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Warren Publishing Co. v. Spurlock

March 3, 2010

WARREN PUBLISHING COMPANY AND JAMES WARREN, PLAINTIFFS,
v.
J. DAVID SPURLOCK D/B/A VANGUARD PRODUCTIONS, DEFENDANT.



The opinion of the court was delivered by: Baylson, J.

MEMORANDUM RE: DEFENDANT'S MOTION FOR ATTORNEY FEES

I. Introduction

Plaintiffs James Warren and the Warren Publishing Company, of which James Warren is president and sole shareholder (collectively, "Plaintiffs"), commenced this copyright infringement action against Defendant J. David Spurlock, sole proprietor of publishing company Vanguard Productions. On August 4, 2009, the Court granted summary judgment in favor of Spurlock on the basis of fair use. Warren Publ'g Co. v. Spurlock, 645 F. Supp. 2d 402, 405 (E.D. Pa. 2009). Presently pending before the Court is Spurlock's Motion for Attorney's fees Pursuant to 17 U.S.C. § 505. (Docket No. 80.) For the reasons that follow, the Court will grant in part and deny in part the Motion, entitling Spurlock to a partial award of attorney's fees.

II. Factual and Procedural Background

The Court's Memorandum and Order granting Spurlock summary judgment detailed the facts and procedural background relating to the underlying action. See 645 F. Supp. 2d at 405-10. The background relevant to the pending Motion is briefly summarized below.

Beginning in 1958, Plaintiffs printed and published several magazines and comic books in the horror and monster film genre, including Famous Monsters of Filmland ("Famous Monsters"), Creepy, and Eerie, and commissioned several artists, including Basil Gogos ("Gogos") to design cover art for the magazines. Id. at 405-06. In 2006, Spurlock began selling a book entitled "Famous Monster Movie Art of Basil Gogos" ("Gogos Book"), which provided a career retrospective of Gogos, and included fourteen reproductions of original Gogos art used by Plaintiffs as background illustrations for their magazines, and ten exact reproductions of Plaintiffs' magazine covers that used Gogos's art and added text. Id.

On July 21, 2009, Plaintiffs commenced this action. (Docket No. 1.) Plaintiffs' Amended Complaint brought twenty-four copyright infringement claims pursuant to the Copyright Act of 1909, 17 U.S.C. §§ 1 et seq., and a Pennsylvania state law claim of unfair competition, alleging, inter alia, that the Gogos Book's title and copied images from, misappropriated the goodwill and valuable recognition developed by, and improperly suggested to consumers that the book is related to or endorsed by, Plaintiffs' Famous Monsters magazine. (Docket No. 29.) Spurlock's primary defense was that even assuming that Plaintiffs established a prima facie case of copyright infringement, the illustrations in the Gogos Book are entitled to the defense of fair use. Spurlock filed a Motion for Summary Judgment on all of Plaintiffs' claims. (Docket No. 51.)

On August 4, 2009, the Court granted summary judgment in favor of Spurlock.*fn1 Warren, 645 F. Supp. 2d at 405. With respect to Spurlock's affirmative defense of fair use, the Court concluded that the factors provided by 17 U.S.C. § 107, "considered as a whole, weigh in favor of Spurlock," in large part because "the Gogos Book is inherently biographical," "render[ing] it . . . fundamentally transformative in nature." Id. at 428. The Court determined that this was "coupled with the fact that Spurlock utilized such a quantitatively and qualitatively minor portion of the magazines." Id. at 428. Accordingly, the Court dismissed Plaintiffs' copyright infringement claims. Id. The Court also concluded that Plaintiffs "abandoned their right to the Famous Monsters mark," and thus dismissed the unfair competition claim. Id. at 443.

On August 19, 2009, Spurlock filed the pending Motion for Attorney's Fees Pursuant to 17 U.S.C. § 505, requesting a total of $322,502.76*fn2 -$280,479.39 in attorney's fees and $42,023.27 in expenses. (Docket No. 80, at 29.) The Court heard oral argument on the Motion on February 5, 2010. (Docket No. 91.)

