Berowski v. Fifty–six Hope Rd. Music Ltd. Inc.

767 F.Supp.2d 218

Jürek ZAMOYSKI a/k/a Jerzy Berowski, Plaintiff

v.FIFTY–SIX HOPE ROAD MUSIC LIMITED, INC., et al., Defendants.

Civil Action No. 08–30125–KPN.

United States District Court, D. Massachusetts.

Feb. 4, 2011.

Peter R. Irvine, Law Office of Peter Irvine, Northampton, MA, Paul C. Rapp, The Law Office of Paul C. Rapp, Housatonic, MA, for Plaintiff.Timothy J. Ervin, Scott D. Carman, Gallant & Ervin, LLC, Chelmsford, MA, for Defendants.

MEMORANDUM AND ORDER WITH REGARD TO PLAINTIFFS–IN–COUNTERCLAIM'S MOTION FOR AWARD OF ATTORNEY'S FEES (Document No. 87)

NEIMAN, United States Magistrate Judge.

Pursuant to section 505 of the Copyright Act, 17 U.S.C. § 505, Fifty Six Hope Road Music, Ltd., Zion Rootswear, LLC, and Bob Marley Music, Inc. (“Marley Parties”), as Plaintiffs–in–Counterclaim, seek fees and costs post-trial from Jürek Zamoyski (“Zamoyski”), as Defendant–in–Counterclaim. Zamoyski has not only opposed the Marley Parties' motion but, in turn, has requested the opportunity to submit his own motion for fees should the court allow his motion for judgment notwithstanding the verdict with regard to the Marley Parties' breach of contract claim. Given the fact that the court has denied Zamoyski's post-verdict motion, the court need only address the propriety of awarding the Marley Parties the fees and costs they request. For the reasons which follow, the court will allow the Marley Parties' motion, but in part only.

I. Background

In light of the parties' familiarity with the matter, little by way of background is necessary. Suffice it to say, Zamoyski commenced the instant action for copyright infringement in June of 2008 with regard to designs created by him known as “Rasta Dreads,” “Lion Zion,” and “Kaya Man” (the “Items in Issue”). In response, the Marley Parties asserted counterclaims seeking, in part, a judgment declaring them owners of the copyrights. On June 2, 2010, 718 F.Supp.2d 128 (D.Mass.2010), granting in part the Marley Parties' motion for summary judgment, the court dismissed Zamoyski's claim for copyright infringement as untimely. The case thereafter proceeded to trial in November of 2010 on the Marley Parties' counterclaims for declaratory judgment, breach of contract and violation of Mass. Gen. L. ch. 93A. The parties agreed at the time that the jury's factual findings would determine the Marley Parties' counterclaim for declaratory judgment of copyright ownership, which had otherwise been reserved to the court.

The jury's affirmative answer to the first question on the special verdict form—which asked if the Marley Parties had proven by a preponderance of the evidence that Richard Rogala was Zamoyksi's agent by actual authority when he signed the 1995 License Agreement which transferred ownership of the copyrights in the Items in Issue to the Marley Parties—did in fact result in the entry of a declaratory judgment in favor of the Marley Parties for copyright ownership. The jury's other answers to questions on the special verdict form resulted in a judgment in the Marley Parties' favor on their breach of contract counterclaim but awarded no damages. The court itself issued judgment in Zamoyski's favor on the Marley Parties' chapter 93A counterclaim.

In light of the ensuing judgment, the Marley Parties assert that they were prevailing parties not only with regard to Zamoyski's copyright infringement claim but, as well, on their counterclaim seeking a declaration of copyright ownership. As a result, they seek $157,150 in fees, less a courtesy discount provided in the amount of $2,800, plus $5,878.30 in costs, bringing the total amount sought to $160,228.30.

In opposition, Zamoyski raises a number of arguments, some creative, why no fees ought to be awarded the Marley Parties. If the court is nonetheless inclined to award fees and costs, Zamoyski continues, then the requested amounts should be reduced; in particular, Zamoyski asserts that the Marley Parties ought not be awarded fees for services performed on non-copyright claims. The court notes, however, that Zamoyski does not otherwise challenge the number of hours expended by the Marley Parties' attorneys or contest the hourly rates utilized by them.

