Medallion Homes Gulf Coast, Inc. v. Tivoli Homes of Sarasota, Inc. et al

Filing 49

ORDER: The Court GRANTS the Dukes' Renewed Motion for Attorney's Fees (Doc. # 46 ) in the amount of $8,760, but denies the request for mediation costs.See Order for details. Signed by Judge Virginia M. Hernandez Covington on 10/7/2016. (KAK)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
MEDALLION HOMES GULF
COAST, INC.,
Plaintiff,
v.

Case No. 8:14-cv-3117-T-33JSS

TIVOLI HOMES OF SARASOTA,
INC., NICOLE DUKE, MICHAEL
DUKE, JASON KUBISIAK, and
START TO FINISH DRAFTING,
L.L.C.,
Defendants.
_______________________________/
ORDER
This cause comes before the Court pursuant the Renewed
Motion for Attorney’s Fees and Costs filed on August 25, 2016,
by Defendants Michael and Nicole Duke. (Doc. # 46). On
September 2, 2016, Plaintiff, Medallion Homes Gulf Coast,
Inc., filed a Response in Opposition to the Motion. (Doc. #
48). For the reasons that follow, the Court grants the Motion
in the amount of $8,760.
I.

Background
On

November

5,

2015,

the

Court

granted

Defendants’

Motion for Summary Judgment in this copyright infringement
action. (Doc. # 38). The Clerk of Court entered Judgment in
favor of Defendants on November 6, 2015. (Doc. # 39). On

1 

November

20,

2015,

Defendants

filed

a

Motion

requesting

Attorney’s Fees and Costs. (Doc. # 40). Prior to responding
to the Motion, Plaintiff filed a Notice of Appeal. (Doc. #
41).
The Court denied Defendants’ Motion without prejudice
and with leave to re-file after the resolution of the appeal.
(Doc. # 43). The Eleventh Circuit Affirmed this Court’s grant
of Summary Judgment to the Defendants. (Doc. # 45). On August
24 2016, the Eleventh Circuit issued a mandate, and Defendants
filed a timely Renewed Motion for Attorney’s Fees and Costs
on August 25, 2016. (Doc. # 46). The Motion is ripe for the
Court’s consideration.
II.

Legal Standard
Under 17 U.S.C. § 505, the Court, in its discretion, may

award reasonable attorney’s fees and the costs incurred in
litigating the case.  “In copyright cases, although attorneys'
fees are awarded in the trial court's discretion, they are
the rule rather than the exception and should be awarded
routinely.” Arista Records, Inc. v. Beker Enters., Inc., 298
F. Supp. 2d 1310, 1316 (S.D. Fla. 2003) (internal citation
omitted).

Furthermore,

in

deciding

whether

to

award

attorney’s fees in copyright cases “[p]revailing plaintiffs

2 

and prevailing defendants are to be treated alike.” Fogerty
v. Fantasy, Inc., 510 U.S. 517, 534–35 (1994).
No

precise

rule

or

formula

exists

for

determining

whether to award attorney’s fees in copyright cases, rather
“equitable discretion should be exercised ‘in light of the
considerations we have identified.’”  Id. (quoting Hensley v.
Eckerhart,

461

identified

by

U.S.
the

424,

436–37

Supreme

(1983)).  The

Court

are

factors

“frivolousness,

motivation, objective unreasonableness (both in the factual
and in the legal components of the case) and the need in
particular

circumstances

to

advance

considerations

of

compensation and deterrence.” Id. at 534 n.19 (quoting Lieb
v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)).
III. Analysis
The

Eleventh

Circuit

has

emphasized

that

the

“only

preconditions to an award of fees [under the Copyright Act]
is that the party receiving the fee be the ‘prevailing party’
and that the fee be reasonable.” Mitek Holdings, Inc. v. Arce
Eng’g

Co.,

198

F.3d

840,

842

(11th

Cir.

1999).

