UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA YVETTE MARINE, Plaintiff, v. VIRGIN RECORDS AMERICA, INC., Defendant, NO. CV 91-2158 AWT JURY INSTRUCTIONS GIVEN The instructions hereto are the instructions given to the jury on this date. A copy of these instructions has been provided to the jury. Dated: AUG 12 1993 A. WALLACE TASH~~~IMA United States District Judge AWT - Revised 5/91 GENERAL CIVIL INSTRUCTIONS Members of the Jury: Now that you have heard the evidence and the argument of counsel, it becomes my duty to instruct you on the law that applies to this case. 1. Function of the Jury. It is now your duty to find the facts from all the evidence in the case. You are the sole judges of the facts. However, it is your duty to follow and to apply the law as stated in these instructions, whether you agree with it or not. You must follow all of the instructions and not single out some and ignore others; they are all equally important. You must not be influenced by any personal likes or dislikes, sympathy, prejudice or public opinion. You are to perform your sworn duty without bias or prejudice for or against any party. Remember that you took an oath promising to do so at the beginning of the case. 2. Judging Witnesses. In deciding what the facts are, you must consider all the evidence. In doing this, you must decide which testimony to believe and which testimony not to believe. You may disbelieve all or any part of any witness testimony. In making that decision, you may take into account a number of factors including the following: 1. Was the witness able to see, or hear, or know the things about which that witness testified? 2. How well was the witness able to recall and describe those things? 3. What was the witness's manner while testifying? 4. Did the witness have an interest in the outcome of this case or any bias or prejudice concerning any party or any matter involved in the case? 5. How reasonable was the witness's testimony considered in light of all the evidence in the case? 6. Was the witness's testimony contradicted by what the witness has said or done at another time, or by the testimony of other witnesses, or by other evidence. In deciding whether or not to believe a witness, keep in mind that people sometimes forget things. You need to consider therefore whether a contradiction is an innocent lapse of memory or an intentional falsehood, and that may depend on whether it has to do with an important fact or with only a small detail. The weight of the evidence presented by each side does not necessarily depend on the number of witnesses testifying on one side or the other. You must consider all of the evidence in the case, and you may decide that the testimony of a smaller number of witnesses on one side has greater weight than that of larger number on the other. All of these are matters for you to consider in finding the facts. INSTRUCTION NO. 3 [Charts and Summaries Received in Evidence] Certain charts and summaries have been received into evidence to illustrate facts brought out in the testimony of some witnesses. Charts and summaries are only as good as the underlying evidence that supports them. You should therefore given them only such weight as you think the underlying evidence deserves. 3A. Deposition for Impeachment. Prior to the trial, the deposition was taken of a witness and part of it was read into evidence. If, in said deposition, the witness made any statements in conflict with his [or her] testimony in Court, you may consider such conflicts and any explanations therefor in determining his [or her] credibility as if the testimony in the deposition had been given at trial. INSTRUCTION 4A A corporation under the law is a person, but it can only act through its employees, agents, directors, or officers. The law therefore holds a corporation responsible for the acts of its employees, agents, directors, and officers, if but only if those acts are authorized. An act is authorized if it is a part of the ordinary course of employment of the person doing it. Whether a particular act was authorized is question you must decide on the evidence. The fact that defendant is a corporation should not affect your decision. All persons are equal before the law, and corporations, whether large or small, are entitled to the same fair and conscientious consideration by you as any other person. 4. Evidence in the Case. You are to decide the case solely on the evidence received at the trial. The evidence consists of the sworn testimony of all witnesses, all exhibits received in evidence and all facts which have been agreed to or stipulated. Anything you may have seen or heard outside the courtroom is not evidence. A question is never evidence except as it supplies meaning to its answer. 5. Statements of Counsel. Statements, questions and arguments of counsel are not evidence, except for any statement of a stipulation. 6. Stipulation. A stipulation is an agreed statement of facts between the attorneys, and you must accept such facts as being conclusively proved. 7. Objections. When the Court has sustained an objection to a question, you must not speculate as to what the answer might have been or the reason for the objection. If any testimony was stricken by the Court or you have been instructed to disregard it, it is not evidence and must not be considered. 8. Opinion of the Court. Do not assume that I hold any opinion on any matter in this case- You are at liberty to disregard all comments of the Court, except my instructions of the law. INSTRUCTION NO. 11 FAILURE TO PRODUCE AVAILABLE EVIDENCE If a party fails to produce evidence which is under his control and reasonably available to him, then you may infer that the evidence is unfavorable to the party who could have produced it and did not. INSTRUCTION NO. 12 WILFUL SUPPRESSION OF EVIDENCE If you find that a party wilfully suppressed evidence in order to prevent its being presented in this trial, you may consider that fact in determining what inferences to draw from the evidence. 