Bayoh v. Afropunk Fest 2015 LLC et al

Filing 196

MEMORANDUM OPINION AND ORDER re: 186 MOTION for Attorney Fees and Costs. filed by Jocelyn Cooper, Matthew Morgan, Afropunk LLC. The Defendants' motion for attorney's fees and costs is granted in part. The Clerk of Court shall enter a bill of costs in favor of the Defendants in the amount of $13,652.87. (Signed by Judge Denise L. Cote on 2/23/2021) (jca) Transmission to Orders and Judgments Clerk for processing.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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X
:
:
MAMBU BAYOH,
:
Plaintiff,
:
:
-v:
:
AFROPUNK LLC, MATTHEW MORGAN and
:
JOCELYN COOPER, individually,
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Defendants.
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:
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18cv5820
(DLC)
MEMORANDUM
OPINION AND
ORDER

APPEARANCES
For plaintiff Mambu Bayoh:
Robert Leslie Greener
Robert L. Greener, Law Office
112 Madison Avenue, 6th Floor
New York, NY 10118
For defendants Afropunk LLC, Matthew Morgan, and Jocelyn Cooper,
individually:
Jonathan D. Goins
Brian Pete
Devin S. Cohen
Lewis Brisbois Bisgaard & Smith LLP
77 Water Street 21st Floor
New York, NY 10005
DENISE COTE, District Judge:
On December 18, 2020, this Court dismissed the plaintiff’s
copyright action after concluding that he was not entitled to
any form of relief.

On January 4, 2021, the defendants moved

for attorney’s fees and costs.

For the following reasons, the

defendants are awarded a portion of the costs they seek.
Background
Plaintiff Mambu Bayoh, a photographer, sued Afropunk LLC
(“Afropunk”) and two of its employees (collectively,
“Defendants”) for copyright infringement.

Bayoh claimed that

the Defendants’ use of his copyrighted photographs in connection
with the promotion of Afropunk’s music festivals exceeded the
scope of the license he had given Afropunk.
Because Bayoh did not timely register his photographs, he
was barred from pursuing an award of statutory damages or
attorney’s fees.

Bayoh therefore sought to recover actual

damages and Afropunk’s profits.

Because Bayoh was not engaged

in the business of selling or licensing his photographs, he
could identify no actual damages.
To support his claim for disgorgement of Afropunk’s
profits in the amount of $17,447,718, Bayoh sought to introduce
testimony from two expert witnesses.

Afropunk had paid Bayoh

only $1,200 to use his photographs and had only limited
revenues.

Pursuant to Daubert and its progeny, Bayoh’s damages

experts were precluded from testifying at trial and his claim
for damages was dismissed.

Bayoh v. Afropunk LLC, No. 18CV5820

(DLC), 2020 WL 6269300, at *1 (S.D.N.Y. Oct. 26, 2020).

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Following that ruling, Bayoh resurrected a claim for
injunctive relief.

An Opinion of December 11 denied Bayoh’s

request for a permanent injunction.

Finally, on December 18,

the Court vacated a preliminary injunction that had been issued
earlier in the litigation and dismissed the case.
On January 4, 2021, the Defendants moved for attorney’s
fees and costs pursuant to Rule 54(d) of the Federal Rules of
Civil Procedure and 17 U.S.C. § 505.
submitted on January 29.

That motion became fully

The Defendants seek to recover

$511,655 in attorney’s fees and $27,482.29 in estimated costs.
These costs include $18,682.32 of legal research expenses,
filing fees, photocopying expenses, travel expenses, mailing
expenses, “consulting/investigation” expenses, and deposition
costs, as well as $8,880 of expert witness expenses.1
Discussion
The Copyright Act provides: “[T]he court in its discretion
may allow the recovery of full costs by or against any party . .
. .”

17 U.S.C. § 505.

The term “full costs” means “the costs

specified in the general costs statute,” codified at 28 U.S.C.
§§ 1821 and 1920.2

Rimini St., Inc. v. Oracle USA, Inc., 139 S.

1

The Defendants reserve the right to supplement their request
for reimbursement of expert witness costs.
2

Section 1821 provides reimbursement rates.
3

Ct. 873, 881 (2019).

Section 1920 lists six categories of

litigation expenses that a court may award as costs.

The six

categories include:
(1) “Fees of the clerk and marshal;”
(2) “Fees for printed or electronically recorded
transcripts necessarily obtained for use in the case;”
(3) “Fees and disbursements for printing and witnesses;”
(4) “Fees for exemplification and the costs of making
copies of any materials where the copies are necessarily
obtained for use in the case;”
(5) “Docket fees under section 1923 of this title;”
(6) “Compensation of court appointed experts, compensation
of interpreters, and salaries, fees, expenses, and costs of
special interpretation services under section 1828 of this
title.”
28 U.S.C. § 1920.

In addition, a party can recover for

witnesses’ “[p]er diem and mileage” expenses.
Rimini, 139 S. Ct. at 877 n.1.

Id. § 1821; see

Sections 1821 and 1920 do not,

however, authorize an award for expenses such as expert witness
fees or e-discovery expenses.

Rimini, 139 S. Ct. at 878.

Under Rule 54(d), Fed. R. Civ. P., an award of costs does
not typically include a party’s attorney’s fees.

That rule

states, “[u]nless a federal statute, these rules, or a court

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order provides otherwise, costs -- other than attorney’s fees -should be allowed to the prevailing party.”3
The Copyright Act provides one of the exceptions to the
attorney’s fees proscription of Rule 54(d).