Here,

Defendants, the Dukes, are the prevailing parties because
summary judgment was granted in their favor. Haughton v.
SunTrust Bank, Inc., 403 Fed. Appx. 458, 459 (11th Cir. 2010).

3 

Additionally, Plaintiff, Medallion, does not challenge the
Dukes' status as prevailing parties.
A.

Defendants’ Motion for Attorney’s Fees

In determining whether to award attorney’s fees to the
prevailing parties in this case, the Court must consider the
non-exclusive list of factors suggested by the Supreme Court.
Mitek Holdings, 198 F.3d at 842 (citing Fogerty, 510 U.S. at
526–27).
1. Frivolousness
To support a claim of copyright infringement, claimants
must prove both their ownership of the copyright to the works
and copying by the defendant. Original Appalachian Artworks,
Inc. v. Toy Loft, Inc., 684 F.2d 821, 824 (11th Cir. 1982).
“Frivolousness, in copyright cases, is usually found in cases
in which the claimant does not even own the copyright in
question or has granted a license to the alleged infringer
but sues for infringement nonetheless.” Dream Custom Homes,
Inc. v. Modern Day Const., Inc., No. 8:08-cv-1189-T-17AEP,
2011 WL 7764999, at *7 (M.D. Fla. July 12, 2011); see also
Amadasun v. Dreamworks, LLC, 359 F. Supp. 2d 1367, 1373 (N.D.
Ga. 2005)(finding the plaintiff’s claim was frivolous because
it was based on works that were not entitled to copyright

4 

protection); Lowe v. Loud Records, No. CIV.A. 01-1797, 2004
WL 527831, at *3 (E.D. Pa. Mar. 17, 2004), aff'd, 126 Fed.
Appx.

545

(3d

Cir.

2005)(granting

attorney’s

fees

to

defendant because plaintiff defeated his own claim by giving
defendant a license to use the copyrighted material).
Here,
copyright

the
for

Court
the

found

Santa

that

Medallion

held

a

Maria

technical

drawings

valid
and

architectural plan at issue. (Doc. # 38 at 6-7). Therefore,
the copyright claim brought by Medallion does not meet the
definition of frivolous under existing case law. “However, a
lack of frivolousness does not preclude an award of attorney's
fees in favor of defendants.” Dream Custom Homes, 2011 WL
7764999, at *7; see also Sherry Mfg. Co. v. Towel King of
Fla., Inc., 822 F.2d 1031, 1034 (11th Cir. 1987).
2. Motivation
The Dukes assert the copyright claim was only brought
due to Medallion’s frustration with not becoming an approved
builder in the Duke’s community, the Hammocks, indicating the
lost opportunity for profit as additional motivation for the
claim.

Medallion, on the other hand, contends its motive

behind bringing the claim had no basis in a personal vendetta. 
To the contrary, Medallion states the motivation was purely

5 

to protect its copyrighted work and to remedy the harm done
by the alleged copying of that protected work.
Based on the record, there is not sufficient evidence to
show that Medallion’s motivation was malicious in nature.
Medallion’s

claim

that

it

only

wanted

to

protect

its

copyrighted work appears to be in good faith. However, the
Eleventh Circuit has found that the copyright holder's “good
faith in bringing its suit was not determinative of the issue
of attorney's fees.” Mitek Holdings, 198 F.3d at 842 (citing
Sherry Mfg. Co., 822 F.2d at 1034).
3. Objective Unreasonableness
Medallion
ultimately
reasonable.

argues

that

unsuccessful,

although

those

its

claims

were

claims

were

objectively

Medallion points to recent litigation within the

Eleventh Circuit to demonstrate that there is a basis for
reasonable minds to disagree regarding copyright infringement
of architectural plans. (Doc. # 48-4).

Medallion identifies

one such case as Home Design Services, Inc. v. Turner Heritage
Homes Inc., 825 F.3d 1314 (11th Cir. 2016).

