United States District Court, W.D. Washington, Seattle
ORDER GRANTING DEFENDANTS' MOTION FOR
ATTORNEY'S FEES AND COSTS
BARBARA JACOBS ROTHSTEIN, U.S. DISTRICT COURT JUDGE
December 20, 2016, this Court entered judgment in favor of
Defendants Cindy and George Huang in the copyright action
brought against them by Plaintiff YS Built, LLC. The facts of
this case are well known to the parties and contained in the
Court's Memorandum Opinion [Dkt. #75]. Defendants, as the
prevailing parties, now move for an award of attorney's
fees and full costs under the Copyright Act, 17 U.S.C. §
505. Plaintiff opposes Defendants' motion.
Appropriateness of attorney's fees
505 of the Copyright Act provides that the Court may
“award a reasonable attorney's fee to the
prevailing party” in a copyright action. 17 U.S.C.
§ 505. “There is no precise rule or formula”
for determining whether a prevailing party in a particular
case is entitled to a fee award. Fogerty v. Fantasy,
Inc., 510 U.S. 517, 534 (1994) (quoting Hensley v.
Eckerhart, 461 U.S. 424, 436-37 (1983)). Rather,
“equitable discretion should be exercised” by the
Court. Id. There is a “pair of
restrictions” to this discretion, however: (1) “a
district court may not ‘award[ ] attorney's fees as
a matter of course'; rather a court must make a more
particularized, case-by-case assessment”; and (2)
“a court may not treat prevailing plaintiffs and
defendants differently. Kirtsaeng v. John Wiley &
Sons, Inc., ___ U.S. ___, 136 S.Ct. 1979, 1985 (2016)
(citing Fogerty, 510 U.S. at 527, 533-34)).
“[A] successful defense of a copyright infringement
action may further the policies of the Copyright Act every
bit as much as a successful prosecution of an infringement
claim by the holder of a copyright.” Fogerty,
510 U.S. at 527.
in mind that “[t]he primary objective of the Copyright
Act is to encourage the production of original literary,
artistic, and musical expression for the good of the public,
” there are five factors that district courts consider
when making a fee determination: (1) the degree of success
obtained; (2) frivolousness of the Plaintiff's claim; (3)
motivation; (4) objective reasonableness (both in factual and
legal arguments in the case); and (5) the need in particular
circumstances to advance considerations of compensation and
deterrence. Fogerty, 510 U.S. at 524; Inhale,
Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1042 (9th
Cir. 2014) (quoting Jackson v. Axton, 25 F.3d 884,
890 (9th Cir. 1994)). “These factors are not exclusive,
and not all need to be considered or met.” Coble v.
Renfroe, No. C11-0498RSM, 2012 WL 1077843, at *1 (W.D.
Wash. March 30, 2012). Defendants contend that they are
entitled to an award of attorney's fees not only because
they prevailed against Plaintiff's copyright claim, but
also because Plaintiff's suit was frivolous, objectively
unreasonable, and improperly motivated.
Degree of success obtained
prevailed completely on Plaintiff's copyright claim. The
Court concluded that the copyrighted Schneider Plan and its
alleged copy, the Stanbrooke Plan, were not substantially
similar architectural works and found in favor of Defendants.
Mem. Op., Dkt. 75 at 6.
Frivolousness and objective unreasonableness
copyright claim is frivolous if it is “so meritless
that there is little chance of success.” Broad.
Music, Inc. v. C.B.G., Inc., No. 11-CV-40142-FDS, 2014
WL 4656879, at *2 (D. Mass. Sept. 12, 2014) (citing
Garcia-Goyco v. Law Envtl. Consultants, Inc., 428
F.3d 14, 20 (1st Cir. 2005); Applied Innovations, Inc. v.
