Copyright Infringement - Attorney's Fees

Duquesne Law Review Volume 33 Number 2 Article 8 1995 Intellectual Property - Copyright Act - Copyright Infringement - Attorney's Fees Michael Tersillo Follow this and additional works at: https://dsc.duq.edu/dlr Part of the Law Commons Recommended Citation Michael Tersillo, Intellectual Property - Copyright Act - Copyright Infringement - Attorney's Fees, 33 Duq. L. Rev. 345 (1995). Available at: https://dsc.duq.edu/dlr/vol33/iss2/8 This Recent Decision is brought to you for free and open access by Duquesne Scholarship Collection. It has been accepted for inclusion in Duquesne Law Review by an authorized editor of Duquesne Scholarship Collection. INTELLECTUAL PROPERTY-COPYRIGHT ACT-COPYRIGHT IN- FRINGEMENT-ATrORNEY'S FEES-The United States Supreme Court held that attorney's fees are to be awarded to the prevailing party only at the discretion of the court, and that prevailing plaintiffs and prevailing defendants should be treated the same. Fogerty v. Fantasy, Inc., 114 S. Ct. 1023 (1994). In 1970, Petitioner John C. Fogerty ("Fogerty"), a successful musician and songwriter,' wrote and copyrighted a song entitled "Run Through the Jungle."2 The exclusive publishing rights of the song were obtained by Fantasy, Inc. ("Fantasy").' In 1985, Fogerty published and copyrighted a song entitled "Old Man Down the Road," which was released and distributed by Warner Brother Records, Inc.4 Respondent Fantasy sued Fogerty and Warner Brother Records, Inc..in federal district court for copyright infringement, alleging that Fogerty's new song, "The Old Man Down the Road," was musically identical to that of "Run Through the Jungle."6 After a jury trial, a verdict in favor of Fogerty was returned.' Fogerty then moved for an award of 1. John Fogerty was the lead singer and songwriter of the group "Creedence Clearwater Revival" in the 1960s. Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1026 (1994). "Creedence Clearwater Revival' was known for its distinctive "swamp rock" style of music. Fogerty, 114 S. Ct. at 1026 n.2. 2. Fogerty, 114 S. Ct. at 1026. 3. Id. Fantasy obtained, by assignment, the "Run Through the Jungle" copyright from its predecessors in interest who had purchased the exclusive publishing rights from Fogerty. Id. Fantasy's predecessors in interest include Fantasy/Galaxy Records and Argosy Venture which used various business names including "Jondora Music," 'Cireco," "Galaxy," and 'Debut of California." Petitioner's Brief at 5 n.5, Fogerty v. Fantasy, Inc., 114 S. Ct. 1023 (1994) (No. 92-1750). 4. Fogerty, 114 S. Ct. at 1026. 5. Id. Besides Warner Brother Records, Inc., the following were also named as defendants in Fantasy's copyright infringement suit: WEA International, Inc., WEA Manufacturing, Inc., Warner-Elektra-Atlantic Corporation, and Warner Commu- nications, Inc. (collectively referred to as the "Warner Defendants"). Petitioner's Brief, cited at note 3, at i. John Fogerty indemnified and reimbursed the Warner Defen- dants for their costs and attorney's fees incurred in the suit because of an agree- ment with the Warner Defendants. Id. at 4 n.3. 6. Fogerty, 114 S. Ct. at 1026. The district court denied defendant Warner Brother Records' motion for summary judgment ruling that a copyright owner could infringe the exclusive rights that he had granted to another. Fantasy, Inc. v. Fogerty, 654 F. Supp. 1129, 1131 (N.D. Cal. 1987), affd, 984 F.2d 1524 (9th Cir. 345 Duquesne Law Review Vol. 33:345 reasonable attorney's fees pursuant to the Copyright Act of 1976.' The district court, following Ninth Circuit precedent,. denied the motion because Fantasy's infringement suit was not frivolous or in bad faith.8 The Court of Appeals for the Ninth Circuit affirmed the decision refusing to abandon their dual standard! To resolve the conflict between the dual standard followed by the Ninth, Second, Seventh and District of Columbia Circuits, and the evenhanded standard followed by the Third, Fourth and Eleventh Circuits, the Supreme Court granted certiorari." The Supreme Court also addressed Fogerty's contention that pursuant to the neutral language of Section 505 of the Copyright Act of 1976 both prevailing plaintiffs and defendants should automatically be awarded attorney's fees, unless there were exceptional circumstances.1 Chief Justice Rehnquist delivered the opinion of the Court which rejected both the dual standard followed by the Ninth Circuit and Petitioner Fogerty's claim that attorney's fees should be awarded automatically to the prevailing party in a copyright infringement suit. 2 Three arguments were advanced by Fantasy in favor of the dual standard for awarding attorney's fees in copyright infringement suits.'3 First, Fantasy contended that the language of Section 505 was similar to a provision of Title VII of the Civil Rights Act of 1964's and that in ChristiansburgGarment Co. v. 1993), rev'd, 114 S. Ct. 1023 (1994). 