United States District Court, D. Arizona
Honorable Roslyn O. Silver Senior United States District
prevailing at trial, Defendants Kangaroo Manufacturing, Inc.,
Yagoozon Inc., and Justin Ligeri (collectively,
“Defendants”) seek an award of $249, 298.50 in
attorneys' fees. Plaintiff Great American Duck Races Inc.
(“GAME”) believes no award of fees is merited
but, if an award is made, it should be substantially less
than what Defendants seek. Based on the relevant factors, and
especially the objectively reasonable nature of GAME's
copyright claim, Defendants' motion will be denied.
in 2016, Defendants began selling a pool float in the shape
of a duck wearing sunglasses. That float was similar to a
copyrighted pool float manufactured by GAME. In January 2017,
GAME filed the present suit against Defendants. The original
complaint contained claims for copyright infringement,
trademark infringement, federal unfair competition, and
Arizona unfair competition. (Doc. 1). Defendants answered the
complaint and asserted seven counterclaims. Three of the
counterclaims sought declaratory judgment that there had been
no copyright infringement, no trademark infringement, and no
unfair competition under federal or Arizona law. In other
words, those three counterclaims were mirror images of
GAME's claims for relief. Defendants asserted additional
counterclaims for declaratory judgment involving copyright
invalidity and trademark invalidity as well as counterclaims
seeking cancellation of certain trademarks and relief based
on GAME making misrepresentations to a non-party seller.
(Doc. 18). After a Scheduling Conference, the parties
proceeded with discovery.
post-discovery status conference Defendants agreed to dismiss
four of their counterclaims. Dismissing those four
counterclaims meant the pending claims and counterclaims were
based on copyright infringement, trademark infringement, and
unfair competition. After discussing the underlying facts
with both sides, Defendants conceded a trial was necessary.
Trial was set for October 2018.
before trial, Yagoozon provided notice that it had filed for
bankruptcy. (Doc. 120). The trial was continued to give the
bankruptcy court time to rule on GAME's motion for relief
from the automatic stay. Once the bankruptcy court granted
that motion, the trial was reset for March 2019. (Doc. 145).
On February 8, 2019, GAME requested the Court dismiss its
demand for monetary relief and conduct a bench trial instead
of a jury trial. (Doc. 147). Defendants did not object to
either request. Thus, GAME's demand for monetary relief
was dismissed and a bench trial was set. (Doc. 151). After a
two-day bench trial, the Court entered judgment against GAME
on all of its remaining claims. The Court also dismissed
Defendants' remaining counterclaims because they were
“mirror images of GAME'S affirmative claims for
relief” and there was no need to enter declaratory
judgment. (Doc. 198 at 19).
now seek an award of attorneys' fees pursuant to the
Copyright Act. According to Defendants, the relevant factors
under the Copyright Act support such an award. Defendants
argue they should be awarded all the fees they incurred in
defending this suit because GAME's copyright, trademark,
and unfair competition claims were “so
intertwined” that it would be impossible to identify
the time spent on individual claims. (Doc. 201 at 7). GAME
responds that the factors under the Copyright Act do not
support an award of fees, Defendants should have identified
the time spent litigating each claim, and the total amount of
fees requested is not reasonable.
Defendants are not entitled to an award of fees under the
Copyright Act, there is no need to address whether Defendants
should have identified the time spent on litigating each
claim nor is there any need to address the overall
reasonableness of the amount requested. Thus, the analysis
begins and ends with Defendants' entitlement to fees
under the Copyright Act.
Copyright Act states a “court may . . . award a
reasonable attorney's fee to the prevailing party.”
17 U.S.C. § 505. This language “grants courts wide
latitude to award attorney's fees based on the totality
of circumstances in a case.” Kirtsaeng v. John
Wiley & Sons, Inc., 136 S.Ct. 1979, 1985 (2016).
Courts have identified a long list of nonexclusive factors a
court should use as “judicial guideposts” for
deciding whether to award fees. Glacier Films (USA), Inc.
v. Turchin, 896 F.3d 1033, 1037 (9th Cir. 2018).
1. the losing party's “objective unreasonableness
(both in the factual and in the legal components of the
2. whether the losing party's positions were ...