Bond v. Blum , 317 F.3d 385 ( 2003 )

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
WILLIAM C. BOND, 
Plaintiff-Appellant,
v.
KENNETH BLUM, SR.; KENNETH BLUM,
JR.; DUDLEY F. B. HODGSON;  No. 02-1139
MCDANIEL, BENNETT & GRIFFIN;
ADELBERG, RUDOW, DORF &
HENDLER, LLC; CHRISTOPHER W.
NICHOLSON; WILLIAM SLAVIN,
Defendants-Appellees.

WILLIAM C. BOND, 
Plaintiff-Appellee,
v.
ADELBERG, RUDOW, DORF &
HENDLER, LLC,
Defendant-Appellant,  No. 02-1219
and
KENNETH BLUM, SR.; KENNETH BLUM,
JR.; DUDLEY F. B. HODGSON;
MCDANIEL, BENNETT & GRIFFIN,
Defendants.

2 BOND v. BLUM
WILLIAM C. BOND, 
Plaintiff-Appellant,
v.
ADELBERG, RUDOW, DORF &
HENDLER, LLC,
Defendant-Appellee,  No. 02-1231
and
KENNETH BLUM, SR.; KENNETH BLUM,
JR.; DUDLEY F. B. HODGSON;
MCDANIEL, BENNETT & GRIFFIN,
Defendants.

WILLIAM C. BOND, 
Plaintiff-Appellee,
v.
MCDANIEL, BENNETT & GRIFFIN,
Defendant-Appellant,
and  No. 02-1288
ADELBERG, RUDOW, DORF &
HENDLER, LLC; KENNETH BLUM, SR.;
KENNETH BLUM, JR.; DUDLEY F. B.
HODGSON,
Defendants.

Appeals from the United States District Court
for the District of Maryland, at Baltimore.
Marvin J. Garbis, District Judge.
(CA-01-2600-MJG)
Argued: October 31, 2002
Decided: January 24, 2003
BOND v. BLUM 3
Before NIEMEYER, WILLIAMS, and MICHAEL, Circuit Judges.
Affirmed in part and vacated and remanded in part by published opin-
ion. Judge Niemeyer wrote the opinion, in which Judge Williams and
Judge Michael joined.
COUNSEL
ARGUED: Howard J. Schulman, SCHULMAN & KAUFMAN,
L.L.C., Baltimore, Maryland, for Appellant. William Fitts Ryan, Jr.,
WHITEFORD, TAYLOR & PRESTON, L.L.P., Baltimore, Mary-
land; Andrew Radding, ADELBERG, RUDOW, DORF &
HENDLER, L.L.C., Baltimore, Maryland, for Appellees. ON
BRIEF: Amy E. Askew, WHITEFORD, TAYLOR & PRESTON,
L.L.P., Baltimore, Maryland; J. Andrew McKinney, ADELBERG,
RUDOW, DORF & HENDLER, L.L.C., Baltimore, Maryland;
Gerard P. Martin, Thy C. Pham, MARTIN, SNYDER & BERN-
STEIN, P.A., Baltimore, Maryland; Kathryn M. Goldman, JIRANEK,
GOLDMAN & MINTON, L.L.C., Baltimore, Maryland, for Appel-
lees.
OPINION
NIEMEYER, Circuit Judge:
On a motion for summary judgment filed in this copyright infringe-
ment action, the district court held that the defendants’ copying of a
copyrighted manuscript for introduction into evidence in a state-court
child-custody proceeding constituted a "fair use" of the manuscript
under the Copyright Act, 17 U.S.C. § 107, when the substance of the
manuscript was relevant to the issues in the child-custody proceeding
and the defendants’ use of the manuscript was solely for its content
and not for its mode of expression. The district court also awarded
attorneys fees, under 17 U.S.C. § 505, to the prevailing individual
defendants but not to the law-firm defendants because the law firms
4 BOND v. BLUM
were represented by a member of the firm and thus were acting pro
se.
For the reasons given in this opinion, we affirm the district court’s
summary judgment and its award of attorneys fees to the individual
defendants, and we remand for reconsideration of the law-firm defen-
dants’ motion for attorneys fees.
I
In the child-custody case of Slavin v. Slavin, commenced in July
2000 and pending in the Circuit Court for Baltimore City, Case No.
95249006/CE 201677, Alyson Slavin Bond sued her former husband,
William Slavin, for exclusive custody of their three children. William
Slavin filed a cross-petition for exclusive custody and, in support of
his position, introduced into evidence an autobiographical manuscript
written by Alyson’s current husband, William Bond, to establish that
the home of Alyson and William Bond would not be a suitable place
for the three children. Bond’s manuscript was entitled Self-Portrait of
a Patricide: How I Got Away with Murder.
