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:
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`The jury in this case found the defendants liable for infringing the plaintiff's copyright in a computer
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`program and for violating section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The district court entered
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`judgment against the defendants, awarding both actual damages and attorneys' fees to the plaintiff. On
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`appeal, the defendants challenge numerous rulings of the district court. We affirm. In so doing, we endeavor
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`to bring a small measure of clarity to certain "rather swampy"1 areas of copyright and unfair competition law.
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`I.
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`Plaintiff Robert Montgomery is the author of VPIC, a computer software program that enables users
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`to view pictures on a computer screen. Montgomery integrated several computer programs that he previously
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`had written—each of which was capable of reading different picture file formats—to create the initial version
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`of VPIC in December 1988. VPIC went through several versions during the course of its development,
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`including version 1.3, released on February 2, 1989, and version 1.4, released on March 15, 1989.
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`Montgomery did not register his copyrights in the early versions of VPIC and did not affix a copyright notice
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`when he marketed these early versions on computer bulletin boards. On August 8, 1990, Montgomery
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` 1Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir.1983) (quoting B.H. Bunn
`Co. v. AAA Replacement Parts Co., 451 F.2d 1254, 1258 (5th Cir.1971)).
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`

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`registered his copyright in VPIC version 2.9a. VPIC 2.9a and subsequent versions did contain a copyright
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`notice when Montgomery marketed them on computer bulletin board systems.2
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`The defendants, Florida Lion's Den, Inc. ("FLD") and Rebecca L. Noga (FLD's president and sole
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`shareholder), produce CD-ROM discs that are largely pornographic in nature. In 1992, the defendants and
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`FLD vice-president Blaine Richard downloaded VPIC version 4.33 from a bulletin board and incorporated
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`it as a utility on four of FLD's CD-ROM titles without obtaining a license from Montgomery. Because the
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`defendants had activated a certain feature of VPIC, the VPIC closing screen that contained Montgomery's
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`copyright notice did not appear when users viewed the pictures on the defendants' discs.
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`Upon learning of the defendants' unauthorized use of VPIC, Montgomery—acting through his
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`licensing agent, who sent a letter to the defendants on June 3, 1993—demanded that the defendants cease and
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`desist from using VPIC on FLD products, recall all unsold products containing VPIC, and pay damages for
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`their unauthorized use. The defendants did not comply with these demands; Montgomery therefore filed a
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`complaint against them in the U.S. District Court for the Middle District of Florida on October 25, 1993. The
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`complaint sought damages and injunctive relief for infringement of Montgomery's VPIC copyright in
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`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. §
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`1125(a).4 The defendants raised a number of affirmative defenses and impleaded Richard as a third-party
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` 2As 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."
`
` 3Montgomery 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.
`
` 4The 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.
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`2
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`

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`defendant. Montgomery obtained a preliminary injunction on November 30, 1993, that enjoined the
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`defendants from utilizing VPIC in FLD products.5
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`Both Montgomery and the defendants moved for summary judgment on Montgomery's two claims,
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`but the district court denied these motions on January 24, 1995. The case went to trial before a jury on March
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`20, 1995. At the close of Montgomery's case in chief, the defendants moved for judgment as a matter of law
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`on both claims; the court denied their motion. At the close of all the evidence, Montgomery moved for
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`judgment as a matter of law and the defendants renewed their motion; the court denied these motions as well.
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`The case was then submitted to the jury, which found in favor of Montgomery on both claims and awarded
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`actual damages in the amount of $80,000 for the copyright infringement claim and $30 for the Lanham Act
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`claim.6 The jury also found that, with regard to the copyright claim, the defendants' infringement had been
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`"willful" and that, with regard to the Lanham Act claim, the case was "exceptional."
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`The district court subsequently entertained several post-trial motions. The court denied the
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`defendants' motion for remittitur or a new trial, as well as their renewed motion for judgment as a matter of
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`law.7 The court granted Montgomery's motion for a permanent injunction and, in light of the jury's "willful"
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`and "exceptional" findings, granted Montgomery's motion for costs and attorneys' fees. Montgomery also
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`moved for an award of statutory damages pursuant to 17 U.S.C. § 504(c)(1), but the district court declined
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`to award additional damages. Judgment was therefore entered in favor of Montgomery and against the
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` 5The 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.
`
` 6The 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.
`
` 7The 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.
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`3
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`

