the meaning of § 43(a) of the Lanham Act." 

; see also

Softel, Inc. v. Dragon Med. & Scientific Communications, Inc., 

, 971 (2d Cir.1997), cert.

denied,--- U.S. ----, 

, 

(1998) (noting that "[w]ithout a requirement of 'some

additional misrepresentation of originality beyond mere use of a copyright symbol, [plaintiffs] could convert

all improper copyright claims into Lanham Act violations' " (quoting EFS Mktg., Inc. v. Russ Berrie & Co.,

, 492 (2d Cir.1996))). The court attempted to distinguish the leading case of Eden Toys, Inc. v.

Florelee Undergarment Co., 

(2d Cir.1982), which imposed liability under section 43(a) on a

defendant who placed a copyright notice that read "Copr. Fred Original" on an infringing product, on the

ground that the false notice in that case also contained a representation that the product was "original."

-74; see also Banff Ltd. v. Express, Inc., 

, 1072 (S.D.N.Y.1995)

(claiming that the Second Circuit's decisions establish that a false representation regarding the creator or

originator of a product can be a false designation of origin, but that a false copyright notice cannot).

        We do not believe that Lipton forecloses Montgomery's claim under the false designation of origin

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

conclusion that the act of placing a copyright notice on an infringing product cannot be a false designation

of origin under section 43(a). See, e.g., Southern Bldg.Code Congress Int'l, Inc. v. Florida Constr. Sch., Inc.,

14 U.S.P.Q.2d 1846, 1848 (M.D.Fla.1989); Manufacturers Techs., Inc. v. Cams, Inc., 

, 1004




   26
     See Camp Creek Hospitality Inns, Inc. v. Sheraton Franchise Corp., 

, 1413 n. 28 (11th
Cir.1998) ("Section 1125(a) prohibits both 'passing off,' where A sells its product under B's name, and
'reverse passing off,' where A sells B's product under A's name."). We discuss the meaning of "reverse
passing off" at greater length in note 27, infra.

                                                        22
(D.Conn.1989); Sunset Lamp Corp. v. Alsy Corp., 

, 1153 (S.D.N.Y.1988); cf. Ladas v.

Potpourri Press, Inc., 

, 224 (E.D.N.Y.1994) (responding to claim that defendant had falsely

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

non-removable stickers bearing plaintiff's copyright notice on collection items). We need not decide whether

to adopt the holding of Lipton as the law of this circuit, however, because the facts of this case are

distinguishable from Lipton. The CD help menu that referred to VPIC was not merely copyrighted by the

defendants; they actually stated that they "owned" the menu. We find that this claim of ownership was

sufficient to allow Montgomery to state a claim against the defendants under section 43(a) for false

designation of origin.27 See 

(quoting with approval from Cognotec Servs. Ltd. v.



   27
      We recognize that in false designation of origin claims of the "reverse passing off" variety, the
defendant often has merely removed the plaintiff's mark from a product, added its own mark, and sold the
product without altering it in any other way. In this case, however, the defendants incorporated
Montgomery's VPIC product into their own CD-ROM products. It could be argued that, in light of Roho,
Inc. v. Marquis, 

(5th Cir.1990), this factual distinction is relevant to our determination of
whether Montgomery has stated a claim for false designation of origin.

                 In Roho, the plaintiff manufactured specialized wheelchair cushions and hospital
        mattresses. Its mattresses were constructed by assembling four wheelchair cushions together.
        The defendants bought several of the plaintiff's wheelchair cushions, removed the plaintiff's
        labels, fastened ten of the cushions together to make a mattress, and attached their own tag to the
        mattress. The plaintiff sued the defendants for, inter alia, reverse passing off under the false
        designation of origin prong of section 43(a). See 

                 The court began its analysis by noting that the doctrine of reverse passing off is
        applicable in situations where a defendant resells another person's product that has been only
        "slightly modified." Finding that the essence of the plaintiff's claim was that the defendant had
        purchased one of the plaintiff's products and sold it in modified form under a different label, the
        court proceeded to compare the plaintiff's cushions with the defendants' mattress. It found that
        the defendants had substantially modified the plaintiff's cushions by attaching them together to
        create a mattress; furthermore, the mattress and cushions were marketed to different consumers
        for different purposes. Therefore, the court held that the defendants were not simply reselling a
        relabeled and slightly modified version of the plaintiff's product. Instead, the defendants' mattress
        was a new product to which they could properly apply their own label. See 

