Schurr et al v. Molacek et al
Filing
52
ORDER AND REASONS granting Defendants' 12 Motion for Summary Judgment; denying 22 Motion for Discovery; denying 38 Motion for Leave to File. Plaintiffs' claims are DISMISSED WITH PREJUDICE, and Defendants are awarded attorney 9;s fees and costs pursuant to 17 U.S.C. 505. Plaintiff shall file an Affidavit of Attorney's Fees and Costs incurred in defending this suit within 21 days of this Order so that reasonable attorney's fees may be calculated. Signed by Judge Jane Triche Milazzo. (ecm)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
GLENN SCHURR ET AL
CIVIL ACTION
VERSUS
NO: 15-7135
JEROME MOLACEK ET AL
SECTION: “H”
ORDER AND REASONS
Before the Court are Defendants’ Motion for Summary Judgment (Doc.
12), Plaintiffs’ Motion for Additional Time to Conduct Discovery (Doc. 22), and
Plaintiffs’ Motion for Leave to File Supplemental Memorandum in Opposition
(Doc. 38).
For the following reasons, Defendants’ Motion for Summary
Judgment is GRANTED, and Plaintiffs’ Motions are DENIED.
BACKGROUND
This is a civil action for copyright infringement by Plaintiffs Standard
Mapping Service LLC (“Standard”) and Glenn Schurr (“Plaintiffs”) against
Defendants Legend Cartography LLC (“Legend”), Jerome Molacek, Trapper
Marshall, and Lucas Ragusa (“Defendants”).
The parties are in the map-making business.
Plaintiffs have been
creating and producing marine maps and charts of the Louisiana and Gulf
Coast region since 1986 by combining government data and maps with other
1
information and incorporating in-house developed illustrations, design work,
and graphics. Many of Plaintiffs products incorporated two works copyrighted
by Glenn Schurr in 1995 comprising an aerial photo map of Barataria Bay
(VA0000683032)
and an
aerial
photo map of Lafitte-Myrtle Grove
(VA00000726955). In 2011, Plaintiffs began selling digital images of their
maps on secure digital memory cards.
Defendants are newer to the scene. In December 2014, Legend produced
Louisiana Unleashed (“Unleashed”)—a digital map contained on a single SD
card covering the entire Louisiana coast.
In February 2015, Plaintiffs released their own map of the entire
Louisiana coast named Louisiana One (“La1”). Later that year, on October 29,
2015, Defendants released a new coastal map called Louisiana Geaux
(“Geaux”), which used near-infrared imagery and color corrections that were
not used in Unleashed.
On December 22, 2015, Plaintiffs filed a copyright application for La1
(Application No.: 1-2979736091) and other derivative works. On December 28,
2015, Plaintiffs filed suit alleging that Legends’ maps Unleashed and Geaux
infringe on the copyrights of their two registered works and La1. Defendants
answered with counterclaims for declaratory judgments of invalidity and noninfringement and seek recovery of their costs and attorney fees.
Defendants filed the instant Motion for Summary Judgment, alleging
that Plaintiffs’ claims are baseless. Plaintiffs responded in opposition but also
filed a Motion for Additional Time to Conduct Discovery, alleging that they
required additional discovery in order to properly defend Defendants’ Motion.
This Court held oral argument on both of these motions on August 15, 2016.
More than a month later, Plaintiffs filed a Motion for Leave to File a
Supplemental Memorandum in Opposition of Defendants’ Motion for
2
Summary Judgment. This Court will consider each motion in turn.
LEGAL STANDARD
I.
