Davis v. Tampa Bay Arena, Ltd

Filing 115

ORDER: Defendant's Verified Motion for Attorneys' Fees and Costs 104 is denied with respect to fees and granted with respect to Defendant's entitlement to costs. The Court reserves jurisdiction on the amount of the cost award. Defendant's Motion for Leave to File a Reply 113 is denied as moot. This case shall remain closed. Signed by Judge James S. Moody, Jr on 8/16/2013. (LN)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION

G. MITCHELL DAVIS,
Plaintiff,
v.

Case No. 8:12-cv-60-T-30MAP

TAMPA BAY ARENA, LTD.,
d/b/a St. Pete Times Forum,
Defendant.
_____________________________________/

ORDER
THIS CAUSE comes before the Court upon Defendant’s Verified Motion for
Attorneys’ Fees and Costs (Dkt. 104) and Plaintiff’s Response in Opposition (Dkt. 112). The
Court, having reviewed the motion, response, and being otherwise advised in the premises,
concludes that the motion should be denied with respect to fees and granted with respect to
costs.
BACKGROUND
On June 27, 2013, the Court granted Defendant Tampa Bay Arena, LTD.’s (the
“Forum”) motion for partial summary judgment to the extent that the Court concluded that
Plaintiff G. Mitchell Davis’ copyright claim failed as a matter of law because Davis provided
the Forum with an implied license to post his photographs on the Forum’s Facebook page
(Dkt. 101). The Court noted that Davis’ copyright claim amounted to a breach of contract
claim. Notably, Davis pled a breach of contract claim in the alternative. The Court denied

the Forum’s motion with respect to Davis’ breach of bailment, conversion, and replevin
claims because the record contained numerous disputed facts related to those claims. Finally,
the Court declined to exercise supplemental jurisdiction over the state-law claims and
remanded the remaining claims to the Circuit Court of the Thirteenth Judicial Circuit in and
for Hillsborough County, Florida.
The Forum moves for attorneys’ fees and costs under 17 U.S.C. § 505 as the
prevailing party.
DISCUSSION
I.

Basic Legal Standard
In copyright cases, the decision to award attorneys’ fees is within the sound discretion

of the Court. 17 U.S.C. § 505 (“[T]he Court in its discretion may allow the recovery of full
costs by or against [a] party...[and] may also award a reasonable attorney’s fee to the
prevailing party as part of the costs.”); Cable/Home Commc’ns Corp. v. Network Prods., Inc.,
902 F.2d 829, 853 (11th Cir. 1990). In deciding whether to award fees, a Court should
consider whether the position of the losing party was (1) frivolous or (2) objectively
unreasonable, (3) the losing party’s motivation in litigating the action, and (4) the need to
advance considerations of compensation and deterrence. See Fogerty v. Fantasy, Inc., 510
U.S. 517, 534 n. 19 (1994). In balancing these factors, the Eleventh Circuit has stressed that
a court should not consider the issue of whether the losing party can afford to pay the
prevailing party’s fees but instead must focus on whether an award of fees will further the

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goals of the Copyright Act. See Mitek Holdings, Inc. v. Arce Eng’g Co., Inc., 198 F.3d 840,
842 (11th Cir. 1999).
A.

Factor One: Frivolousness

The Forum argues that Davis’ copyright claim was frivolous. The Court disagrees.
A claim is frivolous if it is without arguable merit in either law or fact. See Napier v.
Preslicka, 314 F.3d 528, 531 (11th Cir. 2002). Davis’ copyright claim had merit under the
law and under the facts as discussed in the Court’s summary judgment order (Dkt. 101). The
facts reflected that the agreements between the parties stated that the ownership and
copyright of the photographs remained with Davis. It was undisputed that the Forum
downloaded Davis’ photographs on its Facebook page and that the agreements between the
parties did not specifically encompass Facebook usage.
The Court ultimately concluded that the record was undisputed that Davis granted the
Forum an implied license to post his images to the Forum’s Facebook page but this
conclusion did not render Davis’ claim frivolous. The Court noted that even though there
may have been genuine disputes regarding the scope of any implied license, the conditions
Davis attached to the use of his photographs on Facebook amounted to covenants, not
condition precedents to the granting of the implied license. Notably, the Forum’s motion for
partial summary judgment did not focus on the difference between a covenant and a
condition precedent and this nuance is not particularly obvious under the relevant law.
Accordingly, although Davis ultimately did not prevail on his copyright claim, his claim was
not lacking in merit.

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The Court’s finding that Davis’ copyright claim was not frivolous thus weighs against
an award of attorneys’ fees.
B.

Factor Two: Objective Unreasonableness

In determining the objective reasonableness of the losing party’s position, the Court
“must consider not how many times in the litigation at issue the presiding court rejected a
non-prevailing party’s legal position, but rather, the clarity of the law with respect to the
losing party’s position at the time that the losing party pressed its argument.” Luken v. Int’l
Yacht Council, Ltd., 581 F. Supp. 2d 1226, 1240 (S.D. Fla. 2008). In determining the
objective reasonableness of the party’s position at the time it advanced the argument, the
Court should consider whether its position was patently without merit or otherwise clearly
lacking a legal or factual basis. Maxwood Music Ltd. v. Malakian, 722 F. Supp. 2d 437, 439
(S.D.N.Y. 2010).
As noted above, Davis’ claim was not without merit or otherwise clearly lacking a
legal or factual basis. The Forum argues that the “law regarding the creation of implied
licenses was well established in the Eleventh Circuit” at the time Plaintiff’s copyright claim
was filed. (Dkt. 104). This is true but the Forum glosses over the fact that the issue of the
scope of Davis’ implied license was a close question and turned on specific facts that
ultimately resulted in the Court’s determination that the conditions Davis placed on the
implied license amounted to covenants, not conditions precedent, a nuance that the Forum
did not even recognize. Again, whether Davis’ claim amounted to a breach of copyright or

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a breach of contract was a difficult issue and, although the Forum ultimately prevailed,
Davis’ claim was not objectively unreasonable.
The Court’s finding that Davis’ copyright claim was not objectively unreasonable
weighs against an award of fees.
C.