In June 1981, when William Bond, who was formerly known as
William Rovtar, was 17, he beat his father to death with a hammer
in his grandparents’ garage in Bainbridge Township, Ohio. After
Rovtar was arrested and detained in a juvenile detention facility in
Ohio, he entered into a guilty-plea agreement in juvenile court with
the result that in September 1981 he was transferred to the Sheppard
& Enoch Pratt Hospital in Baltimore, Maryland, for psychological
treatment. Rovtar was released in 1982, and after his release, he
legally changed his name to William Bond. He remained in Maryland
and thereafter became employed as a tennis instructor at a country
club, a bicycle salesman, and a bodyguard, among other things.
In 1987, Bond began to write Self-Portrait of a Patricide: How I
Got Away with Murder, "the true story of and by William Bond,"
which he hoped to market to publishers for profit. The manuscript
describes in horrific detail how Bond planned and committed the mur-
der of his father with a hammer, and how his dying father attempted
to raise himself off the floor of the garage before Bond delivered the
final blows to his neck and head. It describes Bond wiping away his
BOND v. BLUM 5
fingerprints, scrubbing the garage floor, cleaning blood, flesh, and
bone from his clothes, and stuffing his father’s dead body in his car’s
trunk. Most sinister of all, it depicts a remorseless individual who
brags about fooling the police and the juvenile system to "get away
scot-free" and even collecting, as planned, the money from his
father’s estate. Although verifiable facts of the murder are consistent
with the details provided in the manuscript, Bond has now stated in
an affidavit that the manuscript is "a highly fictionalized and stylized
work," based on his "juvenile experience." Bond circulated his manu-
script directly and through agents in order to find a publisher, asking
for a seven-figure advance. His efforts, however, were unsuccessful.
After some revisions, Bond also gave a copy of the manuscript to
Norman Pessin, an attorney who had represented Bond in various
unrelated matters, to help him get the manuscript published, but his
efforts, too, failed. Although Pessin thereafter died, his widow
retained a copy of the manuscript.
Bond met Alyson Slavin in early 1995, after Alyson was separated
from her husband, William Slavin. Bond and Alyson continued to see
each other until they married in May 2001. In 1996, shortly after
Bond and Alyson met, Bond wrote a lengthy letter to Alyson’s father,
Kenneth Blum, Sr., indicating that he intended to marry Alyson and
become the stepfather of her children. The letter offered an analysis
of individual members of Blum’s family and purported to offer "solu-
tions" to correct perceived deficiencies in the Blum-Slavin extended
family. In addition, the letter set forth an expansive financial plan,
pursuant to which Bond demanded from Blum a dowry, a salary,
establishment of an investment account, purchase of a studio apart-
ment in addition to a house, and a severance package should Bond’s
marriage with Alyson not work out. Bond stated to Blum, "You can
pay me now or pay me later." In this letter, Bond also made reference
to his personal history, stating that he "had a past," and that, although
it was "none of [Blum’s] business," it makes "interesting reading."
Blum not only found this letter very disconcerting, considering it
to be an attempt to extort money from him, but he also became con-
cerned for the safety of Alyson and her children. In June 2000, just
before the state custody action was commenced, Blum hired a private
investigator, Dudley F. B. Hodgson, to look into Bond’s background.
At their first meeting, Blum gave Hodgson an overview of his deal-
6 BOND v. BLUM
ings with Bond and expressed his concern over both the safety of his
grandchildren and Bond’s effort to "shake him down" for money.
Blum gave Hodgson a copy of the letter that Bond had sent him and
told Hodgson that he had heard that Bond may have had some prob-
lems with his family involving violence in Ohio.
In the course of his investigation, Hodgson learned about the mur-
der of Bond’s father and contacted the Bainbridge, Ohio police
department, obtaining copies of the police report and other documents
relating to the homicide investigation. Hodgson reported these find-
ings to Blum, and at Blum’s request, Hodgson went to the home of
Miriam Pessin, the widow of Norman Pessin, believing that Bond had
also tried to "shake Pessin down" for money before he died. When
Hodgson interviewed Miriam Pessin in April 2001 and asked her if
she had any information that would be helpful in his investigation of
Bond, she told Hodgson that she did have, stored in a box, a loose-
leaf copy of a manuscript that Bond authored. Mrs. Pessin stated that
Bond had given a copy of the manuscript to her husband for him to
read for the purposes of locating a publisher. She later testified that
this box of materials was not part of Pessin’s legal files, which he
carefully kept separate, and that Bond had also given her portions of
the manuscript to read. Not wanting to retain the manuscript in her
home, Mrs. Pessin gave it to Hodgson. Hodgson made a copy of the
manuscript and gave copies to Alyson’s ex-husband, William Slavin,
and the attorneys representing him in the state custody action. Wil-
liam Slavin’s attorneys made the manuscript an exhibit during the
deposition of Alyson in July 2001 and intended to make it a part of
the custody litigation in the Circuit Court for Baltimore City, in which
a hearing was scheduled for December 10, 2001. For the sole purpose
of preventing further use of the manuscript in the proceedings before
the Baltimore City Circuit Court, Bond registered a copy of his manu-
script with the Copyright Office in August 2001.
