Federal Court of Appeals Summarizes Governing Standards In These Intellectual Property Areas.
The Ninth Circuit Court of Appeal has a nice discussion of the standards governing award of attorney’s fees to defendants in copyright infringement and Lanham Act cases. The discussion occurred in Halicki Films, LLC v. Sanderson Sales and Marketing, Case Nos. 06-55806 & 06-55807 (9th Cir. Nov. 12, 2008), authored by Senior Circuit Judge Miner (Second Circuit Judge, sitting by designation), where the defendants cross-appealed a district judge’s denial of fees to the defense.
Under 17 U.S.C. § 505, the Copyright Act provides for recovery of reasonable attorney’s fees by the prevailing party in a civil action. In Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994), the Supreme Court eliminated the former "dual standard" approach where fees are awarded to defendants only where the claims were frivolous or brought in bad faith, replacing it with a rule that imbues the district court with discretion in awarding fees to the prevailing parties in the first instance. In the Ninth Circuit, these factors are considered in the discretionary decision making process: (1) the degree of success obtained; (2) frivolousness; (3) motivation; (4) legal and factual objective unreasonableness; and (5) the need in particular circumstances to advance considerations of compensation and deterrence. Jackson v. Axton, 25 F.3d 884, 890 (9th Cir. 1994), overruled on other grounds by Fogerty, 510 U.S. at 534. The district court refused to award fees to the defense, a determination affirmed on review (more so because the Ninth Circuit reversed summary judgment grants dismissing plaintiffs/appellants’ claims).
Attorney’s fees under the Lanham Act, 15 U.S.C. § 1117(a), are awarded only in "exceptional cases," which has been judicially defined as a situation where the plaintiff’s case is "groundless, unreasonable, vexatious, or pursued in bad faith." Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 827 (9th Cir. 1997). The district court’s found nothing "exceptional" and refused fees, a determination also sustained on appeal.
BLOG OBSERVATION—We noticed that Tim Coates was one of the successful appellate attorneys for appellants. Mike Hensley, one of the co-contributors, was on the USC Debate Squad with Mr. Coates, and sends his greetings.