16. Direct or Circumstantial Evidence. There are two kinds of evidence from which you may find the truth of the facts of a case. One is direct evidence -- such as the testimony evidence or of an eyewitness. The other is circumstantial indirect evidence -- the proof of a chain of facts from which you could find that another fact exists, even though it has not been proven by direct evidence. You should consider both kinds of evidence. It is for you to decide how much weight to give to any evidence. 17. Inferences. You are not limited in your consideration of the evidence to the bare words of the witnesses. You are authorized to draw such inferences as are justified in the light of your experience as reasonable persons. An inference is a deduction or conclusion which reason and common sense lead one to draw from proved facts. 18. Expert Testimony. You have heard testimony from person(s) referred to as expert(s). A person who by education or experience has gained special knowledge in a field may give his [or her] opinion on matters in that field and may also state their reasons for the opinion. Such testimony should be judged just like any other testimony. You may accept it or reject it, and give it as much weight as you think it deserves, considering the witness' education and experience, the reasons given for the opinion, and all other evidence in the case. 25. Burden of Proof - Preponderance of the Evidence. In a civil case such as this the plaintiff has the burden of proving the case by what is called the "preponderance of the evidence." That means that the plaintiff has to produce evidence which, considered in the light of all the facts, leads you to believe that what the plaintiff claims is more likely true than not true. To state it differently, if you were to put plaintiff's and defendant's evidence on opposite sides of the scales, plaintiff would have to make the scales tip slightly in plaintiff's favor. If plaintiff fails to meet this burden, the verdict must be for defendant. On the other hand, the defendant has the burden of proving by a preponderance of the evidence any affirmative defenses asserted by defendant. Therefore, when I say in these instructions that a party must "prove" or "show" or "establish," or that the jury may "find," mean that the proposition must be proven by a preponderance of all of the evidence in the case. INSTRUCTION NO. 28 [Separate Analysis of Each Sound Recording] In analyzing the various claims and defenses asserted in this action, each of the sound recordings at issue, that is, the four sound recordings known as I Need You, Opposites Attract, Knocked Out and State of Attraction, along with the album sound recording, Forever Your Girl, shall be considered separately, unless I instruct you otherwise . INSTRUCTION NO. 31 Parties' Contentions (First Two Claims) Plaintiff Yvette Marine (called "Marine") contends that she recorded lead vocal performances on two sound recordings known as I Need You and Opposites Attract; that her lead vocals on those two sound recordings were mixed together with those of another performer, Paula Abdul; that defendant Virgin Records America, Inc. (called "Virgin") utilized Marine's vocals on copies of these recordings sold to consumers throughout the world; that Virgin caused the credits for I Need You and Opposites Attract to identify only Paula Abdul as the lead vocalist, and that Virgin's credits for I Need You and Opposites Attract were false, deceptive or at least likely to confuse the public by inaccurately stating that Marine's only contributions to them were background vocals. Virgin, on the other hand, denies that Marine's vocal performances on these two recordings constituted a "lead" vocal, and that its credits correctly identified all "lead" vocalists. Marine contends that she sustained damages because she was not credited as one of the lead vocalists on I Need You and Opposites Attract. Virgin, on the other hand, contends that since Marine was only one of the background vocalists on I Need You and Opposites Attract, she did not sustain any damages by virtue of Virgin's credits for these two recordings. INSTRUCTION NO. 32 There is no claim being made that Marine was improperly credited on the recordings Knocked Out and State of Attraction. INSTRUCTION NO. 33 Marine's first claim is that Virgin violated 43(a) of the Lanham Act, which prohibits the use of any false designation of origin on goods sold in interstate commerce. In order to prove this claim, Marine must establish each of the following: First, that Marine's vocal contribution to I Need You and Opposites Attract constituted a "lead" or "co-lead" contribution. Second, that Virgin did not give Marine credit for her vocal contribution. Third that Marine was injured by Virgin's actions. INSTRUCTION NO. 34 Marine also claims that the actions of Virgin in crediting only--one vocalist, namely, Paula Abdul, for I Need You and Opposites Attract constitutes "unfair competition" under California law. Liability for unfair competition is very similar to that for violation of 43(a) of the Lanham Act in that unfair competition involves mislabeling or failure to credit a person for their efforts or contributions to a product (such as a sound recording) when those of others are credited as if they were the sole contributors. One form of unfair competition is called "reverse passing off." This occurs when the efforts or