F I L E D
                                                                 United States Court of Appeals
                                                                         Tenth Circuit
                       UNITED STATES COURT OF APPEALS
                                                                         APR 2 1999
                             FOR THE TENTH CIRCUIT
                                                                    PATRICK FISHER
                                                                             Clerk

    NATIONAL CORRECTIVE
    TRAINING INSTITUTE, INC., a
    foreign corporation, doing business as
    National Curriculum and Training
    Institute,                                         No. 98-4058
                                                 (D.C. No. 95-CV-1095-C)
                Plaintiff-Counter-                      (D. Utah)
                Defendant-Appellee,

    v.

    GEORGE NELSON, an individual;
    CLIME INTERNATIONAL, INC., a
    Utah corporation; MITCHELL
    VORON, doing business as Positive
    Solutions Associates, also known as
    P.S.I., also known as P.S.A.,

                Defendants-Counter-
                Claimants-Appellants.




                              ORDER AND JUDGMENT       *




Before BALDOCK , BARRETT , and HENRY , Circuit Judges.




*
      This order and judgment is not binding precedent, except under the
doctrines of law of the case, res judicata, and collateral estoppel. The court
generally disfavors the citation of orders and judgments; nevertheless, an order
and judgment may be cited under the terms and conditions of 10th Cir. R. 36.3.
       After examining the briefs and appellate record, this panel has determined

unanimously to grant the parties’ request for a decision on the briefs without oral

argument. See Fed. R. App. P. 34(f); 10th Cir. R. 34.1(G). The case is therefore

ordered submitted without oral argument.

       This appeal is taken from the district court’s denial of attorney’s fees to

defendants-appellants George Nelson, Clime International, Inc. (Clime), and

Mitchell Voron, d/b/a Positive Solutions Associates. The court entered judgment

for defendants, following a bench trial, on plaintiff-appellee National Corrective

Training Institute, Inc. (NCTI)’s copyright infringement action. NCTI did not

appeal the merits of the case. We exercise jurisdiction under 28 U.S.C. § 1291

and affirm.

       We review the district court’s denial of attorney’s fees for abuse of

discretion. See 17 U.S.C. § 505 (court may award reasonable attorney’s fees to

prevailing party); Fogerty v. Fantasy, Inc. , 

, 524 n.11 (1994)

(“[D]istrict courts are to use their discretion in awarding attorney’s fees and costs

to the prevailing party.”). In   Fogerty , the Court rejected the Ninth Circuit’s dual

standard of generally awarding attorney’s fees in infringement suits to prevailing

plaintiffs (while requiring prevailing defendants to show the original suit was

frivolous or brought in bad faith) in favor of an “‘evenhanded’ approach in which


                                            -2-
no distinction is made between prevailing plaintiffs and prevailing defendants.”

See 

534. In addition, the Court rejected arguments for the British

Rule (awarding attorney’s fees to prevailing party as a matter of course, absent

exceptional circumstances). “The automatic awarding of attorney’s fees to the

prevailing party would pretermit the exercise of that discretion [allowed by §

505].” 

       The Fogerty Court agreed with the Third Circuit’s use of several

nonexclusive factors in considering attorney’s fees awards, including

“‘frivolousness, motivation, objective unreasonableness (both in the factual and

the legal components of the case) and the need in particular circumstances to

advance considerations of compensation and deterrence.’            Lieb v. Topstone

Industries, Inc. , 

, 156 (1986).”      

n.19. These

“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.”         

denying

attorney’s fees to defendants, the district court considered the      Fogerty factors.

See Appellant’s App. Vol. III, at 534-35; 539-40.



       The underlying infringement action was commenced by NCTI, seeking

damages and injunctive relief for alleged infringement of NCTI’s copyrights in


                                             -3-
three works--Crossroads Adult Workbook (Crossroads), REAL Colors Personalty

Typing System-Adult Card Set (REAL Colors), and Matrixx.          1
                                                                      The Matrixx claim

was dismissed, by stipulation, at trial.   See Appellants’ App. Vol. III at 516 n.1.

Defendants   2
                 asserted that NCTI did not have valid copyrights in the Crossroads

and REAL Colors or, alternatively, that Nelson is a co-owner of the copyrights

and therefore could not have infringed on his own copyright interests.        See 

       Following a bench trial, the district court entered judgment for defendants,

finding that Nelson was the primary author of the alleged infringed works and

that he had never conveyed or transferred the copyright interests he held in any

works. The court concluded that as to Crossroads, NCTI had failed to establish

by a preponderance of the evidence that Nelson had copied any protected

components of Crossroads (as opposed to Nelson’s own preexisting work) or




1
       Matrixx and Colors are instruments used to assess and teach personality
types or temperaments. See Appellant’s Br. at 2. Crossroads is a cognitive skills
workbook created for incarcerated adult felons for purposes of rehabilitation by
helping them align or realign their behavior with their attitudes and values. See

2
       Nelson is president, sole employee, and owner of Clime. Voron, doing
business as Positive Solutions Associates, is the main distributor of Clime
products. Appellant’s App. Vol. III at 517. Nelson was first an independent
contractor with NCTI, then an employee.     See 

After terminating his
employment with NCTI, Nelson continued his association with NCTI, briefly,
again as an independent contractor.   See 

                                           -4-
work in the public domain.    3
                                  The court further determined that REAL Colors was

a joint work with the result that “authors of a joint work are coowners of

copyright in the work.”     See 17 U.S.C. § 201(a). The court also rejected NCTI’s

claims that if Nelson had any copyright interests in these works, he had given up

the right to rely on those copyright interests, either by waiver or estoppel.     4