                 We assume arguendo that Roho is applicable in our circuit. See J. Thomas McCarthy,
        McCarthy on Trademarks and Unfair Competition § 27:81 (4th ed.1996) (discussing the level of
        similarity between the defendant's and plaintiff's works that must be demonstrated in order to
        bring a reverse passing off claim, including the Second Circuit's requirement (which is similar to

                                                    23
Morgan Guar. Trust Co., 

, 51 (S.D.N.Y.1994), which found that copyright infringement alone

"does not amount to a ... false designation to establish a claim under § 43(a)," and noted that such a claim

requires the existence of "some affirmative act whereby [the defendant] falsely represented itself as the owner

of [the plaintiff's computer program]"); see also Johnson v. Jones, 

, 503 (6th Cir.1998) (finding

that a defendant who removed the plaintiff's name and seal from a set of architectural plans and substituted

his own had "represented [the plans] to be his own work" and was thus liable for false designation of origin);

United States Media Corp. v. Edde Entertainment Inc., 40 U.S.P.Q.2d 1581, 1588 (S.D.N.Y.1996) (noting

that although a copyright notice is insufficient under Lipton to support a claim of false designation of origin,

"[s]uch a claim may be supported ... by further acts on the part of the infringer falsely representing itself as

the owner of the work"); cf. Jerome Gilson, Trademark Protection and Practice § 7.02[5], at 7-26 & n. 32

(39th rel.1998) (citing cases for the proposition that the phrase "false designation of origin" includes not only

geographic origin but also "origin of source or manufacture").

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

the false designation of origin prong to hold defendants liable for violating section 43(a). Other courts have



        Roho 's "slightly modified" requirement) of "substantial similarity" and the Ninth Circuit's
        requirement of "bodily appropriation"); but see Debs v. Meliopoulos (N.D.Ga.1991) (rejecting
        any requirement of either bodily appropriation or substantial similarity and focusing instead on
        likelihood of confusion). This assumption, however, does not affect our conclusion that
        Montgomery has stated a claim for false designation of origin. The defendants in Roho escaped
        liability not because they incorporated the plaintiff's product into their own, but because this
        incorporation substantially modified both the physical attributes and the purpose of the plaintiff's
        product. In this case, however, Montgomery created VPIC for the purpose of allowing computer
        users to view picture files. Without reprogramming VPIC, the defendants incorporated it into
        their CD-ROM discs for the purpose of allowing users to view the pictures on the discs. Courts
        have not hesitated to find defendants liable for false designation of origin in such circumstances.
        See, e.g., F.E.L. Publications, Ltd. v. Catholic Bishop of Chicago, 214 U.S.P.Q. 409, 416-17 (7th
        Cir.1982) (finding that defendant who excluded plaintiff's name from custom-made hymnals that
        incorporated plaintiff's songs and bore the names of defendant's parishes would be liable for false
        designation of origin if the users of the hymnals were likely to be confused as to the origin of the
        songs); Sega Enterprises Ltd. v. MAPHIA, 

, 938-39 (N.D.Cal.1996); Playboy
        Enters., Inc. v. Frena, 

, 1562 (M.D.Fla.1993) (defendant who substituted his
        own advertisement for plaintiff's trademark on certain photographs and incorporated these
        photographs into his computer bulletin board system held liable for false designation of origin).

                                                       24
reached the same result on facts similar to those before us. In Sega Enterprises Ltd. v. MAPHIA, 

(N.D.Cal.1996), for example, the defendant used the plaintiff's mark to identify unauthorized copies of

plaintiff's video games that the defendant had incorporated into his computer bulletin board system; the

plaintiff's mark also appeared when a bulletin board user downloaded and played the counterfeit games. In

ruling on the plaintiff's motion for summary judgment, the court found that the defendant had infringed the

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

section 43(a). 

In particular, the court concluded that the plaintiff had established a likelihood

of confusion because "[a]ny member of the public that logged onto [the defendant's bulletin board system]

was likely to think that the trademark indicated that the games were sponsored by or affiliated with Sega."

