Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
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`_________________________________________
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`TERRY NEWBORN,
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`Plaintiff,
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`v.
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`YAHOO! INC. and GOOGLE INC.,
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`Case No. 1:04CV00659 (RBW)
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`)))
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`Defendants.
`_________________________________________ )
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`MEMORANDUM OPINION
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`The plaintiff, Terry Newborn, brought this action against Yahoo! Inc. and Google Inc.
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`(“the defendants”) for copyright and trademark infringement in violation of the Copyright Act,
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`17 U.S.C. §§ 101 et seq. (2000), and the Lanham Act, 15 U.S.C. §§ 1117 et seq. (2000). This
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`Court granted the defendants’ motion to dismiss the plaintiff’s complaint for failure to state a
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`claim and dismissed the case with prejudice. Newborn v. Yahoo!, Inc., 391 F. Supp. 2d 181, 191
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`& n.10 (D.D.C. 2005). Currently before the Court is the Defendants’ Motion for Attorney’s
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`Fees, Expenses, and Costs (“Defs.’ Mot.”) pursuant to the Copyright Act, the Lanham Act, and
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` As discussed infra, the plaintiff’s original complaint in this action solely stated a claim under the Digital
`Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (1998).
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 2 of 20
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`28 U.S.C. § 1927 (2000). For the reasons set forth below, the defendants’ motion is granted in
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`part and denied in part.
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`I. Background
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`The facts and disposition of the merits in this case are discussed in this Court’s prior
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`Memorandum Opinion and will only be summarized here. The plaintiff, Terry Newborn, doing
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`business as Government Publications, Inc., Capital Publications, Inc., and Capitol Publications,
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`Inc., owned and operated a number of websites, which, according to Newborn, contained
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`material protected under the Copyright and Lanham Acts. Id. at 184. In April 2004, Newborn
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`sued defendants Yahoo! and Google, which operate Internet search engine websites, initially
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`alleging that the defendants had violated the Digital Millennium Copyright Act, Pub. L. No. 105-
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`304, 112 Stat. 2860 (1998) (“DMCA”), by knowingly allowing third parties to infringe on
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`Newborn’s copyrighted material even after Newborn placed the defendants on notice of the
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`allegedly infringing activity. Complaint (“Compl.”) ¶¶ 9-23. The defendants moved to dismiss
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`Newborn’s original complaint in the Summer of 2004. Defendant Yahoo! Inc.’s Motion to
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`Dismiss the Complaint; Defendant Google Inc.’s Motion to Dismiss the Complaint. Newborn
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`responded to both motions and then, three days after the defendants had filed their joint reply,
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` The following papers have been submitted to the Court in connection with the motion: (1) the
`Defendants’ Memorandum of Points and Authorities in Support of Their Motion for Attorney’s Fees, Expenses, and
`Costs (“Defs.’ Mem.”); (2) the Declaration of Thomas P. Olson (“Olson Decl.”); (3) the Plaintiff’s Opposition to
`Defendants’ Motion for Attorney’s Fees, Expenses, and Costs (“Pl.’s Opp’n”); and (4) the Defendants’ Reply to
`Plaintiff’s Opposition to the Motion for Attorney’s Fees, Expenses, and Costs (“Defs.’ Reply”).
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` Newborn generically alleged “violations of the Digital Millennium Copyright Act,” Compl. ¶ 9, and it is
`therefore entirely unclear under which provision of the DMCA the original complaint was brought. Nevertheless,
`because the DMCA amends Title 17 of the United States Code, see Pub. L. No. 105-304, 112 Stat. 2860, and
`because 17 U.S.C. § 505 gives the Court discretion to award attorney’s fees for any actions commenced under Title
`17, see 17 U.S.C. § 505 (providing for the award of reasonable attorney’s fees “[i]n any civil action under this
`Title”), the Court will treat the defendants’ motion for attorney’s fees, expenses, and costs under 17 U.S.C. § 505 as
`encompassing Newborn’s DMCA claim in his original complaint.