Motion for Additional Time to Conduct Discovery
Rule 56(d) permits a court to deny a motion for summary judgment, or
to defer consideration of it, pending necessary discovery. Rule 56(d) relief is
available when “a nonmovant shows by affidavit or declaration that, for
specified reasons, it cannot present facts essential to justify its opposition.” 1
“Rule 56[(d)] allows for further discovery to safeguard non-moving parties from
summary judgment motions that they cannot adequately oppose.” 2 “Such
motions are broadly favored and should be liberally granted.” 3 Nonetheless,
“a request to stay summary judgment under Rule 56[(d)] must set forth a
plausible basis for believing that specified facts, susceptible of collection within
a reasonable time frame, probably exist and indicate how the emergent facts,
if adduced, will influence the outcome of the pending summary judgment
motion.” 4
“If it appears that further discovery will not provide evidence
creating a genuine issue of material fact, the district court may grant summary
judgment.” 5
II.
Motion for Summary Judgment
Summary judgment is appropriate “if the pleadings, depositions,
answers to interrogatories, and admissions on file, together with affidavits, if
any, show that there is no genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter of law.” 6 A genuine issue
1
Fed. R. Civ. Pro. 56(d).
Culwell v. City of Fort Worth, 468 F.3d 868, 871 (5th Cir. 2006).
3 Id.
4 Raby v. Livingston, 600 F.3d 552, 561 (5th Cir. 2010).
5 Id.
6 Fed. R. Civ. P. 56(c) (2012).
2
3
of fact exists only “if the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” 7
In determining whether the movant is entitled to summary judgment,
the Court views facts in the light most favorable to the non-movant and draws
all reasonable inferences in his favor. 8 “If the moving party meets the initial
burden of showing that there is no genuine issue of material fact, the burden
shifts to the non-moving party to produce evidence or designate specific facts
showing the existence of a genuine issue for trial.” 9 Summary judgment is
appropriate if the non-movant “fails to make a showing sufficient to establish
the existence of an element essential to that party’s case.” 10 “In response to a
properly supported motion for summary judgment, the non-movant must
identify specific evidence in the record and articulate the manner in which that
evidence supports that party’s claim, and such evidence must be sufficient to
sustain a finding in favor of the non-movant on all issues as to which the nonmovant would bear the burden of proof at trial.” 11 “We do not . . . in the absence
of any proof, assume that the nonmoving party could or would prove the
necessary facts.” 12 Additionally, “[t]he mere argued existence of a factual
dispute will not defeat an otherwise properly supported motion.” 13
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Coleman v. Houston Indep. Sch. Dist., 113 F.3d 528 (5th Cir. 1997).
9 Engstrom v. First Nat’l Bank of Eagle Lake, 47 F.3d 1459, 1462 (5th Cir. 1995).
10 Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).
11 John v. Deep E. Tex. Reg. Narcotics Trafficking Task Force, 379 F.3d 293, 301 (5th
Cir. 2004) (internal citations omitted).
12 Badon v. R J R Nabisco, Inc., 224 F.3d 382, 394 (5th Cir. 2000) (quoting Little v.
Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994)).
13 Boudreaux v. Banctec, Inc., 366 F. Supp. 2d 425, 430 (E.D. La. 2005).
7
8
4
LAW AND ANALYSIS
I.
Motion for Additional Time to Conduct Discovery
Rule 56(d) relief is available when “a nonmovant shows by affidavit or
declaration that, for specified reasons, it cannot present facts essential to
justify its opposition.” 14 “[A] request to stay summary judgment under Rule
56[(d)] must set forth a plausible basis for believing that specified facts,
susceptible of collection within a reasonable time frame, probably exist and
indicate how the emergent facts, if adduced, will influence the outcome of the
pending summary judgment motion.” 15 “If it appears that further discovery
will not provide evidence creating a genuine issue of material fact, the district
court may grant summary judgment.” 16
Prior to the filing of this Motion, Plaintiffs had served Defendants with
Interrogatories and Requests for Production of Documents, to which
Defendants responded. Still, Plaintiffs assert that certain depositions will
reveal additional information and include by declaration a non-exhaustive list
of concerns. However, numerous questions in that list have already been
answered by Defendants in discovery.
