United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR ATTORNEYS' FEES AND COSTS (Docket No. 84)
EDWARD M. CHEN, District Judge.
Currently pending before the Court is Defendant John Wiley & Sons, Inc.'s ("Wiley") motion for an award of attorneys' fees and costs pursuant to 17 U.S.C. § 505. The Court previously granted Wiley's motion for summary judgment finding that Plaintiff Minden Pictures, Inc. ("Minden") lacked standing under the Copyright Act, 17 U.S.C. § 101, et seq., to assert claims of copyright infringement against Wiley. Minden has opposed Wiley's motion on a number of grounds. For the following reasons, the Court DENIES Wiley's motion.
II. FACTUAL & PROCEDURAL BACKGROUND
A detailed discussion of the underlying dispute between the parties in this copyright action can be found in this Court's prior order granting summary judgment in favor of Wiley on all claims asserted by Minden. See Minden Pictures, Inc. v. John Wiley & Sons, Inc., ___ F.Supp.2d ___, 2014 WL 295854 (N.D. Cal. Jan. 27, 2014).
This Court has issued two substantive orders in this case. In its first order, it granted Wiley's motion to dismiss for lack of standing to the extent that Minden relied upon various copyright assignments from various photographers to establish standing. See Minden Pictures, Inc. v. John Wiley & Sons, Inc., No. C-12-4601 EMC, 2013 WL 1995208 (N.D. Cal. May 13, 2013). The Court, however, denied the motion to dismiss to the extent that Minden relied on various agency agreements to establish standing. As to these agency agreements, the Court concluded that further discovery into the effect of those agreements was necessary. Id. at *8.
After this discovery occurred, the parties filed cross summary judgment briefs. Ultimately, the Court granted Wiley's motion for summary judgment, finding that the various agency agreements into which Minden entered with various photographers did not give it standing to pursue its copyright infringement claims. See Minden Pictures, 2014 WL 295854, at 1. First, the Court examined the content of the agreements and concluded that the agency agreements made Minden a non-exclusive licensing agent and not a co-owner of any exclusive right under 17 U.S.C. § 106. See id. at *10. Second, the Court found that Minden was not a "beneficial" owner of any § 106 exclusive right as it had never been in the chain of legal title of any of the applicable photographs. Id. at *11. Accordingly, because the copyright act confers standing only upon legal or beneficial owners of a § 106 exclusive right, the Court concluded that Minden lacked standing. See 17 U.S.C. § 501(b) ("The legal or beneficial owner of an exclusive right under a copyright is entitled... to institute an action for any infringement of that particular right committed while he or she is the owner of it."). Minden's appeal of this order is currently pending before the Court of Appeals.
On February 21, 2014, Wiley filed a motion for an award of costs and attorneys' fees under 17 U.S.C. § 505. Wiley argues that it is "unquestionably" the prevailing party, that Minden's legal and factual arguments were objectively unreasonable and pursued in bad faith, and that an award of attorneys' fees would further the purposes of the Copyright Act by deterring improperly "aggregated" claims. See generally Docket No. 84. Wiley has provided fee and cost summaries that describe various activities (i.e., "motion for summary judgment" or "discovery") and lists the time spent by various timekeepers on that activity as well as their hourly rate. See Docket Nos. 85-8, 95-9. Minden opposes Wiley's request. First, Minden argues that this Court's summary judgment on standing grounds signified that the Court had no subject matter jurisdiction over this action and, therefore: (1) this Court has no power to award fees; and (2) Wiley is not a "prevailing party." Second, Minden asserts that even if this Court has the power to award fees in these circumstances, its positions in this case were objectively reasonable and brought in good faith. Finally, Minden challenges Wiley's fee summaries as unsupported by any actual time records or invoices. See Docket No. 89.
A. Legal Standard
Section 505 of the Copyright Act governs the award of costs or attorneys' fees in copyright infringement actions. It provides:
In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs.
17 U.S.C. § 505. As the plain text of this provision reveals, an award of fees to a prevailing party in a copyright action is not mandatory, but rather left to the discretion of the Court. See, e.g., Fogarty v. Fantasy, Inc., 510 U.S. 517, 523 n.11 (1994). "District courts have two tasks in applying § 505: first, deciding whether an award of attorney's fees is appropriate and, second, calculating the amount of the award." Cadkin v. Loose, 569 F.3d 1142, 1147 (9th Cir. 2009).
In determining whether an award of attorneys' fees or costs is appropriate, the Court must first find that the requesting party, in fact, prevailed on the copyright claim. See id. The Ninth Circuit has articulated five non-exclusive factors to consider in determining whether to grant a prevailing party attorneys' fees: " the degree of success obtained;  frivolousness;  motivation;  objective unreasonableness (both in the factual and legal arguments in the case); and  the need in particular circumstances to advance considerations of compensation and deterrence.'" Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446, 449 (9th Cir. 2014) (quoting Jackson v. Axton, 25 F.3d 884, 890 (9th Cir. 1994)). Ultimately, however, courts may not rely on the factors if they are not "faithful to the purposes of the Copyright Act. Faithfulness to the purposes of the Copyright Act is, therefore, the pivotal criterion.'" Berkla v. Corel Corp., 302 F.3d 909, 923 (9th Cir. 2002) (quoting Fogerty, 94 F.3d at 558). Finally, prevailing plaintiffs and prevailing defendants are to be treated alike in determining whether attorneys' fees are ...