Immediately after registering the manuscript, Bond commenced
this action for copyright infringement, naming as defendants Blum,
Blum’s son, Hodgson, William Slavin, and Slavin’s attorneys. He
requested a preliminary and permanent injunction prohibiting the use
of the manuscript by the defendants for any purpose and requiring the
return of all existing copies.
BOND v. BLUM 7
At the hearing on Bond’s motion for a preliminary injunction, the
district court heard testimony from Alyson Bond, Blum, Hodgson,
and Mrs. Pessin, among others. Following the hearing, the court
found that Bond had written the manuscript and had delivered it to
Pessin and others in an effort to get it published. The court found that
Pessin’s efforts to get the book published were not "part of [Pessin’s]
legal practice, because he wasn’t doing this as a lawyer." The court
concluded that the document was not "a confidential document in any
kind of privileged sense." In addition, the court found that Hodgson
did not steal the document but was given the document by Pessin’s
wife.
On the merits of the copyright infringement issue, the court evalu-
ated the defendants’ defense of "fair use" by applying the four factors
set forth in 17 U.S.C. § 107. The court concluded that (1) the purpose
and character of the defendants’ anticipated use of the manuscript was
not one against which the Copyright Act sought to protect; (2) the
nature of the manuscript did not weigh against the finding of a "fair
use"; (3) the defendants were seeking to introduce the entire manu-
script, which weighed against a finding of fair use; and (4) the use
would have "absolutely zero" detrimental effect on the potential mar-
ket for the copyrighted work and could, "in a perverse way," actually
increase its market value. Based on these conclusions, the court held
that the challenged use was a "fair use." The court thus denied Bond’s
motion for a preliminary injunction, and then, based on the undis-
puted facts, granted summary judgment in favor of the defendants on
November 20, 2001.*
When Bond filed a motion to alter or amend the judgment, the dis-
trict court denied the motion, finding that Bond was again "blurring
the distinction between the copyright protection afforded the mode of
expression in a written work and the ideas and facts in the public
domain which are expressed in the work." The court observed that
Bond had not established any likelihood that the defendants intended
to utilize the manuscript in any way other than that deemed by the
court to be a fair use, and that, in the event they tried to use it for
*Counsel for the parties state that at the custody hearing on December
10, 2001, in state court, William Slavin’s attorneys in fact introduced the
manuscript into evidence.
8 BOND v. BLUM
other purposes, they would do so "at the risk of being sued as a
wil[l]ful infringer."
Pursuant to motions filed by the defendants, the district court
awarded attorneys fees to the individual defendants under 17 U.S.C.
§ 505, but not to the law-firm defendants because the law firms were
representing themselves pro se. The court also denied the law-firm
defendants’ motions for sanctions against Bond pursuant to Federal
Rule of Civil Procedure 11.
Bond filed an appeal from the district court’s summary judgment
entered on November 27, 2001, and the court’s subsequent order
awarding attorneys fees. The law-firm defendants cross-appealed
from the district court’s denial of their motions for attorneys fees and
for Rule 11 sanctions.
II
Bond contends that the district court adopted a per se rule that use
of copyrighted material as evidence in a legal proceeding is always
a "fair use," "overriding" the analysis for finding "fair use" required
by 17 U.S.C. § 107. Acknowledging that the court might be able to
find the fair-use doctrine applicable to the use of copyrighted material
as evidence, Bond maintains that the court erred in doing so in this
case by not considering all of the statutorily prescribed factors.
The defendants note that the district court did in fact consider the
factors set forth in § 107 and that the consideration of those factors
correctly demonstrated that "the non-commercial use of the manu-
script in the child custody litigation did not result in any commercial
exploitation of the work or adversely affect its marketability."
The undisputed facts show that the defendants introduced a copy
of Bond’s copyrighted manuscript into evidence in a state child-
custody proceeding to prove that Bond’s household would not be a
suitable place for the children of Bond’s wife. The work, written by
Bond and circulated by him in an effort to publish it, describes how
Bond, when 17, planned and committed the murder of his father with
a hammer, fooled the police about his mental state, used the juvenile
BOND v. BLUM 9
system to obtain merely a "slap on the wrist," and recovered the pro-
ceeds of his father’s estate, all without remorse. In the manuscript, he
stated, "I wanted my father’s money." The defendants made copies of
the manuscript to use its content as evidence in the child-custody liti-
gation, and there is no evidence of any intent to exploit the book’s
manner of expression for any purpose, commercial or otherwise.