Under Section 505

of the Copyright Act, a district court “may . . . award a
reasonable attorney’s fee to the prevailing party.”
505.

17 U.S.C. §

A “prevailing party” for purposes of Section 505 is “one

who has favorably effected a material alteration of the legal
relationship of the parties by court order.”

Manhattan Review,

919 F.3d at 152 (quoting CRST Van Expedited, Inc. v. E.E.O.C.,
136 S. Ct. 1642, 1651 (2016)).

This does not imply that a

defendant must prevail on the merits, however.
omitted).

Id. (citation

Rather, a defendant “fulfill[s] its primary objective

whenever the plaintiff’s challenge is rebuffed, irrespective of
the precise reason for the court’s decision.”
omitted).

Id. (citation

A defendant may therefore “prevail even if the

court’s final judgment rejects the plaintiff’s claim for a
nonmerits reason.”

Id. (citation omitted).

A prevailing party in a copyright action is not awarded
“attorney’s fees as a matter of course; rather, a court must

3

The costs that may be awarded pursuant Rule 54(d) are also
limited to the six categories enumerated in Section 1920.
Assocs. Against Outlier Fraud v. Huron Consulting Grp., Inc.,
817 F.3d 433, 436 & n.4 (2d Cir. 2016) (citing Crawford Fitting
Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987)).
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make a more particularized, case-by-case assessment.”

Kirtsaeng

v. John Wiley & Sons, Inc., 136 S.Ct. 1979, 1985 (2016)
(citation omitted).

In making that assessment, a court may

consider “several nonexclusive factors,” including
“frivolousness, motivation, objective unreasonableness, and the
need in particular circumstances to advance considerations of
compensation and deterrence.”

Id. (citation omitted).

“[S]ignificant weight” should be given to the objective
reasonableness or unreasonableness of the losing party’s
litigating position.

Id. at 1989.

Yet despite its

significance, objective reasonableness “can be only an important
factor in assessing fee applications -- not the controlling
one,” and courts must take caution to avoid giving it
“dispositive weight.”

Id. at 1988–89 (citation omitted).

Courts must instead “view all the circumstances of a case on
their own terms, in light of the Copyright Act’s essential
goals.”

Id. at 1989.

The Defendants are the prevailing parties in this
litigation.

They “fulfilled [their] primary objective” when

they rebuffed Bayoh’s claim for damages and a permanent
injunction.

Manhattan Review LLC v. Yun, 919 F.3d 149, 153 (2d

Cir. 2019) (citation omitted).

That the Court never reached the

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merits of the plaintiff’s infringement claim “does not affect
the analysis.”

Id.

The Defendants principally argue that their motion for
attorney’s fees and costs should be granted because the
plaintiff’s outsized $17 million damages claim and demand for a
permanent injunction were objectively unreasonable.

They also

argue that the plaintiff’s attorney’s conduct throughout the
litigation, including his rejection of their October 9, 2020
settlement offer under Rule 68, Fed. R. Civ. P., supports a
finding of bad faith.4

The Defendants are correct that the

plaintiff’s $17 million damages claim was outlandish and
untethered to any reliable evidence.
The plaintiff’s underlying infringement claim, however, was
not objectively unreasonable.

The plaintiff may have been able

4

Rule 68, Fed. R. Civ. P., provides that “a party defending
against a claim may serve on an opposing party an offer to allow
judgment on specified terms, with the costs then accrued. . . .
If the judgment that the offeree finally obtains is not more
favorable than the unaccepted offer, the offeree must pay the
costs incurred after the offer was made.” Copyright defendants
are “entitled to seek an award of costs, including attorney’s
fees, incurred following a Rule 68 offer where the plaintiff’s
recovery fails to exceed the offer.” Mango v. Democracy Now!
Prods., Inc., No. 18CV10588 (DLC), 2019 WL 3325842, at *4
(S.D.N.Y. July 24, 2019) (Cote, J.). The Defendants do not
argue that the fees accrued after October 9 should be recovered
on the basis of Rule 68. Rather, they argue that the
plaintiff’s rejection of their Rule 68 offer was evidence of its
objectively unreasonable litigation conduct.
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to demonstrate at trial that the Defendants exceeded the scope
of their license to use his photographs.

The Defendants

prevailed in this action because the plaintiff failed to
establish an entitlement to any damages award and failed to show
irreparable harm.

The issue of infringement, however, was never

reached.
Although the size of the damage award that the plaintiff
sought to recover was unreasonable, the merits of the
plaintiff’s copyright infringement claim may not have been.
Accordingly, in an exercise of this Court’s discretion and after
consideration of Kirtsaeng and its progeny, the Defendants will
not be awarded attorney’s fees.
The Defendants may, however, recover a portion of their
costs.

The Defendants’ request includes legal research

expenses, expert witness fees, and consulting and investigation
fees that are not recoverable.
139 S. Ct. at 878.

See 28 U.S.C. § 1920; Rimini,

The Defendants may recover their filing

fees, their copying expenses, and the travel, meal, and
deposition expenses of any witnesses to the extent permitted by
§§ 1821 and 1920.

This amounts to $13,652.87.5

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The plaintiff has not objected to the request for an award of
these costs.
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Conclusion
The Defendants’ motion for attorney’s fees and costs is
granted in part.

The Clerk of Court shall enter a bill of costs

in favor of the Defendants in the amount of $13,652.87.
Dated:

New York, New York
February 23, 2021
__________________________________
DENISE COTE
United States District Judge

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