2004 | Cited 0 times | D. Maine | March 4, 2004


The defendant, Scotia Prince Cruises Limited, seeks an award ofattorney fees pursuant to 17 U.S.C. § 505 after the entry of summaryjudgment in its favor on all counts of the plaintiff's complaint. Theplaintiff opposes the request, contending that the great majority ofcounsel's time in this case was directed at matters other than hiscopyright claim, the only basis for an award of fees. I recommend thatthe court grant the motion in part.

The complaint asserted claims of copyright infringement, breach ofcontract, unfair trade practices in violation of state and federal lawand deceptive trade practices in violation of state law. Complaint(Docket No. 1) at 3-8. The statute invoked by the defendant here providesremedies for copyright infringement.

In any civil action under this tide, 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 hereof. 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.17 U.S.C. § 505. There is no question that the defendant is theprevailing party in this case.Page 2

The Supreme Court had noted with approval "several nonexclusivefactors" that courts should consider in making awards of attorney feesunder the Copyright Act, including "frivolousness, motivation, objectiveunreasonableness (both in the factual and in the legal components of thecase) and the need in particular circumstances to advance considerationsof compensation and deterrence." Fogerty v. Fantasy, Inc.,510 U.S. 517, 534 n.19 (1994).

The defendant seeks $24,903.07 in attorney fees, apparently the totalamount incurred in its defense of all of the claims in this action.Defendant's Motion for Attorney's Fees, etc. ("Motion") (Docket No. 27)at 1 & Affidavit of Leonard W. Langer in Support of Defendant'sRequest for Attorneys [sic] Fees (Docket No. 28) ¶ 3. It contendsthat the plaintiff's copyright claim was objectively unreasonable,frivolous and brought with vindictive intent, and that an award ofattorney fees will advance considerations of compensation and deterrenceand serve the purpose of the Copyright Act. Motion at 2-6. It alsoasserts that the copyright claim was so entwined with the plaintiff'sother claims that the fee award should not be reduced in recognition ofthe fact that section 505 provides a remedy only for the copyright claim.Id. at 7.

The plaintiff responds that this case "was principally a state lawaction" and that the time spent by his counsel on the copyright claim was"de minimis". Plaintiff's Objection to Defendant's Motion forAttorney's Fees ("Objection") (Docket No. 30) at 1-2. He points out thatonly one entry in the detailed time sheets attached to the LangerAffidavit refers directly to the copyright claim. Id. at 1. Hecontends that the court "must consider the `chilling effect' such anaward would have on individuals and small companies advancing theirreasonable claims against large corporations." Id. at 5.

The plaintiff's copyright claim in this case was not necessarilyfrivolous. A claim could possibly have been asserted based on thepleadings that would not have been totally lacking in merit. Nor is theclaim appropriately characterized as "de minimis" consideringthe time and effort devoted to it by both parties.Page 3However, as the plaintiff presented the claim after the defendant filedits motion for summary judgment, the claim was objectively unreasonable,for the reasons set out in my recommended decision on the motion forsummary judgment. Recommended Decision on Defendant's Motion for SummaryJudgment (Docket No. 24) at 6-8. I find the defendant's profferedevidence of improper motivation, Motion at 5, unconvincing. Given theapparent relative economic positions of the parties, I do not findcompensation to be a compelling factor. There has been no showing thatthe plaintiff is likely to bring such claims again, so deterrence is nota factor with respect to the plaintiff, and I conclude that, while amodest deterrent effect on others may result from the publication of thisrecommended decision, deterrence alone would not justify the impositionof attorney fees in this case. The defendant has made no showing that thepurposes of the Copyright Act have been served by its victory in thiscase in any particular way; no boundary of copyright law was demarcatedin the recommended decision on the summary judgment motion. SeeFogarty, 510 U.S. at 527.

On balance, I conclude that some award of attorney fees is appropriatein this case. Contrary to the defendant's position, Reply Memorandum inSupport of Defendant's Motion for Attorney's Fees ("Reply") (Docket No.33) at 5-6, the plaintiff's state-law claims of unfair trade practicesand deceptive practices were not "virtually indistinguishable" from thecopyright claim. Summary judgment was recommended on those claims on verydistinct grounds. Recommended Decision at 11-14. The plaintiff's contractclaim, which presented the closest question, was also clearly distinctfrom the copyright claim. Id. at 9-11. While all of the claimsdid arise from "a common core of facts," Reply at 5, see Hensley v.Eckerhart, 461 U.S. 424, 435 (1983), the same could be said of theclaims asserted in many, if not most, civil complaints. That fact aloneis not sufficient to establish that the claims presented with thecopyright claim were so intertwined that it not only is "impossible toparse out hours reasonably expended for each," Motion at 7, but that anequal amount of time would have been spent on the case by defense counselif thePage 4copyright claim had not been present. The plaintiff has notobjected to the number of hours claimed by the defendant nor the hourlyrates charged by its counsel. Given the professed inability of defensecounsel to show separately the amount of time devoted to the copyrightclaim, the objective unreasonableness of that claim as presented, thedeterrent value of an award of attorney fees, see generally Matthewsv. Freedman, 157 F.3d 25, 29 (1st Cir. 1998), and "the significanceof the overall relief obtained . . . in relation to the hours reasonablyexpended on the litigation," Hensley, 461 U.S. at 435, Irecommend that the court award the defendants $12,500 in attorney fees,approximately half the amount requested.


A party may file objections to those specified portions of amagistrate judge's report or proposed findings or recommended decisionsentered pursuant to 28 U.S.C. § 636(b)(1)(B) for which denovo review by the district court is sought, together with asupporting memorandum and request for oral argument before the districtjudge, if any is sought, within ten (10) days after being served with acopy thereof. A responsive memorandum and any request for oral argumentbefore the district judge shall be filed within ten (10) days after thefiling of the objection.

Failure to file a timely objection shall constitute a waiver ofthe right to de novo review by the district courtand to appeal the district court's order.

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