Copyright Law Blog: Exclusive Rights

Category Archives: Attorneys’ Fees

Attorneys’ fees evaluations in unpublished decisions

Shourin Sen - 23 April 2010 – 9:00 am

Filed under Attorneys' Fees, Useful Article

Lanard Toys, Ltd. v. Novelty, Inc. (9th Cir. 2010) (unpublished)

The Ninth Circuit recently affirmed a jury decision finding that, among other things, a slingshot was not a noncopyrightable useful article. (H/t Raymond Dowd.) I thought I would briefly address the Circuit’s attorneys’ fees analysis since fees are apparently the topic of the week.

After determining the appropriate defendants to access attorneys’ fees against, the Circuit wrote one sentence on whether the District Court’s granting of fees was appropriate: “An award of attorneys’ fees on appeal is appropriate in this case pursuant to 17 U.S.C. 505, to further the purposes of the Copyright Act — i.e, to protect copyrights and deter infringement.”

If I’m allowed to be nit-picky about an unpublished memorandum issued by an overburdened Circuit, the Copyright Act’s directive is to Promote the Progess of Science. Graham v. John Deere Co., 383 U.S. 1 (1966) (adopting Richard Crosby De Wolf‘s disjunctive reading of the Progress Clause.) The deterrence of infringement is a means to an end, not an end in and of itself. The Supreme Court has noted that attorneys’ fees should be awarded, at the court’s discretion, to encourage “meritous” infringement claims, and to encourage clearly demarcated boundaries of the Copyright Act. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (reversing the Ninth Circuit and finding that a prevailing defendant cannot be held to a more stringent standard than a prevailing plaintiff in an attorneys’ fee evaluation under the Copyright Act.)

This begs a pair of question: If one of the purposes of awarding attorneys’ fees is to encourage clearly demarcated boundaries, are parties being denied neutral application of the Copyright Act when a Circuit elects to issue an unpublished opinion. How can litigants be rewarded for assisting in the demarcation of boundaries when a Circuit elects to issue an unpublished opinion?

Ninth Circuit overturns 68 year old precedent defining prevailing party under the Copyright Act

Shourin Sen - 2 July 2009 – 9:00 am

Filed under Attorneys' Fees

Cadkin v. Loose, 2009 WL 1813263 (9th Cir. 2009).

Plaintiff brought a complaint against a Defendant for, inter alia, copyright infringement. After extensive settlement discussions, an amended complaint, and a denied motion to remand, the Defendant moved to dismiss the complaint without leave to amend. The Plaintiff opposed the motion and lodged notice of voluntary dismissal of its claim under FRCP 41(a)(2). The Central District of California granted voluntary dismissal.

17 U.S.C. 505 of the Copyright Act states that a court may award reasonable attorneys’ fees to the “prevailing party.” The district court found that the Defendant was a prevailing party even though the complaint was dismissed without prejudice and the Plaintiff was free to refile. The Court relied on the Ninth Circuit’s World War II era precedence, Corcoran v. Columbia Broadcasting System, Inc., 121 F.2d 575, 576 (9th Cir.1941).

On appeal, the Ninth Circuit found (Fletcher, Gould, Fisher writing) that the sixty-eight year old case was no longer good law. The Circuit found that for a party to be prevailing, there must be a “material alteration of the legal relationship of the parties.”:

The Supreme Court, in the context of the Fair Housing Amendments Act (FHAA), has since held prevailing party status turns on whether there has been a “material alteration of the legal relationship of the parties,” Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 604, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001) (internal quotation marks omitted), and we have held dismissal without prejudice does not alter the legal relationship of parties for the purposes of entitlement to attorney’s fees under a comparable fee shifting statute, see Oscar v. Alaska Dep’t of Educ. & Early Dev., 541 F.3d 978, 981 (9th Cir.2008).

We conclude Corcoran is clearly irreconcilable with Buckhannon and no longer good law. We therefore overrule Corcoran and hold Buckhannon’s material alteration test applies to § 505 of the Copyright Act. See Miller v. Gammie, 335 F.3d 889, 893 (9th Cir.2003) (en banc) (holding thee-judge panel can reject prior panel opinion that is “clearly irreconcilable” with intervening Supreme Court authority). Because the plaintiffs in this lawsuit remained free to refile their copyright claims against the defendants in federal court following their voluntary dismissal of the complaint, we hold the defendants are not prevailing parties and thus not entitled to the attorney’s fees the district court awarded them.

Copyright registration as evidence that a suit isn’t objectively unreasonable

Shourin Sen - 12 May 2009 – 9:00 am

Filed under Attorneys' Fees

Utopia Provider Systems, Inc. v. Pro-Med Clinical Systems, L.L.C., 2009 WL 1210998 (S.D. Fla. 2009)

On May 1, Chief Judge William J. Zloch of the Southern District of Florida issued a final judgment on attorneys’ fees in Utopia Provider Systems. We discussed this case a couple of months ago. Utopia brought suit alleging infringement of a series of medical charts. The Court found that the charts didn’t merit exclusive rights due to the merger doctrine and a lack of originality. The Court’s analysis in the judgment on attorneys’ fees is relatively straight forward. Towards the end of the analysis, however, the Court made the following observation on registration:

Moreover, the copyright claim that Plaintiff was suing over had the benefit of a facially valid copyright registration. This registration was, of course, issued by the one body that had the authority to issue the registration and the one body, other than the Court, that is considered expert in this area of the law-the United States Copyright Office. Though the Court invalidated the copyright (a decision that remains pending on appeal), Plaintiff’s reliance on its registration was not frivolous or unreasonable.