7. Fogerty, 114 S.Ct. at 1026. The Copyright Act provides that: 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. 17 U.S.C. § 505 (1988). 8. Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1532 (9th Cir. 1993), rev'd, 114 S. Ct. 1023 (1994). The district court held that even though Fogerty wrote the original song he could be liable for copyright infringement. Fantasy, 654 F. Supp. at 1131. 9. Fantasy, 984 F.2d at 1533. The Ninth Circuit's standard generally allowed an award of attorney's fees to prevailing plaintiffs as a matter of course, while prevailing defendants were required to show that the suit brought against them was frivolous or in bad faith. Id. at 1532. In contrast, other circuits followed an evenhanded standard, whereby prevailing plaintiffs and prevailing defendants were held to the same standard which did not require a showing of bad faith. Fogerty, 114 S. Ct. at 1027 n.8. 10. Fogerty, 114 S. Ct. at 1027. See Fogerty v. Fantasy, Inc., 113 S. Ct. 2992 (1993) (granting certiorari). 11. Fogerty, 114 S. Ct. at 1033. 12. Id. Justices Blackmun, Stevens, O'Connor, Scalia, Kennedy, Souter, and Ginsburg joined in the opinion. Justice Thomas filed an opinion concurring in the judgment. Id. at 1025. 13. Id. at 1027. 14. 42 U.S.C. § 2000e-5(k) (1988 & Supp. 1993). Title VII states, in part, that, 1995 Recent Decisions EEOC, 5 the Court's interpretation of the language of Title VII supported a differentiation in the treatment of prevailing plaintiffs and defendants.' Fantasy further argued that in Flight Attendants v. Zipes,"7 the Court reasoned that similar language in fee-shifting statutes was a strong indication that an analogous interpretation of the statutes would be necessary." The Court rejected this argument because the factors present in Christiansburg were not present in a case of copyright infringement."9 The Court reasoned that the goals, the policy objectives of the Civil Rights Act, and the intent of Congress to achieve those objectives by using plaintiffs as private attorneys general differed from those of the Copyright Act which sought to stimulate artistic creativity.'m The Court pointed out that through the passage of the Civil Rights Act, Congress sought to encourage private enforcement by providing for the private attorney general plaintiff who could not afford to litigate his claims against defendants with greater resources.2 The Court contrasted this with the objective of the Copyright Act which was to enrich the general public through the encouragement of original authorship of literary, artistic and musical expres- sion.' Furthermore, the Court asserted that in copyright infringement cases both plaintiffs and defendants could be either corporate giants or struggling artists, and should be treated equally.' The Court noted that the fee shifting provisions of the federal patent and trademark statutes' supported an evenhanded standard with similar language to the Copyright Act, but only awarded attorney's fees in exceptional cases.' "the court, in its discretion, may allow the prevailing party ... a reasonable attorney's fee . as part of the costs." Id. 15. 434 U.S. 412 (1978). The Court decided that a prevailing plaintiff in a Title VII case would be awarded attorney's fees in all but exceptional circumstances, while a prevailing defendant had to show that the plaintiffs claim was frivolous, un- reasonable or without merit. Christiansburg,434 U.S. at 422. 16. Fogerty, 114 S. Ct. at 1027-28. 17. 491 U.S. 754 (1989). 18. Fogerty, 114 S. Ct. at 1028 (citing Zipes, 491 U.S. at 758 n.2). 19. Fogerty, 114 S. Ct. at 1028. 20. Id. 21. Id. The Court noted that the plaintiff was the means that Congress had selected to enforce its civil rights policy objectives. Id. 22. Id. 23. Id. 24. The federal patent and trademark statutes regulate subject matter that is analogous to the subject matter regulated by the copyright statute. Fogerty, 114 S. Ct. at 1028-29 n.12. 25. Fogerty, 114 S. Ct. at 1028. The Patent Act states that "the court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285 (1988). See also Trademark Act of 1946, 15 U.S.C. § 1117 (1988). 348 Duquesne Law Review Vol. 33:345 Fantasy's second argument was that the dual standard fur- thered the objectives of the Copyright Act by encouraging litiga- tion of claims of copyright infringement as a deterrent

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