USCA1 Opinion
UNITED STATES COURT OF APPEALS
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
FOR THE FIRST CIRCUIT
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No. 96-2192
MARTHA EDWARDS,
Plaintiff, Appellee,
v.
RED FARM STUDIO CO.,
Defendant, Appellant.
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APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
[Hon. Ernest C. Torres, U.S. District Judge]
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Before
Lynch, Circuit Judge,
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Aldrich and Bownes, Senior Circuit Judges.
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John D. Deacon, Jr. for appellant.
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Michael T. Eskey with whom Lauren E. Jones and Jones Associates
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were on brief for appellee.
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March 28, 1997
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ALDRICH, Senior Circuit Judge. This is an appeal
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by Red Farm Studio Co., a successful defendant in a copyright
infringement case, from the court's denial of attorney's
fees. Concededly, fees are discretionary, the statute
reading 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. The court did award defendant partial
costs.
Defendant has assumed a heavy burden, but not
without justification. We reverse.
A nationwide difference of views on this subject
led to the case of Fogerty v. Fantasy, Inc., 510 U.S. 517,
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534 (1994), where the Court rejected the so-called "dual"
standard rule. "[P]revailing plaintiffs [were] generally
awarded attorney's fees as a matter of course, while
prevailing defendants must show that the original suit was
frivolous or brought in bad faith." 510 U.S. at pp. 520-21.
Rather, defendants are entitled to consideration "evenhandly"
with plaintiffs.
The Court particularly criticized Breffort v. The I
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Had a Ball Co., 271 F. Supp. 623 (S.D.N.Y. 1967), saying,
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That court concluded that "the
considerations prompting an award of fees
to a successful plaintiff must of
necessity differ from those determining
whether a prevailing defendant is
entitled to such an award." Breffort,
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271 F. Supp., at 627. As support, the
court stated: "The purpose of an award
of counsel fees to a plaintiff is to
deter copyright infringement. . . . In
the case of a prevailing defendant,
however, prevention of infringement is
obviously not a factor; and if an award
is to be made at all, it represents a
penalty imposed upon the plaintiff for
institution of a baseless, frivolous, or
unreasonable suit, or one instituted in
bad faith." Ibid. As we have already
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explained, supra, at 527, such is too
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narrow a view of the purposes of the
Copyright Act because it fails to
adequately consider the important role
played by copyright defendants.
510 U.S. at 532 n.18.
The district court ruling that Fogerty found
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improper was that the defendant could not recover fees
because it had not "demonstrated that the action was
frivolous or was instituted and prosecuted in bad faith."
Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1532 (9th Cir.
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1993). The Supreme Court condensed this to "frivolous or
brought in bad faith."
In the case at bar1 there were three pertinent
court proceedings. On November 16, 1995, the court delivered
an oral opinion denying plaintiff Martha Edwards' claims of
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1. The plaintiff also brought claims for breach of contract,
violations of the Lanham Act and unfair competition. None of
these claims concerns us here.
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copyright infringement on six out of eight works.2 On
September 9, 1996, it conducted a hearing on cross motions
for attorneys' fees and sanctions. Except for defendant's
stating that it was cited in its memorandum, there was no
mention of Fogerty; both counsel argued exclusively on the
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question of unreasonableness. The court reserved decision.
On September 18, it delivered an oral decision on copyright
fees, Lanham Act fees, and Fed. R. Civ. P. 11 sanctions.
On copyright, our only issue, the court gave
reasonableness little attention. It said,
The Supreme Court in the Fogerty
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case identified some of the factors that
the Court ought to consider in
determining whether to exercise its
discretion and award counsel fees. Those
[sic], basically, there are two factors
that Fogerty identified. One is whether
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the claim could be characterized as
frivolous and second, what the
Plaintiff's motive was, whether the claim
was brought in bad faith.
This seems singular emphasis, since Fogerty's point was that
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these extremes were no longer the sole factors to be
considered. 510 U.S. at 534 n.19.3 The court proceeded,
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2. Defendant, with apologies, conceded an inadvertence on
the other two. The court noted that "those claims turned out
to be a pittance."
3. The Court listed non-exclusive factors to be considered
by courts in making awards of attorney's fees including,
[F]rivolousness, motivation,
objective unreasonableness (both in the
factual and legal components of the case)
and the need in particular circumstances
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Here the Defendant relies on the
twenty year course of dealing between the
parties to establish that the Defendant
acted properly and that the Plaintiff
acted unreasonably and/or in bad faith in
bringing the copyright claims.
The district court then described plaintiff's
asserted justification for bringing suit, namely,
ambiguities. Ambiguities did not win the case, but they
defeated frivolousness and bad faith.
So in light of those things,
although [I] found for the Defendant for
a variety of reasons, I cannot
characterize the Plaintiff's copyright
claims as being frivolous or brought in
bad faith.
Therefore, I will not award any
attorney's fees to the Defendant for the
copyright claims.
Faced with this positive language, plaintiff urges
us to interpret liberally, arguing that,
Viewed in its proper context, the
record elsewhere additionally reveals
that while the court may have principally
articulated its conclusions at the moment
of its decision in terms of
frivolousness, it used that term
interchangeably with objective
unreasonableness.
The "elsewhere," except in the earlier hearing on
September 9, is not conspicuous. Plaintiff would have been
more accurate had she said that the court read
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to advance considerations of compensation
and deterrence.
510 U.S. at 534 n.19 (citations omitted).
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unreasonableness in terms of frivolousness.4 But manifestly
Fogerty did not reject the dual rule in order to add a clone.
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We say this particularly because the court held
that an obligation for fees was not sparked by plaintiff's
unilaterally rejecting a practice between the parties, as
artist and publisher, that plaintiff had accepted for two
decades; the more especially when her rejection was based on
ambiguities which, in its decision denying liability, the
court had said she could not rely on because it was she who
had created them. This, it seems to us, was inescapably
highly unreasonable, if not frivolous. The court overlooked
not only the tenor of the Fogerty opinion, but its above-
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quoted footnote recognizing "the important role played by
copyright defendants," -- preventing copyright owners from
restricting rightful publications. It used too strict a
requirement, acknowledged, and then disregarded,
unreasonableness, and reached a wrong result.
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4. For good measure we note the court's repetition of this
equivalency when considering plaintiff's obligation for fees
for the Lanham Act claims (which the court granted, plaintiff
having introduced no evidence),
The factors to be considered are
similar to those applicable under the
Copyright Act whether the claims were
frivolous or brought in bad faith. What
it boils down to is whether the Plaintiff
acted reasonably in bringing these
claims.
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Ordinarily we would now remand for defendant to
start over. However, plaintiff's claim was so poor that we
consider it would be an abuse of discretion not to award
fees; the only question should be the amount. We reverse and
remand for that purpose, cf. Diamond Star Bldg. Corp. v.
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Freed, 30 F.2d 503, 506 (4th Cir. 1994), to the original
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judge.
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