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 3 of 20
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`filed an amended complaint which rendered the motions to dismiss the original complaint moot. 4
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`See Defs.’ Mem. at 2. This amended complaint omitted Newborn’s DMCA claim and instead
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`alleged violations of the Copyright Act and the Lanham Act. See generally Amended Complaint
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`(“Am. Compl.”). All of the claims alleged pursuant to the DCMA in Newborn’s original
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`complaint were again asserted pursuant to the Copyright Act and, to a limited extent, the Lanham
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`Act in the amended complaint. Compare Compl. ¶¶ 10-23 with Am. Compl. ¶¶ 11-15, 17, 24-
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`29, 31. The defendants then moved to dismiss the amended complaint, and this Court granted
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`their motion. Newborn, 391 F. Supp. 2d at 184.
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`Noting that the plaintiff’s complaint was “riddled with vague, confusing, and
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`contradictory statements making deciphering the basis for the plaintiff’s Copyright Act claim a
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`hopeless endeavor,” the Court concluded that Newborn failed to state a claim under the
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`Copyright Act. Id. at 187. Among other reasons, this Court cited the impossibility of
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`determining what materials had allegedly been infringed, id., and Newborn’s failure to allege any
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` In their original motion to dismiss, the defendants argued, inter alia, that Newborn had not stated a claim
`upon which relief could be granted because the DCMA “in relevant part, creates a limitation on liability, not a cause
`of action,” and therefore could not be violated by the defendants as Newborn had alleged. See Defendant Yahoo!
`Inc.’s Motion to Dismiss the Complaint at 1; Memorandum of Points and Authorities in Support of Defendant
`Yahoo! Inc.’s Motion to Dismiss the Complaint (“Yahoo! Mem.”) at 7-8. The defendants identify 17 U.S.C. § 512,
`which limits the liability of online service providers, as “the portion of the DMCA to which [Newborn] apparently
`refers.” See Yahoo! Mem. at 7. As the Court notes supra, however, the original complaint does not indicate which
`section of the DMCA purportedly covered the violations alleged by Newborn.
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` In addition to restating Newborn’s claims of copyright infringement, the amended complaint alleged that
`the defendants permitted third parties to use his “domain names” as webpage keywords, description meta tags, and
`web addresses in violation of the Lanham Act. See Newborn, 391 F. Supp. 2d at 184.
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` The Court surmises that the wholesale substitution of the Copyright Act and Lanham Act for the DMCA
`in the amended complaint was, as Newborn contends, an “attempt[] to cure or correct any possible flaws in the
`Complaint.” Pl.’s Opp’n at 3.
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 4 of 20
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`facts to support a conclusion that the defendants substantially participated in any acts of
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`infringement, id. at 189.
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`This Court similarly noted Newborn’s failure to allege that his “domain names” were, in
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`fact, trademarks that were protected under the Lanham Act. Id. at 190. This ruling was based on
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`the finding that “besides the conclusory allegation that the defendants allowed unauthorized third
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`party use of the plaintiff’s alleged trademark, there are simply no facts in the complaint to
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`support such an allegation.” Id. at 191. This Court therefore dismissed Newborn’s entire case
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`with prejudice. Id. at 191 n.10.
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`The defendants now request that this Court award them attorney’s fees, expenses, and
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`costs resulting from this litigation. Defs.’ Mot. at 1. The defendants seek a total award against
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`the plaintiff of $92,671.96, which includes $89,803.00 in attorney’s fees and $2,868.96 in
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`expenses and costs. Defs.’ Mem. at 8. Specifically, the defendants seek $42,851.27 in fees,
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`expenses, and costs associated with their first motion to dismiss, and $49,820.69 in fees,
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`expenses, and costs associated with their second motion to dismiss. Defs.’ Reply at 6. The
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`defendants further request that plaintiff’s counsel, pursuant to 28 U.S.C. § 1927, be held jointly
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`liable for the fees, expenses, and costs associated with the second motion to dismiss—that is,
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`$49,820.69 of the total award. Defs.’ Mem. at 8. As evidence that the amounts are reasonable,
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` The defendants have waived their prior, unspecified request for additional fees and costs incurred in
`bringing the motion currently before the Court. Defs.’ Reply at 6.