Regents of the Univ. of Minn., 876 F.2d 626, 638 (8th
Cir. 1989)). “A claim . . . is not frivolous if it is
brought in good faith, in an unsettled area of the law, or
with a reasonable likelihood of success.” Mattel,
Inc. v. Walking Mountain Prods., No. CV99-8543RSWL(RZX),
2004 WL 1454100, at *2 (C.D. Cal. June 21, 2004)). Because
determinations of frivolousness often shade into
determinations of objective unreasonableness, the Court will
consider these factors together.
argue that Plaintiff's copyright claim was legally and
factually untenable. In order to prove infringement,
Plaintiff was required to demonstrate that the Schneider Plan
and the Stanbrooke Plan were “substantially similar in
idea and expression.” Feist Pub'ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). The
substantial-similarity test has two prongs- the
“extrinsic” test, which is an objective
comparison of individual design elements, and the
“intrinsic” test, which evaluates whether two
works are “substantially similar in the total concept
and feel of the works.” Nw. Home Designing, Inc. v.
Benjamin Ryan Communities, LLC, 2016 WL 5373144, at *3
(W.D. Wash. Sept. 26, 2016) (slip op.) (internal citations
omitted); see also Smith v. Jackson, 84 F.3d 1213,
1218 (9th Cir. 1996). Plaintiff's failure to demonstrate
substantial similarity does not itself render the copyright
claim frivolous or objectively unreasonable. But
Plaintiff's choice to bring suit in spite of facts that
could not support the claim does weigh in favor of a finding
of objective unreasonableness. First, “most, if not
all” of the alleged similarities between the Schneider
and Stanbrooke plans were not protected by Plaintiff's
copyright. Dkt. 77 at 5; See Mem. Op., Dkt. 75 at 5;
Zalewski v. Cicerco Building Dev., Inc., 754 F.3d
95, 106 (2d Cir. 2014); Nw. Home Designing, Inc.
2016 WL 5373144, at *7. Second, the lack of overall
similarity between the Stanbrooke Plan and the Schneider Plan
was apparent. “A [copyright] claim is more likely to be
found frivolous or objectively unreasonable . . . when the
lack of similarity between the unsuccessful plaintiff's
work and the allegedly infringing work [is] obvious.”
Randolph v. Dimension Films, 634 F.Supp.2d 779, 794
(S.D. Tex. 2009) (citing Mallery v. NBC Universal,
331 Fed.Appx. 821, 823 (2d Cir. 2009)). Indeed, the Court
found that “[t]he Schneider floorplan [wa]s relatively
minimalistic and spare, ” while the Stanbrooke plan was
“closed[, ] and the walls [we]re more solid and
confining.” Mem. Op., Dkt. 75 at 5.
the Court finds that Plaintiff did not have a reasonable
likelihood of success on its copyright claim. The claim was,
therefore, objectively unreasonable, if not frivolous.
contend that Plaintiff's suit was motivated “purely
by spite, retaliation, and its desire to be the exclusive
builder of [Defendants'] house.” Dkt. 77 at 6.
While the Court does not opine on the clearly personal nature
of Defendants' accusation, it does agree that the
copyright suit appears to have been instituted not to advance
the public good envisioned by the Copyright Act, but to bully
Defendants into a building project they did not want to be
part of. Plaintiff obtained its copyright interest in the
Schneider Plan only after learning that Defendants were
looking to contract with another builder, Stanbrooke Custom
Homes. Mem. Op. Dkt. 75 at 2. It appears to the Court, then,
that the copyright was merely a means to an end.
monopoly privileges that Congress may authorize are neither
unlimited nor primarily designed to provide a special private
benefit. Rather, the limited grant is a means by which an
important public purpose may be achieved.” Sony
Corp. of America v. Universal City Studios, Inc., 464
U.S. 417, 429 (1984). “[C]opyright assures authors the
right to their original expression, but encourages others to
build freely upon the ideas and information conveyed by a
work.” Feist Pub'ns, Inc., 499 U.S. at
349-50. Plaintiff's suit did little to advance the public
interest, and, in fact, harmed the public by seeking to
restrict access to ...