III. Legal Standard

Because the parties disagree as to the legal standard respecting attorney's fees, and in particular, how frequently such fees are awarded to prevailing defendants in fair use copyright infringement cases, the Court will detail the parties' contentions, before articulating the governing standard.

A. The Parties' Contentions

Spurlock contends that unlike patent or trademark cases, in which attorney's fees are awarded only in "exceptional cases," courts "routinely" exercise their discretion to grant attorney's fees to the prevailing party in copyright infringement cases and do not require a showing of bad faith. (Att'y Fees Mot. 2-3.) Spurlock urges the Court to "fairly . . . constru[e]" an award of attorney's fees "as the rule, rather than the exception," as circuits other than the Third Circuits have purportedly recognized. (Reply 2.)

Plaintiffs, however, contend that "an award of attorney's fees" to a prevailing defendant "is neither the rule nor presumed" (Resp. 7 n.7), and that courts frequently "den[y] motions for attorney's fees to defendants [who] prevailed on fair use" because "fair use cases typically involve close and complex questions of fact and law," (Resp. 8 n.8, 11).

B. Analysis

The Copyright Act provides that "the court in its discretion may . . . . award a reasonable attorney's fee to the prevailing party as part of the costs." 17 U.S.C. § 505. In Fogerty v. Fantasy, 510 U.S. 517, 536 (1994), the Supreme Court directed courts to look to the following list of "nonexclusive factors that courts should consider in making awards of attorney's fees" which the Third Circuit enunciated in Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1986): "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." Fogerty, 510 U.S. at 535 n.19. Fogerty explained that "such factors may be used to guide courts' discretion, so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner." Id. at 535 n. 19. In adopting the "evenhanded" approach, the Fogerty Court rejected the "dual approach" of requiring a prevailing defendant to show either bad faith or frivolousness as "too narrow a view of the purposes of the Copyright Act because it fails to adequately consider the important role played by copyright defendants." Id. at 532 n. 18.

Fogerty determined that awarding attorney's fees to defendants met the purposes of the Copyright Act, which the Court summarized as follows:

"[T]he primary objective of copyright is not to reward the labor of authors, but '[t]o promote the Progress of Science and useful Arts.' To this end, copyright assures authors the right to promote original expression, but encourages others to build freely upon the ideas and information conveyed by a work."

Id. at 527 (quoting Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 349-50 (1991)). In rejecting the argument that discouraging infringement is the "only goal" of the Copyright Act, Fogerty stated that [b]ecause copyright law ultimately serves the purpose of enriching the general public through access to creative works, it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible. To that end, defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement. . . . Thus a successful defense of a copyright infringement action may further the policies of the Copyright Act every bit as much as a successful prosecution of an infringement claim by the holder of a copyright.

Id.

Spurlock, thus, need not establish either bad faith on the part of Plaintiffs, see Lieb, 788 F.2d at 156, or "exceptional" circumstances in order to be awarded attorney's fees in this copyright infringement action.*fn3 In fact, post-Fogerty, courts have increasingly awarded attorney's fees to prevailing defendants. See Jeffrey Edwards Barnes, Comment, Attorney Fee Awards in Federal Copyright Litigation After Fogerty v. Fantasy: Defendants Are Winning Fees More Often, But the New Standard Still Favors Prevailing Plaintiffs, 47 UCLA L. Rev. 1381, 1390 (2000) (finding that "Fogerty has had a dramatic impact on the frequency that fee awards are granted to prevailing defendants," and that defendant's motions for fees "ballooned" from 16 percent prior to the decision to 61 percent after the decision was issued).

Nonetheless, given that the Court must conduct a case-by-case analysis-guided by factors including those enunciated in Lieb, and the Copyright Act's underlying goals-to determine whether attorney's fees are appropriate, the Court agrees with Plaintiffs that attorney's fees awards for prevailing plaintiffs are by no means "the rule []or presumed" (Resp. 7 n. 7.). This is especially true when a defendant prevails on the basis of the fair use defense, as here, because the defense cannot be resolved by "bright-line rules, for the statute, like the doctrine it recognizes calls for case-by-case analysis," which requires consideration of the four factors listed in section 107 of the Copyright Act,*fn4 as well as "the purposes of copyright." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577-78 (1994).