Indeed, there is no evidence in the record to indicate that the defen-
dants’ use of the manuscript was anything more than the presentation
of evidence in a child-custody proceeding to prove the unsuitability
of Bond’s home as a place for children. Moreover, there is no evi-
dence that this use adversely affected Bond’s interests in the copy-
right.
Applying the four factors stated in 17 U.S.C. § 107, the district
court held that the defendants’ use of the work fell within the "fair
use" exception established in 17 U.S.C. § 107, principally because the
"[p]urpose and character of [the defendants’] use has nothing whatso-
ever to do with any interest that the copyright law was designed to
protect. The copyright law was never designed to protect content as
distinguished from mode of expression." The court also concluded
that "the effect of the [defendants’] use on the potential market for
value of the copyrighted work is absolutely zero."
We review the district court’s summary judgment de novo, apply-
ing the same standard that the district court was required by law to
apply for granting the motion for summary judgment. Beverati v.
Smith, 120 F.3d 500, 503 (4th Cir. 1997).
The Copyright Act, enacted on the authority of Article I, § 8, of the
Constitution, confers on creators of original works a limited monop-
oly in their works of authorship to advance an important public pur-
pose. "It is intended to motivate the creative activity of authors and
inventors by the provision of a special reward, and to allow the public
access to the products of their genius after the limited period of exclu-
sive control has expired." Sony Corp. of Am. v. Universal City Stu-
dios, Inc., 464 U.S. 417, 429 (1984). The reward to the owner is "a
secondary consideration" that serves the primary public purpose of
"induc[ing] release to the public of the products of [the author’s or
artist’s] creative genius." Id. (quoting United States v. Paramount
10 BOND v. BLUM
Pictures, Inc., 334 U.S. 131, 158 (1948)); see also Harper & Row
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546 (1985).
The copyright "monopoly" — i.e., the "bundle of exclusive rights
. . . to publish, copy, and distribute" the work, Harper & Row, 471
U.S. at 546-47 — is limited and subject to a list of statutory excep-
tions, including the exception for fair use provided in 17 U.S.C.
§ 107. See 17 U.S.C. § 106; Sony, 464 U.S. at 447. Section 107 pro-
vides explicitly that "the fair use of a copyrighted work . . . is not an
infringement of copyright."
The fair-use doctrine is a longstanding common-law principle, now
codified in § 107, that was "traditionally defined as ‘a privilege in
others than the owner of the copyright to use the copyrighted material
in a reasonable manner without his consent.’" Harper & Row, 471
U.S. at 549 (quoting H. Ball, Law of Copyright and Literary Property
260 (1944)). The reasonableness of a use is determined on a case-by-
case basis applying an "equitable rule of reason analysis." Sony, 464
U.S. at 448; see also Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 577-78 (1994). To guide the determination of whether a particu-
lar use is a fair use, § 107 provides that a court must consider four
factors among any others relevant:
(1) the purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit educa-
tional purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or
value of the copyrighted work.
17 U.S.C. § 107. These factors are "not meant to be exclusive," Har-
per & Row, 471 U.S. at 560, but rather "illustrative," representing
"only general guidance about the sorts of copying that courts and
Congress most commonly have found to be fair uses," Campbell, 510
BOND v. BLUM 11
U.S. at 577-78. Because a particular use must be examined for its rea-
sonableness in determining whether it is a "fair use," any per se rule
is inappropriate. Id. at 577 ("The task is not to be simplified with
bright-line rules, for the statute, like the doctrine it recognizes, calls
for case-by-case analysis"); id. at 585 ("The Court of Appeal’s eleva-
tion of one sentence from Sony to a per se rule thus runs as much
counter to Sony itself as to the long common-law tradition of fair
usage adjudication"); Sundeman v. Seajay Soc’y, Inc., 142 F.3d 194,
202 (4th Cir. 1998) (noting that fair use demands a case-by-case
inquiry).
A fair-use analysis bears relevance only when a challenged use vio-
lates a right protected by the Copyright Act. But the statutorily pro-
tected rights are themselves limited in that a copyright does not secure
an exclusive right to the use of facts, ideas, or other knowledge.
Rather, a copyright gives an author exclusive rights only with respect
to his manner of expression. See, e.g., Baker v. Selden, 101 U.S. 99,
102 (1879); Superior Form Builders, Inc. v. Chase Taxidermy Supply
Co., 74 F.3d 488, 492 (4th Cir. 1996) (noting that "the originality
inherent in each author’s expression is the essence of the proprietary
interest protected"). In Superior Form Builders, we noted that even
though the Copyright Act will protect even the minimal quantum of
originality — "independent creation plus a modicum of creativity,"
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346
(1991) — the public has an interest in retaining in the public domain
"the right to discover facts and exchange ideas freely. Thus, copyright
protection does not extend to ideas or facts even if such facts were
discovered as the product of long and hard work." Superior Form
Builders, 74 F.3d at 492 (internal citation omitted).