contributions of one person are labeled as the efforts of another. This is what Marine contends Virgin did with respect to the packaging credits for Need You and Opposites Attract. Accordingly, in order for you to determine whether Virgin committed unfair competition with its packaging credits for I Need You and Opposites Attract, you must decide whether Virgin diverted credit for Marine's vocal performances to another vocalist. INSTRUCTION NO. 35 Virgin has raised the affirmative defense of "estoppel" to Marine's claims under the Lanham Act and the California unfair competition law. To the extent that Virgin proves this defense, Virgin would not be liable for any conduct to which the defense applies. INSTRUCTION NO. 36 UNFAIR COMPETITION - DEFENSES - ESTOPPEL "Estoppel" means that MARINE cannot now complain of a condition that she knew about and went along with, where VIRGIN was not aware that she disagreed with it, and had reason to expect that MARINE would tell them if she disapproved. MARINE's silence alone will not create an estoppel; for estoppel to arise, silence must occur under such circumstances that it would be reasonable for VIRGIN to rely on her silence. INSTRUCTION NO. 37 To establish the defense of estoppel, Virgin must prove each of the following elements: 1. Marine knew of the facts which constitute the basis of her claims under the Lanham Act and the California unfair competition law. 2. Virgin did not know that Marine objected to the manner in which the Forever Your Girl album was packaged and the manner in which credits were given on said album. 3. Virgin was justified in believing that Marine's failure meant that Marine did not object. 4. Virgin relied upon Marine's failure to object in continuing to market the Forever Your Girl album in the manner in which it was marketed. If you find that Virgin has established this defense, your verdict should be for Virgin on the Lanham Act and state unfair competition claims. INSTRUCTION NO. 38 ACTS AND OMISSIONS BY AGENTS OR REPRESENTATIVES One is the agent of another person or company (called the "principal"), if, at a given time, he or she is authorized to act for or in place of such person or company. Accordingly, any act or omission of any of MARINE's agents was the act or omission of MARINE. Similarly, any act or omission of any of VIRGIN's agents was the act or omission of VIRGIN. INSTRUCTION NO. 41 [Damages for Violation of 43(a)] The Lanham Act provides two forms of damages or monetary recovery to which Marine is entitled if she shows that Virgin violated section 43(a). They are: (1) Any actual damages or lost profits which Marine sustained as the result of Virgin's improper failure to credit her vocal contributions, or, (2) Virgin's profits from the sale of the sound recordings which bear the improper packaging credits. In determining what Virgin's profits are, Marine has the burden of producing evidence of Virgin's income from the sale of the sound recordings, and Virgin then has the burden of proving any deductible expenses., and of proving what proportion, if any, of its total profits were the result of the efforts of persons other than Marine, including Paula Abdul. With respect to income from the sale of the album Forever Your Girl, Marine must prove what proportion, if any, of the total income from that album is attributable to the songs in issue. INSTRUCTION NO. 42 [Damages for Unfair Competition] Marine may recover two similar forms of damages if she shows that Virgin committed unfair competition. They are: (1) Any losses she sustained which were legally caused by Virgin's actions; in this context, "legal cause" means that Virgin's acts of unfair competition were a substantial factor in bringing about Marine's loss or harm, and, (2) Virgin's profits. In determining Virgin's profits, Marine has the burden of producing evidence of Virgin's income and Virgin then has the burden of proving any deductible expenses. in accordance with the instruction I have just given you. INSTRUCTION NO. 43 As just stated, Marine seeks an award of Virgin's profits from its sales of the sound recordings and of the album containing those sound recordings. Before Marine may recover Virgin's profits under the Lanham Act, she must prove that Virgin willfully violated the Act. An act is done "willfully" if it is done knowingly, deliberately and intentionally (done "on purpose"), and not accidentally or carelessly or unintentionally. INSTRUCTION NO. 44 Before Marine may recover Virgin's profits under the California unfair competition law, she must prove that Virgin' unfair competition was willful, that is, that Virgin intentionally and deliberately passed off Marine's lead vocal contribution to the sound recordings in issue as being those solely of Paula Abdul. INSTRUCTION NO. 45 Virgin claims that even if Marine has proven her Lanham Act or unfair competition claims, she is not entitled to any monetary recovery because she did not mitigate her damages. An individual damaged by the wrongful acts of another has duty to use reasonable care and diligence to avoid loss and to minimize her damages. In order to prove its defense of failure to mitigate damages, Virgin must establish that there were reasonable measures that Marine could have taken which would have avoided or minimized her damages and that she failed to take such measures. If you find that Marine failed to exercise reasonable diligence and reasonable care to take measures which would have prevented or minimized her damages, then you are to reduce her Lanham Act or unfair competition damage award to the extent that she could have mitigated her losses. INSTRUCTION NO. 46 SPECULATIVE DAMAGES You are not permitted to award any speculative