Failure to register a copyright keeps a copyright plaintiff from obtaining attorneys' fees and statutory damages. One has to register to proceed with litigation; but, registration of a copyright only allows statutory damages and attorneys' fees for infringements occurring after the registration. Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys fees. Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.
John Fogerty of Creedence Clearwater Revival helps us on this issue. He penned "Run Through the Jungle," and then sold its rights to Fantasy, Inc. Later, he penned "The Old Man Down the Road," and Fantasy sued, claiming "Old Man" was the same as "Jungle." A jury said Fantasy was wrong, and that they were different songs. Mr Fogerty, of course, requested attorneys' fees. His request was denied because Fantasy's infringement suit was not brought frivolously or in bad faith as required by the Ninth Circuit for an award of attorney's fees to a successful defendant. The Ninth Circuit standard for awarding attorney's fees treated successful plaintiffs and successful defendants differently. Under that standard, commonly termed the "dual" standard, prevailing plaintiffs were generally awarded attorney's fees as a matter of course, while prevailing defendants had to show that the original suit was frivolous or brought in bad faith.
In contrast, some other circuits followed the so called "evenhanded" approach in which no distinction was made between prevailing plaintiffs and prevailing defendants. The Court of Appeals for the Third Circuit, for example, had ruled that "we do not require bad faith, nor do we mandate an allowance of fees as a concomitant of prevailing in every case, but we do favor an evenhanded approach." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986).
The Supreme Court took the Fogerty case (Fogerty v. Fantasy, Inc. (92-1750), 510 U.S. 517 (1994)), noting that: "The Copyright Act of 1976, 17 U.S.C. § 505 provides in relevant part that in any copyright infringement action 'the court may . . . award a reasonable attorney's fee to the prevailing party as part of the costs.' The question presented in this case is what standards should inform a court's decision to award attorney's fees to a prevailing defendant in a copyright infringement action--a question that has produced conflicting views in the Courts of Appeals."
It is the general rule in this country that unless Congress provides otherwise, parties are to bear their own attorney's fees. Alyeska Pipeline Co. v. Wilderness Society, 421 U.S. 240, 247-262 (1975). The British rule awards fees to the prevailing party. Looking at the statutory language, which uses the term "may," the Supreme Court ruled that the Copyright Statute adopted neither the American or British rule, or the dual approach rule. Instead, the Fogerty court instructs that "Prevailing plaintiffs and prevailing defendants are to be treated alike, but attorney's fees are to be awarded toprevailing parties only as a matter of the court's discretion. "There is no precise rule or formula for making these determinations," but instead equitable discretion should be exercised "in light of the considerations we have identified." Hensley v. Eckerhart, 461 U.S. 424,436-437 (1983)."
The best summary? The Supreme Court's footnote: "Some courts following the evenhanded standard have suggested several nonexclusive factors to guide courts' discretion. For example, the Third Circuit has listed several nonexclusive factors that courts should consider in making awards of attorney's fees to any prevailing party. These factors include "frivolousness, motivation, objective unreasonableness (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." Lieb v. Topstone Industries, Inc., 788 F. 2d 151, 156 (CA3 1986). We agree that such factors may be used to guide courts' discretion, so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner."
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