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Hell 2 Da Naw Pay Up Statutory Damages Award

Addressing the proper procedure for electing statutory damages under the Copyright Act, the US Court of Appeals for the Sixth Circuit affirmed the district court, agreeing that the plaintiff had properly informed the court of his intention to seek statutory damages. Smith v. Thomas, Case No. 18-3380 (6th Cir. Dec. 20, 2018) (Thapar, J).

Smith, a recording artist, and producer, wrote and recorded his song “Looking for a Country Girl” in 2012. Shortly thereafter, when the song was released, Smith registered his copyright in the song. Thomas, another Southern soul music artist, used the first 12 seconds of “Looking for a Country Girl” in his song “Hell 2 Da Naw Naw” without Smith’s permission or knowledge. Smith discovered the infringement when he was waiting in his dressing room at a venue where both he and Thomas were scheduled to perform. Smith heard what he thought was “Looking for a Country Girl” being played on stage, only to find out that it was actually Thomas’s song “Hell 2 Da Naw Naw.” Smith confronted Thomas about the infringement, and Thomas admitted to sampling Smith’s song.

As negotiations between Smith and Thomas continued, Thomas’s “Hell 2 Da Naw Naw” rose to viral fame. Eventually, unable to amicably resolve the problem, Smith sued Thomas for copyright infringement. Smith told the district court that he only had a “guesstimation” as to the damages amount, but that he understood that the law allowed for damages up to $150,000 and he was “certainly asking for that amount.” The district court found for Smith, granting him 50 percent ownership rights in “Hell 2 Da Naw Naw” (and derivatives thereof), enjoining Thomas from further infringement and awarding Smith $30,000 in statutory damages. Thomas appealed.

The Copyright Act grants plaintiffs a choice for damages: actual damages, which must be proven by a preponderance of the evidence, or statutory damages, which do not require specific proof and are set at the court’s discretion. Thomas argued that Smith had failed to properly elect statutory damages and that the court, therefore, had granted the $30,000 award in error. Thomas did not, however, challenge the loss of 50 percent ownership rights or the injunction.

On appeal, the Sixth Circuit first reviewed the plain text of the Copyright Act, finding nothing that suggested that any formal or particular procedure was required to elect statutory damages: “It does not contain a ‘magic words incantation’ requirement . . . It is a permissive provision, not a procedural hurdle designed to prevent plaintiffs from getting any remedy at all.”

The Court held that Smith informed the court of his intention to seek statutory damages by (1) testifying about the willful nature of the infringement (which is only relevant to statutory damages), (2) invoking the $150,000 damages maximum and (3) explicitly mentioning “statutory damages.” These actions, the Court held, “easily” met the standard and “were more than sufficient to ‘elect’ statutory damages.”

Practice Note: “Electing” statutory damages merely requires that the plaintiff inform the court either orally or in writing of his or her intent. There is no formal procedure, and plaintiffs may seek actual damages in the alternative.

© 2020 McDermott Will & EmeryNational Law Review, Volume IX, Number 30


About this Author

Eleanor (Ellie) B. Atkins, Trademark, Copyright Attorney, McDermott Will Law Firm

Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters.

Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions.