Dennis Pierce, Inc. et al v. Pierce et al

Filing 102

MEMORANDUM OPINION AND ORDER denying 87 Motion for Attorney Fees, sustaining in part and overruling in part Defendant's objections 92 to Plaintiff's Bill of Costs 86 . Signed by District Judge Keith Starrett on 4/6/18. (cb)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
EASTERN DIVISION

DENNIS PIERCE, INC., et al.
v.

PLAINTIFFS
CIVIL ACTION NO. 2:16-CV-102-KS-MTP

LETITIA PIERCE, et al.

DEFENDANTS

MEMORANDUM OPINION AND ORDER
The Court discussed the factual background of this case in a previous order. See
Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KS-MTP, 2017 WL 3567528, at *1 (S.D.
Miss. Aug. 17, 2017). It held a jury trial in this matter on November 7-8, 2017. The
jury returned a verdict in Plaintiffs’ favor as to Defendant’s counterclaim of copyright
infringement. See Jury Verdict at 1, Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KSMTP (S.D. Miss. Nov. 9, 2017), ECF No. 84.
Plaintiffs filed a Motion for Attorney’s Fees [87] and a Bill of Costs [86].
Defendant opposes the Motion [91] for fees and certain aspects of the Bill of Costs [92].
For the reasons below, the Court denies the Motion for Attorney’s Fee’s [87] and
sustains in part and overrules in part Defendant’s objections [92] to Plaintiffs’ Bill
of Costs [86].
A.

Motion for Attorney’s Fees [87]
Under the Copyright Act, “the court in its discretion may allow the recovery of

full costs,” and it “may . . . award a reasonable attorney’s fee to the prevailing party as
part of the costs.” 17 U.S.C. § 505. The statute grants the Court “broad leeway” in

awarding fees. Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985, 195 L. Ed.
2d 368 (2016). However, the Supreme Court placed two key restrictions on the Court’s
discretion. First, the Court may not “award attorney’s fees as a matter of course;
rather, a court must make a more particularized, case-by-case assessment.” Id.
(quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S. Ct. 1023, 127 L. Ed. 2d 455
(1994)). Second, “a court may not treat prevailing plaintiffs and prevailing defendants
any differently; defendants should be encouraged to litigate meritorious copyright
defenses to the same extent that plaintiffs are encouraged to litigate meritorious
claims of infringement.” Id.
The Supreme Court also “noted with approval several nonexclusive factors to
inform a court’s fee-shifting decisions: frivolousness, motivation, objective
unreasonableness, and the need in particular circumstances to advance considerations
of compensation and deterrence.” Id. The Court should place “substantial weight” on
the objective reasonableness factor, but it should also give “due consideration” to the
other factors. Id. at 1983. Even if a losing party advances a reasonable claim or
defense, the Court may still award fees in light of the other factors. Id. “There is no
precise rule or formula for making these determinations, but instead equitable
discretion should be exercised in light of [these] considerations.” Fogerty, 510 U.S. at
534.
In many respects, this case was a classic “he-said, she-said” situation. Letitia
Pierce claimed that she created the disputed logo without Dennis Pierce’s input;

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Dennis Pierce claimed that he substantially contributed to its creation. Letitia Pierce
claimed that Dennis Pierce’s companies used the logo with her permission; Dennis
Pierce claimed that Letitia Pierce created it as a work for hire. The parties did not even
agree on basic facts such as when Dennis Pierce started using the logo, who came up
with the general idea to create a logo, or when the disputed logo was created. With so
many basic facts in contention and the parties providing such divergent, contentious
testimony at trial, the Court can not conclude that Ms. Pierce’s copyright infringement
counterclaim was frivolous or objectively unreasonable.
As for motivation, the Court does not believe that either party has clean hands,
and it is not inclined to award fees on this basis. Regardless of the legal technicalities
and outcome, Dennis and Letitia Pierce literally made a federal case out of their family
squabbles. Fueled by spite, bitterness, ego, and years of acrimony, the parties turned
this Court into a forum for their dirty laundry. The Court is not inclined to award
either party in these circumstances.
“[C]opyright law ultimately serves the purpose of enriching the general public
through access to creative works.” Kirtsaeng, 136 S. Ct. at 1986. The general public is
not enriched by family members using federal copyright law as a means of harassing
one another. In that respect, the Court does not believe considerations of compensation
and deterrence are particularly applicable here, in light of the unique situation and,
in the Court’s opinion, the unclean hands on both sides of the case. The Court denies
Dennis Pierce’s motion for attorney’s fees.
B.

Bill of Costs
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Rule 54 permits the Court to award costs to the prevailing party. FED. R. CIV.
P. 54(d)(1). Congress limited the recoverable costs to certain categories. See 28 U.S.C.
§ 1920. The Court “may only award those costs articulated in section 1920 absent
explicit statutory or contractual authorization to the contrary.” Gagnon v. United
Technisource Inc., 607 F.3d 1036, 1045 (5th Cir. 2010). “[C]ourts are not accountants
and [parties] should not be tagged with either costs or expense bills that are horseback
estimates. Those who are entitled to recover costs and expenses bear the burden of
furnishing a reasonable accounting.” Copper Liquor, Inc. v. Adolph Coors Co., 684 F.2d
1087, 1099 (5th Cir. 1982), overruled on other grounds, 790 F.2d 1174 (5th Cir. 1986).
However, there is “a strong presumption that the prevailing party is prima facie
entitled to costs and it is incumbent on the losing party to overcome that presumtion
since denial of costs is in the nature of a penalty.” Marmillion v. Am. Int’l Ins. Co., 381
F. App’x 421, 429 (5th Cir. 2010).
Plaintiff filed a Bill of Costs for $2,807.13. Defendant made several objections
to the Bill of Costs, which the Court now addresses.
1.

