Attorney Steve® - Copyright Essentials - Attorney Fee Awards to the "Prevailing Party"
A person or entity that wins a case in copyright court can seek to recover their reasonable attorney fees expended in the litigation. This is built into the law. In one case, Starbuzz Tobacco, Inc. v. Gold Star Tobacco Inc. et al, 8-19-cv-00408 (CDCA 2020-04-16, Order) (James V. Selna) the Court discussed this unique feature of federal copyright law:
“In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof.” 17 U.S.C.A. § 505. “Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.” Id. Section 505 of the Copyright Act “grants courts wide latitude to award attorney's fees based on the totality of circumstances in a case.” Kirtsaeng v. John Wiley & Sons, Inc., 136 S.Ct. 1979, 1985 (2016).
The statutory language “clearly connotes discretion,” and eschews any “precise rule or formula” for awarding fees. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994). A district court may not “award[ ] attorney's fees as a matter of course;” rather, a court must make a more particularized, case-by-case assessment. Id. at 533. A court may not treat prevailing plaintiffs and prevailing defendants any differently; defendants should be “encouraged to litigate [meritorious copyright defenses] to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement.” Id. at 527.
To determine whether an award fees is appropriate, the Ninth Circuit uses a list of non-exhaustive factors, including
(1) the degree of success obtained;
(2) the objective unreasonableness or frivolousness of the case;
(3) the motivation behind bringing a copyright infringement claim;
(4) the need in particular circumstances to deter future frivolous copyright actions.
See Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1230 (9th Cir. 2008) (discussing factors); Fantasy, Inc. v. Fogerty, 94 F.3d 553, 556 (9th Cir. 1996) (“Fogerty II ”) (same).
In weighing these factors, Courts must “give substantial weight to the objective reasonableness of the losing party's position.” Kirtsaeng, 136 S. Ct. at 1983.
Who is the “prevailing party”
A “prevailing party” “is one who has been awarded some relief by the court.” To be a prevailing party, “a litigant must meet two criteria to qualify as a prevailing party. First, he must achieve a material alteration of the legal relationship of the parties. Second, that alteration must be judicially sanctioned.” Carbonell v. INS, 429 F.3d 894, 898 (9th Cir. 2005) (internal citation and quotation marks omitted).
The Ninth Circuit affirmed a district court's award of attorneys' fees to a defendant, where, as here, the court dismissed the plaintiff's claim with prejudice and entered a final judgment on the merits. Gold Value Int'l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140, 1150 (9th Cir. 2019) (“Gold Value”). Starbuzz claims that because the terminating sanctions “involve[d] a technical matter that is unrelated to the claims or defenses in this action,” Defendants are not considered a prevailing party. Opp'n at 2. Contrary to the older authorities Starbuzz cites (see Opp'n at 12), “[The Ninth Circuit] ha[s] not held that prevailing on a technical defense necessarily precludes an award of fees . . . .” Gold Value, 925 F.3d at 1150. There is nothing technical about a party's principal frustrating the discovery process.
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