Heritage Capital Corporation et al v. Christies, Inc. et al
MEMORANDUM OPINION AND ORDER denying 44 MOTION for Attorney Fees filed by Christies Inc, Collectrium Inc. (Ordered by Judge Sidney A Fitzwater on 1/12/2018) (Judge Sidney A Fitzwater)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
CORPORATION, et al.,
CHRISTIE’S, INC., et al.
Civil Action No. 3:16-CV-3404-D
The instant motion for attorney’s fees presents the question whether a party who
succeeds in compelling arbitration of a copyright infringement claim can qualify as a
“prevailing party” under 17 U.S.C. § 505. Concluding that the party cannot qualify as a
“prevailing party,” the court denies the motion.
Because this case is the subject of a prior memorandum opinion and order, see
Heritage Capital Corp. v. Christie’s, Inc., 2017 WL 1550514 (N.D. Tex. May 1, 2017)
(Fitzwater, J.) (“Heritage I”), the court will only recount the background facts and
procedural history that are pertinent to this decision.
Plaintiffs Heritage Capital Corporation, Heritage Auctioneers & Galleries, Inc.,
Heritage Numismatic Auctioneers, Inc., Heritage Auctions, Inc., Heritage Vintage Sports
Auctions, Inc., Currency Auctions of America, Inc., and Heritage Collectibles, Inc.
(collectively, “Heritage”) operate the website www.HA.com (“HA.com”), which hosts sales
and auctions of collectibles. Heritage alleged that defendants Christie’s, Inc. and Collectrum,
Inc. (“Collectrum”) (collectively, “Christie’s,” unless otherwise indicated) had downloaded
some or all of HA.com’s listings using an advanced computer code. Heritage traced this
activity to Christie’s, discovered that some of the downloaded listings had appeared on the
Collectrum website, and filed the instant lawsuit alleging seven federal- and state-law claims,
among them copyright infringement under 17 U.S.C. §§ 106 and 501.1 Christie’s moved to
dismiss and compel arbitration based on the arbitration clause in Heritage’s Website Use
In Heritage I the court held that Heritage’s claim fell under the Use
Agreement’s broad scope, granted the motion to compel arbitration, and dismissed the action
with prejudice. Heritage I, 2017 WL 1550514, at *6.
Christie’s now moves for an award of attorney’s fees under 17 U.S.C. § 505, a
provision of the Copyright Act, alleging that it is a “prevailing party” under the statute.
Heritage opposes the motion.
The other claims included a violation of the Computer Fraud and Abuse Act, 18
U.S.C. § 1030, et seq.; violations of the Digital Millennium Copyright Act, 17 U.S.C. §
1201, et seq.; harmful access by computer, under Tex. Civ. Prac. & Rem. Code Ann. §§
143.001 and 143.002; trespass; unfair competition; civil conspiracy; and breach of contract.
Those who visit and use Heritage’s website for any reason assent to the Website Use
Agreement, which prescribes rules and regulations for use and contains an arbitration clause
that governs potential disputes.
“As a general rule, litigants must pay their own attorney’s fees.” Stover v. Hattiesburg
Pub. Sch. Dist., 549 F.3d 985, 997 (5th Cir. 2008) (citing Alyeska Pipeline Co. v. Wilderness
Soc’y, 421 U.S. 240, 247 (1975)). “The ‘American Rule’ is the starting point for fee awards:
Even prevailing litigants are ordinarily not entitled to attorneys’ fees from the losing party.”
Blue Skies Alliance v. Tex. Comm’n on Envtl. Quality, 265 Fed. Appx. 203, 206 (5th Cir.
2008) (per curiam). A party may recover attorney’s fees, however, if authorized by statute
or contract. See Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human
Res., 532 U.S. 598, 602 (2001).
Under 17 U.S.C. § 505, “[i]n any civil action under this title . . . the court may 
award a reasonable attorney’s fees to the prevailing party as part of the costs.” 17 U.S.C.
§ 505 (emphasis added). “Awarding attorney’s fees to a prevailing party pursuant to § 505
is the rule rather than the exception, and fees should be rewarded routinely.” PAR
Microsystems v. Pinnacle Dev. Corp., 995 F. Supp. 655, 656 (N.D. Tex. 1997) (Fitzwater,
J.) (citing Micromanipulator Co. v. Bough, 779 F.2d 255, 259 (5th Cir. 1985)). Although the
recovery of attorney’s fees is routine under § 505, it is not automatic; they are “‘to be
awarded to prevailing parties only as a matter of the court’s discretion.’” Virgin Records
Am., Inc. v. Thompson, 512 F.3d 724, 726 (5th Cir. 2008) (quoting Fogerty v. Fantasy, Inc.,
510 U.S. 517, 534 (1994)).
The question whether Christie’s can recover attorney’s fees under § 505 turns on
whether Christie’s qualifies as a “prevailing party.”
“[A] ‘prevailing party’ is one who has been awarded some relief by the court[.]”
