TMTV, Corp. v. MASS Productions,Inc, et al

Filing 435

ORDER denying 414 TMTV's Request for Attorney Fees. Signed by Judge Raymond L. Acosta on 3/27/09. (ans)

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF PUERTO RICO

TMTV, CORP., Plaintiff,

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CIVIL NO. 00-1338 (RLA) v.

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MASS PRODUCTIONS, INC., et al., Defendants.

ORDER DENYING PLAINTIFF'S REQUEST FOR ATTORNEY'S FEES Plaintiff has moved the court for an award of attorney's fees as

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a prevailing party in these proceedings pursuant to the provisions of 17 U.S.C. § 505. Despite the egregious conduct displayed by attorney John F. Nevares, defendants' counsel, as more fully described in TMTV's motion requesting attorney's fees (docket No. 414) pp. 9-13, the court is compelled to deny plaintiff's petition. The Copyright Act at 17 U.S.C. § 4121 specifically disallows attorney's fees when

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the
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infringement

at

issue

occurs

subsequent

to

the

initial

publication of the protected work and prior to its registration. See,

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In pertinent part, § 412 reads: In any action under this title... no award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for ­.... (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

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CIVIL NO. 00-1338 (RLA)

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Johnson v. Jones, 149 F.3d 494, 505 (6th Cir. 1998) (plaintiff unable to recover attorney's fees under Copyright Act if "infringement `commenced' before the copyright was registered"); William A. Graham

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Co. v. Haughey, 430 F.Supp.2d 458, 473 (E.D.Pa. 2006) (if copyright
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is

not

registered fees may

prior not

to be

commencement awarded

of

the of

infringement, whether the

attorney's

"regardless

infringement continued after the date of registration"); Parfums Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F.Supp. 1378, 1393 (C.D.Cal. recovering 1993) ("section [412] or bars a copyright fees the owner from

statutory if two

damages

attorney's are met: (1)

for

copyright was

11

infringement
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conditions

copyright

registered more than three months after the work was first published, and (2) the infringing activity commenced after the date of first publication and before the effective date of registration of the work.") The limitations set by section 412 were purposely designed to promote the timely registration of works by copyright owners. "The

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legislative history of section 412 supports the construction that the
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ordinary meaning of the statutory words suggests. Congress' evident purpose was to induce those owning copyrightable works to register them promptly." Singh v. Famous Overseas, Inc., 680 F.Supp. 533, 535 (E.D.N.Y. 1988). would "Since no under be the new legislation copyright deeming

registration
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longer

compulsory,

Congress,

registration useful and important, sought some practical means of inducing
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it.

The

means

chosen

was

to

deny

the

`extraordinary'

remedies of statutory damages and attorney's fees where registration is not promptly made. The threat of such a denial would hardly provide a significant motivation to register early if the owner of

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CIVIL NO. 00-1338 (RLA)

Page 3

the work could obtain those remedies for acts of infringement taking place after a belated registration. Id. at 536. See also, Parfums Givenchy, 832 F.Supp. at 1394-95.

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"Under section 412, infringement `commences' when the first act
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of infringement in a series of on-going discrete infringements occurs... The alleged acts of infringement that occurred after the copyright was registered do not constitute new acts of infringement but a continuation of the infringement that `commenced' prior to registration." Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 F.Supp. 728, 736 (S.D.N.Y. 1996). "[T]he first act of infringement in a series of

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ongoing
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separate

infringements

`commences'

one

continuing

`infringement' under Section 412(2). A new or separate basis for the award of statutory between damages pre is and created post only where there is a

difference

registration

infringing

activities." Parfums Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F.Supp. 1378, 1393 (C.D.Cal.,1993) (internal citations brackets and quotation marks omitted).

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Plaintiff began airing the protected sitcom subject to this
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litigation in 1997 whereas defendants' infringing derivative program was broadcasted commencing in March 2000. According to the evidence on record, registration of the three seminal scripts for the

copyrighted program did not take place until June 2000 and November 2001. Based on the foregoing, it is evident that copyright

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registration occurred years after the protected program was first
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aired and subsequent to the infringement. Thus, by operation of section 412, plaintiff is not entitled to attorney's fees in this action despite its prevailing party status.

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CIVIL NO. 00-1338 (RLA)

Page 4

Accordingly, TMTV's request for attorney's fees (docket No. 414)2 is DENIED. IT IS SO ORDERED.

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San Juan, Puerto Rico, this 27th day of March, 2009.

S/Raymond L. Acosta RAYMOND L. ACOSTA United States District Judge

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See Opposition (docket No. 425).