United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON DISTRICT JUDGE.
Datacarrier S.A. sued WOCCU Services Group, Inc. for
copyright infringement of Datacarrier's software. (The
parties refer to the defendant as WSG, so the court will do
the same.) The court concluded that Datacarrier's claim
failed as a matter of law and granted WSG's motion for
summary judgment. Dkt. 134. Now WSG seeks attorney fees under
17 U.S.C. § 505. Dkt. 138. For the reasons stated below, the
court will grant WSG's motion.
Copyright Act allows district courts to “award a
reasonable attorney's fee to the prevailing party.”
17 U.S.C. § 505. The Supreme Court has provided guidance
regarding the meaning of that broad language in two cases. In
Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), the
Court set forth two general principles: (1) the district
court must make particularized, case-by-case assessment
rather award fees as a matter of course to the prevailing
party, id. at 533; and (2) a court may not treat
prevailing plaintiffs and prevailing defendants any
differently, id. at 527. The Court also listed
“several nonexclusive factors” that a may inform
a decision under § 505: “frivolousness,
motivation, objective unreasonableness[, ] and the need in
particular circumstances to advance considerations of
compensation and deterrence.” Id. at 534 n.19.
Kirtsaeng v. John Wiley & Sons, Inc., 136 S.Ct.
1979, 1983 (2016), the Court held that district courts
“should give substantial weight to the objective
reasonableness of the losing party's position”
while “also giv[ing] due consideration to all other
circumstances relevant to granting fees.” The Court
gave two examples of such other circumstances: litigation
misconduct and a history of raising unsuccessful claims or
defenses in other copyright cases. Id. at 1988- 89.
part, the Court of Appeals for the Seventh Circuit has added
its own gloss to the standard, stating that “the two
most important considerations in deciding whether to award
fees are the strength of the prevailing party's case and
the amount of damages or other relief the party
obtained.” Klinger v. Conan Doyle Estate,
Ltd., 761 F.3d 789, 791 (7th Cir. 2014) (internal
quotations omitted). In other words, if the losing party had
a weak claim or defense but the prevailing party doesn't
obtain any relief, there is a “compelling” case
for awarding fees. Id. Because a defendant generally
cannot obtain any relief other than dismissal of the case,
“the defendant is entitled to a very strong presumption
in favor of receiving attorneys' fees, in order to ensure
that an infringement defendant does not abandon a meritorious
defense in situations in which the cost of vindication
exceeds the private benefit to the party.” Id.
(internal quotations omitted).
court of appeals has not revisited its standard since
Kirtsaeng. And there is a plausible argument that
any reliance on presumptions is inconsistent with that case.
Kirtsaeng, 136 S.Ct. at 1989 (rejecting presumption
against awarding fees when the losing party's position is
reasonable because a presumption “goes too far in
cabining how a district court must structure its analysis and
what it may conclude from its review of relevant
factors”). But even if a presumption is not
appropriate, the lack of any other remedy for a defendant is
still a relevant consideration because it is part of the
broader concern of providing incentives to parties to
litigate strong claims and defenses.
says it is entitled to fees under § 505 for the
• it is the prevailing party;
• it is the defendant and did not obtain a remedy;
• the court concluded that Datacarrier's software
either was not protected by copyright or was not sufficiently
similar to WSG's software;
• the court concluded that Datacarrier's experts
were difficult to understand and relied on inadmissible
• WSG asserted other affirmative defenses, such as fair
use and fraud on the copyright office, that the court did not
consider but that WSG “pursued by necessity”;
• Datacarrier engaged in “gamesmanship” by
initially suggesting that Ecuadorian government officials
would testify on Datacarrier's behalf but then ...