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` In their reply brief, the defendants have presented an alternative, conditional request to the Court. Defs.’
`Reply at 5-6. Under this alternative, the defendants claim that they would accept an award against the plaintiff that
`was limited to fees and costs associated with the first motion to dismiss, as long as the Court held plaintiff’s counsel
`personally liable under Section 1927 for fees, expenses, and costs associated with the second motion to dismiss. Id.
`According to the defendants, this alternative would comprise a $42,851.27 award against the plaintiff and a
`$49,820.69 award against plaintiff’s counsel. Id. Because the court declines to award fees under Section 1927, the
`(continued...)
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 5 of 20
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`the defendants have submitted the Declaration of Thomas P. Olson, one of their attorneys. Olson
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`Declaration (“Olson Decl.”). The declaration details the hourly rates, time expended, and
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`specific work accomplished in the course of litigating the two motions to dismiss and their
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`associated costs. Olson Decl. ¶¶ 5-9, Ex. A-C.
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`II. Legal Analysis
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`As noted above, the defendants seek attorney’s fees, expenses and costs under the
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`Copyright Act, the Lanham Act, and 28 U.S.C. § 1927. Each statute’s applicability will be
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`addressed in turn.
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`(A) The Copyright Act
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`The relevant portion of the Copyright Act provides the following:
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`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.
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`17 U.S.C. § 505. The Supreme Court has held that Section 505 does not provide for automatic
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`recovery of attorney’s fees by the prevailing party. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534
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`(1994). Rather, attorney’s fees are to be awarded “only as a matter of the court’s discretion.” Id.
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`In deciding whether to award attorney’s fees, courts may consider factors such as “frivolousness,
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`motivation, objective unreasonableness (both in the factual and legal components of the case)
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`(...continued)
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`Court will not consider this alternative request.
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` In his declaration, Olson further represents that the $89,803.00 total is, “out of an abundance of caution . .
`. , $10,000 less than the actual fees incurred by the defendants.” Olson Decl. ¶ 7 (emphasis in original); see also
`Defs.’ Mem. at 7.
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 6 of 20
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`and the need in particular circumstances to advance considerations of compensation and
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`deterrence.” Id. at 534 n.19 (citations omitted).
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`The defendants argue that they are entitled to an award of reasonable attorney’s fees and
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`costs under Section 505 because the plaintiff’s Copyright Act claim was “objectively without
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`merit” and “frivolous.” Defs.’ Mem. at 4. In support of this argument, the defendants note that
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`the plaintiff had “failed to allege any of the requisite elements of a copyright infringement
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`claim.” Id. The plaintiff, on the other hand, opposes the attorney’s fees request and argues that
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`he “made numerous attempts to resolve this matter outside of the Court,” he “reasonably believed
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`that he had met the requirement” for filing a Copyright Act claim, and he filed the action in
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`“good faith.” Pl.’s Opp’n at 1-3. For the reasons that follow, this Court rejects the plaintiff’s
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`arguments and concludes that the defendants are entitled to reasonable attorney’s fees and costs
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`pursuant to 17 U.S.C. § 505.