Even so, simply providing a non-
exhaustive list of inquiries does not satisfy the Rule 56(d) requirement that
Plaintiffs explain how this non-exhaustive list will unearth material facts or
how those material facts would influence the outcome of the summary
judgment motion.
Plaintiffs have failed to provide this Court with any of the information
required by Rule 56(d) and, accordingly, this motion is denied.
Fed. R. Civ. Pro. 56(d).
Raby v. Livingston, 600 F.3d 552, 561 (5th Cir. 2010).
16 Id.
14
15
5
II.
Motion for Leave to File Supplemental Opposition
Defendants’ Motion for Summary Judgment came under submission on
June 29, 2016, making Plaintiffs’ opposition due on June 21. Oral argument
was held on August 15. Thereafter, on September 16, Plaintiffs sought to
supplement their opposition with a newly obtained report from an expert. The
Court finds that allowing supplementation at this late date would be
prejudicial to Defendants. More importantly, this Court has reviewed the
supplement and finds that it would not change the conclusion reached herein.
III.
Motion for Summary Judgment
Defendants move for summary judgment on Plaintiffs’ claims of federal
copyright infringement and LUTPA.
Defendants also seek an award of
attorney’s fees. This Court will address each issue in turn.
a. Copyright Infringement
First, Defendants argue that Plaintiffs cannot succeed on their claim for
copyright infringement. “To prove copyright infringement, a plaintiff must
establish (1) ownership of a valid copyright; (2) factual copying; and (3)
substantial similarity.” 17 Defendants contend that Plaintiffs cannot establish
any of these necessary elements. This Court will consider each in turn.
i. Ownership of a Valid Copyright
“To establish ‘ownership,’ plaintiff must prove that material is original,
that it can be copyrighted, and that he has complied with statutory
formalities.” 18 “A plaintiff has complied with statutory formalities when the
Copyright Office receives the plaintiff’s application for registration, fee and
17
2015).
Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527, 549 (5th Cir.
18
Lakedreams v. Taylor, 932 F.2d 1103, 1107–08 (5th Cir. 1991) (citation omitted).
6
deposit.” 19 Defendants do not dispute that Plaintiffs’ copyright registrations
are prima facie proof of a valid copyright. Rather, Defendants argue that
Plaintiffs’ maps do not contain any elements of original expression but merely
ideas and facts—content not entitled to copyright protection.
Plaintiffs
respond that “[b]y creatively selecting, arranging, and skillfully manipulating
the public domain images and data, [Plaintiffs] have transformed the
otherwise unprotected elements contained in these maps into protectable
subject matter when viewed as a whole.” 20 Additionally, Plaintiffs claim that
their maps are the result of “constant refinement going back many years, with
virtually every element of the product (whether digital or printed) requiring a
multitude of design choices. . . .” 21 Among other things, these choices included
selecting data sources, stitching together mosaics and reconciling gaps in
coverage, color corrections, and insertion of navigational charts, points of
interest, elevation data, annotations and other information. 22
“The sine qua non of copyright is originality.” 23 Originality does not
require “novelty, ingenuity, or aesthetic merit.” 24 Originality requires “that
the work was independently created by the author (as opposed to copied from
other works), and that it possesses at least some minimal degree of
creativity.” 25 Thus, “the copyright is limited to those aspects of the work—
termed ‘expression’—that display the stamp of the author’s originality.” 26
Id. at 1108 (citing Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386–87 (5th Cir.
1984)); Premier Dealer Servs., Inc. v. Duhon, No. 12-1498, 2013 WL 3984154, at *3 (E.D. La.
July 31, 2013).
20 Doc. 21 at 1.
21 Doc. 21-1 at 4.
22 Id. at 4-5.
23 Feist Publications v. Rural Tel. Service, 499 U.S. 340, 345 (1991).
24 H.R.Rep. No. 1476, 94th Cong., 2d Sess. 51 (1976), reprinted in 1976 U.S.C.C.A.N.
5659, 5664; see also Feist, 499 U.S. at 345.
