United States District Court, N.D. California, San Jose Division
ERICKSON PRODUCTIONS INC. and JIM ERICKSON, Plaintiffs,
KRAIG R. KAST, Defendant.
ORDER DENYING WITHOUT PREJUDICE PLAINTIFFS'
MOTION FOR ATTORNEY'S FEES AND COSTS RE: DKT. NO.
R. LLOYD UNITED STATES MAGISTRATE JUDGE.
Erickson is a professional photographer who makes his living
by licensing his photographs through his company, Erickson
Productions, Inc. Mr. Erickson and Erickson Productions, Inc.
will be referred to collectively here as
sued Kraig R. Kast for copyright infringement, claiming that
he copied several of Erickson’s photos and used them
without permission on the website for Kast’s business,
Atherton Trust. Erickson asserted claims for direct copyright
infringement, as well as for contributory and vicarious
copyright infringement. Kast did not dispute that
Erickson’s photos were contained on a version of
Atherton Trust’s website. However, he maintained that
the photos were merely “placeholders” for the
licensed photos that he ultimately intended to include on the
site. His chief contention was that the Atherton Trust
website was designed by a third-party, Only Websites, Inc.
(Only Websites), and that he had no knowledge of or control
over any infringing use of Erickson’s photos.
Kast’s affirmative defenses were disposed of, either on
Erickson’s motion to strike or their subsequent motion
for summary judgment. However, Kast’s “Innocent
Infringement” defense was allowed to stand to the
extent that his mental state pertained to the issue of
a three-day trial,  the jury rendered a verdict for Erickson
as to each of the photos in question. Although the jury did
not find that Kast directly infringed the photos, they
determined that he was liable for vicarious and contributory
infringement and, further, that the infringement was willful.
The jury awarded Erickson the maximum $450, 000 in statutory
damages, and judgment was entered accordingly. The matter is
to 17 U.S.C. § 505, Erickson moves for an award of
attorney’s fees. Kast opposes the motion. No one
requested a hearing on this matter, and the court finds that
no oral argument is necessary. Civ. L.R. 7-1(b). Upon
consideration of the moving and responding papers, this court
denies the motion without prejudice.
505 of the Copyright Act permits a district court to
“award a reasonable attorney’s fee to the
prevailing party as part of the costs.” 17 U.S.C.
§ 505. An award of attorney’s fees is a
matter of the court’s discretion. Fogerty v.
Fantasy, Inc., 510 U.S. 517, 533 (1994). And, Section
505 “grants courts wide latitude to award
attorney’s fees based on the totality of circumstances
in a case.” Kirtsaeng v. John Wiley & Sons,
Inc., 136 S.Ct. 1979, 1985 (2016). “‘In
deciding whether to award fees under the Copyright Act, the
district court should consider, among other things: the
degree of success obtained on the claim; frivolousness;
motivation; objective reasonableness of factual and legal
arguments; and need for compensation and
deterrence.’” VMG Salsoul, LLC v.
Ciccone, ___F.3d ___, Nos. 13-57104, 14-55837, 2016 WL
3090780, at *13 (9th Cir., June 2, 2016) (quoting Maljack
Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881,
889 (9th Cir. 1996)). Courts in the Ninth Circuit also
consider “whether the chilling effect of
attorney’s fees may be too great or impose an
inequitable burden on an impecunious plaintiff.”
Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 766
(9th Cir. 2003).
courts should give substantial weight to the objective
reasonableness of the losing party’s position.
Kirtsaeng, 136 S.Ct. at 1983. Nevertheless,
“objective reasonableness can be only an important
factor in assessing fee applications---not the controlling
one.” Id. at 1988. “That means in any
given case a court may award fees even though the losing
party offered reasonable arguments (or, conversely, deny fees
even though the losing party made unreasonable ones).”
Id. “Although objective reasonableness carries
significant weight, courts must view all the circumstances of
a case on their own terms, in light of the Copyright
Act’s essential goals.” Id. at 1989.
guideposts may be used “so long as such factors are
faithful to the purposes of the Copyright Act and are applied
to prevailing plaintiffs and defendants in an evenhanded
manner.” Fogerty, 517 U.S. at 534 n.19.
“Faithfulness to the purposes of the Copyright Act is,
therefore, the pivotal criterion.” Fantasy, Inc. v.
Fogerty, 94 F.3d 553, 558 (9th Cir. 1996). “The
primary objective of the Copyright Act is to encourage the
production of original literary, artistic, and musical
expression for the good of the public.”
Fogerty, 510 U.S. at 524.
degree of success obtained on the claim
Erickson did not succeed on the direct infringement theory,
the jury found in Erickson’s favor on the vicarious and
contributory infringement claims, concluded that the
infringement was willful, and awarded the maximum statutory
damages. Erickson therefore obtained substantial success.
Moreover, while willful infringement, in itself, does not
compel an award of fees, it is an important factor favoring
such an award. Historical Research v. Cabral, 80
F.3d 377, 379 (9th Cir. 1996).
motivation; objective reasonableness of factual and legal
was no dispute that Erickson is the owner of valid copyrights
in the subject photos and that the photos were used without
permission on Kast’s website. Erickson’s claims
therefore were not frivolous, and this court finds no
evidence that this lawsuit was motivated by bad faith. Nor
was Erickson’s infringement claim objectively
unreasonable. This court denied both sides’ motions for
summary judgment re infringement, finding that there were
materially disputed facts sufficient to permit that issue to
proceed to a jury. See VMG Salsoul, LLC, ___F.3d___,
2016 WL 3090780, at *13 (“If a plaintiff has a claim