The opinion of the court was delivered by: Kimba M. Wood, U.S.D.J.:
On May 11, 2010, this Court granted summary judgment in favor of Plaintiffs on their claims against Defendants LimeWire LLC ("LW"), Lime Group LLC ("Lime Group"), and Mark Gorton (collectively, "Defendants") for secondary copyright infringement. The Court found that Defendants had induced multiple users of the LimeWire online file-sharing program ("LimeWire") to infringe Plaintiffs' copyrights. In the Court's Opinion and Order (as amended on May 25, 2010), the Court detailed this case's procedural and factual background, familiarity with which is assumed. (See Dkt. Entry No. 223.)
The litigation is now in the damage phase, with a trial on damages scheduled for May 2, 2011. Plaintiffs have identified approximately 11,205 sound recordings that have allegedly been infringed through the LimeWire system. Of those, approximately 9,715 are sound recordings as to which Plaintiffs have elected to seek statutory damages under Section 504(c)(1) of the Copyright Act.*fn1 See 17 U.S.C. § 504(c)(1). With respect to those 9,715 sound recordings, Plaintiffs have submitted competent evidence (1) that all of the sound recordings were infringed on the LimeWire system; and (2) that, with the exception of approximately 200 sound recordings, the sound recordings were owned by Plaintiffs. (See Dkt. Entry No. 649.)
On March 18, 2011 (as amended on March 29, 2011), this Court held, pursuant to 17 U.S.C. § 412 ("Section 412"), that if an individual LimeWire user infringed a work prior to the registration of the copyright for that work, Plaintiffs are barred from recovering a statutory damage award from Defendants with respect to that work, unless registration was made within three months after the first publication of that work. (See Dkt. Entry Nos. 630 & 646.)
Defendants now contend that, based on the Court's March 18, 2011 Order, Plaintiffs will be barred from seeking statutory damage awards with respect to approximately 1,322 late-registered sound recordings. With respect to those 1,322 late-registered sound recordings, Defendants ask the Court to hold that Plaintiffs, having previously elected to recover statutory damage awards for those sound recordings, are now precluded from seeking to recover actual damages for those sound recordings. (See Defendants' March 21, 2011 Letter.)
On March 29, 2011, the Court ordered Defendants to submit a letter describing any prejudice that they believe they would suffer if the Court permitted Plaintiffs to amend their election of remedies- i.e., "unelect" statutory damages and elect to recover actual damages- with respect to those works for which statutory damage awards are barred under Section 412.
Defendants have submitted their letter, and Plaintiffs have responded, seeking to amend their election of remedies. (See Plaintiffs' March 24, 2011 Letter.)
For the reasons that follow, the Court finds that Defendants would be unduly prejudiced if Plaintiffs were permitted to amend their election of remedies, just one month before trial, which is scheduled to commence on May 2, 2011. Accordingly, Plaintiffs may not seek to recover actual damages for those sound recordings with respect to which they have already elected to recover statutory damages.
Under Section 504 of the Copyright Act, a plaintiff may pursue "actual damages suffered by him or her as a result of the infringement" or, "an award of statutory damages for all infringements involved in this action." 17 U.S.C. § 504(b) and (c) (emphasis added).
The question of whether a party who has elected to seek statutory damages as to all of their post-1972 sound recordings can later, but before trial, carve out a portion of sound recordings as to which it will seek actual damages, was addressed by the Ninth Circuit in 2010. See Lanard Toys Ltd. v. Novelty, Inc., 375 Fed. Appx. 705 (9th Cir. 2010). There, the district court had found no prejudice to defendant, where plaintiff amended its election of remedies six months before trial, and defendant neither objected to the amendment nor sought additional discovery occasioned by the amendment, and apparently objected only at or near trial to the amended election. The Ninth Circuit held that it was not an abuse of discretion for the district court to hold that defendant was not prejudiced by plaintiff's amended notice of election. Id. at 712. In the instant case, however, Plaintiffs have sought to amend their election of remedies just one month before trial.
After reviewing the parties' submissions, the Court finds that Defendants will be unduly prejudiced if Plaintiffs were permitted to amend their election of remedies to seek actual (rather than statutory) ...