(emphasis added).28

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

broadly construed,29 we conclude that the district court did not err in rejecting the defendants' contention that

Montgomery failed to state a claim under section 43(a) as a matter of law. The jury properly was allowed

to determine whether users of the defendants' CD-ROM discs were likely to be confused, mistaken, or

deceived regarding whether the defendants were the source of VPIC or had a license to use it.



   28
      The court in Sega did not explicitly refer to the "false designation of origin prong" or the "mistaken
affiliation prong" in its discussion of section 43(a). Nonetheless, the passage quoted above—which refers
both to sponsorship (a part of the false designation of origin prong, 

note 25) and to mistaken
affiliation—appears in the court's analysis of the plaintiff's trademark infringement claim. In its
subsequent examination of the plaintiff's claim under section 43(a), the court made the following
statement: "For the same reasons set forth regarding Sega's trademark infringement claim, [the
defendant's] use of the Sega trademark is likely to be confusing and to cause damage to Sega and,
therefore, Sega is entitled to summary judgment regarding [the defendant's] liability under 15 U.S.C. §
1125(a)." 

.
   29
     See, e.g., Seven-Up Co. v. Coca-Cola Co., 

, 1383 (5th Cir.1996); Thorn v. Reliance
Van Co., 

, 932 n. 5 (3d Cir.1984) (mentioning "the widely-held view that as a remedial
statute, [section 43(a) ] should be broadly construed"); F.E.L. Publications, Ltd. v. Catholic Bishop of
Chicago, 214 U.S.P.Q. 409, 416 (7th Cir.1982); Frisch's Restaurants, Inc. v. Elby's Big Boy of
Steubenville, Inc., 

, 651 (6th Cir.1982); Warner Bros., Inc. v. Gay Toys, Inc., 

,
79 (2d Cir.1981) (noting that " § 43(a) of the Lanham Act is remedial in nature, and should be interpreted
and applied broadly so as to effectuate its remedial purpose").

                                                       25
                                                      2.

         The defendants' two remaining contentions pertain to two of the elements that a plaintiff is required

to prove in order to establish a claim for infringement of an unregistered mark under section 43(a) of the

Lanham Act, namely:       (1) that the plaintiff's mark either is inherently distinctive or has acquired

distinctiveness through secondary meaning; and (2) likelihood of confusion. See Two Pesos, Inc. v. Taco

Cabana, Inc., 

, 768-69, 

, 2757-58, 

(1992); University of Ga.

Athletic Ass'n v. Laite, 

, 1541 (11th Cir.1985). The district court rejected the defendants' claim

that these elements had not been proven, and the jury found them liable for violating section 43(a). Because

it is for the trier of fact to decide whether these elements have been proven, we will not reverse the jury's

verdict absent clear error. See Bauer Lamp Co. v. Shaffer, 

, 1170 (11th Cir.1991); Jellibeans,

Inc. v. Skating Clubs of Ga., Inc., 

, 839-840 & n. 16 (11th Cir.1983); Soweco, Inc. v. Shell Oil

Co., 

, 1183 n. 12, 1186 (5th Cir.1980).30

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

requirement because he did not use the term "VPIC" as a mark in connection with his computer program.31

It is true that the closing screen of version 4.3 of his program (which did not appear when users viewed the

pictures on the defendants' discs) merely contained the following statement: "Picture file viewer for

VGA/EGA ver 4.3(C) Copyright 1990, 1991 Bob Montgomery, All Rights Reserved...." Other evidence at

trial demonstrated, however, that Montgomery distributed an additional computer file with version 4.3; this

file, which was entitled "VPIC User's Manual," repeatedly referred to the program as "VPIC." Montgomery

testified that the term "VPIC," which stands for "view pictures," was also used to describe his program in



   30
     In Bonner v. City of Prichard, 

, 1209 (11th Cir.1981) (en banc), this court adopted as
binding precedent all decisions of the former Fifth Circuit handed down prior to October 1, 1981.
   31
      The defendants do not argue that the term "VPIC," even if used as a mark, is not inherently
distinctive and has not acquired distinctiveness through secondary meaning. We therefore need not move
beyond the threshold issue of whether that term was used as a mark in order to consider the
distinctiveness of the term itself.

                                                      26
various print publications. In fact, Montgomery's program was referred to as "VPIC" when it was included

in a 1992 compilation of shareware programs known as the Dvorak Top Thirty. These uses of the term

"VPIC" were obviously sufficient to catch the attention of the defendants, who themselves referred to

Montgomery's program as "VPIC" in their help menu. Clearly, therefore, the jury had a sufficient evidentiary

basis upon which to conclude that Montgomery used the term "VPIC" as a mark.