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`defendants in the amount of $228,833.34: $80,000 for the copyright claim, $30 for the Lanham Act claim,
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`$142,289.26 for attorneys' fees, and $6,514.08 for costs.8 This appeal followed.9
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`II.
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`The defendants contend that the district court erred in (A) denying their motion for judgment as a
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`matter of law on the copyright infringement claim given that (1) Montgomery's copyright in VPIC 2.9a is
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`invalid because earlier versions of VPIC were injected into the public domain, and (2) the scope of
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`Montgomery's registered copyright in VPIC 2.9a, even if valid, does not extend to protect VPIC 4.3; (B)
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`denying their motion for remittitur or a new trial on the issue of damages with respect to the copyright claim;
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`(C) denying their motion for judgment as a matter of law on the Lanham Act claim; (D) precluding one of
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`their witnesses from testifying as an expert; and (E) awarding Montgomery attorneys' fees on (1) the
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`copyright claim and (2) the Lanham Act claim. We address these contentions seriatim.
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`A.
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` In evaluating the defendants' contention that the district court improperly denied their motion for
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`judgment as a matter of law on Montgomery's copyright infringement claim, we proceed from certain basic
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`principles of copyright law. The Copyright Act of 1976, 17 U.S.C. § 101 et seq. (1994), provides protection
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`for computer programs. See Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 842
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`(11th Cir.1990); 17 U.S.C. § 102(a) (1994). The Act defines a computer program as "a set of statements or
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`instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C.
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`§ 101 (1994). For original computer programs and other original works of authorship created after 1977,
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`copyright automatically inheres in the work at the moment it is created without regard to whether it is ever
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`registered. See Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1531 (11th Cir.1994); 17
`
` 8The court also entered judgment in favor of the defendants against Richard in this amount.
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` 9We have subject matter jurisdiction over this appeal. See 15 U.S.C. § 1121(a) (1994); 28 U.S.C. §§
`1291, 1338 (1994).
`
`4
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`

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`U.S.C. § 102(a); Melville B. Nimmer & David Nimmer, 2 Nimmer on Copyright § 7.16[A][1] (1998)
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`[hereinafter Nimmer ]. In order to bring an action for copyright infringement, however, the author must first
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`register the copyright. See 17 U.S.C. §§ 411(a), 501(b) (1994); M.G.B. Homes, Inc. v. Ameron Homes, Inc.,
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`903 F.2d 1486, 1488 & n. 4 (11th Cir.1990) (stating that "[t]he registration requirement is a jurisdictional
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`prerequisite to an infringement suit"). Montgomery's claim of copyright infringement, therefore, necessarily
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`is predicated on the defendants' infringement of VPIC 2.9a—the only version of VPIC that Montgomery had
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`registered at the time he commenced this action.
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` Once a copyright infringement action has been properly commenced, the copyright holder must
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`prove two elements in order to prevail: "(1) ownership of a valid copyright, and (2) copying of constituent
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`elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361,
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`111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). Here, the element of copying is not in dispute. The
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`defendants admit that, without obtaining a license from Montgomery, they downloaded VPIC 4.3 from a
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`bulletin board and incorporated it as a utility on four FLD discs.
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`The defendants challenge the propriety of Montgomery's copyright infringement claim on two
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`grounds. First, they argue that Montgomery does not own a valid copyright in VPIC 2.9a as required by
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`Feist. According to the defendants, Montgomery's copyright in VPIC 2.9a is invalid because earlier versions
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`of VPIC—components of which were contained in VPIC 2.9a—were injected into the public domain.
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`Second, and alternatively, the defendants argue that the scope of Montgomery's copyright registration for
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`VPIC 2.9a does not extend to support the commencement of an action for infringement of his unregistered
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`copyright in VPIC 4.3—the version that the defendants incorporated.
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` The district court rejected these arguments, finding that the jury's verdict was in accordance with
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`both the law and the evidence at trial. We review a district court's denial of a motion for judgment as a matter
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`of law de novo, applying the same standards as the district court. In considering the sufficiency of the
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`evidence that supports the jury's verdict, we review the evidence "in the light most favorable to, and with all
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`5
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`