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`This Court’s prior opinion provides ample support for its discretionary decision to award
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`reasonable attorney’s fees and costs to the defendants under Section 505. For example, as this
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`Court noted about the plaintiff’s amended complaint, “[r]ather than providing a short plain
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`statement of the basis of the claim, the complaint is riddled with vague, confusing, and
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`contradictory statements making deciphering the basis for the plaintiff’s Copyright Act claim a
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`hopeless endeavor.” Newborn, 391 F. Supp. 2d at 187. The Court then went on to identify the
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`specific reasons why the plaintiff’s complaint failed to state a claim upon which relief could be
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`granted under the Copyright Act. See id. at 187-89. First, the Court addressed the plaintiff’s
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`failure to allege any direct copyright infringement and then discussed his failure to alternatively
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`demonstrate “contributory copyright infringement” by the defendants. Id. A brief review of the
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 7 of 20
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`Court’s analysis demonstrates the frivolous and objectively unreasonable nature of the plaintiff’s
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`amended complaint.
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`The Court noted several ways in which the plaintiff failed to state a claim of direct
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`copyright infringement. First, it was “virtually impossible to determine what materials ha[d]
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`allegedly been infringed.” Id. at 187. Second, to the extent the plaintiff’s complaint alleged
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`infringement of certain items, the allegations were “clearly contradictory to other statements in
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`both the complaint and the plaintiff’s [other] pleadings.” Id.
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` Third, the Court rejected the
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`plaintiff’s reliance on his correspondence with the defendants as having been sufficient to
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`identify the allegedly infringed materials, noting that the plaintiff’s “vague statements [were]
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`simply insufficient to put the defendants on notice of the claims against them” and that “it is not
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`the defendants’ burden to wade through various correspondence between the parties to determine
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`which claims the plaintiff is asserting.” Id. at 188. Fourth, even assuming that the plaintiff’s
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`reliance on his correspondence with the defendants was somehow valid, the Court concluded that
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`there were “simply no allegations” that the documents allegedly protected under the Copyright
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`Act were even copyrighted. Id. This, according to the Court, was “fatal to the plaintiff’s
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`claims.” Id.
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`The Court then went on to note that “the plaintiff’s complaint also fails to allege any facts
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`to support a conclusion that the defendants substantially participated in the infringing activities.”
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`Id. at 189. The Court described the complaint as containing only “cryptic suggestions” and
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` Extending this argument that conceivably had been raised by the plaintiff, the Court suggested it was
`“quite possible that the plaintiff assumed that if he owned the copyright for one item, this Court would also have
`jurisdiction to hear his Copyright Act challenges regarding other items.” Newborn, 391 F. Supp. 2d at 188 n.5.
`However, the Court concluded that if this was the plaintiff’s position, it was “patently frivolous.” Id.
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 8 of 20
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`“brief, conclusory statements, which are accompanied by no factual support.” Id. For this and
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`the above reasons, the Court ultimately determined that the plaintiff “failed to state a cognizable
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`claim under the Copyright Act.” Id.
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`As described above, this Court’s assessment of the plaintiff’s complaint reveals numerous
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`factual and legal deficiencies concerning the essential elements of his Copyright Act claim.
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`These deficiencies show that the plaintiff’s complaint was both frivolous and objectively
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`unreasonable and, therefore, that an award of reasonable attorney’s fees and costs to the
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`defendants is appropriate under 17 U.S.C. § 505. See Fogerty, 510 U.S. at 534 n.19. While the
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`plaintiff contends that his complaint was not frivolous or objectively unreasonable and that he
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`initiated this action in good faith, his arguments are refuted by the deficiencies identified in this
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`Court’s prior opinion. Pl.’s Opp’n at 1-3; Newborn, 391 F.Supp 2d at 187-89. Therefore, the
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`Court concludes that an award of reasonable attorney’s fees and costs is appropriate under the
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`Copyright Act.
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`Although the Court’s decision to award reasonable attorney’s fees and costs is the product
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`of its own discretion, it comports with the decisions of other members of this and other courts.
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`See, e.g., Pannonia Farms, Inc. v. Re/Max Int’l, Inc., 407 F. Supp. 2d 41, 46 (D.D.C. 2005)
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`(awarding attorney’s fees to defendant when plaintiff’s Copyright Act claim was collaterally
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`estopped and thus “objectively unreasonable”); Harrison Music Corp. v. Tesfaye, 293 F. Supp.