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

whether the defendants either were the source of VPIC or had a commercial license to use it. Their first

argument in support of this contention is that Montgomery could not have shown any likelihood of pre-sale

confusion32 by purchasers of the defendants' CD-ROM discs because the term "VPIC" does not appear on the

packaging of any of the discs. This argument misapprehends the nature of Montgomery's claim for damages.

Montgomery is not claiming that the defendants used the term "VPIC" on their packaging in order to persuade

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

likely be confused about either the source or the license status of VPIC and thus would be unlikely to pay him

the required licensing fee for their individual use of his program in connection with the defendants' discs.

Such user confusion, if properly proven, is an appropriate basis for a finding of likelihood of confusion under

section 43(a).33



   32
     In United States v. Torkington, 

(11th Cir.1987), we recognized that presale confusion
of actual purchasers is not the only type of confusion actionable under the Lanham Act. Instead, the likely
to confuse test is also satisfied "when potential purchasers of the trademark holder's products would be
likely to be confused should they encounter the allegedly counterfeit goods in a post-sale context—for
example, in a direct purchaser's possession." 

In this case, however, neither the pre-sale
confusion of actual purchasers nor the post-sale confusion of potential purchasers is at issue; it is the
post-sale confusion of actual purchasers—that is, the confusion of users of the defendants' discs (most of
whom, presumably, previously had purchased the discs they were using)—that concerns Montgomery.
   33
     In each of the three cases cited at the end of note 

, the court recognized that defendants may
be held liable for user confusion. See F.E.L. Publications, 214 U.S.P.Q. at 416 ("By printing its own
name on the hymnals and excluding F.E.L.'s, the parishes have used a false designation of origin if the
users of the hymnals are confused as to the origin of the songs."); 

(holding that
members of the public who used defendant's computer bulletin board system were likely to be confused
regarding whether certain games available therein were sponsored by or affiliated with the plaintiff);

                                                      27
        The defendants also argue, however, that Montgomery did not provide sufficient proof regarding the

likelihood of user confusion. They note that Montgomery offered no evidence at trial to indicate that he had

been contacted by any confused users who mistakenly thought that he and the defendants were associated.

In addition, they point to Montgomery's own statement at trial that users of one of the defendants' CD-ROM

titles "never would even know that VPIC was on there."

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

would follow in order to view a picture file on one of the defendants' discs. Montgomery testified that when

a user selected a picture file from the defendants' CD menu, the menu would utilize VPIC to display the file.

Upon pressing a key, the user would be returned to the CD menu and "never would even know that VPIC was

on there." Montgomery also testified, however, that users who did not have one specific brand of video card

in their computers would need to visit the defendants' CD help menu before engaging in this viewing process.

As noted in part 

, this help menu told users of other video cards how to set up one of two

available picture file viewing utilities—VPIC ("the best one to use") or CSHOW—in order to view the picture

files that were present on the defendants' discs. It is the references to VPIC that appear in this help menu,

along with the defendants' omission of the VPIC copyright notice, that Montgomery relies upon to establish

a likelihood of user confusion. After placing Montgomery's statement in this context, we conclude that it was

not clear error for the jury to find a likelihood of user confusion despite this statement.

        With respect to the defendants' argument that no confused users had contacted Montgomery, we have

held that a plaintiff is not required to provide evidence of actual confusion in order to prove likelihood of

confusion. See Bauer 

. Instead, actual confusion is merely one of several factors

that may be relevant in analyzing whether there is a likelihood of confusion between two marks. See

(listing factors); John H. Harland Co. v. Clarke Checks, Inc., 

, 972

, 1561-62 (concluding that individuals who subscribed to defendant's
computer bulletin board system and subsequently viewed certain images on the system were likely to be
confused as to whether plaintiff had sponsored, endorsed, or approved defendant's use of its images).

                                                      28
(11th Cir.1983). The defendants do not contend that any of the other factors point to the conclusion that users

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

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

                                                      D.