Deposition Costs

First, Defendant argues that Plaintiffs provided inadequate justification for
costs associated with depositions. Plaintiffs requested $1,823.50 for depositions of
Darian Pierce, Elisa Pierce Collins, Letitia Pierce, and Jeffery Aker, and the deposition
transcripts of Ted Chandler and Dennis Pierce.
The Fifth Circuit provided the following summary of the law governing recovery

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of costs for deposition transcripts:
[P]revailing parties are entitled to recover the costs of original depositions
and copies under 28 U.S.C. § 1920(2) and § 1920(4) respectively, provided
they were “necessarily obtained for use in the case.” Although some courts
have disagreed, we have consistently held that a deposition need not be
introduced into evidence at trial in order to be “necessarily obtained for
use in the case.” If, at the time it was taken, a deposition could
reasonably be expected to be used for trial preparation, rather than
merely for discovery, it may be included in the costs of the prevailing
party. Similarly, a deposition copy obtained for use during trial or for
trial preparation, rather than for the mere convenience of counsel, may
be included in taxable costs. Whether a deposition or copy was necessarily
obtained for use in the case is a factual determination to be made by the
district court.
Fogleman v. ARAMCO, 920 F.2d 278, 285-86 (5th Cir. 1991) (citations, punctuation,
footnotes omitted). The party seeking an award of costs bears the burden of proof.
Copper Liquor, 684 F.2d at 1099.
Dennis Pierce, Letitia Pierce, and Elisa Pierce Collins all testified at trial.
Therefore, taking their depositions and obtaining transcripts was necessary for trial
preparation. Indeed, Dennis Pierce and Letitia Pierce are the parties to this litigation,
and it was always certain that they would testify at trial. The transcript of Ted
Chandler’s deposition was actually read into the record at trial. Therefore, the Court
concludes that it was also obtained in preparation for trial. Also, Defendant identified
Letitia Pierce, Dennis Pierce, Elisa Collins, and Ted Chandler as “will call” witnesses
at trial. See Pretrial Order at 13, Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KSMTP (S.D. Miss. Oct. 24, 2017), ECF No. 71. Defendant listed Darian Pierce as a “may
call” witness, id., and it was reasonable for Plaintiffs to expect his testimony as to
whether the sale of Pierce Realty, Inc. included the disputed logo. Therefore, the Court
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will award Plaintiffs the cost of depositions and transcripts for Dennis Pierce, Letitia
Pierce, Elisa Pierce Collins, Darian Pierce, and Ted Chandler.
The Court does not know who Jeffrey Aker is or how he is connected to this case.
In support of their request for costs for Aker’s deposition and transcript, Plaintiffs only
state that Aker was identified in Defendant’s Supplemental Initial Disclosures as a
person likely to have discoverable information. The Fifth Circuit has held that the
Court may not award costs for depositions taken “merely for discovery.” Fogleman, 920
F.2d at 285. Rather, they must “reasonably be expected to be used in trial preparation.”
Id. Plaintiffs have not demonstrated that they reasonably expected to use Aker’s
deposition at trial. Therefore, the Court disallows $251.75 of the requested $1,823.50
for depositions and transcripts. See Bill of Costs at 21, Dennis Pierce, Inc. v. Pierce, No.
2:16-CV-102-KS-MTP (S.D. Miss. Dec. 21, 2017), ECF No. 86.
2.

Private Service of Subpoenas

Defendant objects to Plaintiffs’ request for $240.00 for private process servers.
In response, Plaintiffs withdrew the request. Therefore, the Court sustains Defendant’s
objection to $240.00 for private process servers.
3.

Copying and PACER Charges

Plaintiffs’ requested $196.50 for copying and PACER charges. Defendant
objected to the request for PACER charges because such costs are not specifically
enumerated in 28 U.S.C. § 1920. Defendants objected to the copying costs because
Plaintiffs did not demonstrate that the copies were necessary for use at trial in
presenting evidence to the Court. In response, Plaintiffs withdrew their request for
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PACER charges and withdrew all but $51.80 of their requested copying costs.
Therefore, the Court sustains Defendant’s objection to the PACER charges and
withdrawn copying costs.
As for the remaining $51.80 of copying costs, Plaintiffs represented that they
were incurred in the days leading up to trial and on the day trial began. Plaintiffs note
that the Court required all exhibits to be pre-marked and required the parties to
provide three copies of the exhibits – one each for the record, the undersigned judge,
and the law clerk. The Court is satisfied that these copying costs were necessarily
incurred for use at trial. Therefore, the Court overrules Defendant’s objection with
respect to them.
4.

Summary

Plaintiffs requested $2,807.13 in costs. The Court sustained Defendant’s
objections to $636.45 of the requested costs.1 Therefore, the Court awards Plaintiffs
$2,170.68 in costs.
C.

Conclusion
For the reasons below, the Court denies the Motion for Attorney’s Fee’s [87].

The Court also sustains in part and overrules in part Defendant’s objections [92]
to Plaintiffs’ Bill of Costs [86] and awards Plaintiffs $2,170.68 in costs.
SO ORDERED AND ADJUDGED this 6th day of April, 2018.

1

$251.75 (Akers deposition) + $240.00 (process servers) + $144.70 (copying
and PACER charges) = $636.45
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___/s/

Keith Starrett ________
KEITH STARRETT
UNITED STATES DISTRICT JUDGE

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