Mary Ellen Pinkham v. L'eggs Brands, Inc.

___________
No. 95-1705
___________
Mary Ellen Pinkham, *
*
Appellee, *
*
v. *
*
Camex, Inc., a corporation; *
Jay Columbus; Victor Benedetto, *
*
Defendants, *
*
L'Eggs Brands, Inc., *
*
Appellant, *
*
L'Eggs Brands, Inc., *
*
Third Party Plaintiff- *
Appellant, *
*
Camex, Inc.; Jay Columbus; *
Victor Benedetto, *
*
Third Party Plaintiffs,*
*
v. *
*
Mary Ellen Enterprises, Inc., *
*
Appellee. *
___________
Appeals from the United States
No. 95-2353 District Court for the
___________ District of Minnesota
Mary Ellen Pinkham, * [TO BE PUBLISHED]
*
Appellant, *
*
v. *
*
Camex, Inc., a corporation; *
Jay Columbus; Victor Benedetto, *
*
Defendants, *
*
L'Eggs Brands, Inc., *
*
Appellee, *
*
L'Eggs Brands, Inc., *
*
Third Party Plaintiff- *
Appellee, *
*
Camex, Inc.; Jay Columbus; *
Victor Benedetto, *
*
Third Party Plaintiffs,*
*
v. *
*
Mary Ellen Enterprises, Inc., *
*
Appellant. *
___________
Submitted: March 1, 1996
Filed: May 21, 1996
___________
Before McMILLIAN, WOLLMAN, and HANSEN, Circuit Judges.
___________
PER CURIAM.
L'Eggs Brands, Inc. (L'Eggs) appeals from the postjudgment order of
the District Court1 for the District of Minnesota awarding Mary Ellen
Pinkham $229,420.13 in attorney's fees and $8,702.46 in costs. Pinkham
cross-appeals from the order denying expert witness fees in excess of the
statutory amount under 28 U.S.C. § 1821. For the reasons discussed below,
we affirm.
1
The Honorable James M. Rosenbaum, United States District
Judge for the District of Minnesota, adopting the report and
recommendation of the Honorable Franklin L. Noel, United States
Magistrate Judge for the District of Minnesota.
-2-
Pinkham brought a copyright infringement case against L'Eggs and
others. Pinkham's corporation, Mary Ellen Enterprises, Inc., brought a
diversity action against all the defendants except L'Eggs. The two cases
were consolidated for trial, and the jury awarded damages against
defendants in both cases. We affirmed. Mary Ellen Enters. v. Camex, Inc.,
68 F.3d 1065 (8th Cir. 1995). We also affirmed the decision to award
attorney's fees in the copyright action under 17 U.S.C. § 5052 and to
apportion the fees between L'Eggs (40%) and the other defendants (60%).
In support of Pinkham's motion for attorney's fees and costs,
Pinkham's counsel attested to their trial experience, range of individual
billing rates, total number of hours at each rate, and the novelty and
number of issues involved. In opposition, counsel for L'Eggs attested
Pinkham had refused to produce documents reflecting any retainer agreement
she had with counsel and any apportionment of time between the diversity
and copyright cases. L'Eggs attached a survey of billing rates of
Minnesota law firms, showing hourly billing rates lower than those charged
by Pinkham's counsel.
The district court concluded, based on the billing rate survey, that
the hourly rates charged were "out of step with the local legal community"
and reduced them. As for the allocation of time between the diversity and
copyright cases, the district court agreed with Pinkham that nearly all of
the work was necessary to both actions, concluded that 10% of the billed
time should be
2
Title 17 U.S.C. § 505 provides:
In any civil action under this title, the court in its
discretion may allow the recovery of full costs by or
against any party other than the United States or an
officer thereof. Except as otherwise provided by this
title, the court may also award a reasonable attorney's
fee to the prevailing party as part of the costs.
-3-
allocated solely to the diversity case, and reduced the fee by $25,491.13.
The district court also concluded, inter alia, that costs were
limited to those identified in 28 U.S.C. § 1920, that expert witness fees
in excess of the statutory amount (set in 28 U.S.C. § 1821 at $40 per day)
were not recoverable, and that costs for long distance telephone calls,
faxes, messengers, and express mail were recoverable. The district court
reduced the cost award accordingly. These appeals followed.
We review awards of attorney's fees and costs for abuse of
discretion. Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 122 (8th Cir.
1987). We are bound by the district court's factual findings on the fee
issue unless they are clearly erroneous; review of the applicable legal
principles is plenary. Id.
I. Attorney's Fees
L'Eggs argues the district court abused its discretion in
establishing reasonable attorney's fees in the absence of evidence of an
agreement between Pinkham and her attorneys. We conclude that the
copyright statute provides for "reasonable" fees based on a lodestar figure
represented by the reasonable hourly rate multiplied by the hours expended
in the litigation; the actual fee arrangement between the client and the
attorney is immaterial. In any event, the monthly statements counsel
provided Pinkham and her partial payments on that account sufficiently
indicate Pinkham was obligated to pay her attorneys. The amount of the fee
to be awarded under the statute is left entirely to the district court's
discretion. Factors that courts may consider in awarding attorney's fees
include "``frivolousness, motivation, objective reasonableness (both in the
factual and in the legal components of the case) and the need in particular
circumstances to advance considerations of compensation and deterrence.'"