25 Feist, 499 U.S. at 358.
26 Kepner–Tregoe, 12 F.3d at 533 (quoting Harper & Row, Publishers, Inc. v. Nation
Enterprises, 471 U.S. 539 (1985)).
19
7
Plaintiffs’ maps pass muster because Plaintiffs’ selection, coordination,
and arrangement of the information depicted are sufficiently creative to qualify
the maps as original “compilations” of facts. 27 Under the originality standard,
bare facts are never copyrightable “because facts do not owe their origin to an
act of authorship.” 28 A compilation of facts, however, may be copyrightable if
the author made choices as to “which facts to include, in what order to place
them, and how to arrange the collected data so that they may be used
effectively by readers.” 29
The author’s selection, coordination, and
arrangement of facts, however, are protected only if they were “made
independently . . . and entail a minimal degree of creativity.” 30
Defendants argue that these steps are no more than evidence of
Plaintiffs’ “sweat of the brow”—a doctrine that has been rejected in favor of an
analysis
focusing
on
the
originality
of
the
compiler’s
expression. 31
Disregarding any amount of effort that was required on Plaintiffs’ part, this
evidence demonstrates that Plaintiffs exercised substantial judgment and
discretion to reconcile inconsistencies among various sources, to select features
to include in the final map, and to portray the information in a manner that
would be useful to the public. Therefore, Plaintiffs’ maps display the necessary
level of originality to enjoy copyright protection.
ii. Factual Copying
“[F]actual copying, can be proved by direct or circumstantial evidence.” 32
To make out a circumstantial claim, a plaintiff must prove that (1) the
defendant had access to the copyrighted work before creation of the infringing
Mason v. Montgomery Data, Inc., 967 F.2d 135, 141 (5th Cir. 1992).
Feist, 499 U.S. at 345.
29 Id.
30 Id.
31 Id. at 353; Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1346
(5th Cir. 1994), opinion supplemented on denial of reh’g, 46 F.3d 408 (5th Cir. 1995).
32 Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007).
27
28
8
work and (2) the works contain similarities that are probative of copying. 33 In
other words, for the circumstantial case of factual copying, the combined
existence of access to the copyrighted work and similarities between the two
works establishes the assumption as a matter of law that copying in fact
occurred. Once a plaintiff circumstantially establishes factual copying, the
defendant may rebut the circumstantial evidence if he can prove that he
independently created the work. 34
1. Access
The access element is satisfied if the person who created the allegedly
infringing work had a reasonable opportunity to view the copyrighted work. 35
A bare possibility of access is insufficient, and any showing cannot be “based
on speculation or conjecture.” 36
The question here is whether Plaintiffs have produced more than
speculation and conjecture regarding access by Defendants. The parties agree
on the following timeline:
May 22, 1995: Standard received copyrights for aerial photo maps of
Lafitte-Myrtle Grove (VA0000726955) and Barataria
Bay (VA0000683032). 37
Jan. 26, 2015: Legend’s Unleashed map covering the entire Louisiana
coast was placed on sale. 38
Feb. 2015:
Standard’s La1 map covering the entire Louisiana coast
Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357, 367–68 (5th
Cir. 2004). Alternatively, factual copying may be proved by showing such a “striking
similarity” between the two works that the similarity could only be explained by actual
copying. Id. at 371 n.10; see also Selle v. Gibb, 741 F.2d 896, 904 (7th Cir. 1984) (requiring
similarity “of a kind that can only be explained by copying, rather than by coincidence,
independent creation, or prior common source.”).
34 Positive Black Talk, 394 F.3d at 367–68.
35 Ferguson v. Nat’l Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978).
36 Guzman v. Hacienda Records & Recording Studio, Inc., 808 F.3d 1031, 1037 (5th
Cir. 2015).
