Attorneys' Fees Awarded Under Copyright Act Do Not Lower More Restrictive Standard For Fees Awarded Under Lanham Act

Newborn v. Yahoo! Inc. (D.D.C. May 23, 2006)

(Note: This summary only addresses issues of copyright law present in this case. The court's opinion discussed other areas of law, but the summary below generally does not address those concerns unless necessary.)

Defendants brought a motion for attorney’s fees and costs after the dismissal of the plaintiff’s complaint. Plaintiff opposed the motion, arguing that “he ‘made numerous attempts to resolve this matter outside of the Court,’ he ‘reasonably believed that he had met the requirement’ for filing a Copyright Act claim, and he filed the action in ‘good faith.’ The court rejected the plaintiff’s arguments and awarded attorney’s fees and costs pursuant to 17 U.S.C. § 505, but did not provide such attorneys' fees and costs related to the dismissal of the plaintiff's Lanham Act claim.

This Court's prior opinion provides ample support for its discretionary decision to award reasonable attorney's fees and costs to the defendants under Section 505. For example, as this Court noted about the plaintiff's amended complaint, “[r]ather than providing a short plain statement of the basis of the claim, the complaint is riddled with vague, confusing, and contradictory statements making deciphering the basis for the plaintiff's Copyright Act claim a hopeless endeavor.” The Court then went on to identify the specific reasons why the plaintiff's complaint failed to state a claim upon which relief could be granted under the Copyright Act. First, the Court addressed the plaintiff's failure to allege any direct copyright infringement and then discussed his failure to alternatively demonstrate “contributory copyright infringement” by the defendants. A brief review of the Court's analysis demonstrates the frivolous and objectively unreasonable nature of the plaintiff's amended complaint.

The Court noted several ways in which the plaintiff failed to state a claim of direct copyright infringement. First, it was “virtually impossible to determine what materials ha[d] allegedly been infringed.” Second, to the extent the plaintiff's complaint alleged infringement of certain items, the allegations were “clearly contradictory to other statements in both the complaint and the plaintiff's [other] pleadings.” Third, the Court rejected the plaintiff's reliance on his correspondence with the defendants as having been sufficient to identify the allegedly infringed materials, noting that the plaintiff's “vague statements [were] simply insufficient to put the defendants on notice of the claims against them” and that “it is not the defendants' burden to wade through various correspondence between the parties to determine which claims the plaintiff is asserting.” Fourth, even assuming that the plaintiff's reliance on his correspondence with the defendants was somehow valid, the Court concluded that there were “simply no allegations” that the documents allegedly protected under the Copyright Act were even copyrighted. This, according to the Court, was “fatal to the plaintiff's claims.”

Extending this argument that conceivably had been raised by the plaintiff, the Court suggested it was “quite possible that the plaintiff assumed that if he owned the copyright for one item, this Court would also have jurisdiction to hear his Copyright Act challenges regarding other items.” However, the Court concluded that if this was the plaintiff's position, it was “patently frivolous.”

The Court then went on to note that “the plaintiff's complaint also fails to allege any facts to support a conclusion that the defendants substantially participated in the infringing activities.” The Court described the complaint as containing only “cryptic suggestions” and “brief, conclusory statements, which are accompanied by no factual support.” For this and the above reasons, the Court ultimately determined that the plaintiff “failed to state a cognizable claim under the Copyright Act.”

As described above, this Court's assessment of the plaintiff's complaint reveals numerous factual and legal deficiencies concerning the essential elements of his Copyright Act claim. These deficiencies show that the plaintiff's complaint was both frivolous and objectively unreasonable and, therefore, that an award of reasonable attorney's fees and costs to the defendants is appropriate under 17 U.S.C. § 505. While the plaintiff contends that his complaint was not frivolous or objectively unreasonable and that he initiated this action in good faith, his arguments are refuted by the deficiencies identified in this Court's prior opinion. Therefore, the Court concludes that an award of reasonable attorney's fees and costs is appropriate under the Copyright Act.

The district court did not award attorneys’ fees and costs for the dismissal of the related Lanham Act claim brought by the plaintiff, as the award of fees in Lanham disputes is held to a higher standard than under copyright law. In determining damages, the court concluded that attorneys’ fees and costs awarded pursuant to 17 U.S.C. § 505 could not include attorneys’ fees that fail to meet the more restrictive standard set under the Lanham Act:

[T]he defendants do not cite, and this Court cannot find, any case holding that where a party prevails on a claim for attorney's fees under the Copyright Act but fails to meet the more restrictive attorney's fees standard of the Lanham Act, the party is nevertheless entitled to fees associated with their defense of the Lanham Act claim. To the contrary, multiple other Circuits have suggested that it is appropriate, when granting attorney's fees under the Copyright Act and denying attorney's fees under the Lanham Act, to “separately determine the amount of fees attributable to copyright and trademark claims” and award fees only for work performed in defense of the Copyright Act claim.

Holding: The court awarded attorneys’ fees and costs only in so far as they relate to defense of the copyright infringement claims brought by the plaintiff.