Fogerty v.
-4-
Fantasy, Inc., 114 S. Ct. 1023, 1033 n.19 (1994) (quoting with approval
Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)). We
conclude that the district court did not abuse its discretion in awarding
"reasonable" attorney's fees to Pinkham.
II. Allocation Between Copyright and Diversity Actions
L'Eggs argues the district court abused its discretion in deciding
to apportion to the diversity action only those hours dedicated "solely"
to it and to allocate to the copyright action hours which were necessary
to both actions. We conclude that the determination that 90% of the billed
time was necessary to both actions is sufficient to recover for all the
time spent in joint preparation. See Gulfstream III Assocs., Inc. v.
Gulfstream Aerospace Corp., 995 F.2d 414, 420 (3d Cir. 1993) (if fees
incurred in other litigation were for work product actually utilized, time
spent in other litigation was "inextricably linked" to issues in present
litigation, and plaintiff was not previously compensated, court may include
all fees); Nanetti v. University of Ill. at Chicago, 944 F.2d 1416, 1419
(7th Cir. 1991) (time for joint preparation allowed even where only one
claim produces recovery). Accordingly, we affirm the attorney's fees
award.
III. Costs
We agree with L'Eggs that costs for long distance and fax ($4,664.89)
and for messenger and express mail ($1,606.10) are not "exemplification
and copies of papers necessarily obtained for use in the case" under 28
U.S.C. § 1920(4). We believe that their inclusion was harmless error,
however, because such costs were reasonable out-of-pocket expenses of the
kind normally charged to clients by attorneys, and thus should have been
included as part of the reasonable attorney's fees awarded. See West
Virginia Univ. Hosps., Inc. v. Casey, 499 U.S. 83, 87 n.3 (1991); Chalmers
v. City of Los Angeles, 796 F.2d 1205, 1216 n.7 (9th Cir. 1986) (out-of-
-5-
pocket litigation expenses reimbursable as part of attorney's fees); Laffey
v. Northwest Airlines, Inc., 241 U.S. App. D.C. 11, 746 F.2d 4, 30 (1984)
(same), cert. denied, 472 U.S. 1021 (1985); Northcross v. Board of Educ.,
611 F.2d 624, 639 (6th Cir. 1979) (reasonable out-of-pocket expenses
incurred by attorney which normally are charged to fee-paying client were
includable in 42 U.S.C. § 1988 "attorney's fee" award), cert. denied, 447
U.S. 911 (1980).
As for Pinkham's cross-appeal concerning expert witness fees, 28
U.S.C. § 1821 provides that, "[e]xcept as otherwise provided by law,"
witness fees and allowances are limited to that set forth in the statute
($40 per day). Pinkham argues that 17 U.S.C. § 505's "full costs" language
comes within the "otherwise provided by law" exception and is sufficient
authority to exclude it from the cost limitations set forth in 28 U.S.C.
§§ 1920 and 1821. In support, Pinkham argues that 17 U.S.C. § 505 was not
at issue in West Virginia Univ. Hosps., Inc. v. Casey, 499 U.S. at 87 (42
U.S.C. § 1988 expert witness fees limited by §§ 1920 and 1821(b)), or
Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987) (costs
under Fed. R. Civ. P. 54 limited by § 1920), and that expert testimony was
crucial to determine L'Eggs' profits based on the peculiar circumstances
of this case and was necessary to protect the copyright. Thus, Pinkham
argues, because one of the purposes of 17 U.S.C. § 505 is compensation, the
plain language of "full" should authorize full expert witness fees.
The Supreme Court held in Crawford Fitting Co. v. J.T. Gibbons, Inc.,
482 U.S. at 445 (citations omitted):
We will not lightly infer that Congress has repealed §§ 1920
and 1821, either through Rule 54(d) or any other provision not
referring explicitly to witness fees. As always, "``[w]here
there is no clear intention otherwise, a specific statute will
not be controlled or nullified by a general one regardless of
the priority of enactment'" . . . . Any argument that a
federal court is empowered
-6-
to exceed the limitations explicitly set out in §§ 1920 and 1821
without plain evidence of congressional intent to supersede those
sections ignores our longstanding practice of construing statutes in
pari materia.[3]
See also West Virginia Univ. Hosps., Inc. v. Casey, 499 U.S. at 86, 96
(explicit statutory authority to contrary is necessary to exclude witness
fees from § 1821(b) limits; expert witness fees not attorney's fees under
42 U.S.C. § 1988).
The parties have not directed us to any authority discussing the
source or meaning of "full costs" in 17 U.S.C. § 505. We do not agree that
the "full costs" language "clearly," "explicitly," or "plainly" evidences
congressional intent to treat 17 U.S.C. § 505 costs differently from costs
authorized in other statutes. Thus, we conclude costs under 17 U.S.C.
§ 505 are limited to the costs expressly identified in 28 U.S.C. § 1920,
and that expert witness fees in excess of the 28 U.S.C. § 1821(b) $40 limit
are not recoverable.
Accordingly, we affirm the order of the district court.
A true copy.
Attest:
CLERK, U.S. COURT OF APPEALS, EIGHTH CIRCUIT.
3
Statutes "in pari materia" (i.e., upon the same matter or
subject) are those having a common purpose. Black's Law
Dictionary 791 (6th ed. 1990).
-7-