37 Doc. 1 at ¶ 16; Doc. 12-1 at ¶¶ 33–34.
38 Doc. 12-1 at ¶ 13.
33
9
was placed on sale. 39
Oct. 29, 2015: Legend’s Geaux Card was placed on sale. 40
Dec. 22, 2015: Standard applies for copyright of La1 card. 41
Dec. 28, 2015: Standard files suit for copyright infringement. 42
Plaintiffs admit that they cannot be certain if or when Legend saw
Standard’s products (either in finished product or source file). Plaintiffs urge
the Court to allow circumstantial evidence to prove access by showing that the
plaintiffs’ work was widely disseminated. Plaintiffs state that their maps were
used during live television broadcasts in 1999 and 2011, and that they began
selling digital images in 2011 on secure digital memory cards. 43 Although this
Circuit has not rejected the dissemination theory, neither has it officially
adopted it, preferring instead the reasonably possibility of access standard. 44
Plaintiffs have not offered evidence or case law to support a finding that two
live shows paced a dozen years apart amounts to reasonable access.
Instead, Plaintiffs assert that Defendants must have used the
information contained in the memory cards. Plaintiffs’ theory suggests that
Defendants bought the memory cards, broke the encryption, and used the data
contained on the cards to create Unleashed and Geaux. “Reasoning that
amounts to nothing more than a ‘tortuous chain of hypothetical transmittals’
is insufficient to infer access.” 45
“[O]nce the moving party has properly
supported his summary judgment motion, the nonmoving party must rebut
Doc. 12-1 at ¶ 14.
Doc. 12-1 at ¶ 38.
41 Doc. 1 at ¶ 21.
42 Id.
43 Doc. 21-1 at ¶¶ 4–6.
44 See Guzman, 808 F.3d at 1038 (stating that “circumstantial evidence can be used to
prove access either by (1) establishing a chain of events linking the plaintiff’s work and the
defendant’s access, or (2) showing that the plaintiff’s work has been widely disseminated” but
declining to adopt either theory and apply instead the reasonable possibility of access
standard).
45 Armour, 512 F.3d at 153 (citations omitted).
39
40
10
with ‘significant probative’ evidence.” 46 Such evidence must be sufficient on its
own to “support a jury verdict in the nonmoving party’s favor.” 47 “Taking the
access and summary judgment standards together, a plaintiff can survive
summary judgment only if his evidence is significantly probative of a
reasonable opportunity for access.” 48
Plaintiffs have not offered more than speculation or conjecture over
whether Defendants had access to the registered copyrighted materials before
making Unleashed or that Defendants additionally had access to La1 before
creating Geaux. Plaintiffs’ theory would require a jury to set aside the fact
that Defendants could have used maps and data already available in the public
domain—maps and data that are current, free, and easily accessible.
Moreover, Plaintiffs do not offer any direct evidence to support their
theory.
Plaintiffs point to one declaration to establish the “wide-spread
dissemination of its maps in the market, the display of the maps at tradeshows,
and proof Defendant Raguso acquired Standards’ maps prior to Legend’s [sic]
creating its own.” 49 However, this declaration merely states when Plaintiffs
began selling their maps on the digital cards and a short list of the types of
consumers to whom they marketed and sold these cards. Plaintiffs have not
offered any direct evidence disclosing how many cards were sold over any time
period, at which tradeshows they displayed their maps, or whether Defendants
attended those same tradeshows. 50 Plaintiffs only offer evidence stating when
they offered their material for public sale, which is not by itself significantly
probative of a reasonable opportunity for access.
Id.
Id.
48 Id.
49 Doc. 21, p. 13.
50 Peel & Co. v. Rug Mkt., 238 F.3d 391, 394–97 (5th Cir. 2001) (relying in particular
on evidence that the parties attended the same tradeshows where the allegedly copied
material was displayed to find a reasonable possibility of access).
46
47
11
2. Probative Similarity
The second element—probative similarity—requires a showing that the
works, “when compared as a whole, are adequately similar to establish
appropriation.” 51 In some cases, factual copying may be proven without a
showing of access “[i]f the two works are so strikingly similar as to preclude
the possibility of independent creation.” 52
Here, the parties submitted samples of their respective maps, which are
not so strikingly similar that they preclude the possibility of independent
creation. The samples, taken as a whole, differ in resolution, color, coverage,
and vector data.