damages, which means compensation for future loss or harm which, although possible, is conjectural or not reasonably certain. However, if you determine that either party is entitled to recover, you should compensate that party for loss or harm which is reasonably certain to be suffered by that party in the future as a proximate result of the injury in question. INSTRUCTION NO. 47 The fact that I have instructed you on damages should not be taken as any indication of the court as to what the jury's verdict should be on the issue of liability. It is the jury's function to decide the issue of liability. have instructed you on the proper measure of damages for your guidance only in the event that you decide that the plaintiff is entitled to recover. INSTRUCTION NO. 51 [The Parties' Contentions (Fourth Count)] Marine claims that she, along with Paula Abdul and the record producers, are the creators and authors of the sound recordings known as I Need You, Opposites Attract, Knocked Out, State of Attraction and Forever Your Girl, and as such, Marine is one of the co-owners of the copyrights in these sound recordings. Marine also contends that she was self-employed and not an employee of anyone else when she made her vocal contributions to the sound recordings. Virgin, on the other hand, contends (1 ) that Marine was an employee working in the course of her employment with Virgin and/or the producers when she made her vocal contributions to I Need You, Opposites Attract, Knocked Out and State of Attraction and, therefore, Virgin is the sole owner of the copyrights in these sound recordings; and, (2) that even if Marine was not so employed, she does not meet the requirements for joint authorship and, therefore, cannot be a co-owner of the copyrights in these sound recordings. INSTRUCTION NO. 52 [Subject Matter of Copyright Protection; Sound Recordings] The United States Copyright Act, Section 102, provides that: "Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed .... Works of authorship include ... sound recordings. . . " As defined in the Copyright Act, sound recordings are the works which contain the sounds that you hear when, for example, you play or listen to phonorecords, audio cassettes and record albums. INSTRUCTION NO. 53 The Copyright Act states that "copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of the copyright in the work." "Authors," within the meaning of the Copyright Act, are those who contribute "copyrightable expression" to a tangible work of authorship, such as a sound recording. Copyrightable expression in a sound recording includes the performers' creative expression and the contribution of the producers in capturing and processing of the sounds. INSTRUCTION NO. 54 ["Works Made for Hire"] The Copyright Act defines a "work made for hire" as: "a work prepared by an employee within the scope of his or her employment." In order to determine whether Marine's vocal contributions to I Need You, Opposites Attract, Knocked Out and State of Attraction were "works made for hire" within the meaning of the Copyright Act, you must determine whether Marine was an employee acting within the scope of her employment at the time the recordings were made. INSTRUCTION NO. 55 WORK FOR HIRE - AUTHOR When the work is made "for hire", the employer or other person for whom the work was prepared is the author, and thus the owner, of the copyright in the work. An "employee" is not the copyright owner. INSTRUCTION NO. 56 Marine has the burden of showing that she was not an employee of Virgin or any of the sound recordings' producers, working within the course and scope of such employment when she rendered her vocal contributions to I Need You, Opposites Attract, Knocked Out and/or State of Attraction. In determining whether a hired party is an employee, you must consider the hiring party's right to control the manner and means by which the product is accomplished. Among other factors relevant to this inquiry are: (a) The skill required; (b) The source of the instrumentalities and tools; (c) The location of the work; (d) The duration of the relationship between the parties; (e) Whether the hiring party has the right to assign additional projects to the hired party; (f) The extent of the hired party's discretion over when and how long to work; (g) The method of payment; (h) The hired party's role in hiring and paying assistants; (i) Whether the work is part of the regular business of the hiring party; (j) Whether the hiring party is in business; (k) The provision of employee benefits; and (l) The tax treatment of the hired party. INSTRUCTION NO. 57 The burden of proof as to Virgin's sole ownership of the copyright for the Forever Your Girl sound recording rests with Virgin. However, Virgin's certificate of copyright registration for that recording is what is called "prima facie evidence" of its sole ownership of the copyright in that album, including the facts stated in the certificate. In other words, Virgin's certificate establishes a presumption of its sole ownership of the copyright. However, if you find that Marine has produced evidence which, in your mind, rebuts the statements in Virgin's copyright certificate, Virgin cannot rely on the presumption alone to prove its sole ownership. Rather, in such event, you must then determine whether Virgin has carried its burden of proving its sole ownership of the copyright in each of the individual sound recordings at issue here, namely Opposites Attract, I Need You, Knocked Out and State of Attraction, and in the album Forever Your Girl. INSTRUCTION NO. 58 [Joint Works of Authorship] The Copyright Act defines a "joint work of authorship" as a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. The