II. Standards

In full, section 505 of the Copyright Act provides as follows:

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. 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. This fee-shifting provision is to be applied in an “evenhanded manner” whether the prevailing party was aligned as the plaintiff or the defendant. Fogerty v. Fantasy, Inc., 510 U.S. 517, 525 n. 12, 534, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). In exercising its discretion, a court is to consider such relevant but non-determinative factors as “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, 114 S.Ct. 1023. See also Lotus Dev. Corp. v. Borland Int'l Inc., 140 F.3d 70, 73–74 (1st Cir.1998).

III. Discussion

As an initial matter, the Marley Parties argue that they are entitled to fees because they prevailed in defeating Zamoyski's claim of copyright infringement. See InvesSys, Inc. v. McGraw–Hill Cos., Ltd., 369 F.3d 16, 20 (1st Cir.2004) (“[I]n section 505 Congress aimed to provide a potential incentive to the winner who asserts a successful copyright claim or defends against an unworthy one.”); Cf. Fogerty, 510 U.S. at 527, 114 S.Ct. 1023 (“[D]efendants 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.”). Indeed, the Marley Parties argue that, because they were not entitled to any damages on their successful defense, “the presumption in favor of awarding fees is very strong,” for “without the prospect of such an award, the party might be forced into a nuisance settlement or deterred altogether from enforcing [its] rights.” Assessment Techs. of WI, LLC v. WIREdata, Inc., 361 F.3d 434, 437 (7th Cir.2004). The Marley Parties also assert that they prevailed in a second way, namely, when the court declared them owners of the copyrights at issue. See Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406, 410 (2d Cir.1946) (“As the action arose under the Copyright Act an allowance of attorneys' fees was permissible ... despite the fact that a declaratory judgment was sought.”) (citing Yardley v. Houghton Mifflin Co., 25 F.Supp. 361, 364 (D.N.Y.1938), aff'd, 108 F.2d 28 (2d Cir.1939)).

Zamoyski's counter-arguments are several and, oftentimes, conflated. Aside from asserting that his claims and defenses were reasonable and pursued in good faith, assertions which are addressed below, Zamoyski maintains, somewhat more pointedly, that fees are available under section 505 only when the claim is for infringement and registration requirements are met. See also 17 U.S.C. § 412(2) (“[N]o award of statutory damages or of attorney's fees, as provided by section[ ] ... 505, shall be made for any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”). Since the Marley Parties never registered copyrights for the Items in Issue, Zamoyski argues, there is simply no basis for an award of fees in this matter.

This argument, of course, ignores the obvious import of section 505 that fees and costs “by or against any party” can be awarded in the court's discretion to a prevailing party in “any civil action under this title.” 17 U.S.C. § 505. Moreover, as the case law cited above makes clear, section 505 applies to the defense of a copyright infringement action, as occurred here. Thus, at a minimum, the Marley Parties are free to seek fees for their successful defense of Zamoyski's copyright infringement claim.

Zamoyski also asserts, in a footnote, that fees under the Copyright Act are not available to a prevailing party in an action seeking declaration of copyright ownership, as reflected in the Marley Parties' counterclaim. In essence, Zamoyski argues that the cases upon which the Marley Parties rely, including Shapiro, derive from what he labels an “ambiguous 1938 decision” where a prevailing defendant was awarded “only a single attorneys fee which will cover the dismissal of the complaint [for infringement] and the judgment for the defendant on the counter-claim [for declaration of ownership].” Yardley, 25 F.Supp. at 365. There is no indication, Zamoyski continues, that fees were awarded in Yardley specifically for the declarative counterclaim. See Yardley, 108 F.2d at 30 (concluding broadly that “[t]here was no error in awarding judgment on the counterclaim”). In contrast, Zamoyski asserts, the instant case concerned decisions on a copyright claim and an ownership counterclaim that were reached at separate times.

This argument, too, is unpersuasive. First, the Yardley language quoted by Zamoyski hardly amounts to a considered intention by that court to draw a hard and fast line between the two claims before it. Second, his argument ignores the fact that his claim for copyright infringement not only engendered the Marley Parties' ownership counterclaim but was intertwined with that claim; the temporal gap between the court's summary judgment ruling dismissing Zamoyski's copyright infringement claim and its later declaration of ownership by the Marley Parties is meaningless.

Third, Zamoyski's argument ignores the guidance provided by the First Circuit in InvesSys, Inc. Since Section 505 was ...