3. Independent Creation
Even if Plaintiffs established a prima facie case of copying, Defendants
may still rebut that case with evidence of independent creation. 53 Defendants
submitted evidence under seal depicting the method and sources used to
produce Unleashed and Geaux. This evidence adequately supports a finding
that the Unleashed and Geaux maps could have been independently created.
iii. Substantial Similarity
“While the question of substantial similarity typically should be left to
the factfinder, summary judgment may be appropriate if the court can
conclude, after viewing the evidence and drawing inferences in a manner most
favorable to the nonmoving party, that no reasonable juror could find
substantial similarity.” 54
To assess substantial similarity, “a side-by-side
comparison must be made between the original and the copy to determine
51
omitted).
Nola Spice Designs, 783 F.3d at 550 (internal quotation marks and citations
Id.; Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 141–42 (5th Cir. 2004).
Peel, 238 F.3d at 398.
54 Nola Spice Designs, 783 F.3d at 550.
52
53
12
whether a layman would view the two works as ‘substantially similar.’” 55
“However, where the copyrighted work contains unprotectable elements,
the first step is to distinguish between protectable and unprotectable elements
of the copyrighted work.” 56 The next inquiry is whether, from the perspective
of a layman or ordinary observer, the allegedly infringing work bears a
substantial similarity to the protectable aspects of the original work. 57 “Our
precedents also support consideration of the importance of the copied
protectable elements to the copyrighted work as a whole.” 58
Plaintiffs concede that their maps are “derivative” works, meaning that
they are “based upon one or more preexisting works.” 59 “The copyright in a . . .
derivative work extends only to the material contributed by the author of such
work, as distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material.” 60
Plaintiffs do not discuss which protected elements in Standard’s maps
share any similarity with elements in Legend’s maps. Instead, Plaintiffs argue
only that “Standard’s map compared to Legend’s evokes the same look and feel
from the user.” However, Plaintiffs do not articulate what that “look and feel”
might be.
Additionally, Plaintiffs concede that Unleashed “represented a starkly
different” product, asserting only that Geaux is similar to Standard’s products.
In any case, Plaintiffs have not pointed to any protected elements or
Id. (quoting Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir. 1997)).
Id.
57 Id. (citing Peel, 238 F.3d at 398 (“[A] layman must detect piracy without any aid or
suggestion or critical analysis by others.” (internal quotation marks and citation omitted)).
58 Id. (citing Positive Black Talk, 394 F.3d at 373 n.12, abrogated on other grounds by
Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010)); Eng’g Dynamics, 26 F.3d at 1343; Nola
Spice Designs, 783 F.3d at 550.
59 17 U.S.C. § 101.
60 17 U.S.C. § 103(b); see also Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 109–110
(2d Cir. 2001).
55
56
13
articulated how the “look and feel” of either Unleashed or Geaux is
substantially similar to Standard’s own protected works. Thus, Plaintiffs have
not raised a genuine issue of material fact. 61
In summary, Plaintiffs have not identified specific evidence in the record
to show factual copying and substantial similarity—elements essential to their
claim of copyright infringement. Accordingly, summary judgment is granted
on this claim.
b. LUTPA
Defendants next argue that Plaintiffs’ claims under the Louisiana Unfair
Trade Practice and Consumer Protection Act (“LUTPA”) should be dismissed
either because they are preempted by the Copyright Act or because this Court
lacks jurisdiction to hear them. This Court agrees that, having dismissed
Plaintiffs’ copyright infringement claim, there is no longer a basis for federal
jurisdiction over this matter.
