Assessment Tech v. WireData Inc ( 2004 )


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  •                             In the
    United States Court of Appeals
    For the Seventh Circuit
    ____________
    No. 03-2061
    ASSESSMENT TECHNOLOGIES OF WI, LLC,
    Plaintiff-Appellee,
    v.
    WIREDATA, INC.,
    Defendant-Appellant.
    ____________
    Appeal from the United States District Court
    for the Eastern District of Wisconsin.
    No. 01-C-789—Aaron E. Goodstein, Magistrate Judge.
    ____________
    SUBMITTED DECEMBER 24, 2003—DECIDED MARCH 17, 2004
    ____________
    Before POSNER, DIANE P. WOOD, and EVANS, Circuit Judges.
    POSNER, Circuit Judge. In reversing the judgment for the
    plaintiff in this suit for copyright infringement, we de-
    scribed it as a case “about the attempt of a copyright owner
    to use copyright law to block access to data that not only are
    neither copyrightable nor copyrighted, but were not created
    or obtained by the copyright owner; the owner is trying to
    secrete the data in its copyrighted program—a program the
    existence of which reduced the likelihood that the data
    would be retained in a form in which they would have been
    readily accessible.” 
    350 F.3d 640
    , 641-42 (7th Cir. 2003). We
    added: “It would be appalling if such an attempt could
    succeed.” 
    Id. at 642.
    And it did not succeed.
    2                                                   No. 03-2061
    Before us now is the defendant’s motion for an award of
    attorneys’ fees incurred by it in defending the suit both in
    the district court and in our court. The Copyright Act au-
    thorizes the award of a reasonable attorney’s fees to the
    prevailing party in a suit under the Act. 17 U.S.C. § 505.
    And unlike civil rights suits, where while a prevailing
    plaintiff is presumptively entitled to an award of fees a
    prevailing defendant is entitled to such an award only if the
    suit was groundless, e.g., Christiansburg Garment Co. v.
    EEOC, 
    434 U.S. 412
    (1978); Johnson v. Daley, 
    339 F.3d 582
    , 587
    (7th Cir. 2003) (en banc), in copyright suits “prevailing
    plaintiffs and prevailing defendants are to be treated alike.”
    Fogerty v. Fantasy, Inc., 
    510 U.S. 517
    , 534 (1994). The reason
    is that the plaintiff in such a suit is not a little guy suing a
    big guy—an employee suing an employer—but often the
    reverse. For such a suit pits a property owner against an
    individual or firm that will often be, and in this case is,
    someone who seeks to enforce not a property right—a right
    to exclude that may generate big profits—but nonexclusive
    access to the intellectual public domain. The public interest
    in that access is as great as the public interest in the enforce-
    ment of copyright; this is shown by the restrictions with
    which copyright is hedged about, of which the most
    pertinent is that, as we pointed out in our original opinion,
    once work enters the public domain it cannot be appropri-
    ated as private (intellectual) 
    property. 350 F.3d at 643
    ; Feist
    Publications, Inc. v. Rural Telephone Service Co., 
    499 U.S. 340
    ,
    348 (1991); Country Kids’N City Slicks, Inc. v. Sheen, 
    77 F.3d 1280
    , 1287 (10th Cir. 1996); Norma Ribbon & Trimming, Inc. v.
    Little, 
    51 F.3d 45
    , 47 (5th Cir. 1995); Engineering Dynamics,
    Inc. v. Structural Software, Inc., 
    26 F.3d 1335
    , 1344 (5th Cir.
    1994); Computer Associates International, Inc. v. Altai, Inc., 
    982 F.2d 693
    , 710 (2d Cir. 1992); 3 Melville B. Nimmer & David
    Nimmer, Nimmer on Copyright § 13.03[F][4], p. 13-141 (2004);
    No. 03-2061                                                    3
    see also Aronson v. Quick Point Pencil Co., 
    440 U.S. 257
    , 262
    (1979); Gonzales v. Transfer Technologies, Inc., 
    301 F.3d 608
    ,
    609 (7th Cir. 2002).
    The courts have not said, however, that the symmetry of
    plaintiff and defendant in copyright cases requires a pre-
    sumption that the prevailing party, whichever it is, is enti-
    tled to an award of attorneys’ fees. They have instead left it
    to judicial discretion by setting forth a laundry list of
    factors, all relevant but none determinative. Fogerty v.
    Fantasy, 
    Inc., supra
    , 510 U.S. at 534 n. 19; McRoberts Software,
    Inc. v. Media 100, Inc., 
    329 F.3d 557
    , 571 (7th Cir. 2003);
    Gonzales v. Transfer Technologies, 
    Inc., supra
    , 301 F.3d at 609;
    Berkla v. Corel Corp., 
    302 F.3d 909
    , 923 (9th Cir. 2002); Lotus
    Development Corp. v. Borland Int’l, Inc., 
    140 F.3d 70
    , 73-74 (1st
    Cir. 1998). The list, moreover, is nonexclusive, Hogan
    Systems, Inc. v. Cybresource International, Inc., 
    158 F.3d 319
    ,
    325 (5th Cir. 1998), arguably dictum, Matthew Bender & Co.
    v. West Publishing Co., 
    240 F.3d 116
    , 121 (2d Cir. 2001), and
    in need of simplification—a process begun in this circuit in
    Gonzales v. Transfer Technologies, 
    Inc., supra
    , and continued