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

witnesses from testifying as an expert. At trial, the defendants' counsel attempted to qualify Mr. Bahram

Yusefzadeh as an expert witness who would provide testimony about computer software licensing practices,

the various types of software licenses available, and the pricing of unlimited use licenses. On voir dire,

Montgomery's counsel established that Yusefzadeh's knowledge and experience pertained to the development,

marketing, and licensing of commercial software used by individual banks. Yusefzadeh had no experience

either in negotiating utility licenses for software that was distributed as "shareware"—such as VPIC—or in

marketing software through distributors under a "shrink-wrap" license—the method by which the defendants

marketed their four CD-ROM titles. Montgomery's counsel then objected to the admission of expert

testimony by Yusefzadeh, and the district court sustained the objection on two grounds. First, the court found

that Yusefzadeh was not qualified as an expert because the defendants had not shown that his experience with

banking software was germane to the issues involved in the case. Second, the court noted that the meaning

of the terms used to describe the various types of software licenses (e.g., single-user, multi-user, and

unlimited use) would be self-evident to the jury and thus did not require explanation by an expert.

        Our consideration of the district court's ruling is informed by Fed.R.Evid. 702, which states:

        If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the
        evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill,
        experience, training, or education, may testify thereto in the form of an opinion or otherwise.

When recast using the language of Rule 702, the two grounds given by the district court for its ruling

essentially were (1) that Yusefzadeh was not "qualified as an expert by ... experience" to testify to "a fact in

issue" in this case; and (2) that his testimony describing the various types of software licenses would not



                                                      29
"assist the trier of fact to understand the evidence." The defendants challenge the first of these grounds on

appeal. They claim that the basic principles of commercial software licensing also apply to shareware and

utility licensing, and therefore contend that Yusefzadeh's commercial licensing experience was germane to

the issue of Montgomery's damages.34

         We review the district court's ruling regarding Yusefzadeh's qualifications under a deferential

standard. "A trial court has wide discretion in determining whether to exclude expert testimony, and its action

will be sustained unless manifestly erroneous." United States v. Cross, 

, 1049 (11th Cir.1991)

(internal quotation marks omitted). We find no indication of manifest error here. After considering the

defendants' assertion that Yusefzadeh's experience in the commercial software licensing field was also

applicable in the shareware and utility licensing field, the district court concluded that these two fields were

"totally distinguishable." Because the defendants present no support for their assertion on appeal, we defer

to the district court's conclusion.

                                                      E.

        Finally, the defendants contend that the district court erred in awarding Montgomery $142,289.26

in attorneys' fees on his copyright and Lanham Act claims. Although the district court did not allocate a

specific portion of its award to each claim,35 we review the defendants' contentions regarding the propriety

of a fee award under each claim in turn.

                                                      1.




   34
      Specifically, the defendants argue that Yusefzadeh was qualified to provide the following testimony
relating to damages: (1) it is not unusual in the computer licensing business for a licensee to negotiate an
unlimited use license for a lump sum; and (2) the issuance of a newer and improved version of a
computer program renders older versions virtually worthless. These two opinions appeared in the expert
witness report prepared by Yusefzadeh and filed by the defendants. See Fed.R.Civ.P. 26(a)(2).
   35
     The defendants requested that the court make such an allocation. While the court deemed this
request to be "logical and well-founded," it was unable to make the allocation because Montgomery's
attorneys neither divided their billed time between the claims nor indicated whether they had spent
substantially more time on one of the claims.

                                                      30
         In a civil copyright infringement action, 17 U.S.C. § 505 (1994) empowers the court to award a

"reasonable attorney's fee to the prevailing party." Such fees "are to be awarded ... only as a matter of the

court's discretion." Fogerty v. Fantasy, Inc., 

, 534, 

, 1033, 

(1994). Where the record reveals that the district court weighed the relevant factors36 and exercised its

discretion, as it did here, we will not question the court's decision to grant or deny fees absent an abuse of that

discretion. See Casella v. Morris, 

, 366-67 (11th Cir.1987).

        The defendants contend that the district court abused its discretion in two ways when it awarded

attorneys' fees to Montgomery on his copyright claim. First, they argue that because Montgomery's evidence

of damages was based on unregistered versions of VPIC, an award of attorneys' fees was not permitted by

17 U.S.C. § 412 (1994). Section 412 states, in pertinent part, that "no award ... of attorney's fees ... shall be

made for ... any infringement of copyright in [a work] commenced before the effective date of its

registration...." We reject this argument for the reasons discussed in parts II.A.2. and 

.

