Attorney Steve® Copyright Law Essentials - Fee Shifting in Infringement Matters - Factors to Review
In Plan Pros and Prime Designs, Inc. vs. Dultmeir Homes (architectural infringement case), the Court discussed the factors a Court will consider in a copyright infringement action to determine if they will EXERCISE THEIR DISCRETION and award attorney fees to the prevailing party in the litigation. This could be either the Plaintiff if they were the prevailing party, or a Defendant may recover attorney fees in copyright cases if they prevail. (for example if a fair use defense wins the day).
The Kirtsaeng Case
In Kirtsaeng, the court recognized that the objective reasonableness of the losing side's position is entitled to significant or substantial, but not controlling, weight in accounting for all relevant factors. Id. at 1988-89. The Court explained: As we recognized in Fogerty, § 505 confers broad discretion on district courts and, in deciding whether to fee-shift, they must take into account a range of considerations beyond the reasonableness of litigating positions.
The four, non-exhaustive factors to consider:
(3) objective unreasonableness
(4) the need in particular circumstances to advance considerations of compensation and deterrence
That means in any given case a court may award fees even though the losing party offered reasonable arguments (or, conversely, deny fees even though the losing party made unreasonable ones).
For example, a court may order fee-shifting because of a party's litigation misconduct, whatever the reasonableness of his claims or defenses. See, e.g., Viva Video, Inc. v. Cabrera, 9 Fed.Appx. 77, 80 (C.A.2 2001).
Or a court may do so to deter repeated instances of copyright infringement or overaggressive assertions of copyright claims, again even if the losing position was reasonable in a particular case. See, e.g., Bridgeport Music, Inc. v. WB Music Corp., 520 F.3d 588, 593–595 (C.A.6 2008) (awarding fees against a copyright holder who filed hundreds of suits on an overbroad legal theory, including in a subset of cases in which it was objectively reasonable).
Although objective reasonableness carries significant weight, courts must view all the circumstances of a case on their own terms, in light of the Copyright Act's essential goals. Kirtsaeng, 136 S. Ct. at 1988–89.
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