    here.
    The two most important considerations in determining
    whether to award attorneys’ fees in a copyright case are the
    strength of the prevailing party’s case and the amount
    of damages or other relief the party obtained. If the case was
    a toss-up and the prevailing party obtained generous
    damages, or injunctive relief of substantial monetary value,
    there is no urgent need to add in an award of attorneys’
    fees. Cf. Mathias v. Accor Economy Lodging, Inc., 
    347 F.3d 672
    ,
    677 (7th Cir. 2003). But if at the other extreme the claim or
    defense was frivolous and the prevailing party obtained no
    relief at all, the case for awarding him attorneys’ fees is
    compelling. As we said with reference to the situation in
    which the prevailing plaintiff obtains only a small award of
    4                                                 No. 03-2061
    damages, “the smaller the damages, provided there is a real,
    and especially a willful, infringement, the stronger the case
    for an award of attorneys’ fees . . . . [W]e go so far as to
    suggest, by way of refinement of the Fogerty standard, that
    the prevailing party in a copyright case in which the mon-
    etary stakes are small should have a presumptive enti-
    tlement to an award of attorneys’ fees.” Gonzales v. Transfer
    Technologies, 
    Inc., supra
    , 301 F.3d at 610; see also Magnuson
    v. Video Yesteryear, 
    85 F.3d 1424
    , 1432 (9th Cir. 1996). When
    the prevailing party is the defendant, who by definition
    receives not a small award but no award, the presumption
    in favor of awarding fees is very strong. See Diamond Star
    Building Corp. v. Freed, 
    30 F.3d 503
    , 506 (4th Cir. 1994). For
    without the prospect of such an award, the party might be
    forced into a nuisance settlement or deterred altogether
    from enforcing his rights.
    We of course were not saying that the smaller the dam-
    ages, the larger the fee. The fee is independent of the size of
    the damages. The point is only that when a meritorious
    claim or defense is not lucrative, an award of attorneys’ fees
    may be necessary to enable the party possessing the merito-
    rious claim or defense to press it to a successful conclusion
    rather than surrender it because the cost of vindication
    exceeds the private benefit to the party. The best illustration
    is in fact a case like this, where the party awarded the fees,
    being the defendant, could not obtain an award of damages
    from which to pay his lawyer—no matter how costly it was
    for him to defend against the suit.
    Although the plaintiff managed to obtain a judgment from
    the district court, and so we do not go so far as to call the
    suit frivolous, the suit was marginal, as we explained in our
    opinion. The plaintiff was rather transparently seeking to
    annex a portion of the intellectual public domain. And since
    the prevailing party was the defendant, it obtained no
    No. 03-2061                                                    5
    affirmative relief from its victory. Unless a party in that
    situation has a prospect for obtaining attorneys’ fees, it will
    be under pressure to throw in the towel if the cost is less
    than his anticipated attorneys’ fees. We suggested in our
    opinion that “for a copyright owner to use an infringement
    suit to obtain property protection, here in data, that copy-
    right law clearly does not confer, hoping to force a settle-
    ment or even achieve an outright victory over an opponent
    that may lack the resources or the legal sophistication to
    resist effectively,” could be a form of copyright 
    misuse. 350 F.3d at 647
    . We did not reach the question whether the
    plaintiff’s conduct rose to the level of actual copyright
    misuse, but we made clear that it came close, and an award
    of attorneys’ fees to the defendant is an appropriate sanc-
    tion. For illustrative cases, see Budget Cinema, Inc. v.
    Watertower Associates, 
    81 F.3d 729
    , 732-33 (7th Cir. 1996);
    Bond v. Blum, 
    317 F.3d 385
    , 397-98 (4th Cir. 2003) (a case in
    which misuse was found); Coles v. Wonder, 
    283 F.3d 798
    , 804
    (6th Cir. 2002); Edwards v. Red Farm Studio Co., 
    109 F.3d 80
    ,
    83 (1st Cir. 1997).
    Most of the fees incurred by the defendant were incurred
    in the district court proceedings, and ordinarily that would
    argue compellingly for our limiting our award to the ap-
    pellate fees and inviting the defendant to file in the district
    court a motion for the award of the fees that he incurred in
    that court. But in some cases in which detailed billing rec-
    ords of the applicant are submitted to the court of appeals,
    as the defendant has done in this case, and the opposing
    party has had a chance to rebut, as it has, we can make the
    full award and save the parties the added expense and the
    district judge the added bother of a separate fees proceeding
    in the district court. Cengr v. Fusibond Piping Systems, Inc.,
    