With these general principles of copyright law in hand, we now
turn to the question before us of whether the defendants’ use of
Bond’s copyrighted manuscript as evidence in the child-custody pro-
ceeding was subject to the fair-use exception defined in § 107. To
make that determination, we apply the four factors set forth in § 107.
A
The first § 107 factor directs the inquiry into the "purpose and char-
acter of the [defendants’] use, including whether such use is of a com-
12 BOND v. BLUM
mercial nature or is for nonprofit educational purposes." 17 U.S.C.
§ 107(1). The use of a copyrighted work for a commercial purpose
"tends to weigh against a finding" that the challenged use is a "fair
use." Harper & Row, 471 U.S. at 562. The "crux of the prof-
it/nonprofit distinction is not whether the sole motive of the use is
monetary gain but whether the user stands to profit from exploitation
of the copyrighted material without paying the customary price." Id.If a challenged use of a copyrighted work is noncommercial, the party
alleging infringement must demonstrate "either that the particular use
is harmful, or that if it should become widespread, it would adversely
affect the potential market for the copyrighted work." Sony, 464 U.S.
at 451.
Application of this factor weighs heavily against Bond’s infringe-
ment claim. The defendants’ use of Bond’s copyrighted manuscript is
not for any commercial purpose; the defendants are not seeking to
exploit the copyrighted material without paying the customary price.
Indeed, the defendants’ use is indifferent to Bond’s mode of expres-
sion. Rather, the narrow purpose of defendants’ use of the manuscript
is for the evidentiary value of its content insofar as it contains admis-
sions that Bond may have made against his interest when he bragged
about his conduct in murdering his father, in taking advantage of the
juvenile justice system, and in benefiting from his father’s estate.
These are all facts relevant to the custody decision, and their use does
not draw on Bond’s mode of expression.
Because the challenged use is noncommercial, Bond must demon-
strate that the use of the manuscript as evidence in the litigation
would harm the potential market for his manuscript. Neither in his
brief nor at oral argument has Bond been able to identify any harm
or potential harm to his work against which the law of copyrights pro-
tects. The only harm that we can discern from his arguments is a
claim that he has lost the right to control the release of a "private" or
"confidential" document. But at oral argument, he conceded that the
document was not confidential. Indeed, it is apparent that Bond has
circulated the document in an effort to have it published. But more
importantly, the protection of privacy is not a function of the copy-
right law. See, e.g., New Era Publications Int’l APS v. Henry Holt &
Co., 695 F. Supp. 1493, 1504-05 (S.D.N.Y. 1988) (Leval, J.). To the
contrary, the copyright law offers a limited monopoly to encourage
BOND v. BLUM 13
ultimate public access to the creative work of the author. If privacy
is the essence of Bond’s claim, then his action must lie in some
common-law right to privacy, not in the Copyright Act. See, e.g.,
Lawrence v. A.S. Abell Co., 475 A.2d 448, 450-51 (Md. 1984).
B
We next consider the second factor, "the nature of the copyrighted
work." 17 U.S.C. § 107(2). This factor focuses attention on the extent
to which a work falls at the core of creative expression. See Campbell,
510 U.S. at 586. Thus, for example, a fictional work might be closer
to the core of copyright than a factual work. See, e.g., Stewart v.
Abend, 495 U.S. 207, 237-38 (1990).
That Bond’s manuscript is unpublished and contains a stylized
mode of expressing his feelings about historical facts weigh against
a finding of fair use. See Harper & Row, 471 U.S. at 564. But, as
Campbell instructs, we do not consider the § 107 factors "in isolation,
one from another," but we weigh them together "in light of the pur-
poses of copyright." 510 U.S. at 578. Where, as here, the use of the
work is not related to its mode of expression but rather to its historical
facts and there is no evidence that the use of Bond’s manuscript in the
state legal proceedings would adversely affect the potential market for
the manuscript, one cannot say the incentive for creativity has been
diminished in any sense. And because the societal benefit of having
all relevant information presented in a judicial proceeding is an
important one, it should be furthered if doing so would not unduly
undermine the author’s rights with regard to his creative work.
C
Under the third § 107 factor, we examine the "amount and substan-
tiality of the portion used in relation to the copyrighted work as a
whole." 17 U.S.C. § 107(3). As a general matter, as the amount of the
copyrighted material that is used increases, the likelihood that the use
will constitute a "fair use" decreases. But this is an imperfect general-
ization. Compare Harper & Row, 471 U.S. 569 (holding that publica-
tion of only some 300 words from unpublished memoirs of President
Ford was not a fair use given the quality of the quoted language), with
Campbell, 510 U.S. at 594 (holding that even qualitatively substantial
14 BOND v. BLUM
copying in a parodical song is fair use when such copying serves the
necessary function of "conjuring up" the original song to advance the
parody). "The extent of permissible copying varies with the purpose
and character of the use." Campbell, 510 U.S. at 586-87.