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`reasonable inferences drawn in favor of, the nonmoving party." Walker v. NationsBank of Fla., N.A., 53 F.3d
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`1548, 1555 (11th Cir.1995). If reasonable and fair-minded persons in the exercise of impartial judgment
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`might reach different conclusions based on the evidence presented, the motion should be denied. See Walls
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`v. Button Gwinnett Bancorp, Inc., 1 F.3d 1198, 1200 (11th Cir.1993). Questions of law raised by the motion,
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`however, are reviewed de novo. See Morro v. City of Birmingham, 117 F.3d 508, 513 (11th Cir.1997), cert.
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`denied,--- U.S. ----, 118 S.Ct. 1299, 140 L.Ed.2d 465 (1998). Applying these standards to the two arguments
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`presented by the defendants, we conclude that the district court correctly denied their motion.
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`1.
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` The plaintiff in a copyright infringement action normally bears the burden of proving ownership of
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`a valid copyright. In order to meet this burden, the plaintiff must show that the work is original and that the
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`applicable statutory formalities were followed. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th
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`Cir.1996). Given that Montgomery produced a certificate of copyright registration for VPIC 2.9a at trial,
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`however, he benefited from a rebuttable presumption that the VPIC 2.9a copyright is valid. See 17 U.S.C.
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`§ 410(c) (1994).10 The burden therefore shifted to the defendants, who were required to demonstrate that "the
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`work in which copyright is claimed is unprotectable (for lack of originality) or, more specifically, to prove
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`that ... the copyrighted work actually taken is unworthy of copyright protection." Bateman, 79 F.3d at 1541.
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`The defendants' argument that VPIC 2.9a is unprotectable has two parts. Citing 17 U.S.C. § 405(a),
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`the defendants initially claim that VPIC 1.3 and its predecessor versions were injected into the public
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`domain—i.e., that Montgomery forfeited his unregistered copyrights in these versions—because these
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` 10Section 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.
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`6
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`

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`versions did not contain copyright notices when Montgomery released them to the public prior to March 1,
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`1989. Second, the defendants assert that the revisions Montgomery made to VPIC in versions 1.4 through
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`2.9a were not sufficiently original to support a valid copyright in version 2.9a.
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` We find that the defendants have not met their burden. Assuming arguendo that Montgomery
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`forfeited his copyrights in VPIC 1.3 and its predecessors by publishing them without a copyright notice,11 we
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`conclude that the modifications Montgomery made to VPIC in versions 1.4 through 2.9a were sufficiently
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`original to support a valid copyright in version 2.9a as a derivative work. See SAS Inst., Inc. v. S & H
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`Computer Sys., Inc., 605 F.Supp. 816, 826-27 (M.D.Tenn.1985) (concluding that regardless of whether
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`previous version of computer programming system was in the public domain, subsequent version of system
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`was sufficiently original to support valid copyright).
`
` 1117 U.S.C. § 405(a) (1994) states that, for works publicly distributed before March 1, 1989,
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`the omission of [a copyright notice] from copies or phonorecords ... does not invalidate
`the copyright in a work if ... (2) registration for the work has been made before or is made
`within five years after the publication without notice, and a reasonable effort is made to
`add notice to all copies or phonorecords that are distributed to the public in the United
`States after the omission has been discovered....
`
`See generally Donald Frederick Evans & Assocs., Inc. v. Continental Homes, Inc., 785 F.2d 897,
`905-06, 910-12 (11th Cir.1986); 2 Nimmer § 7.16[A][1].
`
`Montgomery argues that his 1990 registration of, and inclusion of a copyright notice in,
`VPIC 2.9a occurred less than 5 years after the publication of VPIC 1.3 and its predecessors in the
`late 1980s. He concludes, therefore, that any potential forfeiture of his rights properly was cured
`under section 405(a)(2). Montgomery's conclusion might be correct if he had registered, and
`made a reasonable effort to add notice to subsequent copies of, VPIC version 1.3 and its
`predecessor versions themselves. Cf. Continental Homes, 785 F.2d at 911 n. 22 (discussing a
`disagreement among various courts regarding whether section 405(a)(2) requires a copyright
`owner to add notice to all copies distributed, or only to copies distributed after it is discovered
`that notice was omitted). We express no opinion, however, on the question of whether the
`inclusion of a copyright notice in copies of a subsequent version of a work can rescue the
`copyright of a previous version that was distributed without a copyright notice. Cf. 17 U.S.C. §
`101 (1994) ("where the work has been prepared in different versions, each version constitutes a
`separate work").
`
`7
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`