    135 F.3d 445
    , 454 (7th Cir. 1998); Nanetti v. University of
    Illinois, 
    944 F.2d 1416
    , 1422 (7th Cir. 1991); Ustrak v. Fairman,
    
    851 F.2d 983
    , 989 (7th Cir. 1988); In re Thirteen Appeals, 56
    6                                                  No. 03-2061
    F.3d 295, 312 (1st Cir. 1995); cf. Walz v. Town of Smithtown, 
    46 F.3d 162
    , 170 (2d Cir. 1995). Such an approach furthers the
    principle that the fees tail should not be allowed to wag the
    merits dog too vigorously. Ustrak v. 
    Fairman, supra
    , 851 F.2d
    at 987-88; see also Hensley v. Eckerhart, 
    461 U.S. 424
    , 437
    (1983).
    In all the cases cited, except Hensley and Walz, the court of
    appeals was fixing fees for services incurred in the district
    court as well, as we are asked to do here; and that might
    seem contrary to the principle that the award of fees is
    committed to the discretion of the court in which the
    services for which fees are being sought were rendered; for
    that is the court that observed the rendition of the services.
    Ordinarily, of course, discretion is to be exercised by the
    judicial officer to whom that discretion has been confided.
    Icicle Seafoods, Inc. v. Worthington, 
    475 U.S. 709
    (1986). But
    the scope of a judicial officer’s discretion varies with the
    circumstances. Sometimes it is broad, sometimes a mere
    point. In this case, because there is no room for disagree-
    ment over the reasonableness of the various fees sought by
    the defendant for the work in the district court, there is no
    discretion for the district court to exercise and so no pur-
    pose would be served by a remand.
    The defendant’s lawyer billed the defendant for 778.2
    hours of work, up to and including the trial in the district
    court, at an average rate of $115 per hour, for a total of
    $88,374.35. The plaintiff does not question the total number
    of hours billed or the billing rate. But some of this work, the
    plaintiff contends and the defendant concedes, was alloca-
    ble to the state court proceedings discussed in our opinion
    on the merits, and the defendant suggests that we reduce
    the total amount by a third, to $58,916.23, to reflect this fact.
    Our examination of the billing records persuades us that
    this is indeed the correct discount.
    No. 03-2061                                                   7
    The defendant’s lawyer billed the defendant another
    $7,849.05 for 68.7 hours of work spent challenging the
    plaintiff’s request in the district court for an award of attor-
    neys’ fees, plus a flat fee of $7,500 for work on the wording
    of the injunction and another flat fee of $17,500 for repre-
    senting the defendant on appeal. The defendant wants us to
    ignore the flat fees and award a larger fee based on the
    number of hours that the lawyer actually worked on the two
    matters.
    The courts of appeals have split three ways on the ques-
    tion of the weight to be given to the terms of the contract
    between the party and his lawyer in determining an award
    of attorneys’ fees in a copyright case. Compare Pinkham v.
    Camex, Inc., 
    84 F.3d 292
    , 294 (8th Cir. 1996) (no weight), with
    Crescent Publishing Group, Inc. v. Playboy Enterprises, 
    246 F.3d 142
    , 144 (2d Cir. 2001) (some weight), with Lieb v. Topstone
    Industries, 
    788 F.2d 151
    , 156 (3d Cir. 1986) (controlling
    weight in the sense that the contract places a ceiling on what
    the court can award the lawyer). This court has not opined
    on the issue, but we think the Third Circuit has it right. The
    best evidence of the value of the lawyer’s services is what
    the client agreed to pay him. See Medcom Holding Co. v.
    Baxter Travenol Laboratories, Inc., 
    200 F.3d 518
    , 520 (7th Cir.
    1999).
    This conclusion may seem in tension with the decision of
    the Supreme Court in Blanchard v. Bergeron, 
    489 U.S. 87
    , 92-
    96 (1989), to decline to give controlling weight to the fees
    specified in contingent-fee contracts in civil rights cases. But
    the reason was related to the structure of contingent-fee
    contracts, and we are not dealing with such a contract in
    this case. Even a generous such contract will not yield a
    significant fee if the damages that the plaintiff obtains are
    slight: 40 percent of $1,000 is not enough to induce a com-
    petent lawyer to handle even a slam-dunk case. The lawyer
    8                                                 No. 03-2061
    might nevertheless take on a contingency basis a case
    unlikely to yield more, if there were some probability of a
    larger award. And so one observes contingent-fee contracts
    in cases in which the likeliest recovery is small. In those
    cases, were it not for the expectation of an additional, court-
    ordered award if the suit was successful but yielded little in
    the way of damages, the plaintiff might not have been able
    to interest a lawyer in taking the case in the first place. So
    the percentage specified in the contract should not cap such
    awards. Conceivably, the fixed fees that the defendant’s
    lawyer charged his client here were influenced by the
    prospect of a larger fee if the defendant won the case and
    persuaded the court to award fees, for his contract with the
    defendant required that any additional award be turned
    over to him. In the circumstances, however, the negotiated
    fees should be the ceiling. For work on the wording of the
    injunction, the defendant is seeking $9,973, which is almost
    $2,500 above the agreed-on $7,500 fee for this service, and
    strikes us as excessive. For the appeal, the defendant is
    seeking $42,056, a sum not unreasonable in itself, but
    supported by time sheets for only $5,031, which is less than
    a third of the flat fee of $17,500 that the lawyer charged.
    That the defendant did not prevail on every single one of
    its contentions is no reason to cut down the award of fees,
    however. E.g., Hensley v. 
    Eckerhart, supra
    , 461 U.S. at 440. As
    we pointed out recently, “a plaintiff is not to be denied full
    attorneys’ fees merely because he lost some interim rulings
    en route to ultimate success. Such setbacks are well-nigh
    inevitable, and a lawyer who nevertheless was sedulous to
    avoid them might lose a good case through an excess of
    caution.” Alliance to End Repression v. City of Chicago, 
    356 F.3d 767
    , 770 (7th Cir. 2004) (citations omitted).
    To summarize, the plaintiff is ordered to pay the defen-
    dant a total of $91,765.28 ($58,916.23 + $7,849.05 + $7,500 +
    $17,500) in attorneys’ fees.
    No. 03-2061                                             9
    A true Copy:
    Teste:
    _____________________________
    Clerk of the United States Court of
    Appeals for the Seventh Circuit
    USCA-02-C-0072—3-17-04
    