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`2d 80, 84 (D.D.C. 2003) (awarding attorney’s fees to plaintiff when defendant “deliberately
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`refused to comply with copyright laws”); Whitehead v. Paramount Pictures Corp., 53 F. Supp 2d
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`38, 54 (D.D.C. 1999) (awarding attorney’s fees to defendant when the case was “patently
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`frivolous” and plaintiff’s claims were “objectively unreasonable”); Roeslin, III v. Dist. of
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 9 of 20
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`Columbia, 921 F. Supp. 793, 800 (D.D.C. 1995) (denying attorney’s fees to plaintiff when there
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`was “a genuine dispute as to whether plaintiff or defendant was the owner of the copyright”); see
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`also Budget Cinema, Inc. v. Watertown Assocs., 81 F. 3d 729, 732 (7th Cir. 1996) (reversing
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`denial of attorney’s fees to defendant when plaintiff’s claim was “objectively unreasonable”
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`given plaintiff’s lack of ownership of copyright at issue); Diamond Star Bldg. Corp. v. Sussex
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`Co. Builders, 30 F.3d 503, 506 (4th Cir. 1994) (“[W]hen a party has pursued a patently frivolous
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`position, the failure of a district court to award attorney’s fees and costs to the prevailing party
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`will, except under the most unusual circumstances, constitute an abuse of discretion.”)
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`(B) The Lanham Act
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`The defendants next argue that they are entitled to attorney’s fees as the prevailing party
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`pursuant to the Lanham Act, 15 U.S.C. § 1117(a). Defs.’ Mem. at 3-4. This statute provides, in
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`relevant part, that “[t]he court in exceptional cases may award reasonable attorney fees to the
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`prevailing party.” 15 U.S.C. § 1117(a) (emphasis added). As the language of the statute
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`indicates, an award of attorney’s fees under the Lanham Act is within the district court’s
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`discretion. See, e.g., Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 825 (9th Cir. 1997).
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`Congress and the federal appellate courts have provided minimal guidance as to what constitutes
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`an “exceptional” case under this statute. See, e.g., Noxell Corp. v. Firehouse No. 1 Bar-B-Que
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`Rest., 771 F.2d 521 (D.C. Cir. 1985); Boney, 127 F.3d at 825-26 (noting that “[t]he Lanham Act
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`nowhere defines what makes a case ‘exceptional’”). In Noxell, however, the District of
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`Columbia Circuit did provide the following guidance:
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`Congress did not essay in the Lanham Act’s text or related commentary
`precise definition of cases qualifying as “exceptional” for fee award purposes.
`The barely two pages of legislative history in point indicate, with respect to
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 10 of 20
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`recovery of fees by defendants, a concern to discourage suits designed to harass.
`Furthermore, we think it fair to assume that Congress did not intend rigidly to
`limit recovery of fees by a defendant to the rare case in which a court finds that
`the plaintiff “acted in bad faith, vexatiously, wantonly, or for oppressive reasons”;
`that exception to the “American rule,” the Supreme Court has clarified, is always
`available unless Congress expressly forbids its operation. Something less than
`“bad faith,” we believe, suffices to mark a case as “exceptional.”
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`[W]e think “exceptional,” as Congress used the word in . . . the Lanham
`Act, is most reasonably read to mean what the word is generally understood to
`indicate—uncommon, not run-of-the-mine.
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`Noxell Corp., 771 F.2d at 526 (attorney’s fees awarded to defendant) (internal citations and
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`quotation marks omitted). The Circuit later amplified this definition, holding that “exceptional”
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`cases are those “involving willful or bad-faith conduct.” ALPO Petfoods, Inc. v. Ralston Purina
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`Co., 913 F.2d 958, 961 (D.C. Cir. 1990) (citations omitted).
