Intellectual Property/Prevailing Party: $111,993 To Prevailing Copyright Defendant Justified Under 17 U.S.C. § 505

This One Involved a Copyright Fight Over a Hookah Water Container.

      Costumed hookah smokers.  Matthew B. Brady, photographer.  Between 1850-60.  Library of Congress.

     Inhale, Inc. v. Starbuzz Tobacco, Inc., Case No. 12-56331 (9^th Cir. Jan. 9, 2014) (published)—great name for a case, isn’t it—was copyright litigation over plaintiff’s claim that it had copyright protection in the shape of a hookah water container published and registered with the U.S. Copyright Office. After determining that the shape of the water container was not copyrightable, the district court granted summary judgment in favor of defendant and awarded defendant $111,993 in attorney’s fees under 17 U.S.C. § 505.

     The whole enchilada—summary judgment and fee award—was sustained on appeal.

     A district court has discretion to award copyright fees to the “prevailing party” after considering five, non-exclusive factors: (1) degree of success obtained; (2) frivolousness; (3) motivation; (4) objective unreasonableness, both in factual and legal arguments in the case; and (5) the needs in particular circumstances to advance considerations of compensation and deterrence. (Jackson v. Axton, 25 F.3d 884, 890 (9^th Cir. 1994).) After observing that a successful defense furthers the purposes of the Copyright Act just as much as a successful infringement suit does (Fogerty v. Fantasy, Inc., 510 U.S. 517, 527 (1994), the district court’s reliance on the defense total success on the merits and the need to deter similar frivolous claims against innocent defendants constituted no abuse of discretion.

     And, to boot, the appellate court awarded fees incurred in the defense of the appeal, to be determined upon remand by the same district judge.