Document Info

Docket Number: 03-2061

Judges: Per Curiam

Filed Date: 3/17/2004

Precedential Status: Precedential

Modified Date: 9/24/2015

Authorities (27)

Blanchard v. Bergeron , 109 S. Ct. 939 ( 1989 )

Feist Publications, Inc. v. Rural Telephone Service Co. , 111 S. Ct. 1282 ( 1991 )

matthew-bender-company-inc-hyperlaw-inc , 240 F.3d 116 ( 2001 )

robert-walz-lana-sue-walz-and-robert-walz-jr-v-town-of-smithtown-and , 46 F.3d 162 ( 1995 )

McRoberts Software, Inc. v. Media 100, Inc., Cross-Appellee , 329 F.3d 557 ( 2003 )

Norma Ribbon & Trimming, Inc., Plaintiff-Counter v. John D. ... , 51 F.3d 45 ( 1995 )

Budget Cinema, Incorporated v. Watertower Associates and ... , 81 F.3d 729 ( 1996 )

derrick-coles-00-3933-01-3345-gwendolyn-daniles , 283 F.3d 798 ( 2002 )

Lloyd Lieb, Trading as Specialized Cassettes v. Topstone ... , 85 A.L.R. Fed. 421 ( 1986 )

Stephen Ustrak v. James W. Fairman , 851 F.2d 983 ( 1988 )

Robert Cengr v. Fusibond Piping Systems, Inc. , 135 F.3d 445 ( 1998 )

diamond-star-building-corporation-v-beverly-freed-and-ingram , 30 F.3d 503 ( 1994 )

william-c-bond-v-kenneth-blum-sr-kenneth-blum-jr-dudley-fb-hodgson , 317 F.3d 385 ( 2003 )

Fogerty v. Fantasy, Inc. , 114 S. Ct. 1023 ( 1994 )

The Crescent Publishing Group, Inc. v. Playboy Enterprises, ... , 246 F.3d 142 ( 2001 )

Lotus Development Corp. v. Borland International, Inc. , 140 F.3d 70 ( 1998 )

Hogan Systems, Inc. v. Cybresource Int'l., Inc. , 158 F.3d 319 ( 1998 )

Assessment Technologies of WI, LLC v. Wiredata, Inc. , 350 F.3d 640 ( 2003 )

Alliance to End Repression, Plaintiffs-Appellees/cross-... , 356 F.3d 767 ( 2004 )

Aronson v. Quick Point Pencil Co. , 99 S. Ct. 1096 ( 1979 )

View All Authorities »