Factor Three: Motivation

In exercising its discretion to award fees, a court should consider whether the losing
party litigated in good or bad faith. See, e.g., Tuff ‘N’ Rumble Management, Inc. v. Profile
Records, Inc., 1997 WL 470114, at *1 (S.D.N.Y. 1997). Bad faith litigation conduct
includes initiating a lawsuit for the purposes of harassment (or for another improper motive),
obstructing discovery, disobeying court orders, failing to adequately research the law and
facts, and otherwise pursuing litigation in an improper and unprofessional manner. Id.
Here, the Forum argues in a conclusory fashion that Davis’ copyright infringement
claim was initiated for an improper purpose, i.e., the lawsuit was motivated by financial gain.
The history of this case does not support this contention. The agreements between the parties
did not address Facebook usage. The record on summary judgment demonstrated that Davis
frequently objected to the Forum’s use of his photographs on Facebook, especially after
Facebook added a feature that permitted unknown third parties to download Davis’
photographs. Although the Forum ultimately prevailed on the copyright claim, the Court
concludes that Davis held a good faith belief that the Forum was violating the copyright laws
by continuing to post his photographs on Facebook. Any argument to the contrary is pure
speculation.

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Accordingly, the Court concludes that Davis acted in good faith in prosecuting his
copyright claim against the Forum. As a result, this factor also weighs against awarding fees.
D.

Factor Four: Considerations of Compensation and Deterrence

In deciding whether to award attorneys’ fees in a copyright infringement action, courts
have often looked to considerations of compensation and deterrence. Courts have rewarded
fees both to encourage the litigation of valid claims (and defenses) and to deter the
prosecution of frivolous and nuisance suits. Courts have also declined to award fees where
doing so would chill a plaintiff from bringing a meritorious claim.
The Court has already concluded that Davis’ copyright claim was objectively
reasonable and brought in good faith. To award fees to the Forum in such a situation would
deter future plaintiffs from bringing meritorious (especially close) copyright actions,
frustrating the goals of the Copyright Act. “[A] party that advances a reasonable position
should not be deterred from doing so for fear that it will have to pay attorney’s fees if it
loses.” Luken, 581 F. Supp. 2d at 1246 (citations omitted). Numerous other courts have also
ruled against awarding fees in such a situation, fearing that doing so would chill plaintiffs
from litigating good-faith reasonable claims and thus frustrate the purposes of the Copyright
Act. See, e.g., Matthew Bender & Co. v. West Publ’g Co., 240 F.3d 116, 122 (2d Cir. 2001);
Harris Custom Builders, Inc., v. Hoffmeyer, 140 F.3d 728, 730 (7th Cir. 1998); Donald
Frederick Evans and Associates, Inc. v. Continental Homes, Inc., 785 F.2d 897, 916 (11th
Cir. 1986).

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On this issue it is important to note that Davis originally brought this action in state
court as a breach of contract claim, among other state-law claims. The Forum removed the
action to this Court, arguing that the breach of contract claim was essentially a federal
copyright infringement claim. Davis subsequently amended his complaint to allege a
copyright claim. This case is peculiar because it was the Forum that, in a sense, initiated the
proceeding as a copyright action. In other words, this case was far from a nuisance case or
a case in which the plaintiff initiated a frivolous copyright action for unsavory reasons. The
ball began with the Forum’s contention that Davis was essentially asserting a copyright
claim. Thus, although irrelevant for the Court’s ruling on summary judgment, the procedural
history of this case is useful in that it reflects that Davis’ decision to plead a copyright claim
was not unreasonable.
For all of the above reasons, this Court will not depart from the several courts which
have held that considerations of compensation and deterrence will not be advanced by taxing
fees against a losing plaintiff who prosecuted objectively reasonable claims in good faith.
As a result, this factor also weighs against an award of fees.
E.

Conclusion

Each factor discussed above weighs in Davis’ favor. Accordingly, the Court exercises
its broad discretion to deny the Forum’s request for attorney’s fees under 17 U.S.C. § 505.
II.

The Forum’s Request for Costs
Courts routinely award costs to the prevailing party (even if the losing party’s claims

were brought in good faith and were complex, and/or reasonable). See Fed. R. Civ. P. 54(d);

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28 U.S.C. §1920. Thus, the Court concludes that the Forum should be awarded the costs it
reasonably incurred in the process of litigating Davis’ copyright claim. The information in
the record is insufficient for the Court to determine these costs. The Court allows the Forum
seven (7) days to file a notice of their costs related to the copyright claim. The notice shall
attach invoices supporting the cost amounts. Davis may file an objection to any of the costs
within seven (7) days from the date of the filing of the Forum’s notice.
It is therefore ORDERED AND ADJUDGED that:
1.

Defendant’s Verified Motion for Attorneys’ Fees and Costs (Dkt. 104) is
denied with respect to fees and granted with respect to Defendant’s entitlement
to costs. The Court reserves jurisdiction on the amount of the cost award.

2.

Defendant’s Motion for Leave to File a Reply (Dkt. 113) is denied as moot.

3.

This case shall remain closed.

DONE and ORDERED in Tampa, Florida on August 16, 2013.

Copies furnished to:
Counsel/Parties of Record
S:\Even\2012\12-cv-60.mtfees.frm

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