IP Tech Knowledgy

In a copyright infringement case, a successful defendant may be able to obtain its attorney’s fees from the plaintiff.  While the award is not automatic, a defendant could use this leverage to push back against an oppressive plaintiff.  The standard set forth by the Supreme Court, in Fogerty v. Fantasy, Inc.  (yes, John Fogerty), gives a trial court discretion to award a Defendant its attorney’s fees, applying four factors: the frivolousness of the suit; the plaintiff’s motivation for bringing the suit; the objective unreasonableness of the plaintiff; and the need to advance considerations of compensation and deterrence.

The Copyright Act specifically states “[T]he court in its discretion may allow the recovery of full costs by or against any party. ... [T]he court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”

When a defendant is confronted with an unreasonable claim by a copyright holder and the defendant is fairly sure its usage is not infringing, or valid defenses such as fair use negate the plaintiff’s claim, the defendant should raise the specter that the plaintiff will risk its own liability if it pursues the case.  It is not often that United States jurisprudence allows an award of attorney’s fees.  This is an occasion in which a confident defendant should make use of the opportunity.

Under the Copyright Act, a plaintiff cannot obtain attorney's fees without having registered the work before the infringement occurred.  That prerequisite does not apply to the defendant’s quest for attorney’s fees.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw. com