Buckhannon, 532 U.S. at 603.3 “The touchstone of the prevailing party inquiry . . . [is] the
material alteration of the legal relationship of the parties in a manner which Congress sought
to promote in the fee statute.” Sole v. Wyner, 551 U.S. 74, 82 (2007) (quoting Tex. State
Teachers Ass’n v. Garland Indep. Sch. Dist., 489 U.S. 782, 792-93 (1989)) (citing
Buckhannon, 532 U.S. at 605). Although the Fifth Circuit has not yet directly interpreted the
term “prevailing party” in § 505, under analogous statutes a prevailing party must “(1) obtain
actual relief that (2) materially alters the legal relationship between the parties and (3)
modifies the [opposing party’s] behavior in such a way that benefits the [moving party] at
Although the Fifth Circuit has not addressed who is a “prevailing party” under § 505,
the circuit courts addressing this issue have applied Buckhannon, 532 U.S. 598, and its
progeny. See, e.g., Balsley v. LFP, Inc., 691 F.3d 747, 772 (6th Cir. 2012) (applying
Buckhannon to the Copyright Act); Cadkin v. Loose, 569 F.3d 1142, 1145 (9th Cir. 2009)
(“Buckhannon’s material alteration test applies to § 505 of the Copyright Act.”); Riviera
Distribs., Inc. v. Jones, 517 F.3d 926, 928 (7th Cir. 2008) (holding that voluntary dismissal
with prejudice of copyright claims confers prevailing party status on defendants under
Buckhannon); Tavory v. NTP, Inc., 297 Fed. Appx. 986, 988-89 (Fed. Cir. 2008) (applying
Buckhannon to the Copyright Act); Torres-Negron v. J & N Records, LLC, 504 F.3d 151,
164 & n.9 (1st Cir. 2007) (holding that Buckhannon’s material alteration test applies to
copyright claims, and concluding that dismissal for lack of subject matter jurisdiction did not
confer prevailing party status). District courts within the Fifth Circuit have done the same.
See, e.g., Collins v. Doe, 2013 WL 2896822, at *5 (S.D. Tex. June 12, 2013) (Rosenthal, J.).
the time of the judgment.” Howard v. Weston, 354 Fed. Appx. 75, 77 (5th Cir. 2009) (per
curiam) (citing Dearmore v. City of Garland, 519 F.3d 517, 521 (5th Cir. 2008)).
Christie’s maintains that it is a prevailing party because it succeeded on its motion to
compel, and that because the case was dismissed with prejudice, it obtained relief that
materially altered the legal relationship between Christie’s and Heritage. Heritage responds
that compelling arbitration does not qualify as a “judicially sanctioned change in the legal
relationship of the parties.” Ps. Br. 4 (quoting Buckhannon, 532 U.S. at 605). It maintains
that Christie’s cannot qualify as a prevailing party because, although the federal case may
have ended, the action proceeds in the arbitral forum provided for under the Use Agreement.
The Fifth Circuit has not yet addressed the question whether under § 505 or any other
statutory or contractual fee shifting provision a party who successfully compels arbitration
qualifies as a “prevailing party.” The majority of courts that have addressed this issue,
however, have determined that such a disposition does not “materially alter” the legal
relationship between the parties.4 These courts treat a successful motion to compel
arbitration as a temporary procedural victory rather than an event conferring prevailing party
status. See, e.g., Perry v. NorthCentral Univ., Inc., 2012 WL 1753014, at *1 (N.D. Ariz.
In the authorities that Christie’s cites to the contrary, the parties sought attorney’s
fees under the Federal Arbitration Act, not the Copyright Act. See Daniels v. Progressive
Turf, LLC, 2006 WL 2589114, at *1 (E.D. Tex. Sept. 7, 2006); Hires Parts Serv., Inc. v. NCR
Corp., 859 F. Supp. 349, 355 (N.D. Ind. 1994). But here, “[d]efendants do not seek a fee
award based on the [Federal Arbitration Act].” Ds. Br. 2.
May 16, 2012) (“[A]n order compelling arbitration, being merely a preliminary procedural
order that is not on the merits and does not materially alter the legal relationship of the
parties, does not make the litigant obtaining the order a prevailing party for purposes of a fee
award.”); Foot Solutions, Inc. v. Washio, 2009 WL 4261213, at *2 (N.D. Ga. Nov. 24, 2009)
(“While Defendants here have succeeded in having Plaintiff’s claims turned to arbitration,
there is no information yet on whether Defendants have achieved more than this procedural
victory.”); Frazier v. Johnson, 2009 WL 331372, at *2 (M.D. Fla. Feb. 10, 2009)
(“[P]rocedural victories, such as successfully defeating a motion to compel arbitration, [do]
not make a litigant a prevailing party.”).5
These cases logically flow from the Supreme Court’s interpretations of “prevailing
party.” For example, Buckhannon sought to delineate what types of relief made a litigant
a prevailing party. Identifying examples, the Court held that “enforceable judgments on the
merits and court-ordered consent decrees create the ‘material alteration of the legal
relationship of the parties’ necessary to permit an award of attorney’s fees.” Buckhannon,
532 U.S. at 604 (quoting Tex. State Teachers Ass’n, 489 U.S. at 792-93). Although these
examples do not exhaust what can create prevailing party status, they illustrate that a
“material alteration” of legal rights disposes of the matter in question with some finality.