When all federal claims are dismissed or
otherwise eliminated before trial, the court should generally decline to exercise
supplemental jurisdiction over any remaining state law claims. 62 In deciding
whether to continue exercising jurisdiction, courts should consider “both the
statutory provisions of 28 U.S.C. § 1367(c) and the balance of the relevant
factors of judicial economy, convenience, fairness, and comity.” 63
Having
considered these factors, this Court declines to exercise supplemental
jurisdiction over Plaintiffs’ remaining state law claims. Summary judgment
was filed early in this matter, and therefore, judicial economy and comity
would be best served by declining to decide the remaining state law issues.
Hahn v. Hunt, No. 15-2867, 2016 WL 2625885, at *5 (E.D. La. May 7, 2016) (“The
nonmoving party on a motion for summary judgment may not rest upon the pleadings, but
must identify specific facts in the record and articulate the precise manner in which that
evidence establishes a genuine issue for trial.”).
62 See Bass v. Parkwood Hosp., 180 F.3d 234, 247 (5th Cir. 1999); Petroleum v.
Dresser Indus., 962 F.2d 580, 585 (5th Cir. 1992).
63 Batiste v. Island Records Inc., 179 F.3d 217, 227 (5th Cir. 1999).
61
14
c. Attorney Fees
Finally, Defendants have asked for an award of attorney’s fees in
defending this lawsuit. The Copyright Act provides that a district court “may
. . . award a reasonable attorney’s fee to the prevailing party.” 64 Although the
district court has broad leeway under § 505 to determine whether to award
fees, the Supreme Court has established several guidelines for the district
courts. A district court may not simply award fees as a matter of course but,
instead, must make a case-by-case assessment. 65 Additionally, the district
court “may not treat prevailing plaintiffs and prevailing defendants any
differently.” 66
The district court should give “substantial weight to the
objective reasonableness of the losing party’s position,” but must also “give due
consideration to all other circumstances relevant to granting fees.” 67 The
“other
circumstances”
include
“frivolousness,
motivation,
objective
unreasonableness[,] and the need in particular circumstances to advance
considerations of compensation and deterrence.” 68 “[I]n 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).” 69
Based on an individualized assessment of this case, the Court exercises
its discretion under § 505 to award Defendants their attorney’s fees incurred
in defending against Plaintiffs’ Copyright Act claim. Defendants have offered
evidence of Plaintiffs’ improper motivation in pursuing this suit. Defendant
Trapper Marshall stated in his declaration that “on more than one occasion,
[Plaintiff Glenn Schurr] mentioned to me being upset about the price of
17 U.S.C. § 505.
See Fogerty v. Fantasy, Inc., 510 U.S. 517, 533 (1994).
66 See Kirtsaeng v. Wiley, 136 S. Ct. 1979, 1985 (June 16, 2016) (citing Fogerty, 510
U.S. at 527).
67 Id. at 1983.
68 Id. at 1985 (quoting Fogerty, 510 U.S. at 534 n.19).
69 Id. at 1988.
64
65
15
Legend’s products. Mr. Schurr also bragged that he had used copyright suits
to stop other companies.” 70 The lack of factual support provided by Plaintiffs
in defense of their claims makes Plaintiffs’ claims appear frivolous,
unreasonable, and calculated to subject a smaller competitor to the high cost
of defending itself in litigation.
Accordingly, Defendants are entitled to
attorney’s fees.
CONCLUSION
Defendants’ Motion for Summary Judgment is GRANTED, and
Plaintiffs’ Motions are DENIED. Plaintiffs’ claims are DISMISSED WITH
PREJUDICE, and Defendants are awarded attorney’s fees and costs pursuant
to 17 U.S.C. § 505. Plaintiff shall file an Affidavit of Attorney’s Fees and Costs
incurred in defending this suit within 21 days of this Order so that reasonable
attorney’s fees may be calculated.
New Orleans, Louisiana this 14th day of November, 2016.
____________________________________
JANE TRICHE MILAZZO
UNITED STATES DISTRICT JUDGE
70
Doc. 12-4 at ¶45.
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