It is conceded that the defendants’ challenged use of the manuscript
in the state-court proceeding involved all, or nearly all, of the copy-
righted work. Its use, however, was not for its expressive content, but
rather for its allegedly factual content. The sole purpose and intent of
introducing Bond’s manuscript was to obtain admissions of fact
against his interest in an effort to prove that his home would not be
a suitable place for custody of children. The use of the copyrighted
material in this context, even the entire manuscript, does not under-
mine the protections granted by the Act but only serves the important
societal interest in having evidence before the factfinder. See Fogerty
v. Fantasy, Inc., 510 U.S. 517, 526 (1994) ("We have often recog-
nized the monopoly privileges that Congress has authorized, while
‘intended to motivate the creative activity of authors and inventors by
the provision of a special reward,’ are limited in nature and must ulti-
mately serve the public good"). Because the manuscript was not used
to undermine any right conferred by the Copyright Act, Bond can
derive little benefit from this factor in the context of this case.
D
Finally, we consider the effect of the defendants’ use of Bond’s
copyrighted manuscript "upon the potential market for or value of the
copyrighted work." 17 U.S.C. § 107(4). This factor is "undoubtedly
the single most important element of fair use." Harper & Row, 471
U.S. at 566. This is so because it touches most closely upon the
author’s ability to capture the fruits of his labor and hence his incen-
tive to create. Under this core inquiry, we determine whether the
defendants’ introduction of the manuscript in evidence would materi-
ally impair the marketability of the work and whether it would act as
a market substitute for it.
On this factor, there is no evidence that the admission into evidence
of Bond’s manuscript would adversely affect its marketability.
Indeed, the district court made the observation: "Ironically, if any-
BOND v. BLUM 15
thing, [the defendants’ use] increases the value of the work in a per-
verse way, but it certainly doesn’t decrease it."
E
In sum, we conclude that the district court did not err in concluding
that the defendants’ use of the manuscript as evidence in the state-
court proceeding fell within the scope of fair use authorized by § 107
of the Copyright Act. To the contrary, we agree with the district court
when it stated:
Purpose and character of [the defendants’] use has nothing
whatsoever to do with any interest that the copyright law
was designed to protect. The copyright law was never
designed to protect content as distinguished from mode of
expression.
***
It was certainly never intended to utilize, to keep from the
public the ability to state the facts in a document as com-
pared to the mode of expression.
***
[Moreover], the effect of [defendants’] use on the potential
market for value of the copyrighted work is absolutely zero.
III
Bond also contends that the district court erred in awarding attor-
neys fees to the individual defendants as prevailing parties, under 17
U.S.C. § 505. The district court awarded $6,675.45 each to the defen-
dants Dudley Hodgson, Kenneth Blum, Jr., and Kenneth Blum, Sr.,
and $8,699.70 to William Slavin.
Bond does not contest the amount of the awards, but he argues that
the district court’s findings on the factors relevant to an award of
attorneys fees were not justified. He argues that he was only seeking
16 BOND v. BLUM
to protect his rights under the Copyright Act and that his rights should
not be chilled by an assessment of attorneys fees. He argues expan-
sively that the question of whether the introduction of a copyrighted
work into evidence was a fair use is a close question, particularly
when there are no controlling authorities on point.
We review the district court’s award of attorneys fees under 17
U.S.C. § 505 for abuse of discretion, reversing subsidiary factual find-
ings only if they are clearly erroneous. Diamond Star Bldg. Corp. v.
Sussex Co. Builders, Inc., 30 F.3d 503, 506 (4th Cir. 1994).
The Copyright Act provides:
[T]he court in its discretion may allow the recovery of full
costs by or against any party. . . . Except as otherwise pro-
vided by this title, the court may also award a reasonable
attorney’s fee to the prevailing party as part of the costs.
17 U.S.C. § 505. To determine whether an award of attorneys fees
should be made to a party under § 505, we have articulated four fac-
tors for consideration: "(1) the motivation of the parties, (2) the objec-
tive reasonableness of the legal and factual positions advanced, (3)
the need in particular circumstances to advance considerations of
compensation and deterrence, and (4) any other relevant factor pre-
sented." Diamond Star, 30 F.3d at 505 (quoting Rosciszewski v. Arete
Assocs., Inc., 1 F.3d 225, 234 (4th Cir. 1993) (internal quotation
marks omitted)).
