Fees and Costs in Copyright Cases: When the Prevailing Defendant Gets More Than Left Alone
Partner, Eckert Seamans Cherin & Mellott, LLC.
A recent decision from the Northern District of California points the way for prevailing defendants to secure attorney's fees in copyright actions. It appears that the standard for award of any fees may be sliding from the need to show the claim was frivolous and brought in bad faith though the need to show the claim were objectively unreasonable, to the ability to show that the successful defense in some manner upholds the principles of the Copyright Act, as by preventing encroachment on the public domain.
Identity Arts v. Best Buy Enterprise Services, Inc., clarifies and may be seen to expand the ability of a defendant to secure an award of fees for the successful defense of a copyright action. The decision also sets out examples of what fees are reasonable in the context of such defense, preclude an award of fees for preparing the fee petition, and recognizes general overhead as a part of reasonable costs.
Ms. Jacobs-Meadway writes: It was for many years commonplace, borne out by experience, that the defendant who prevailed on a copyright action got left alone, while the monetary relief accorded to a prevailing plaintiff could be grossly disproportionate to the damages sustained or profit demonstrably lost by virtue of the infringement. This in spite of the fact that the Copyright Act draws in haec verba no distinction between the parties with respect to the availability of the fee award, except insofar as 17 U.S.C. § 412 precluded a fee award to a plaintiff who failed to file timely its application for registration of copyright.
The Supreme Court’s decision in Fogerty v. Fantasy, 114 S. Ct. 1023 (1994), dispelled the notion that a successful defendant was entitled only to be left alone absent a finding of bad faith prosecution. Nonetheless, in the succeeding years, decisions continued to evidence little diminished hostility to the idea of compensating a defendant put to the expense of defending against an unsuccessful claim, absent a finding that the plaintiff’s claim was frivolous.
The unwillingness to compensate successful defendants may be waning, however, and the decision of the court in Identity Arts v. Best Buy Enterprise Services, Inc., 3:05-cv-04656-PJH (ND Cal. Filed 3/26/08)1 in particular not only signals an even-handed approach, but lays out a roadmap for defendants, and sets up warning signs for plaintiffs. [citation omitted]