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`The defendants argue that it is “plainly unreasonable for a party to pursue a cause of
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`action for trademark infringement where that party holds no protected trademarks and fails even
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`to allege any facts suggesting wrongful use of those purported trademarks.” Defs.’ Mem. at 5.
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`The plaintiff, on the other hand, argues that bringing his case was not unreasonable because he
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`“reasonably believed at the time of filing [the] action that his registered domain names were
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`protected under Title 15.” Pl.’s Opp’n at 3. While the Court recognizes that the plaintiff’s
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`trademark infringement claim contains factual and legal deficiencies similar to those of the
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`plaintiff’s copyright claim, for the following reasons the Court concludes that this is not an
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`“exceptional” case under the relevant statute, and thus chooses not to award attorney’s fees under
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`the Lanham Act.
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`This Court previously ruled that the plaintiff’s trademark infringement claim was “wholly
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`without merit,” relied on inapposite statutes, and contained “vague allegations.” Newborn, 391
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 11 of 20
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`F. Supp 2d at 190, 190 n.9. The Court further concluded that “besides the conclusory allegation
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`that the defendants allowed unauthorized third party use of the plaintiff’s alleged trademark,
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`there are simply no facts in the complaint to support such an allegation.” Id. at 191.
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`Nonetheless, there is no evidence that the original or amended complaints, though deficient in
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`many respects, were “designed to harass” the defendants. See Noxell, 771 F.2d at 526. Nor is
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`there evidence that Newborn acted “wilfully or in bad faith” such that Yahoo! and Google are
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`entitled to attorney’s fees under Section 1117(a). See ALPO Petfoods, 913 F.2d at 971.
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`In Noxell, the Circuit Court concluded that an award of attorney’s fees to the defendants
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`was appropriate under the Lanham Act in a situation where the plaintiff brought a trademark
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`infringement action in the District of Columbia against a two-facility, California-based restaurant
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`business and its sole proprietor, a California resident. 771 F.2d at 526-27. The Court found it
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`“altogether ‘exceptional’ . . . for [the plaintiff] to launch litigation against [the defendants] at a
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`place far removed from California when a Supreme Court decision precisely [on] point plainly
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`declared the impropriety of that course.” Id. at 527 (citations omitted). The Court perceived
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`“more than a hint of economic coercion in [the plaintiff]’s choice of a distant forum and its mode
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`of proceeding” and observed that “litigating in the District of Columbia entailed not merely
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`inconvenience but hardship for [the defendants].” Id. at 526-27 (internal quotation marks and
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`citation omitted). Accordingly, the Noxell Court stated that it was “fully satisfied that [the
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`plaintiff] brought to the District of Columbia an ‘exceptional’ case.” Id. at 527.
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`It is clear that the plaintiff’s conduct in this case does not rise to the level of what the
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`Court in Noxell found to be “altogether exceptional, indeed . . . remarkable” conduct. Id. at 527
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`(internal quotation marks and citation omitted). The defendants have made no showing that the
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 12 of 20
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`plaintiff was motivated by willfulness or bad faith in bringing the underlying action. See ALPO
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`Petfoods, 913 F.2d at 971 (reversing lower court’s award of attorney’s fees under the Lanham
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`Act where the court made no finding that the case involved “willful or bad-faith conduct”); see
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`also Boney, 127 F.3d at 827 (declining to award attorney’s fees under the Lanham Act where the
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`defendants “failed to demonstrate that the case is exceptional in any respect other than the degree
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`of animosity among the [parties]”).
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` Unlike the defendants in Noxell, it does not appear that
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`Yahoo! and Google have suffered especial hardship in defending against Newborn’s Lanham Act
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`claim, nor does the Court find that Newborn brought his suit with the intention of harassing the
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`defendants. See Noxell, 771 F.2d at 526 n.2 (“On the defendants’ side, . . . the fear is litigation
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`conduct – suits imposing hardship brought to harass, whether descending to the rock bottom rung
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`of ‘bad faith’ or not”) (emphasis omitted). Therefore, this Court, acting with the discretion called
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`for by the Lanham Act, declines to award attorney’s fees to the defendants for litigation related to
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`the plaintiff’s trademark infringement claim.
