Photographic Illustrators Corporation v. Orgill, Inc. et al

Filing 222

Judge Patti B. Saris: MEMORANDUM AND ORDER entered. Orgill's motion for attorneys' fees [Dkt. 216 ] is DENIED.SO ORDERED.(Lara, Miguel)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
___________________________________
)
PHOTOGRAPHIC ILLUSTRATORS CORP.,
)
)
Plaintiff,
)
)
Civil Action
v.
)
No. 14-11818-PBS
)
ORGILL, INC.,
)
)
Defendant.
)
______________________________
)
MEMORANDUM AND ORDER
June 8, 2020
Saris, D.J.
Defendant Orgill, Inc. moves for attorneys’ fees incurred
during its successful defense of this copyright suit brought by
Photographic Illustrators Corporation (“PIC”). The Court “may
. . . award a reasonable attorney’s fee to the prevailing party”
in a copyright action pursuant to 17 U.S.C. § 505. For the
following reasons, the Court declines to award fees here and
DENIES Orgill’s motion [Dkt. 216]. The Court assumes familiarity
with its prior orders in this case and does not recount the
factual or procedural history except as necessary.
Under 17 U.S.C. § 505, district courts have “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). Courts “must make a . . . particularized,

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case-by-case assessment.” Id. In exercising their discretion,
district courts “should give substantial weight to the objective
reasonableness of the losing party’s position.” Id. at 1983.
Reasonableness is an “important” but not “controlling” factor.
Id. at 1988. Courts should also consider such factors as “a
party’s litigation misconduct” and the need for deterrence of
“repeated instances of copyright infringement or overaggressive
assertions of copyright claims.” Id. at 1989. Courts must treat
prevailing plaintiffs and defendants “even-handedly” in this
multi-factor analysis. Id. at 1988.
PIC’s litigation position was not objectively unreasonable.
During the first round of summary judgment briefing before this
Court, PIC largely prevailed and survived summary judgment on
Orgill’s sub-license defense. The case was then stayed pending
an arbitration between PIC and its licensee, Sylvania, from whom
Orgill alleged it had sub-licensed the copyrighted images at
issue. PIC prevailed before the arbitrator on its contract claim
obtaining a judgment of over $9.5 million against Sylvania, as
well as over $5 million in attorneys’ fees and costs. It did not
prevail on its copyright claim, however.
This Court then reopened proceedings for a second round of
summary judgment briefing between PIC and Orgill. Orgill relied
heavily on the preclusive effect of the arbitrator’s distinction
between “conditions” and “covenants” in the license agreement

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between PIC and Sylvania, an issue Orgill had not raised during
the first summary judgment phase. During this second stage of
summary judgment briefing and then on appeal to the First
Circuit, PIC argued that implied sublicenses are a “legal
impossibility” or, in the alternative, that a reasonable
factfinder could determine no implied sublicense was granted by
Sylvania to Orgill.
The First Circuit identified the legal impossibility
argument as a “case of first impression in the circuit courts”
and wrote that it was “for the most part in uncharted waters.”
Photographic Illustrators Corp. v. Orgill, Inc., 953 F.3d 56,
58, 60 (1st Cir. 2020). The First Circuit’s opinion then
carefully considered the parties’ statutory, practical, and
public policy-based arguments before it upheld this Court’s
determination that a sublicense may be implied. Id. at 60-64.
PIC’s litigation position regarding legal impossibility, while
ultimately unsuccessful, was a novel argument that was not
objectively baseless. In this case against Orgill, PIC has not
taken an unreasonable litigation position, a factor this Court
gives “substantial weight.” Kirtsaeng, 136 S. Ct. at 1983.
In addition, PIC did not engage in litigation misconduct.
Although PIC arguably employed overly aggressive litigation
tactics by filing a slew of lawsuits against small-business
sublicensees of Sylvania when its primary dispute was with

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Sylvania itself, this conduct was not so egregious as to
outweigh the other relevant factors. See, e.g., Photographic
Illustrators Corp. v. A.W. Graham Lumber, LLC, 196 F. Supp. 3d
123, 126 (D. Mass. 2016) (transferring to Eastern District of
Kentucky copyright suit brought by PIC against family-owned and
-operated hardware store with 30 employees and single brick-andmortar store). On balance, the Court concludes in its discretion
that Orgill should not recover attorneys’ fees in this action.
In any event, Orgill is not entitled to recover appellate
fees through an application to the district court. See 1st Cir.
R. 39.1(b) (requiring appellate fees application be made to the
First Circuit, which can then choose to remand to the district
court for determination).
ORDER
Orgill’s motion for attorneys’ fees [Dkt. 216] is DENIED.

SO ORDERED.

/s/ PATTI B. SARIS
Hon. Patti B. Saris
United States District Judge

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