       The issue of when Crossroads was created was hotly contested at trial.         See

Appellants’ App. Vol. III at 519-20. The court found by a preponderance of the

evidence that the first version of Crossroads was created while Nelson was an

independent contractor before becoming an employee of NCTI. Although the

parties disagreed about the amount of original content in the Crossroads work, the

Court found that Crossroads “was created almost exclusively from the materials in

Nelson’s specialized [and preexisting] workbooks” and contained very little

original material.   See 

       The court also determined that the other work, REAL Colors, was a

collaborative work created between Nelson and NCTI after Nelson had resigned

his position with NCTI and was once again an independent contractor.            See 

      The court assumed, apparently without deciding, that NCTI held a valid
copyright in Crossroads.
4
       NCTI argued that it had obtained copyrights on these works (as both author
and copyright claimant) and that Nelson had on some occasions signed certain
documents, as director or shareholder of NCTI, which reflected either that Nelson
did not have any right in NCTI’s copyrights or that NCTI held all copyright
interests.

                                             -5-
522. However, there was some dispute as to who did which proportion of the

work and even some testimony (disbelieved by the court) that Nelson was not

involved in the creation of REAL Colors.        See 

       Ultimately, NCTI’s cause of action failed for want of proof.       5
                                                                              NCTI failed

to produce competent evidence demonstrating that its contribution to Crossroads

was “original and distinct from Nelson’s specialized workbooks.”              See 

Nor was it possible to determine how much original material appeared in the

version of Crossroads NCTI claimed had been infringed because that version was

not produced at trial. Because NCTI had failed to offer competent evidence under

the abstraction-filtration comparison test,    6
                                                    the court determined there was a lack


5
       In order to prove copyright infringement, a plaintiff must show both “‘(1)
ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original.’”  See Autoskill Inc. v. National Educ. Support Sys., Inc.  ,

, 1487 (10th Cir. 1993) (quoting     Feist Publications, Inc. v. Rural
Tel. Serv. Co. , 

, 361 (1991)).
6
       The question of infringement turns on whether Nelson’s product is
substantially similar to the protectable elements of NCTI’s product. The
abstraction-filtration comparison test first separates the ideas and basic utilitarian
functions, which are not protectable, from the work’s particular expression. The
nonprotectable components of the product are then filtered out from the original
expression. Finally, the remaining protected elements are compared to the
allegedly copied work to determine if the two works are substantially similar.     See
Country Kids ‘n City Slicks, Inc. v. Sheen    , 

, 1284-85 (10th Cir.
1996). “Ultimately, to prove factual copying, the plaintiff must come forward
with sufficient evidence that a reasonable factfinder, taking together the evidence
of access and the similarities between the [products], could find that the second
work was copied from the first.”      Gates Rubber Co. v. Bando Chem. Indus., Ltd.   ,

, 833 (10th Cir. 1993) (footnotes omitted).

                                              -6-
of a preponderance of the evidence that Nelson had infringed the version of

Crossroads in question.   See 

      The court further concluded that both NCTI and Nelson had intended for

REAL Colors to be a joint work and that, “absent a proper conveyance, Nelson at

least shares an undivided interest in the REAL Colors copyright with NCTI.”

See 

Finally, the court found the doctrines of estoppel and waiver

inapplicable. See 

      In support of the request for attorney’s fees, defendants claim NCTI’s

motivation in initiating the lawsuit was improper because of NCTI’s president’s

willingness to pursue people “he thought would violate his rights and tie them up

in court,” See Appellants’ App. Vol. V at 774-75, and because of inadequate

investigation prior to the commencement of the action. The court found,

however, that “NCTI was motivated by a reasonable belief, albeit mistaken, that

this action was appropriate and necessary to protect its copyright interests,”

Appellants’ App. Vol. III at 535, and disagreed with defendants’ contention that

NCTI’s primary objective was to “‘impoverish its most capable competitor,

George Nelson.’” See 

omitted).

      The court also determined that the action was neither objectively

unreasonable nor frivolous, noting that NCTI was in fact the record holder of the

copyrights at issue and that on numerous occasions defendant Nelson had


                                            -7-
represented in written documents that NCTI owned the copyrights.          See 

The court carefully considered the parties’ arguments in determining that under

the facts of the case, equitable considerations require the parties to bear their own

costs and attorney’s fees.

       It should be noted that this cause was not decided on summary judgment

(except that summary judgment was granted on defendants’ counterclaims), but

after a four-day bench trial.   7
                                    Merely because defendants were ultimately

successful in defending against the infringement claim does not automatically

entitle them to attorney’s fees.      See Fogerty , 510 U.S. at 534. In sum, the district

court adequately considered the       Fogerty factors. Defendants have failed to

establish that the court abused its discretion in declining to award attorney’s fees.

       Accordingly, the district court’s denial of defendants’ request for attorney’s

fees is AFFIRMED.




7
       The court also noted that because NCTI’s current owners may have relied
on Nelson’s representations that NCTI was the sole owner of the copyrights in
Crossroads and REAL Colors that NCTI “might be able to state a claim for fraud,
breach of contract, or negligent representation” even though unable to state an
action under the copyright statute. See Appellants’ App. Vol. III at 534 n.7.

                                              -8-
      Entered for the Court



      James E. Barrett
      Senior Circuit Judge




-9-