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`(C) 28 U.S.C. § 1927
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`The defendants next argue that this Court should order the plaintiff’s counsel to
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`personally reimburse the defendants for their attorney’s fees and costs incurred in preparing and
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`litigating the Motion to Dismiss the Amended Complaint pursuant to 28 U.S.C. § 1927. Defs.’
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` The defendants cite only this case, Boney, 127 F.3d 821, as support for their argument for attorney’s fees
`and costs under the Lanham Act. Defs. Mem. at 4-5. In Boney, however, the Ninth Circuit affirmed a district
`court’s decision denying attorney’s fees to a defendant under the Lanham Act. Boney, 127 F.3d at 825-827.
`Moreover, Boney provides support for this Court’s decision to award fees and costs under the Copyright Act while
`declining to award fees or costs under the Lanham Act. Specifically, the case suggests that the Lanham Act imposes
`a higher standard than the Copyright Act for the award of attorneys fees. Id. at 826-27. Attempting to determine the
`appropriate standard to apply under the Lanham Act, the Ninth Circuit considered the Supreme Court’s analysis of
`the Copyright Act in Fogerty. Id. The court concluded that “[t]he applicable standard, however, depends on the
`applicable statute. Section 505 of the Copyright Act, at issue in Fogerty, simply authorizes fee awards to the
`prevailing party. Section [1117(a)] of the Lanham Act, on the other hand, requires exceptional circumstances.” Id.
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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 13 of 20
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`Mem at 5-7; Defs.’ Reply at 4-5. They do not seek double reimbursement for fees and costs
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`associated with the Motion to Dismiss the Amended Complaint; rather, they request that this
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`Court hold the plaintiff’s counsel jointly responsible for the fees and costs associated with that
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`motion. Defs.’ Mem. at 5 n.2.12
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`28 U.S.C. § 1927 provides that “[a]ny attorney or other person admitted to conduct cases
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`in any court of the United States or any Territory thereof who so multiplies the proceedings in
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`any case unreasonably and vexatiously may be required by the court to satisfy personally the
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`excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.” 28
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`U.S.C. § 1927 (emphasis added). The decision to award attorney’s fees under Section 1927 is
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`committed to this Court’s discretion. See, e.g., Thomas v. Capital Sec. Servs., 812 F.2d 984, 990
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`(5th Cir. 1987). As the defendants point out, it is somewhat unsettled in this Circuit “whether the
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`standard for imposition of sanctions under 18 U.S.C. § 1927 should be ‘recklessness’ or the more
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`stringent ‘bad faith.’” LaPrade v. Kidder Peabody & Co., 146 F.3d 899, 905 (D.C. Cir. 1998)
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`(citing United States v. Wallace, 964 F.2d 1214, 1218-19 (D.C. Cir. 1992)). Nonetheless, under
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`either standard, this Court concludes that sanctions are not appropriate. See Wallace, 964 F.2d at
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`1219 (finding no need to resolve the question of what standard to apply under Section 1927 when
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`attorney’s behavior did not reach even the lowest of the possible thresholds).
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`Under the less stringent standard of “recklessness,”courts may impose sanctions for an
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`attorney’s “deliberate action in the face of a known risk, the likelihood or impact of which the
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`12
` As mentioned supra, the defendants alternatively request that the Court hold plaintiff’s counsel
`exclusively liable for the costs and fees associated with the second motion while holding the plaintiff liable for the
`costs and fees associated with the first motion. Because the Court declines to award attorney’s fees based on the
`defendants’ 28 U.S.C. § 1927 argument, the Court does not reach the issue of this suggested apportionment of
`liability.