         The defendants' second argument is that because Montgomery had a contingency fee agreement with

his attorneys, the district court should not have awarded attorneys' fees based upon the amount of time that

Montgomery's attorneys spent on the case. Such an award, in the defendants' view, impermissibly included

a premium above the fees actually incurred by Montgomery. While the defendants certainly are correct that

an award of attorneys' fees under section 505 should not include an additional amount—in excess of the

reasonable value of services rendered—by way of penalty, see 4 Nimmer § 14.10[C], we are convinced that

no such amount was awarded here. As the district court recognized, the contingency fee agreement between

Montgomery and his attorneys provided that the attorneys were entitled to a certain percentage of any




   36
      See Cable/Home Communication Corp. v. Network Prods., Inc., 

, 853-54 (11th
Cir.1990); Johnson v. Georgia Highway Express, Inc., 

, 717-19 (5th Cir.1974). We note
that the jury in this case found that the defendants' infringement was willful. Such a finding of willful
infringement, while it "does not compel a fee award, ... is an 'important factor' in the district court's
'discretionary decisionmaking.' " Cable/Home 

(quoting 

).

                                                        31
"amount recovered" from the defendants. The term "amount recovered" was defined to include "the total

amount awarded by the Court or jury, together with all attorneys' fees awarded by the Court, and shall include

that amount of attorneys' fees awarded as a contingency fee multiplier." Clearly, the terms of this agreement

did not prevent the district court from awarding Montgomery a reasonable amount in attorneys' fees that was

based on the amount of time his attorneys spent on the case. We therefore conclude that the district court did

not abuse its discretion by awarding attorneys' fees to Montgomery on his copyright claim.

                                                       2.

         Turning to the issue of fee awards under the Lanham Act, section 35(a) provides that "[t]he court

in exceptional cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. § 1117(a) (1994).

Such an award is available in actions under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), that

involve unregistered trademarks. See Rickard v. Auto Publisher, Inc., 

, 458 (11th Cir.1984).

The jury found that Montgomery's claim under section 43(a) was an "exceptional" case, and the district court

exercised its discretion to award him attorneys' fees on that claim.

        On appeal, the defendants argue that Montgomery is not entitled to fees because he was not the

"prevailing party" on his Lanham Act claim. We have stated in a related context that the prevailing party is

"the party succeeding on a significant litigated issue that achieves some of the benefits sought by that party

in initiating the suit." Cable/Home Communication Corp. v. Network Prods., Inc., 

, 853 (11th

Cir.1990) (applying this definition to an award of attorneys' fees in the copyright infringement context).

"Where the [party's] success on a legal claim can be characterized as purely technical or de minimis, a district

court would be justified in concluding that [this definition] has not been satisfied." Texas State Teachers

Ass'n v. Garland Indep. Sch. Dist., 

, 792, 

, 1493-94, 

(1989).

        The defendants contend that Montgomery's success was de minimis because the jury awarded him

only $30 in damages on his Lanham Act claim. Montgomery responds that the jury was instructed not to

award him "a double recovery of the same damages" on his copyright and Lanham Act claims. He argues,



                                                      32
therefore, that the incremental $30 award is consistent with the conclusion that he prevailed on his Lanham

Act claim.

        We need not focus solely on this damage award, however, in order to determine whether Montgomery

is entitled to attorneys' fees. It is also important to note that the district court, at Montgomery's request,

permanently enjoined the defendants from producing or transferring CD-ROM discs containing VPIC under

the relevant provisions of both the Lanham and Copyright Acts. See 15 U.S.C. § 1116 (1994); 17 U.S.C. §

502 (1994). Montgomery's success in procuring this injunction achieved a significant benefit—namely,

preventing the defendants from falsely designating the origin of VPIC—that he sought in initiating this suit.

Considering both the damages and injunctive relief that he received on his Lanham Act claim, therefore, we

conclude that Montgomery was a "prevailing party" within the meaning of 15 U.S.C. § 1117(a).37 The district

court did not err in awarding him attorneys' fees on his Lanham Act claim.

                                                     III.

        For the foregoing reasons, the challenged rulings of the district court are AFFIRMED.




   37
     We express no opinion on the question of whether the incremental $30 damage award alone would
be sufficient to make Montgomery a "prevailing party."

                                                     33