Acknowledging

the presence of similar cases being litigated on the topic of
copyright infringement of architectural plans, the Court

6 

nevertheless

finds

Medallion’s

claims

were

objectively

unreasonable based on the specific facts presented here.
Intervest Construction, Inc. v. Canterbury Estate Homes,
Inc., 554 F.3d 914 (11th Cir. 2008) is a binding decision
that controls the outcome in the instant case. (Doc. # 45 at
6). Intervest addressed a copyright claim to architectural
plans containing the basic four-three split layout. Medallion
is correct that the same issues were raised recently in Home
Design Services, Inc., 825 F.3d at 1314.
In both cases, the architectural plans shared the same
overall layout, but the layout was not copyrightable. The law
governing this issue states, “[b]ecause the layouts were
noncopyrightable, and because the floor plans differed in
terms of dimensions, wall placement, and the presence and
arrangement of particular features (or use of slightly varied
features), we held that the similarities between the plans
concerned only their noncopyrightable elements.” Home Design
Servs., 825 F.3d at 1324.
Medallion was, or should have been, aware of the binding
legal standard set forth in Intervest. Medallion’s own expert
identified more differences than similarities in the floor
plans such as: differences in wall placement, dimension, and
functions of particular features around the house. (Doc. # 38

7 

at 9–16). Additionally, Medallion’s Corporate Representative
was not able to provide any specific details regarding the
similarities

between

the

Dukes’

home

and

the

protected

copyright. He only gave a generalized statement that “[t]he
rooms were laid out the same.” (Logan Dep. Vol. II Doc. # 36
at 15). Based on this information, Medallion should have known
there was no copyright infringement.
More importantly, the Eleventh Circuit concluded in its
Opinion affirming this Court’s summary judgment Order that
there were “numerous and significant differences” between the
plans and any similarities were not protectable elements.
(Doc. # 45 at 9). In fact, the differences between the two
designs were so significant, this Court previously found that
no reasonable fact finder could determine that a copyright
infringement occurred and issued summary judgment for the
Dukes. For the reasons discussed above, the Court finds that
Medallion's copyright claim was objectively unreasonable.
4. Compensation and Deterrence
Finally, in deciding whether to award fees and costs in
a copyright case, the Court considers whether the application
of those factors and imposing attorney’s fees will “further
the goals of the Copyright Act, i.e., by encouraging the

8 

raising of objectively reasonable claims and defenses, which
may serve not only to deter infringement but also to ensure
that the boundaries of copyright law are demarcated as clearly
as possible.” InDyne, Inc. v. Abacus Tech. Corp., 587 Fed.
Appx. 552, 554 (11th Cir. 2014)(quoting Mitek Holdings, 198
F.3d at 842–43).
Medallion argues that an award of attorney’s fees will
“create a chilling effect on future potential Plaintiffs who
believe infringement has occurred.” (Doc. # 48 at 5). The
Court disagrees. Here, an award of fees will deter others
from “bringing lawsuits when they know that there are numerous
differences between their copyrighted work and an allegedly
infringing work which would outweigh any similarity between
the works.” Dream Custom Homes, 2011 WL 7764999, at *10.
Medallion

contends

architectural

it

expert,

relied
George

upon

Merlin,

the

opinion

who

found

of

that

an
the

Dukes’ home and Medallion’s plan were “substantially similar”
and

that

it

had

a

reasonable

belief

that

copyright

infringement had occurred. (Doc. # 48 at 5). However, Merlin
rendered

this

conclusion

after

acknowledging

specific

differences between the two homes. Merlin’s statement that
the homes are substantially similar is belied by his own

