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How to claim attorney fees in Copyright Cases in the 9th Circuit (California)

Posted by Steve Vondran | Apr 20, 2020 | 0 Comments

Attorney Steve® - Copyright Essentials - Attorney Fee Awards to the "Prevailing Party"

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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 , 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 , 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.

Other Factors 

Here are some other federal court cases that address the factors courts consider in deciding whether or not to award attorney fees to a prevailing party in a Copyright infringement case:


-against- OPINION AND ORDER ANTHONY SANTOS, et al., Defendants.

Defendants move for an award of attorneys' fees and costs. They invoke section 505 of the Copyright Act that permits the Court to award to “the prevailing party” their costs of suit, including attorneys' fees. 17 U.S.C. § 505.

“[T]he award of attorney's fees is within the sound discretion of the court.” N.A.S. Import, Corp. v. Chenson Enters., Inc., 968 F.2d 250, 253 (2d Cir.1992). “[N]o precise rule or formula” governs the determination of when such an award should be granted. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (quoting Hensley v. Eckerhart, 461 U.S. 424, 436–437 (1983)). Relevant considerations include “frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.” Id. at 534 n. 19 (quoting Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)).

The Court cannot say that the plaintiff's claims are objectively unreasonable or frivolous. The Court can discern no extraneous motive for the litigation; the Complaint simply alleges copyright infringement. In terms of considerations of compensation and deterrence, there was no bad litigation conduct or untoward behavior that requires deterrence. The Court recognizes that the mere assertion of an unmeritorious claim may alone require compensation and deterrence but does not consider this to be such a case. Plaintiff felt aggrieved because, among other things, the two songs had the same title and then sought a judicial resolution of the question. This action never proceeded beyond the motion to dismiss stage. Based upon a review of the entirety of the record, defendants' motion for attorneys' fees is denied.

CONCLUSION Plaintiffs' motion for reconsideration or, alternatively, to amend his complaint, is DENIED. Defendants' motion for attorneys' fees, is DENIED

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Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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