Sole similarly clarifies the limits of “prevailing party.” In Sole the plaintiffs obtained
Although these cases interpreted the term “prevailing party” as used in contracts
between the litigants, each of these courts relied on Buckhannon’s material alteration
standard and related cases. The court therefore finds them instructive.
a preliminary injunction that allowed them to perform a demonstration on a state beach that
violated state rules. Sole, 551 U.S. at 79-80. Their challenge to the state rules failed,
however, in the end. Plaintiffs still sought attorney’s fees for their initial preliminary
injunction victory. Id. at 81. The Court disagreed, holding that the plaintiffs were not
prevailing parties because they “had gained no enduring change in the legal relationship
between [themselves] and the state officials[.]” Id. at 86 (quoting Tex. State Teachers Ass’n,
489 U.S. at 792) (internal quotation marks and brackets omitted). Courts determining
whether compelling arbitration confers prevailing party status have found that Sole “certainly
is instructive.” Frazier, 2009 WL 331372, at *2. As the Frazier court explained:
In [Sole], the preliminary injunction allowed the plaintiffs to put
on their demonstration. That relief was clearly as great, if not
greater, than the [compelled arbitration] obtained by the
defendants in this suit. Consequently, the defendants have no
greater claim to attorneys’ fees than did the plaintiffs in [Sole].
Therefore . . . the defendants are not prevailing parties[.]
Based on these persuasive decisions, the court holds that Christie’s does not qualify
under § 505 as a “prevailing party” because compelling arbitration was a procedural victory
that did not “materially alter” the legal relationship between Heritage and Christie’s.
Regarding the copyright claims at issue, the legal relationship between Heritage and
Christie’s remains the same. Christie’s is still potentially liable to Heritage under the
Copyright Act, although the determination whether Christie’s is liable will be made by an
arbitrator rather than this court. To award Christie’s attorney’s fees under § 505 when it can
still be found liable under the Copyright Act would essentially replace a merits-based
requirement for recovering attorney’s fees with a procedural-based requirement. Christie’s
could actually lose on the merits—albeit before an arbitrator rather than in this court—and
still recover the attorney’s fees it expended in securing the arbitral forum. It is therefore
apparent that such a procedural change of forum6 does not materially alter a legal
relationship in the manner the Copyright Act seeks to advance.
Christie’s reliance on Riviera Distribs., Inc. v. Jones, 517 F.3d 926 (7th Cir. 2008),
can be distinguished. In Riviera the court held that the defendant was a prevailing party
under § 505 where the plaintiff had consented to dismissal with prejudice. Id. at 928. The
defendant had not moved to compel arbitration, and there was no prospect of further
litigation of the claim. Id. In essence, there was no opportunity for the defendant’s victory
to be undone in another forum.
Christie’s is correct that the Riviera court found the award of attorney’s fees to be
appropriate in part because the plaintiff ignored the parties’ prior agreement not to sue. But
For similar reasons, courts have concluded that dismissals for lack of personal
jurisdiction or lack of subject matter jurisdiction do not confer prevailing party status under
§ 505. See, e.g., Caraustar Custom Packaging Group (Md.), Inc. v. Stockart.com, LLC, 2006
WL 3371679, at *1 (W.D.N.C. Nov.20, 2006) (holding that, although court lacked personal
jurisdiction, “Plaintiff is still free to pursue its claims against Stockart, but not in this forum.
Thus, Stockart is not a ‘prevailing party’ under § 505”); Lang v. Morris, 2011 WL 6055513,
at *4 (N.D. Cal. Dec. 6, 2011) (same); Torres-Negron, LLC, 504 F.3d at 164 (holding that
dismissal for lack of subject matter jurisdiction did not confer prevailing party status); 4
Nimmer on Copyright § 14.10, Lexis (database updated November 2017) (“Because
Buckhannon defines a ‘prevailing party’ as one who has ‘prevailed on the merits of at least
some claims,’ it follows that dismissal for lack of subject matter jurisdiction cannot support
an award of fees.”).
the court reached this conclusion only after it had already determined that the defendant had
prevailed. Id. (“What remains is whether this is an appropriate occasion for fee shifting.”).
Indeed, whether a litigant is a prevailing party is the condition precedent to the court’s ability
to exercise its discretion to award attorney’s fees. See 17 U.S.C. § 505. In Riviera the
defendant was a prevailing party. Here, Christie’s has not yet prevailed, and it may not
prevail in the arbitral forum.
Because successfully compelling arbitration does not materially alter the legal
relationship between two parties, the court holds that Christie’s is not a prevailing party
under § 505 and is therefore ineligible to recover attorney’s fees on the basis of this court’s
arbitration ruling alone.
For the reasons explained, the court denies defendants’ motion for attorney’s fees.
January 12, 2018.
SIDNEY A. FITZWATER
UNITED STATES DISTRICT JUDGE
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