In applying these factors to the circumstances before it, the district
court found that Bond’s motivation in bringing his copyright infringe-
ment action was "to block potentially relevant evidence from being
presented" in the child custody proceeding. In essence, the court
stated that Bond misused the Copyright Act and that he was moti-
vated by a desire to suppress the underlying facts of his copyrighted
work rather than to safeguard its creative expression. Assessing the
reasonableness of the legal positions advanced by Bond, the court
concluded that the fair-use question presented by Bond’s complaint
was "not a close one" and that Bond’s position was "frivolous,"
although the court recognized that frivolousness was not essential to
an award of attorneys fees. The court concluded that it was unreason-
BOND v. BLUM 17
able for Bond to use a copyright infringement action to attempt to bar
introduction of facts disclosed in the work as admissions against his
interest, particularly when the information was relevant to child-
custody issues. Finally, the court stated that Bond and others in a
position similar to him "should be deterred from bringing meritless
actions."
We conclude that the district court, in reaching these conclusions,
did not clearly err in its factfinding and, in applying the Rosciszewski
factors to award attorneys fees to the prevailing individual defendants,
did not abuse its discretion.
IV
The two law-firm defendants — McDaniel, Bennett & Griffin and
Adelberg, Rudow, Dorf & Hendler, LLC — also sought attorneys
fees under 17 U.S.C. § 505, but the district court denied them because
it concluded that the firms were acting pro se and therefore were not
entitled to fees. The law firms cross-appealed, arguing that the district
court erred in applying to them the pro se exception, as stated in Kay
v. Ehrler, 499 U.S. 432 (1991) (holding that an attorney representing
himself is ineligible for attorneys fees under 42 U.S.C. § 1988).
Because of the absence of judicial precedents and in view of the
insight provided by our decision in Doe v. Board of Education of Bal-
timore County, 165 F.3d 260 (4th Cir. 1998) (denying statutory fees
to an attorney-parent of a child with a disability who was a prevailing
party under 20 U.S.C. § 1415(i)(3)(B)), the district court believed that
it could not award fees under 17 U.S.C. § 505 to a prevailing law firm
when members of that law firm represent the firm. The district court
held conditionally that if it had been given "discretion to award coun-
sel fees to the law firm defendants, it would do so," but it would have
awarded "substantially less than the amount claimed because . . . had
there been independent counsel being paid by the law firm Defen-
dants, the matter would have been handled at far less cost than is
sought from the Plaintiff."
The law firms contend that the district court erred in concluding
that the law firms were proceeding pro se and that the cases of Kay
and Doe preclude an award of fees to them under § 505. They state
18 BOND v. BLUM
that they are "legal entities represented by attorneys," albeit attorneys
within the firm. They argue that the Supreme Court’s statement in
Kay that "an organization is not comparable to a pro se litigant" is
dispositive on this issue. Kay, 499 U.S. at 436 n.7. They argue addi-
tionally that Local Rule 101.1(a) of the District of Maryland states
that "[o]nly individuals may represent themselves." They maintain
that a law firm using members to represent the firm is more analogous
to a State or a corporation represented by its own in-house counsel.
In each of the situations, they note, the attorney-client relationship is
created between the organization and the attorney, just as it was
between the law firms and the members representing them.
This is an issue of first impression in our circuit, but its resolution
may readily be derived from the Supreme Court’s decision in Kay and
our decision in Doe.
The principle that a pro se litigant who is not a lawyer is not enti-
tled to attorneys fees authorized by a fee-shifting statute is not dis-
puted. See, e.g., Gonzales v. Kangas, 814 F.2d 1411 (9th Cir. 1987);
Smith v. DeBartoli, 769 F.2d 451 (7th Cir. 1985); Owens-El v. Robin-
son, 694 F.2d 941 (3d Cir. 1982). The question more analogous to the
facts before us — whether a pro se litigant who is also an attorney
would be entitled to such fees — was addressed by the Supreme
Court in Kay. In Kay, the Court held that a plaintiff who was also an
attorney and who prevailed in a civil rights action was nonetheless not
entitled to fees under 42 U.S.C. § 1988(b), which authorizes attorneys
fees to the prevailing party, notwithstanding the fact that the attorney
"obviously handled his professional responsibilities . . . in a compe-
tent manner." 499 U.S. at 435. The Supreme Court rested its conclu-
sion on three principles. First, as a textual matter, it concluded that an
"attorney," whose fees would be reimbursable under § 1988, "as-
sumes an agency relationship, and it seems likely that Congress con-
templated an attorney-client relationship as a predicate for an award
under § 1988." Id. at 436. Second, the Court focused on the purpose
of fee-shifting statutes "to enable potential plaintiffs to obtain the
assistance of competent counsel in vindicating their rights." Id. And
third, an award of fees to only those litigants who have retained inde-
pendent counsel ensures "the effective prosecution of meritorious
claims." Id. at 437. Explaining this more fully, the Court stated:
BOND v. BLUM 19
Even a skilled lawyer who represents himself is at a disad-
vantage in contested litigation. Ethical considerations may
make it inappropriate for him to appear as a witness. He is
deprived of the judgement of an independent third party in
framing the theory of the case, evaluating alternative meth-
ods of presenting the evidence, cross-examining hostile wit-
nesses, formulating legal arguments, and in making sure that
reason, rather than emotion, dictates the proper tactical
response to unforeseen developments in the courtroom. The
adage that "a lawyer who represents himself has a fool for
a client" is the product of years of experience by seasoned
litigators.