`
` 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
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`a 'derivative work.' " 17 U.S.C. § 101. Such a work—if it is non-infringing and sufficiently
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`original—qualifies for a separate copyright, although this copyright does not protect the preexisting material
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`employed in the derivative work. See 17 U.S.C. § 103 (1994); Stewart v. Abend, 495 U.S. 207, 223-24, 110
`
`S.Ct. 1750, 1761-62, 109 L.Ed.2d 184 (1990); 1 Nimmer §§ 3.01, 3.04[A]. In this case, the requirement of
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`non-infringement clearly is satisfied. This is true regardless of whether Montgomery held valid copyrights
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`in VPIC 1.3 and its predecessor versions when he modified them to create version 2.9a (as Montgomery
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`maintains) or he merely took VPIC 1.3 and its predecessor versions from the public domain and modified
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`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
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`least some minimal degree of creativity.... To be sure, the requisite level of creativity is extremely low; even
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`a slight amount will suffice." Feist, 499 U.S. at 345, 111 S.Ct. at 1287; see also id. at 348, 111 S.Ct. at
`
`1289.12 The defendants claim that the modifications Montgomery made to VPIC in versions 1.4 through 2.9a
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`did not cross even this low threshold. In support of this claim, they argue that Montgomery himself stated
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`on cross-examination that the source code for VPIC version 2.9a was substantially similar to the source code
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`for version 1.3. We find that the import of Montgomery's statement is far from clear.13 It is clear from other
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` 12Feist resolved a possible tension in our precedent regarding the test for establishing originality.
`Compare Sherry Mfg. Co. v. Towel King of Fla., Inc., 753 F.2d 1565, 1568 (11th Cir.1985) (noting that
`"in order to qualify for a separate copyright, the derivative work must contain some substantial, and not
`merely trivial, originality" (emphasis added)), with Original Appalachian Artworks, Inc. v. The Toy Loft,
`Inc., 684 F.2d 821, 824-25 (11th Cir.1982) (discussing the "minimal degree of originality necessary for
`copyright protection" (emphasis added)). Cf. 1 Nimmer § 3.03, at 3-10 ("[I]n order to qualify for a
`separate copyright as a derivative or collective work, the additional matter injected in a prior work ... must
`constitute more than a minimal contribution.").
`
` 13The 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
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`8
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`

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`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
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`registration application shows that in versions 1.4 through 2.9a, Montgomery corrected many problems,
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`increased the number of graphics file formats that VPIC users could view, increased by 50 percent the speed
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`at which VPIC would decode graphics stored in the GIF file format, and configured VPIC to work with
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`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
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`not?
`
`A. Yes. Yes. It mainly amounts to adding new features.
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`9
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`

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`additional graphics computer chips and cards. In light of this evidence, we conclude that the defendants failed
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`to meet their burden of showing that the modifications Montgomery made to VPIC in versions 1.4 through
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`2.9a were not sufficiently original to support a valid copyright in version 2.9a as a derivative work. The
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`district court, therefore, did not clearly err in rejecting the defendants' argument that VPIC 2.9a is
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`unprotectable.14
`
` 14While the question of originality usually is viewed as an issue of fact subject to appellate review
`under the clearly erroneous standard, see Original Appalachian Artworks, 684 F.2d at 825; 3 Nimmer §
`12.12, we have departed from this standard in certain situations. In Sherry Manufacturing, 753 F.2d at
`1569 & n. 6, we held as a matter of law that a design on a towel lacked sufficient originality to be
`copyrightable. In so doing, we stated that "where the appellate court has the opportunity to view for itself
`the same tangible exhibits considered by the trial court, the rationale for applying the clearly erroneous
`standard disappears." Id. at 1569 n. 6. We cited the Second Circuit case of Eden Toys, Inc. v. Florelee
`Undergarment Co., 697 F.2d 27, 35 (2d Cir.1982), in support of this statement.
`
`In this case, we have before us certain tangible exhibits that bear directly on the question
`of whether Montgomery's modifications were sufficiently original. Some of these exhibits, such
`as the source code for VPIC 2.9a, are not readily comprehensible by those not trained in
`computer programming. The VPIC revision history is somewhat more comprehensible, but
`Montgomery interpreted and expanded upon it at length in his trial testimony. In such
`circumstances, it is unclear whether Sherry Manufacturing would require that we consider the
`question of originality de novo. Cf. Malden Mills, Inc. v. Regency Mills, Inc., 626 F.2d 1112,
`1113 & n. 2 (2d Cir.1980) (implying, in the context of a copyright infringement analysis, that
`expert testimony regarding matters not within the knowledge of the lay observer might preclude
`de novo review); G.R. Leonard & Co. v. Stack, 386 F.2d 38, 40-41 (7th Cir.1967) (applying the
`clearly erroneous standard in the copyright infringement context where the evidence regarding
`the parties' respective works consisted mostly of "testimonial analysis and interpretation" of the
`works). To the extent that Sherry Manufacturing would require de novo review, however, we
`conclude that Supreme Court precedent prevents us from following it.
`
`Only twenty days after we decided Sherry Manufacturing, the Supreme Court held that
`factual findings are to be reviewed for clear error "even when the district court's findings do not
`rest on credibility determinations, but are based instead on physical or documentary evidence or
`inferences from other facts." Anderson v. City of Bessemer City, 470 U.S. 564, 574, 105 S.Ct.
`1504, 1511-12, 84 L.Ed.2d 518 (1985). While we recognize that Second Circuit copyright
`infringement cases continue to apply de novo review to certain factual determinations that are
`based on tangible exhibits, see, e.g., Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 766 (2d
`Cir.1991) (reviewing district court finding of substantial similarity de novo ); Business Trends
`Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 402-03 (same), we believe that this
`standard of review is inappropriate after Anderson. See Wildlife Express Corp. v. Carol Wright
`Sales, Inc., 18 F.3d 502, 506-07 & n. 1 (7th Cir.1994); cf. AmBrit, Inc. v. Kraft, Inc., 812 F.2d
`1531, 1541 n. 46 (11th Cir.1986) (citing Anderson and declining to review de novo a finding of
`similarity of design in trade dress infringement action brought under Lanham Act section 43(a)).
`
`10
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`