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`13
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`

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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 14 of 20
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`actor inexcusably underestimates or ignores.” Wallace, 964 F.2d at 1220. Arguing that the
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`conduct of the plaintiff’s counsel meets this standard, the defendants rely primarily on the fact
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`that the plaintiff amended his complaint three days after the defendants’ initial motions to
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`dismiss had become ripe for disposition. Defs. Mem. at 5-7. The defendants also note that
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`plaintiff’s counsel failed to meet two filing deadlines. Id. at 7 n.4. The plaintiff’s counsel, on the
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`other hand, claims that the amended complaint was an attempt “to cure or correct any possible
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`flaws in [the plaintiff’s] Complaint.” Pl.’s Opp’n at 3.
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`From the LaPrade and Wallace decisions, it is clear that the defendants’ Section 1927
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`request should be denied. In LaPrade, the Court affirmed an imposition of Section 1927
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`sanctions against a plaintiff’s counsel. LaPrade, 146 F.3d at 904-907. There, however, the
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`plaintiff’s counsel had sought and obtained an ex parte order in state court staying arbitration,
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`without advising the state court that a former member of this Court has already stayed the
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`plaintiff’s action against her former employer pending arbitration. Id. at 900, 905-06. Moreover,
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`LaPrade’s counsel sought the state court’s intervention four and one-half years after the suit filed
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`in this Court had been stayed, and the day before arbitration hearings were to resume after a
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`seventeen-month of delay. Id. The conduct of the plaintiff’s attorney here—amending the
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`original complaint after a motion to dismiss had been briefed and missing two filing
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`deadlines—hardly compares to the attorney’s conduct in LaPrade.
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`On the other hand, in Wallace, the Circuit Court reversed an imposition of Section 1927
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`sanctions against a criminal defense attorney who caused the start of a trial to be delayed by
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`failing to subpoena defense witnesses. Wallace, 964 F.2d at 1215-17, 1219-21. The Court
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`concluded that although the attorney’s conduct was “certainly negligent and careless,” there was
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`14
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`

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`Case 1:04-cv-00659-RBW Document 23 Filed 05/23/06 Page 15 of 20
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`“no contention or finding that [the attorney] intended to delay the trial or to not subpoena the
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`witnesses for the trial.” Id. at 1219-20. Similarly, here, while it may be appropriate to
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`characterize the plaintiff’s attorney’s failure to properly plead the claims he was advancing on
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`behalf of his client and to meet several filing deadlines as “negligent and careless,” there is no
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`evidence in the record that these failures were “deliberate action in the face of a known risk, the
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`likelihood or impact of which the [attorney] inexcusably underestimate[d] or ignore[d].”
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`Wallace, 964 F.2d at 1220. Thus, this Court declines to impose sanctions against the plaintiff’s
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`attorney under 28 U.S.C. § 1927.13
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`(D) The Amount of Fees Awarded
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`Having concluded that the defendants should be awarded reasonable attorneys fees and
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`costs pursuant to the Copyright Act, the Court must now determine the proper amount of the
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`award. Given that the Court has decided to award fees and costs under the Copyright Act, but
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`has denied any award under the Lanham Act, the first question to address is whether the
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`defendants are entitled to fees associated with the litigation of both claims, or whether the award
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`should be reduced to reflect only the work performed in litigating the Copyright Act claim. For
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`the following reasons, the Court concludes that the defendants are only entitled to fees associated
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`with the Copyright Act claim. 14
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`13
` While LaPrade and Wallace provide guidance to the Court in its application of 28 U.S.C. § 1927, it is
`worth noting that the Court’s decision is easily supported independently by the plain meaning of the statute. For
`sanctions to apply, the statute requires an attorney’s conduct to “multipl[y] the proceedings . . . unreasonably and
`vexatiously.” 28 U.S.C. § 1927 (emphasis added). “Vexatious” conduct, especially, is n