Id. at 437-38 (footnote omitted).
In Doe, we applied the principles of Kay to a fee-shifting provision
in the Individual with Disabilities Education Act ("IDEA"), denying
a parent, who was also an attorney, a right to collect fees under the
statute for his representation of his child. 165 F.3d at 265. Even
though a parent who was also an attorney was distinct from and there-
fore an agent for the prevailing child, who would otherwise be enti-
tled to fees under IDEA, 20 U.S.C. § 1415(i)(3)(B), we concluded
that "[l]ike attorneys appearing pro se, attorney-parents are generally
incapable of exercising sufficient independent judgment on behalf of
their children to ensure that ‘reason, rather than emotion’ will dictate
the conduct of the litigation." Id. at 263 (quoting Kay, 499 U.S. at
437). Because a parent-attorney’s representation of his child was akin
to pro se representation, we employed the rationale of Kay to find that
the parent-attorney representation of a child in an IDEA case fell
within the "special circumstances" exception barring fees where such
an award would be unjust. See Hensley v. Eckerhart, 461 U.S. 424,
429 (1983).
But the principles of Kay and Doe, which were applied to deny a
prevailing party attorneys fees under fee-shifting statutes, do not
apply in circumstances where entities represent themselves through
in-house or pro bono counsel. In Kay, the Supreme Court explained
the distinction: "[A]n organization is not comparable to a pro se liti-
gant because the organization is always represented by counsel,
whether in-house or pro bono, and thus, there is always an attorney-
20 BOND v. BLUM
client relationship." 499 U.S. at 436 n.7. When a member of an entity
who is also an attorney represents the entity, he is in an attorney-
client relationship with the entity and, even though interested in the
affairs of the entity, he would not be so emotionally involved in the
issues of the case so as to distort the rationality and competence that
comes from independent representation. Accordingly, a State’s own
attorneys representing the State may be awarded attorneys fees under
a fee-shifting statute. See Wisconsin v. Hotline Indus., Inc., 236 F.3d
363 (7th Cir. 2000). And in-house counsel representing the corpora-
tion for whom they work may also be awarded attorneys fees. See
Textor v. Bd. of Regents of Northern Ill. Univ., 711 F.2d 1387, 1396
(7th Cir. 1983) ("Defendants chose to hire in-house counsel because
that was the most efficient means of handling a large amount of legal
work. . . . [F]or every hour in-house counsel spent on this case, defen-
dants lost an hour of legal services that could have been spent on
other matters").
Though representation of a law firm by one of its members pre-
sents an increased risk of emotional involvement and loss of indepen-
dence, the law firm still remains a business and professional entity
distinct from its members, and the member representing the firm as
an entity represents the firm’s distinct interests in the agency relation-
ship inherent in the attorney-client relationship. Although a given rep-
resentation of a law firm by one or more of its members could suffer
from a lack of independence, there is no indication in this case of a
relationship that tended to distort independent judgment, as existed in
Doe.
Because the district court indicated that it was inclined to award the
law-firm defendants fees, although not all the fees requested, and
would have done so but for the pro se prohibition, we now remand
this case to authorize, but not require, the district court to award § 505
fees if it determines, in its discretion, to do so.
V
The law-firm defendants also contend that the district court erred
in denying their motion for sanctions under Federal Rule of Civil Pro-
cedure 11. In denying their motion, the district court stated, "It
appears well settled that unless a Rule 11 motion is filed in accor-
BOND v. BLUM 21
dance with the 21 day ‘safe harbor’ warning provision, it cannot be
granted." The court, however, did not have the benefit of our decision
in Rector v. Approved Fed. Savings Bank, 265 F.3d 248 (4th Cir.
2001), which had been decided only shortly before the court ruled. In
Rector, we held that the safe harbor provision was not jurisdictional
and could be waived if not properly asserted.
Without expressing any opinion on how the motion for sanctions
should be decided, we remand this issue to the district court for fur-
ther consideration of the motion, taking into account our decision in
Rector.
Accordingly, the judgment of the district court is
AFFIRMED IN PART AND VACATED
AND REMANDED IN PART.