`
`2.
`
` We now turn to the defendants' alternative argument that the scope of Montgomery's copyright
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`registration in VPIC 2.9a does not extend to support the commencement of an action for infringement of his
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`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
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`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
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`defendants conclude that because VPIC version 4.3 is a "separate work" that was not registered when
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`Montgomery brought this suit, Montgomery could not maintain a copyright infringement action against them
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`for copying that work. While the defendants recognize that Montgomery registered his copyright in VPIC
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`2.9a, they claim that the Copyright Act16 supports the conclusion that this registration does not cover
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`material—such as the derivative work VPIC 4.3—not in existence at the time of the registration.
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`The defendants' argument, however, mischaracterizes Montgomery's claim of copyright infringement.
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`The evidence at trial showed that VPIC 4.3 incorporated over seventy percent of the original source code
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`from the registered work VPIC 2.9a, and that VPIC 4.3 would not function if the VPIC 2.9a code was
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` 15In 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.
`
` 16The 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
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`

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`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)); id. at 62,
`
`reprinted in 1976 U.S.C.C.A.N. at 5675 ("The exclusive right to prepare derivative works, specified
`
`separately in clause (2) of section 106, overlaps the exclusive right of reproduction [in section 106(1) ] to
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`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
`
` 17The authorities cited in the text directly support our conclusion. Additional support may be found in
`the pronouncements of courts and commentators that have dealt with analogous factual situations. See,
`e.g., Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111-12 (1st Cir.1993) (holding that
`plaintiff could recover damages for copyright infringement of underlying work where plaintiff had an
`exclusive license to distribute an underlying work that was subject to a registered copyright, plaintiff had
`produced an unregistered derivative work based on the underlying work, and defendant had copied and
`distributed the derivative work); id. at 1112 ("Although a derivative work may be separately copyrighted,
`that copyright does not affect the copyright in the underlying work.... Any elements that the author of the
`derivative work borrowed from the underlying work ... remain protected by the copyrights in the
`underlying work."); cf. Stewart v. Abend, 495 U.S. 207, 223, 110 S.Ct. 1750, 1761, 109 L.Ed.2d 184
`(1990) ("The aspects of a derivative work added by the derivative author are that author's property, but
`the element drawn from the pre-existing work remains on grant from the owner of the pre-existing
`work."). See also 1 Nimmer § 3.05, at 3-34.20 (considering whether the owner of the registered copyright
`in an underlying work may claim infringement when the defendant has copied matter that originated in
`the underlying work from a derivative work produced by a third party under a nonexclusive license, and
`concluding that "the better view is that if the material copied was derived from a copyrighted underlying
`work, this will constitute an infringement of such work regardless of whether the defendant copied
`directly from the u