9 

description of the many differences between the two homes and
by the record as a whole.
In

completing

the

final

balancing

of

the

Fogerty

factors, Medallion's claim was not frivolous or improperly
motivated within the context of copyright cases. It was,
however, factually and legally unreasonable.  “The purposes
of the copyright laws are served only when parties ‘litigate
meritorious’ arguments”. Dawes-Ordonez v. Forman, 418 Fed.
Appx. 819, 821 (11th Cir. 2011)(quoting  Fogerty, 510 U.S. at
527).
As discussed previously, summary judgment was granted
in favor of the Dukes based on the fact that there were
“numerous and significant differences” between the plans and
any similarities were not protectable elements. Evidence on
the

record

shows

that

Medallion

should

have

known

any

similarity between the plans was significantly out-weighed by
their numerous differences.
Because Medallion's copyright infringement claim was
unreasonable,
resources

they

the

Dukes

expended

should

be

defending

compensated
themselves

for

against

the
an

invalid claim. Also, the award of fees and costs may deter
the filing of similar copyright infringement claims which,
although unreasonable, cost money and time to successfully

10 

defend. Therefore, an award of fees to the Dukes will serve
the interests of compensation and deterrence in this case.
“When the prevailing party is the defendant, who by
definition receives not a small award but no award, the
presumption in favor of awarding fees is very strong. Without
the prospect of such an award the party might be forced into
a nuisance settlement or deterred altogether from exercising
his rights.” Dream Custom Homes, 2011 WL 7764999, at *10
(quoting Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503, 506
(4th Cir. 1994)). Therefore, the Court finds that granting
the Dukes the amount they spent defending against Medallion's
unreasonable copyright infringement claim best serves the
purpose of the Copyright Act. Fogerty, 510 U.S. at 535 n.19.
B.

Amount of Attorney’s Fees Must be Reasonable

Under

the

lodestar

method,

attorney’s

fees

are

calculated by multiplying “the number of hours reasonably
expended by a reasonable hourly rate.” Loranger v. Stierheim,
10

F.3d

776,

781

(11th

Cir.

1994)(citation

omitted).

A

reasonable hourly rate “is the prevailing market rate in the
relevant legal community for similar services by lawyers of
reasonably comparable skills, experience, and reputation.”

11 

Norman v. Hous. Auth. of the City of Montgomery, 836 F.2d
1292, 1303 (11th Cir. 1988).
The Dukes seek $8,760 in attorney’s fees for a total of
43.80 hours of work, by one attorney, David Smith, Esq. at a
rate of $200 an hour. (Smith Aff. Doc. # 46-1 at ¶ 11).

This

amount is facially reasonable and is awarded to the Dukes.
In fact, courts within the Middle District of Florida have
routinely awarded $300.00 per hour in copyright litigation.
See Dream Custom Homes, 2011 WL 7764999, at *11; Clever
Covers, Inc. v. S.W. Fla. Storm Defense, LLC, 554 F. Supp. 2d
1303, 1314 (M.D. Fla. 2008); Palmer v. Braun, No. 6:06-cv1662-Orl-31-JGG, 2005 WL 3093409, *4 (M.D. Fla. Nov. 18,
2005).
C.

Mediation

The

Dukes

also

request

an

award

of

$650

in

costs

attributable to attending mediation. However, it is “well
settled within the Middle District of Florida that costs
associated with mediation, even court ordered mediation, are
not recoverable” to prevailing parties.

Gomez v. Smith, No.

8:13-cv-3185-T-33AEP, 2015 U.S. Dist. LEXIS 116383, at *9
(M.D. Fla. Sept. 1, 2015). See also Lane v. G.A.F. Material
Corp., No. 8:11-cv-2851-T-30TBM, 2013 U.S. Dist. LEXIS 63707,
at *4 (M.D. Fla. May 3, 2013)(“the law is clear that costs

12 

associated
1920.”).

with

This

mediation

rule

applies

are

not

in

the

recoverable
context

of

under

§

copyright

infringement actions. See Katz v. Chevaldina, 127 F. Supp. 3d
1285, 1305 at n.6 (S.D. Fla. 2015).

Accordingly, the Dukes

are not entitled to the amount of $650 requested for the
mediator’s fee.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
The

Court

GRANTS

the

Dukes’

Renewed

Motion

for

Attorney's Fees (Doc. # 46) in the amount of $8,760, but
denies the request for mediation costs.
DONE and ORDERED in Chambers in Tampa, Florida, this 7th
day of October, 2016.

13