essence of joint authorship is a joint laboring in furtherance of preconcerted common design. This does not mean, however, that joint authors must work in physical proximity or in concert. Nor is an express "collaboration agreement" necessary to create a joint-author relationship. Moreover, the respective contributions of joint authors need not be equal either quantitatively or qualitatively. It is sufficient if each author contributes more than minimal amount of creative work to the joint work. INSTRUCTION NO. 59 [Joint Authors] In order to establish that she a joint author of the I Need You, Opposites Attract, Knocked Out, State of Attraction and/or the Forever Your Girl album sound recordings, Marine must show the following: (1) That she contributed copyrightable material (i.e., an individual creative effort, such as a recorded vocal performance) to the claimed joint work; (2) That her vocal contributions were "fixed" (i.e., embodied in a record or audio tape) by or under her authority (i.e., with her authorization or permission); (3) That her vocal contributions to each of the sound recordings were more than merely minimal relative to those of the other individual authors of the sound recordings, namely, Abdul and the producers; and, (4) That she and the producers intended that their respective contributions, along with Abdul's, be merged, combined or absorbed into an integrated work at the time each of the sound recordings was created . In determining whether Marine has established that her vocal contributions to the sound recordings were sufficient to qualify her as a joint author, or, on the other hand, as Virgin contends, are only "de minimus," you are to assess the relative contribution of Marine's vocals, as compared to the contribution of other vocalists. You need not decide the issue of joint authorship if you find that Marine was an employee of Virgin,or others who assigned their interests to Virgin, in accordance with the earlier instruction. INSTRUCTION NO. 60 [Joint Author's Right to an Accounting] Each co-owner of a copyright has a right to exploit the work freely, independently of the other owners. However, each joint author also has an obligation to account to his or her co-owners for their share of any income derived from their joint work. Unless there is an express agreement signed by the authors of a joint work to apportion income from the work, it is divided equally among the authors, even if their contributions to the joint work were not equal. In addition, if you find that Abdul and/or the producers assigned or sold their copyright interests in the sound recordings to Virgin, then Virgin is obligated to account to Marine for her share, if any, of any income earned from the exploitation of the sound recording copyrights, commencing on the date Virgin acquired its interest in the copyrights. 91. Jury's Recollection Controls. If any reference by the Court or by counsel to matters of evidence does not coincide with your own recollection, it is your recollection which should control during your deliberations. 92. Individual Opinion. The verdict must represent the considered judgment of each juror and each juror must agree to it. In other words, your verdict must be unanimous. It is your duty to consult with one another, and to deliberate with a view to reaching an agreement, if you can do so without violence to individual judgment. Each of you must decide the case for yourself, but you should do so only after you have considered all of the evidence, discussed it fully with the other jurors and listened to the views of your fellow jurors. In the course of your deliberations, do not hesitate to reexamine your own views, and change your opinion, if the discussion convinces you that you should. But do not surrender your honest conviction as to the weight or effect of evidence or come to a decision simply because other jurors think it is right or simply to reach a verdict. Remember that you are not partisans. You are the impartial judges of the facts. Your sole interest is to ascertain the truth from the evidence in the case. 93. Communications Between Court and Jury. If it becomes necessary to communicate with the Court, you may send a note by a bailiff, signed by any member of the jury. You should never attempt to communicate by any means other than a signed writing. The Court will communicate with you on any matter concerning the case only in writing, or here in open court. You will note from the oath about to be taken by the bailiffs that they are forbidden to communicate with any member of the jury on any subject touching the merits of the case. You are never to reveal -- not even to the Court -- how the jury stands, numerically or otherwise, [on any question submitted to you] until after you have reached your verdict. 94. Verdict - Jury's Responsibility. It is proper to add the caution that nothing said in these instructions - nothing in any form of verdict prepared for your convenience - is to suggest or convey in any way or manner any intimation as to what verdict I think you should find. What the verdict shall be is sole and exclusive duty and responsibility of the jury. 95. Foreperson; Returning Verdict. Upon retiring to the Jury Room, you will select one of your number to act as your foreperson. That person will preside over your deliberations, and will speak for you in Court. A form of verdict has been prepared for your use. This form will be sent into the Jury Room, at which time you will commence your deliberations. When you have reached your verdict, you will have your foreperson fill in, date and sign the form to state the verdict upon which you unanimously agree, and then return with it to the courtroom.