The Court finds instructive Williamson v. Pearson Educ., Inc., 60 U.S.P.Q. 2d. 1723 (BNA) (S.D.N.Y. 2001), and Leibovitz v. Paramount Pictures Corp., 55 U.S.P.Q. 2d 1598 (BNA) (S.D.N.Y. 2000), two cases denying attorney's fees to defendants who had prevailed at the summary judgment stage on the basis of fair use. Williamson summarily denied the defendants attorney's fees because the plaintiff's claims "were neither frivolous nor objectively unreasonable," 60 U.S.P.Q. 2d at 1732, and Leibovitz because the plaintiff's copyright infringement action was not objectively unreasonable and in light of the "then-relatively new state of fair use law," 55 U.S.P.Q. 2d at 1601. In Williamson and Leibovitz, as in this case, the courts determined that fair use existed, in large part because the defendant's work was "fundamentally transformative in nature," Warren, 645 F. Supp. 2d at 428. See Williamson, 60 U.S.P.Q. 2d at 1727; Leibovitz, 55 U.S.P.Q. 2d at 1600. Both cases, however, denied attorney's fees even though three of the four fair use factors favored the defendant and the fourth factor only slightly disfavored the defendants, Williamson, 60 U.S.P.Q. 2d at 1727-28; Leibovitz, 55 U.S.P.Q. at 1600-01.*fn5 In light of Williamson and Leibovitz, which did not award attorney's fees to prevailing defendants who had stronger fair use defenses than the present case, in which only two of the factors favored Spurlock, 645 F. Supp. at 428, the Court will not presume that Spurlock is entitled to attorney's fees. On the other hand, the Court remains mindful that numerous courts have awarded attorney's fees to prevailing defendants in cases involving fair use.*fn6 The Third Circuit has not yet ruled on this issue, nor has any judge of this Court in recent years.

In order to carry out its duty to conduct a case-specific analysis of whether attorney's fees are warranted, the Court will now examine how the Lieb factors apply to the case at hand.

IV. Discussion

The Court will address in turn each of the Lieb factors affecting whether an attorney's fee award is appropriate: (1) frivolousness and "objective unreasonableness (both in the factual and in the legal components of the case)," (2) Plaintiffs' motivation, and (3) "the need in particular circumstances to advance considerations of compensation and deterrence." Fogerty, 510 U.S. at 535 n. 19 (citing Lieb, 788 F.2d at 156).

A. Frivolousness and Objective Unreasonableness

Frivolousness is defined as "lacking any plausible merit," Matthew Bender & Co. v. West Publ'g Co., 240 F.3d 116, 126 (2d Cir. 2001), "either in law or in fact," Neitzke v. Williams, 490 U.S. 319, 325 (1989). As for objective unreasonableness, courts including the Second Circuit have "accorded substantial weight" to the factor, which is "derive[d] from the Supreme Court's admonition in Fogerty that an award of attorneys' fees must comport with the purposes of the Copyright Act," that being that "parties who advance" "litigation positions [that] define the precise boundaries of copyright law . . . should not be punished by the imposition of fees." Schiffer Books Publ'g, Ltd. v. Chronicle Books, LLC, 76 U.S.P.Q. 2d 1493, 1497 (E.D. Pa. 2005) (Schiller, J.)

Spurlock urges the Court to award him attorney's fees, contending that even though "Fair Use may be a difficult concept in the abstract," this case involved "nothing novel, complex or close." (Reply Br. 9.) Spurlock's counsel then conceded at oral argument that "to be candid with your Honor," he does "not think so strongly that [Plaintiffs' claim] is frivolous." (Oral Arg. 20:7-42, Docket No. 91 (audio file).) Nonetheless, Spurlock avers that Plaintiffs took the following several "factual and legal positions . . . both before and especially during the litigation," that were frivolous and objectively unreasonable: (1) asserting a "baseless" punitive damages claim, (2) replacing that claim with a "disingenuous" Unfair Competition claim, (3) filing suit despite only having phantom ownership of the copyrights being asserted, (4) submitting "half-truths and untruths" to the Court, (5) making largely unsupported arguments that the fair use doctrine does not apply, (6) "stubbornly" ...


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